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Re Trade Marks Act 1994 Trade Marks Nos 1338514 (in Class 5) and 1402537 (in Class 3) in the name of Laboratories Goemar SA and Applications for Revocation thereof Nos 10073 and 10074 by La Mer Technology Inc: ChD 20 Jun 2003

A case had been referred to the court as to the interpetation of the articles in the Directive. The court replied asking whether the subsequent Ansul judgement answered the questions raised. Held: By agreement with the parties, only one of the questions was answered, and four remained. The court requested the European court to continue. … Continue reading Re Trade Marks Act 1994 Trade Marks Nos 1338514 (in Class 5) and 1402537 (in Class 3) in the name of Laboratories Goemar SA and Applications for Revocation thereof Nos 10073 and 10074 by La Mer Technology Inc: ChD 20 Jun 2003

Thomas Witter v TBP Industries Ltd: ChD 15 Jul 1994

An award of damages for misrepresentation required that there had at some time been a right of rescission, not necessarily a continuing right to rescind. An acknowledgement of non-reliance clause has become a common part of modern commercial contracts. An entire agreement clause limits the terms of the parties’ agreement to their written agreement and … Continue reading Thomas Witter v TBP Industries Ltd: ChD 15 Jul 1994

Rainyseason (Trade Mark: Opposition): IPO 10 Mar 2005

The Hearing Officer commented upon the stylization of the mark as advertised – with a lowercase ‘i’ and noted that this appeared to be at odds with the mark depicted on the application form. However, nothing turned on this point and he treated the mark as the word RAINYSEASON. The opponent (hereafter referred to as … Continue reading Rainyseason (Trade Mark: Opposition): IPO 10 Mar 2005

In The Pink (Trade Mark: Opposition): IPO 28 Jul 2008

Interlocutory Hearing in relation to a request by the Applicant for Security of Costs Judges: G Hobbs QC Citations: [2008] UKIntelP o24508 Links: Bailii Statutes: Trade Marks Act 1994 Cited by: See Also – In The Pink (Trade Mark: Opposition) IPO 28-Jul-2008 At first instance (see BL O/135/08) the Hearing Officer had refused a request … Continue reading In The Pink (Trade Mark: Opposition): IPO 28 Jul 2008

Witchcraft (Trade Mark: Opposition): IPO 9 Aug 2007

IPO Trade Mark: Opposition – The application was in respect of ‘Eau de toilette, perfume, deodorant’. The opposition was based on registrations of a number of WITCH marks including WITCH DOCTOR and WITCH STIK.The Hearing Officer found points of similarity as well as points of difference in the respective sets of goods; (skincare preparations on … Continue reading Witchcraft (Trade Mark: Opposition): IPO 9 Aug 2007

CICA (Trade Mark: Invalidity): IPO 9 Aug 2007

At first instance (see BL O/099/06) the application had failed because the applicants had not provided evidence of use of the mark relied on. Following an appeal to the Appointed Person the matter had been remitted to the Registrar for further consideration (see BL O/371/06).Following the re-hearing, the Hearing Officer ruled that the application for … Continue reading CICA (Trade Mark: Invalidity): IPO 9 Aug 2007

Budweiser (Trade Mark: Invalidity): IPO 2 Aug 2007

IPO There has been a long running dispute between these two party’s dating back to the early 1980’s. The mark in suit was applied for on 28 June 1989 and was opposed by the current applicant all the way to the Court of Appeal, who allowed registration under Section 12 of the 1938 Trade Marks … Continue reading Budweiser (Trade Mark: Invalidity): IPO 2 Aug 2007

Storm (Trade Mark: Revocation): IPO 4 Jul 2007

Interlocutory Hearing re the filing of part of Form 8, Counterstatement and exhibits by way of email Result Incomplete documents filed in defence of registration by email: Appeal allowed. Registered Proprietor allowed to defend its registration Points Of Interest The filing of documents by email is allowed Summary An application for revocation of the mark … Continue reading Storm (Trade Mark: Revocation): IPO 4 Jul 2007

Mobilicity (Trade Mark: Opposition) O-367-04: IPO 14 Dec 2004

IPO Section 3(6): – Opposition failed. Section 5(2)(b): – Opposition failed. Section 5(3): – Opposition failed. Section 5(4)(a): – Opposition failed. 1. Admission of additional evidence. 2. Admission of ‘without prejudice’ evidence. 3. Bad faith; Section 32(3) not to be used as ‘a form of revocation prior to registration’. 4. Comparison of the marks MOBIL … Continue reading Mobilicity (Trade Mark: Opposition) O-367-04: IPO 14 Dec 2004

