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Reynolds v Times Newspapers Ltd and others: HL 28 Oct 1999

Fair Coment on Political Activities The defendant newspaper had published articles wrongly accusing the claimant, the former Prime Minister of Ireland of duplicity. The paper now appealed, saying that it should have had available to it a defence of qualified privilege because of the claimant’s status as a politician. Held: The appeal failed (Lords Hope … Continue reading Reynolds v Times Newspapers Ltd and others: HL 28 Oct 1999

Generale Bank Nederland Nv (Formerly Credit Lyonnais Bank Nederland Nv) v Export Credit Guarantee Department: CA 23 Jul 1997

The bank claimed that it had been defrauded, and that since an employee of the defendant had taken part in the fraud the defendant was had vicarious liability for his participation even though they knew nothing of it. Held: Where A becomes liable to B as a joint tortfeasor with C in the tort of … Continue reading Generale Bank Nederland Nv (Formerly Credit Lyonnais Bank Nederland Nv) v Export Credit Guarantee Department: CA 23 Jul 1997

Burgess v Bass Taverns Ltd: CA 31 Mar 1995

The appellant had been a ‘trainer manager’ involving presentations at induction courses. He was also a shop steward of a recognised trade union. At the induction course he was also permitted to give a presentation about the union. At the particular induction course in question the appellant had made disparaging remarks about the company and … Continue reading Burgess v Bass Taverns Ltd: CA 31 Mar 1995

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

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

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

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

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

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

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

Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc: ChD 19 Feb 2008

Judges: Norris J Citations: [2008] EWHC 263 (Ch) Links: Bailii Jurisdiction: England and Wales Citing: See Also – Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc ChD 20-May-1998 It is possible to grant two identical trade marks in respect of beer where either there was no confusion, or … Continue reading Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc: ChD 19 Feb 2008

Rhone-Poulenc Rorer International Holdings Inc and Another v Yeda Research and Development Co Ltd: ChD 16 Feb 2006

The patent application had been presented to the European Patent Office and granted only after 13 years. The claimant now appealed refusal to allow amendment of its claim to allow a claim in its sole name. The defendant argued that it was out of time. Held: The appeal succeeded: ‘ the long-standing rule of practice … Continue reading Rhone-Poulenc Rorer International Holdings Inc and Another v Yeda Research and Development Co Ltd: ChD 16 Feb 2006

Anheuser-Busch v Budejovicky Budvar, narodni podnik: ECJ 16 Nov 2004

Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name. Citations: C-245/02, [2004] EUECJ C-245/02, [2004] I-10989 Links: Bailii Jurisdiction: European Citing: See Also – … Continue reading Anheuser-Busch v Budejovicky Budvar, narodni podnik: ECJ 16 Nov 2004

Cable and Wireless plc v British Telecommunications plc: ChD 1998

The court set out the applicable legal principles in trade mark infringement. The court considered the elements necessary to establish a defence under s10(6): The primary objective of section 10(6) of the 1996 Act is to permit comparative advertising . . As long as the use of a competitor’s mark is honest, there is nothing … Continue reading Cable and Wireless plc v British Telecommunications plc: ChD 1998

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

Antec International Limited v South Western Chicks (Warren) Limited: PatC 27 Mar 1998

Where words in a product name were so generally descriptive as to be unable to distinguish the product from others, they could nevertheless be registerable as a Trade Mark with goodwill, after acquiring a secondary connotation. Citations: Times 08-Apr-1998, Gazette 07-May-1998, [1998] EWHC Patents 330 Links: Bailii Statutes: Trade Marks Act 1994 Intellectual Property Updated: … Continue reading Antec International Limited v South Western Chicks (Warren) Limited: PatC 27 Mar 1998

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

Silhouette International Schmied GmbH and Co KG v Hartlauer Handelsgesellschaft mbH: ECJ 16 Jul 1998

National Trade Mark rules providing for exhaustion of rights in Trade Marks for goods sold outside area of registration were contrary to the EU first directive on trade marks. A company could prevent sale of ‘grey goods’ within the internal market. Articles 5 to 7 of the directive embody a ‘complete harmonisation’ of the rules … Continue reading Silhouette International Schmied GmbH and Co KG v Hartlauer Handelsgesellschaft mbH: ECJ 16 Jul 1998

Sabel BV v Puma AG, Rudolf Dassler Sport: ECJ 11 Nov 1997

The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global appreciation of the … Continue reading Sabel BV v Puma AG, Rudolf Dassler Sport: ECJ 11 Nov 1997

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

Pro Sieben Media AG v Carlton Television Ltd and Another: CA 7 Jan 1999

The defendant was accused of infringing copyright in a TV programme relating to the pregnancy of a woman with eight foetuses. The defendant claimed fair dealing, but that defence was rejected by the trial judge. Held: The decision was reversed. The test of use for ‘criticism or review’ is objective, and satisfied here with full … Continue reading Pro Sieben Media AG v Carlton Television Ltd and Another: CA 7 Jan 1999