Mobilicity (Trade Mark: Opposition) O-368-04: IPO 14 Dec 2004

1. Statement of grounds of opposition : scope of the attack. 2. Amendment of pleadings; inherent jurisdiction to allow. In dealing with the opposition to this application (see BL O/367/04) the Hearing Officer questioned the scope of the objections under Section 5(2)(b), giving as his view that the pleadings did not include an attack on … Continue reading Mobilicity (Trade Mark: Opposition) O-368-04: IPO 14 Dec 2004

Device Only (Trade Mark: Inter Partes) (O/286/04): IPO 21 Sep 2004

IPO Sections 1(1) and 3(1)(a): – Opposition failed. Section 3(1)(b): – Opposition successful. Section 3(1)(c): – Opposition failed. Section 3(2)(c): – Not considered. The opponent in this case is another chocolate manufacturer and trader in chocolate products. This case refers to the fact that another manufacturer Ludwig Schokolade of Germany manufactures a similar shaped product … Continue reading Device Only (Trade Mark: Inter Partes) (O/286/04): IPO 21 Sep 2004

Device Only (Trade Mark: Inter Partes) (O/288/04): IPO 21 Sep 2004

IPO Sections 1(1) and 3(1)(2) – Opposition failed. Section 3(1)(b) – Opposition successful. Section 3(1)(c) – Opposition failed. Section 1(1)(d) – Opposition failed. Section 3(2)(c) – Not considered Section 32(2)(d) – Opposition successful. The opponent in this case is a major retailer of food products including confectionery. It files evidences from a German chocolate manufacturer … Continue reading Device Only (Trade Mark: Inter Partes) (O/288/04): IPO 21 Sep 2004

Device Only (Trade Mark: Inter Partes) (O/287/04): IPO 21 Sep 2004

IPO Sections 1(1) and 3(1)(a): – Opposition failed. Section 3(1)(b): – Opposition successful. Section 3(1)(c): – Opposition failed. Section 3(2)(c): – Not considered. The opponent in this case is another chocolate manufacturer and trader in chocolate products. It refers to the fact that another manufacturer Ludwig Schokolade of Germany manufactures a similar shaped product and … Continue reading Device Only (Trade Mark: Inter Partes) (O/287/04): IPO 21 Sep 2004

Device Only (Trade Mark: Inter Partes) (O/285/04): IPO 21 Sep 2004

IPO Sections 1(1) and 3(1)(a): – Opposition failed. Section 3(1)(b): – Opposition successful. Section 3(2)(c): Not considered. The opponent in this case is a German manufacturer of confectionary products including chocolate bars and it claimed to have provided chocolate bars of a similar shape and style from 1990 onwards to a number of UK firms … Continue reading Device Only (Trade Mark: Inter Partes) (O/285/04): IPO 21 Sep 2004

Bacti Guard (Trade Mark: Revocation): IPO 30 Sep 2004

IPO Request for ‘striking out’: – Request refused. – 1. The Hearing Officer concluded that the Agreement between the parties had been reached on the basis of their trading arrangements at that time and there was no evidence to say what could happen if one party ceased to use its marks. 2. In his decision … Continue reading Bacti Guard (Trade Mark: Revocation): IPO 30 Sep 2004

Omega (Trade Mark: Revocation) (O-177-04): IPO 21 Jun 2004

IPO Revocation. 1. Partial surrender of registration; effective date. 2. Rule 68(7) : failure to file TM8 rectified as a correction of an irregularity in or before the Office. At the outset of revocation proceedings against these three registrations the registered proprietor, in place of filing TM8s, had filed forms TM23 partially surrendering the scope … Continue reading Omega (Trade Mark: Revocation) (O-177-04): IPO 21 Jun 2004

Leather Master (Trade Mark: Opposition): IPO 20 Jan 2004

IPO This was an appeal from the Hearing Officer’s decision of 2 April; 2003 (BL O/090/03) in which he decided that the provisions of Rule 13(6) of the Trade Marks Rules 2000 were mandatory and that the application should be deemed abandoned. Before the Appointed Person the applicant relied upon essentially the same arguments as … Continue reading Leather Master (Trade Mark: Opposition): IPO 20 Jan 2004

Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-245-03): IPO 20 Aug 2003

IPO Trade Marks – Ex Parte Decisions Judges: Mr I Peggie Citations: 715825, [2003] UKIntelP o24503, O-245-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our … Continue reading Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-245-03): IPO 20 Aug 2003

Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-252-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr R A Jones Citations: 715984, [2003] UKIntelP o25203, O-252-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . Cited by: See Also – Word Device (Our Ice … Continue reading Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-252-03): IPO 20 Aug 2003

Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-250-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr I Peggie Citations: 715830, [2003] UKIntelP o25003, O-250-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our Ice Cream of The … Continue reading Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-250-03): IPO 20 Aug 2003

Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-248-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr I Peggie Citations: 715829, [2003] UKIntelP o24803, O-248-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our Ice Cream of The … Continue reading Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-248-03): IPO 20 Aug 2003

Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-246-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr I Peggie Citations: 715827, [2003] UKIntelP o24603, O-246-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our Ice Cream of The … Continue reading Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-246-03): IPO 20 Aug 2003

Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-244-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr I Peggie Citations: 715824, [2003] UKIntelP o24403, O-244-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our Ice Cream of The … Continue reading Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-244-03): IPO 20 Aug 2003

Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-255-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr R A Jones Citations: 715851, [2003] UKIntelP o25503, O-255-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our Ice Cream of … Continue reading Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-255-03): IPO 20 Aug 2003

Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-249-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr I Peggie Citations: 716398, [2003] UKIntelP o24903, O-249-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our Ice Cream of The … Continue reading Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-249-03): IPO 20 Aug 2003

Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-247-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr I Peggie Citations: O-247-03, 715828, [2003] UKIntelP o24703 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our Ice Cream of The … Continue reading Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-247-03): IPO 20 Aug 2003

Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-251-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr I Peggie Citations: 716400, [2003] UKIntelP o25103, O-251-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our Ice Cream of The … Continue reading Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-251-03): IPO 20 Aug 2003

Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-253-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr R A Jones Citations: 715852, [2003] UKIntelP o25303, O-253-03 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03) IPO 20-Aug-2003 IPO Ex Parte. . . See Also – Word Device (Our Ice Cream of … Continue reading Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-253-03): IPO 20 Aug 2003

Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03): IPO 20 Aug 2003

IPO Ex Parte. Judges: Mr R A Jones Citations: O-254-03, 715985, [2003] UKIntelP o25403 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Cited by: See Also – Word Device (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-252-03) IPO 20-Aug-2003 IPO Ex Parte. . .See Also – Word Device … Continue reading Device Only (Our Ice Cream of The Year) (Trade Mark: Ex Parte) (O-254-03): IPO 20 Aug 2003

Elizabeth Emanuel, Elizabeth Emanuel Double E Crown Device (Trade Mark: Revocation): IPO 27 Jun 2003

IPO The Hearing Officer in the above proceedings found for Continental Shelf 128 Limited. (Decisions dated 17 October 2002 (BL O/424/02 and BL O/425/02). Ms Emanuel appealed to the Appointed Person. Subsequently, Continental Shelf 128 Ltd (CSL) requested that the two appeals be referred to the High Court.The Appointed Person considered his powers to refer … Continue reading Elizabeth Emanuel, Elizabeth Emanuel Double E Crown Device (Trade Mark: Revocation): IPO 27 Jun 2003

Orbis Risk Management Others (Trade Mark: Opposition): IPO 25 Apr 2003

IPO Three separate oppositions, not consolidated, but as same issues involved only one decision. The opponents’ opposition was based on their ownership of registrations in Classes 9, 16, 35, 41 and 42 of their mark CORBIS. The opponents claimed use of their mark in relation to computer readable media from 1994 but only gave turnover … Continue reading Orbis Risk Management Others (Trade Mark: Opposition): IPO 25 Apr 2003

Omega (Trade Mark: Revocation) (O-028-03): IPO 30 Jan 2003

IPO Section 46(1)(a): – Revocation failed. Section 46(1)(b): – Revocation successful. 1. The Hearing Officer had to decide whether watches made of gold and/or incorporating precious stones were items of jewellery. He decided such watches were not items of jewellery. 2. The registered proprietors appealed to the Appointed Person. Appeal partially allowed in that registered … Continue reading Omega (Trade Mark: Revocation) (O-028-03): IPO 30 Jan 2003

Omega (Trade Mark: Revocation) (O-027-03): IPO 30 Jan 2003

IPO Section 46(1)(a) – Partial Revocation failed Section 46(1)(b) – Partial Revocation action (partially successful) The above registered mark was registered for a range of goods in Class 9 and the partial revocation requested was in respect of all goods other than ‘Sports timing equipment’. The registered proprietors claimed use in respect of a range … Continue reading Omega (Trade Mark: Revocation) (O-027-03): IPO 30 Jan 2003

Elizabeth Emanuel (Trade Mark: Opposition): IPO 17 Oct 2002

IPO The opponent in these proceedings commenced to design and trade in clothing under the name EMANUEL about 1977. A shop was opened in Chelsea in 1986 but due to the breakdown of her marriage the shop closed in 1990 and Ms Emanuel commenced to trade under her own name ELIZABETH EMANUEL and she registered … Continue reading Elizabeth Emanuel (Trade Mark: Opposition): IPO 17 Oct 2002

EE Elizabeth Emanuel (Trade Mark: Revocation): IPO 17 Oct 2002

IPO In the parallel opposition proceedings (BL O/024/02) which has been reviewed in some detail the Hearing Officer concluded that as Ms Emanuel had assigned rights in this mark together with the goodwill in the business to the present proprietors, opposition under Section 3(3)(b) – which is the equivalent to Section 46(1)(d) in revocation proceedings … Continue reading EE Elizabeth Emanuel (Trade Mark: Revocation): IPO 17 Oct 2002

Vintage Hallmark of St Jamess’s (Trade Mark: Opposition): IPO 9 Apr 2002

Section 3(6) – Opposition succeeded Section 5(2)(b) – Opposition succeeded against the applicants Class 33 application. Proprietorship: There must be a proprietor in existence at the date of application. The opponents owned registrations for the marks HALLMARK and ISLAY HALLMARK in Class 33 in respect of the same and similar goods to those included within … Continue reading Vintage Hallmark of St Jamess’s (Trade Mark: Opposition): IPO 9 Apr 2002

Wheels ‘R’ Us (Trade Mark: Inter Partes): IPO 19 Oct 2006

Section 5(2)(b): Opposition partially successful in respect of Class 12 goods. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed. Section 56: Opposition failed. The opponent relied on a number of prior registrations but these were reduced to BIKES ‘R’ US, BIKES’ R’ US (with the R reversed), ‘R’US (with the R reversed) and TOYS ‘R’ … Continue reading Wheels ‘R’ Us (Trade Mark: Inter Partes): IPO 19 Oct 2006

Windows “R” Us (Trade Mark: Inter Partes): IPO 8 Aug 2006

ICO Section 5(2)(b): Invalidity action failed. Section 5(3): Invalidity action failed Section 5(4)(a): Invalidity action failed. Section 56(2): Invalidity action failed The applicant in these proceedings is the owner of a number of registered marks (UK and CTM) such as TOYS’R’US, MUMS’R’US, BABIES’R’US, ‘R’US etc in a range of classes. It also claimed extensive user … Continue reading Windows “R” Us (Trade Mark: Inter Partes): IPO 8 Aug 2006

Pizza Pizza (Trade Mark: Opposition) O/187/01: IPO 19 Apr 2001

IPO Opposition based on opponent’s registration of a TWIN CHEF device mark in Class 30. The opposition related to the same application under consideration in SRIS O/186/01, and the opponent relied on largely the same evidence and argument, but cited a different device mark. However, the Hearing Officer came to the same findings, dismissing opposition … Continue reading Pizza Pizza (Trade Mark: Opposition) O/187/01: IPO 19 Apr 2001

Pizza Pizza (Trade Mark: Opposition) O/186/01: IPO 19 Apr 2001

IPO Opposition based on opponent’s various registrations (Community and UK) of a TWIN CHEFS device mark in Classes 29, 30 and 32. In regard to opposition under Section 5(2)(b), the Hearing Officer accepted that identical goods and services were involved under the respective marks, and that the opponent’s mark had a reasonably high distinctive character, … Continue reading Pizza Pizza (Trade Mark: Opposition) O/186/01: IPO 19 Apr 2001

Every Idea Safely Delivered (Trade Mark: Appointed Person) O-275-00: IPO 17 Jul 2000

IPO Appeals to the Appointed Person Decisions – Trade Marks Judges: Mr S Thorley QC Citations: 2183690, [2000] UKIntelP o27500 Links: PO, IPO, Bailii Statutes: Trade Marks Act 1994 Citing: See Also – Every Idea Safely Delivered (Trade Mark: Ex Parte) O-380-99 IPO 15-Oct-1999 cw Ex Parte Decisions – Trade Marks IPO Ex Parte. . … Continue reading Every Idea Safely Delivered (Trade Mark: Appointed Person) O-275-00: IPO 17 Jul 2000

Every Idea Safely Delivered (Trade Mark: Ex Parte) O-380-99: IPO 15 Oct 1999

cw Ex Parte Decisions – Trade Marks IPO Ex Parte. Judges: Mr A Pike Citations: 2183690, [1999] UKIntelP o38099 Links: PO, IPO, Bailii Statutes: Trade Marks Act 1994 Cited by: See Also – Every Idea Safely Delivered (Trade Mark: Appointed Person) O-275-00 IPO 17-Jul-2000 IPO Appeals to the Appointed Person Decisions – Trade Marks . … Continue reading Every Idea Safely Delivered (Trade Mark: Ex Parte) O-380-99: IPO 15 Oct 1999

Wackers (Trade Mark: Opposition): IPO 27 Nov 1998

cw Inter Partes Decisions – Trade Marks – Opposition – The opponents filed evidence to say that they had first commenced to use the mark WACKERS from 1993 and goods (a game known as ‘Pogs’) were sold in the USA through such companies as Walmart during 1994 and 1995. The goods were also exhibited at … Continue reading Wackers (Trade Mark: Opposition): IPO 27 Nov 1998

UK Registered Trade Marks Nos 1338514 (in Class 5) and 1402537 (in Class 3) in the name of Laboratories Goemar SA and Applications for Revocation thereof Nos 10073 and 10074 by La Mer Technology Inc: ChD 19 Dec 2001

The applicants sought revocation of the defendant’s trade marks on the grounds that they had not been implemented after five years. It was sensible to go straight from the Directive, rather than the Act which implemented it. The onus was on the holder to demonstrate use. One claim was for medical use, but the product … Continue reading UK Registered Trade Marks Nos 1338514 (in Class 5) and 1402537 (in Class 3) in the name of Laboratories Goemar SA and Applications for Revocation thereof Nos 10073 and 10074 by La Mer Technology Inc: ChD 19 Dec 2001

Dyson Limited v The Registrar of Trade Marks: ChD 15 May 2003

Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given oral evidence, and the Registrar contended that any further appeal to the High court should … Continue reading Dyson Limited v The Registrar of Trade Marks: ChD 15 May 2003

Future Publishing Ltd v The Edge Interactive Media Inc and Others: ChD 13 Jun 2011

The claimant said that the defendant had infriged its rights by the use of its logo on their publications. Judges: Proudman J Citations: [2011] EWHC 1489 (Ch) Links: Bailii Jurisdiction: England and Wales Citing: Cited – Ladbroke (Football) Ltd v William Hill (Football) Ltd HL 1964 What is substantial copyingThe plaintiff alleged copying of their … Continue reading Future Publishing Ltd v The Edge Interactive Media Inc and Others: ChD 13 Jun 2011

Regina v Register of Trade Marks ex parte Interturbine Germany Gmbh: Admn 22 Feb 1999

An action was begun opposing a trade mark. It was conducted under the old rules, which did not allow for an order for discovery. After the new rules came into effect, discovery was sought, but the registrar said the old rules would continue to apply within the case. That decision was now challenged by way … Continue reading Regina v Register of Trade Marks ex parte Interturbine Germany Gmbh: Admn 22 Feb 1999

In Re Dualit Trade Mark; Dualit (Toaster Shapes): ChD 19 Jul 1999

An application to register a shape as a trade mark, on the basis of the shape only and without association with any other indication, would fail unless some particular element of the shape was driven by more than the need to produce a technical effect. Where an association with a particular shape with the applicant … Continue reading In Re Dualit Trade Mark; Dualit (Toaster Shapes): ChD 19 Jul 1999

Zam-Buk Series of 6 (Trade Mark: Opposition): IPO 21 Oct 2008

IPO The opponent in these proceedings claims to have used the mark ZAM-BUK for ten years prior to the filing of the application in suit. The background to the proceedings is as follows. ZAM-BUK is a traditional antiseptic ointment which was made and sold in the UK for over 100 years. The product was made … Continue reading Zam-Buk Series of 6 (Trade Mark: Opposition): IPO 21 Oct 2008

In Re Trade Mark No 2,023,949: ChD 18 Dec 1998

Where a sign or name had been used overwhelmingly with a descriptive or technical function, it was not validly registered as a trade mark. Name used in relevant public as an indicator of type not a designator of origin. Citations: Times 18-Dec-1998 Statutes: Trade Marks Act 1994 3 Jurisdiction: England and Wales Intellectual Property Updated: … Continue reading In Re Trade Mark No 2,023,949: ChD 18 Dec 1998

Bomar/Device Only (Trade Mark: Invalidity): IPO 18 Nov 2003

A Mr David J Quigley had applied to register the marks in suit in October 1999 and registration had been effected in May 2000. In June 2000 the two marks were assigned to Bomar (UK) Ltd, of which Mr Quigley is a director. The applicant for invalidity stated that they had registered identical marks to … Continue reading Bomar/Device Only (Trade Mark: Invalidity): IPO 18 Nov 2003

Harrison v Teton Valley Trading Co; Harrison’s Trade Mark Application (CHINAWHITE): CA 27 Jul 2004

The applicant had been an employee of the objector at their nightclub ‘Chinawhite’ and whose principal attraction was a cocktail of the same name. Employees signed a confidentiality agreement as to the recipe. Having left the employment, the appellant set up a company with a similar name and applied for the mark ‘CHINA WHITE’. The … Continue reading Harrison v Teton Valley Trading Co; Harrison’s Trade Mark Application (CHINAWHITE): CA 27 Jul 2004

South Cone Incorporated v Bessant, Greensmith, House and Stringer (a Partnership) trading as ‘Reef’; REEF Trade Mark: ChD 24 Jul 2001

The applicants sought registration of the trade mark ‘Reef’ in connection with merchandising activities in classes 25 and 26 arising from their pop group of the same name. The challengers owned a trade mark ‘Reef Brazil’ in class 25 in relation to footwear, and claimed that there was a risk of confusion, and that if … Continue reading South Cone Incorporated v Bessant, Greensmith, House and Stringer (a Partnership) trading as ‘Reef’; REEF Trade Mark: ChD 24 Jul 2001

Scandecor Developments AB v Scandecor Marketing AV and Others and One Other Action: HL 4 Apr 2001

A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the rights of the owner to use the mark, and with no quality control. … Continue reading Scandecor Developments AB v Scandecor Marketing AV and Others and One Other Action: HL 4 Apr 2001

Aaxel (Trade Mark: Invalidity): IPO 9 Sep 2003

IPO The applicants were proprietors of the Community Trade Mark ‘@@XL pharma’, registered in Classes 3, 5, and 42. The Hearing Officer found that the goods were similar. Both marks had a distinctive character. Having compared the marks, however, and having reviewed the submissions and relevant cases, the Hearing Officer was not persuaded that the … Continue reading Aaxel (Trade Mark: Invalidity): IPO 9 Sep 2003

Procter and Gamble Limited v Registrar of Trade Marks: CA 29 Jan 1999

The shape of a bottle, and patterns impressed on it, were insufficiently distinctive to be registerable as Trade Marks. The distinctiveness is assessed by reference to the object alone, not by reference to the marketing activity surrounding it. Citations: Gazette 03-Mar-1999, Times 17-Feb-1999, [1999] EWCA Civ 684 Statutes: Trade Marks Act 1994 3(1)(b) Jurisdiction: England … Continue reading Procter and Gamble Limited v Registrar of Trade Marks: CA 29 Jan 1999

In Re ‘Swiss Miss’ Trademark: CA 20 Jul 1998

The test for confusion in Trade Marks context is wider than that for passing off. The use of a name which suggested manufacture in Switzerland when there was no connection with Switzerland, was misleading and deceptive and registration as trade mark was to be refused. Citations: Times 20-Jul-1998 Statutes: Trade Marks Act 1994 11 Jurisdiction: … Continue reading In Re ‘Swiss Miss’ Trademark: CA 20 Jul 1998

General Electric Co v General Electric Co Ltd; GE TM; Re GE Trade Mark: HL 1972

Lord Diplock said: ‘The common law of trade marks before 1875 The use by manufacturers of distinctive marks upon goods which they had made is of very ancient origin, but legal recognition of trade marks as a species of incorporeal property was first accorded by the Court of Chancery in the first half of the … Continue reading General Electric Co v General Electric Co Ltd; GE TM; Re GE Trade Mark: HL 1972

Euromarket Designs Inc v Peters and Trade and Barrel Ltd: ChD 25 Jul 2000

The court considered the nature of use in relation to goods under the 1994 Act, and the Directive: ‘It may well be that the concept of ‘use in relation to goods’ is different for differing purposes. Much may turn on the public conception of the use. For instance, if you buy Kodak film in Boots … Continue reading Euromarket Designs Inc v Peters and Trade and Barrel Ltd: ChD 25 Jul 2000

Bessant and others v South Cone Incorporated; in re REEF Trade Mark: CA 28 May 2002

The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was primarily amongst surfers. The Hearing Officer conducted a ‘multi-factorial’ comparison, and rejected the opposition … Continue reading Bessant and others v South Cone Incorporated; in re REEF Trade Mark: CA 28 May 2002

Regina v S (Trade Mark Defence) (Roger Sliney v London Borough of Havering): CACD 20 Nov 2002

The defendant alleged that the offence of which had been convicted, under the 1994 Act, infringed his rights under article 6.2 in reversing the burden of proof. Held: The principle that the duty of proof lay on the prosecution was subject to statutory exceptions. To place a legal (persuasive) burden of proof on the defendant … Continue reading Regina v S (Trade Mark Defence) (Roger Sliney v London Borough of Havering): CACD 20 Nov 2002

Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 21 May 2013

Mark use in search engine was infringing use The claimant mark owner alleged that the defendant, in paying a search engine to use the claimants mark as a search keyword was infringing its rights. The defendant argued that the use of the same sign in different contexts could amount to a different and non-infringing use. … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 21 May 2013

Prebble v Television New Zealand Ltd: PC 27 Jun 1994

(New Zealand) The plaintiff, an MP, pursued a defamation case. The defendant wished to argue for the truth of what was said, and sought to base his argument on things said in Parliament. The plaintiff responded that this would be a breach of Parliamentary privilege. Held: A Defendant may not use libel proceedings to impugn … Continue reading Prebble v Television New Zealand Ltd: PC 27 Jun 1994

Windows ‘R’ Us (Trade Mark: Inter Partes): IPO 8 Aug 2006

References: [2006] UKIntelP o22406 Links: Bailii Coram: Mrs J Pike ICO Section 5(2)(b): Invalidity action failed. Section 5(3): Invalidity action failed Section 5(4)(a): Invalidity action failed. Section 56(2): Invalidity action failed The applicant in these proceedings is the owner of a number of registered marks (UK & CTM) such as TOYS’R’US, MUMS’R’US, BABIES’R’US, ‘R’US etc … Continue reading Windows ‘R’ Us (Trade Mark: Inter Partes): IPO 8 Aug 2006

Acts

1267 – 1278 – 1285 – 1297 – 1361 – 1449 – 1491 – 1533 – 1677 – 1688 – 1689 – 1700 – 1706 – 1710 – 1730 – 1737 – 1738 – 1751 – 1774 – 1792 – 1793 – 1804 – 1814 – 1819 – 1824 – 1828 – 1831 – 1832 … Continue reading Acts

L’Oreal (UK) Limited and Another v Johnson and Johnson and Another: ChD 7 Mar 2000

The claimant appealed against an order striking out their threat action for trade mark infringement, in respect of the words ‘No Tears’ when used for children’s shampoo. Held: The court had to consider both the letter and the surrounding circumstances. A threat need not be direct, and conditionality may not be an answer. The thrust … Continue reading L’Oreal (UK) Limited and Another v Johnson and Johnson and Another: ChD 7 Mar 2000

Ghias (T/A Griller) v Ikram (T/A The Griller Original): CA 20 Feb 2013

Leave to appeal – findings of trade mark infringement – liability as joint tortfeasor. Held: Recorder’s judgment faultless – leave refused. Judges: Kitchin LJ Citations: [2013] EWCA Civ 219 Links: Bailii Statutes: Trade Marks Act 1994 10(2) Jurisdiction: England and Wales Intellectual Property Updated: 17 November 2022; Ref: scu.472882

MacMillan Magazines Ltd v RCN Publishing: 1998

Neuberger J approved the statement of Jacob J as to comparative marketing. Judges: Neuberger J Citations: [1998] FSR 9 Jurisdiction: England and Wales Citing: Approved – Vodafone Group Plc v Orange Personal Communications Services Ltd ChD 1997 The court examined the development of the law in relation to comparative advertising. Jacob J said: ‘Prior to … Continue reading MacMillan Magazines Ltd v RCN Publishing: 1998

L’Oreal Sa and Others v Ebay International Ag and Others: ChD 22 May 2009

The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site. Held: The ECJ had not yet clarified the law on accessory liability in trade mark infringement, and the legislation remained unclear. Many of the direct sellers were held to be … Continue reading L’Oreal Sa and Others v Ebay International Ag and Others: ChD 22 May 2009

Societe Des Produits Nestle Sa v Mars UK Limited: CA 26 Jul 2004

The appellant had sought to register as a trade mark the shape of a polo mint. The objector said it lacked sufficient distinctive character. The appellant sought to amend the specification of the trade mark to limit its application as to the goods to which it would be applied, and the dimensions and colour. Held: … Continue reading Societe Des Produits Nestle Sa v Mars UK Limited: CA 26 Jul 2004

Mastercard International Incorporated v Hitachi Credit (Uk) Plc: ChD 8 Jul 2004

The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own. Held: Applying Davidoff, the words can also be read as extending to goods or services which are identical with or similar to those … Continue reading Mastercard International Incorporated v Hitachi Credit (Uk) Plc: ChD 8 Jul 2004

Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited): ChD 11 Jun 2003

The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark. Held: The word ‘Mail’ has not acquired a descriptive meaning, and nor is there any requirement in the law … Continue reading Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited): ChD 11 Jun 2003

Giorgio Armani Spa v Sunrich Clothing Ltd: ChD 16 Nov 2010

The claimant appealed against refusal of the registration of its mark ‘AX’ for confusion with the defendant objector’s registered mark ‘AXE’ for similar produxts. Judges: Mann J Citations: [2010] EWHC 2939 (Ch), [2011] ETMR 13 Links: Bailii Statutes: Trade Marks Act 1994, Trade Marks (International Registration) Order 2008 Jurisdiction: England and Wales Intellectual Property Updated: … Continue reading Giorgio Armani Spa v Sunrich Clothing Ltd: ChD 16 Nov 2010

Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd: CA 3 Mar 2004

The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert. Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair in all the circumstances. No confusion was intended; they wanted only to associate their … Continue reading Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd: CA 3 Mar 2004

Best Buy Co Inc and Another v Worldwide Sales Corporation Espana Sl: CA 24 May 2011

Appeal against dismissal of claim of trade mark infringement threats by the defendants’ lawyers. The court was asked to consider whether a letter, described as ‘the September letter’ was an actionable threat. Held: Lord Neuberger MR said: ‘In my view, insofar as such a question turns on the meaning of any particular passage in the … Continue reading Best Buy Co Inc and Another v Worldwide Sales Corporation Espana Sl: CA 24 May 2011

Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd: ChD 19 Dec 2002

Pumfrey J said: ‘Under Art 5(1) (b) [section 10 (2)] the comparison is not a straightforward mark for sign comparison. On the contrary, it involves a global assessment of the likelihood of confusion as to origin of the goods or services concerned. This involves an assessment of the distinctiveness of the mark, and involves the … Continue reading Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd: ChD 19 Dec 2002

Decon Laboratories Ltd v Fred Baker Scientific Ltd and Another: ChD 28 Feb 2001

The procedure for applying for the registration of a European Trade Mark did not involve the same issues as applied in England as to the use of the mark within the first five years, nor any statement of a bona fide intention to use the mark. Only exceptionally therefore could a European Trade Mark be … Continue reading Decon Laboratories Ltd v Fred Baker Scientific Ltd and Another: ChD 28 Feb 2001

Regina v M and Others: SC 3 Aug 2017

The defendants pursued an interlocutory appeal. They were being prosecuted inter alia for the sale of items manufactured elsewhere under trade mark licence, but then imported within the EU. They argued that the criminal offence did not apply since the marks had been correctly applied, even though the sales were not authorised. Held: The appellants’ … Continue reading Regina v M and Others: SC 3 Aug 2017

Regina v C and Others: CACD 1 Nov 2016

The court considered the existence of criminal liability under the 1994 Act for those importing from outside the EU and selling within the EU items marked with trade marks but not manufactured by them (counterfeits) or licensed by the trade mark holders, but not for import to the EU. Held: The defendants objections were suggestions … Continue reading Regina v C and Others: CACD 1 Nov 2016

Gerber Products Company v Gerber Foods International Ltd: ChD 18 Mar 2002

The opponent marketed baby food using the trade mark. The applicant sough revocation of the trade mark on the grounds of it not having been bona-fide used. Held: The Electrolux case did not establish that the mark owner had to establish commercial use on a substantial scale in addition to bona fide use. Section 26(1) … Continue reading Gerber Products Company v Gerber Foods International Ltd: ChD 18 Mar 2002

Honda Motor Co Ltd and Another v Neesam and Others: ChD 28 Feb 2008

This case is about parallel importation of Honda motorcycles into the United Kingdom by KJM and their resale on the domestic market. The case is specifically about whether KJM’s resales of certain motorcycles have been in breach of provisions of the Trade Marks Act 1994. Judges: Sir Andrew Park Citations: [2008] EWHC 338 (Ch), [2008] … Continue reading Honda Motor Co Ltd and Another v Neesam and Others: ChD 28 Feb 2008