Barclays Bank Plc v RBS Advanta: ChD 8 Feb 1996

A party complaining about the use of a trade mark in a comparative advert is required to show some dishonesty. Section 10(6) of the Act was described as ‘home grown’ rather than derived directly from the Directive. Judges: Laddiie J Citations: Times 08-Feb-1996, [1996] RPC 307 Statutes: Trade Marks Act 1994 10(6) Cited by: Cited … Continue reading Barclays Bank Plc v RBS Advanta: ChD 8 Feb 1996

Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc: ChD 20 May 1998

It is possible to grant two identical trade marks in respect of beer where either there was no confusion, or an honest concurrent use could justify such double registrations. Citations: Times 20-May-1998 Statutes: Trade Marks Act 1994 11 12(2) Cited by: Appeal from – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik … Continue reading Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc: ChD 20 May 1998

Anheuser-Busch Inc v Budejovicky Budvar: CA 1984

The plaintiff sold the well-known ‘Budweiser’ beer in the US, but it was not generally available in the UK, being sold in American military bases and in a few duty-free shops. However, the beer was widely known throughout the UK because of the plaintiff’s publicity efforts as well as tourist and business traffic between Europe … Continue reading Anheuser-Busch Inc v Budejovicky Budvar: CA 1984

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

Caparo Industries Plc v Dickman and others: HL 8 Feb 1990

Limitation of Loss from Negligent Mis-statement The plaintiffs sought damages from accountants for negligence. They had acquired shares in a target company and, relying upon the published and audited accounts which overstated the company’s earnings, they purchased further shares. Held: The duties of an auditor are founded in contract and the extent of the duties … Continue reading Caparo Industries Plc v Dickman and others: HL 8 Feb 1990

Pepper (Inspector of Taxes) v Hart: HL 26 Nov 1992

Reference to Parliamentary Papers behind Statute The inspector sought to tax the benefits in kind received by teachers at a private school in having their children educated at the school for free. Having agreed this was a taxable emolument, it was argued as to whether the taxable benefit was the cost to the employer, or … Continue reading Pepper (Inspector of Taxes) v Hart: HL 26 Nov 1992

Parry v Cleaver: HL 5 Feb 1969

PI Damages not Reduced for Own Pension The plaintiff policeman was disabled by the negligence of the defendant and received a disablement pension. Part had been contributed by himself and part by his employer. Held: The plaintiff’s appeal succeeded. Damages for personal injury were not to be reduced by deducting the full net value of … Continue reading Parry v Cleaver: HL 5 Feb 1969

Prince PLC v Prince Sports Group Inc: ChD 1998

In a threat action for trade mark infringement, the plaintiff had only supplied services. The defendant made a general threat without limiting it to proceedings in respect of goods or services. The defendant argued that the threat would be understood as relating only to services, as that is all the plaintiff provided. Held: Section 70 … Continue reading Prince PLC v Prince Sports Group Inc: ChD 1998

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation: CA 25 May 2016

The court was asked as to the validity of certain trade marks. Arden, Kitchin,Lloyd Jones LJJ [2016] EWCA Civ 455 Bailii Trade Marks Act 1994 England and Wales Citing: See Also – Comic Enterprises Ltd v Twentieth Century Fox Film Corp PCC 22-Mar-2012 Birss QC HHJ explained his comments in ALK-Abello regarding the criteria for … Continue reading Comic Enterprises Ltd v Twentieth Century Fox Film Corporation: CA 25 May 2016

Airtours Holidays Transport Ltd v Revenue and Customs: SC 11 May 2016

The court was asked whether the appellant, Airtours Holidays Transport Ltd (formerly MyTravel Group plc), was entitled to recover, by way of input tax VAT charged by PricewaterhouseCoopers LLP in respect of services provided by PwC and paid for by Airtours. Held: The appeal was dismissed (Clarke and Carnwath LL dissenting) For the VAT to … Continue reading Airtours Holidays Transport Ltd v Revenue and Customs: SC 11 May 2016

Regina v Gough (Robert): HL 1993

The defendant had been convicted of robbery. He appealed, saying that a member of the jury was a neighbour to his brother, and there was therefore a risk of bias. This was of particular significance as the defendant was charged with conspiracy with that brother to commit burglaries. The juror had sworn an affidavit that … Continue reading Regina v Gough (Robert): HL 1993

Derbyshire County Council v Times Newspapers Ltd and Others: HL 18 Feb 1993

Local Council may not Sue in Defamation Local Authorities must be open to criticism as political and administrative bodies, and so cannot be allowed to sue in defamation. Such a right would operate as ‘a chill factor’ on free speech. Freedom of speech was the underlying value which supported the decision to lay down the … Continue reading Derbyshire County Council v Times Newspapers Ltd and Others: HL 18 Feb 1993

Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd: ChD 1981

The fundamental principle that equity is concerned to prevent unconscionable conduct permeates all the elements of the doctrine of estoppel. In the light of the more recent cases, the principle ‘requires a very much broader approach which is directed rather at ascertaining whether, in particular individual circumstances, it would be unconscionable for a party to … Continue reading Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd: ChD 1981

Saunders v The United Kingdom: ECHR 17 Dec 1996

(Grand Chamber) The subsequent use against a defendant in a prosecution, of evidence which had been obtained under compulsion in company insolvency procedures was a convention breach of Art 6. Although not specifically mentioned in Article 6 of the Convention the right to silence and the right not to incriminate oneself are generally recognised international … Continue reading Saunders v The United Kingdom: ECHR 17 Dec 1996

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

Bhayani and Another v Taylor Bracewell Llp: IPEC 22 Dec 2016

Distinction between reputation and goodwill The claimant had practised independently as an employment solicitor. For a period, she was a partner with the defendant firm practising under the name ‘Bhayani Bracewell’. Having departed the firm, she now objected to the continued use of her name, alleging passing off, and requesting revocation of the associated trade … Continue reading Bhayani and Another v Taylor Bracewell Llp: IPEC 22 Dec 2016

Marleasing SA v La Comercial Internacional de Alimentacion SA: ECJ 13 Nov 1990

Sympathetic construction of national legislation LMA OVIEDO sought a declaration that the contracts setting up Commercial International were void (a nullity) since they had been drawn up in order to defraud creditors. Commercial International relied on an EC Directive designed to protect companies and third parties from the adverse effects of the doctrine of nullity. … Continue reading Marleasing SA v La Comercial Internacional de Alimentacion SA: ECJ 13 Nov 1990

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

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

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

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

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

Reliance Water Controls Ltd v Altecnic Ltd: CA 12 Dec 2001

The Court considered right of an applicant for the registration of a trade mark to change the class number specified by him on Form TM3 in respect of goods for which he had made an application for registration. The appeal turned on the true construction of the relevant provisions of the Trade Marks Act 1994 … Continue reading Reliance Water Controls Ltd v Altecnic Ltd: CA 12 Dec 2001

Regina v Johnstone, etc: CACD 1 Feb 2002

The several defendants appealed convictions for breaches of section 92 of the Act. Held: The section presumed that a civil infringement of the Trade Mark had taken place. Accordingly any of the defences available to a civil action must be available also against a criminal action. Furthermore there was no conflict between the Act and … Continue reading Regina v Johnstone, etc: CACD 1 Feb 2002

Podnik v Anheuser-Busch Inc: CA 29 Oct 2002

Judges: Pill LJ, Lord Walker of Guestingthorpe Citations: [2003] RPC 25, [2002] EWCA Civ 1534 Links: Bailii Statutes: Trades Mark Act 1994 46 Jurisdiction: England and Wales Citing: See Also – Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc ChD 20-May-1998 It is possible to grant two identical … Continue reading Podnik v Anheuser-Busch Inc: CA 29 Oct 2002

Koninklijke Philips Electronics NV v Remington Consumer Products Ltd: ECJ 18 Jun 2002

The claimant developed a three headed rotary razor for men. They obtained registration of the arrangement as a trade mark. They sued the defendant for infringement, and the defendant countered challenging the validity of the registration, saying the design was functional. Held: A sign consisting exclusively of a product’s shape was unregistrable, if it was … Continue reading Koninklijke Philips Electronics NV v Remington Consumer Products Ltd: ECJ 18 Jun 2002

Zino Davidoff SA v A and G Imports Ltd etc: ECJ 20 Nov 2001

An injunction was sought to prevent retailers marketing in the EEA products which had been obtained outside the EEA for resale within the EEA but outside the controlled distribution system. Held: Silence alone was insufficient to constitute implied consent for the resale within the EEA of goods otherwise than in accordance with a licence from … Continue reading Zino Davidoff SA v A and G Imports Ltd etc: ECJ 20 Nov 2001

Asprey and Garrard Ltd v WRA (Guns) Ltd and Another: CA 11 Oct 2001

The Asprey family had been in business for many years. Their business was incorporated, and later sold to the claimants. A member of the Asprey family sought to carry on new businesses through limited companies using the family name. Upon request, he changed the names to the names of the respondent companies. Later he left … Continue reading Asprey and Garrard Ltd v WRA (Guns) Ltd and Another: CA 11 Oct 2001

Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch: CA 7 Feb 2000

The registration of two trade marks (‘Budweiser’) with the identical names was against the Act since it would appear to encourage the very confusion the Act sought to avoid. Nevertheless, where there was genuine honest concurrent use, that use might justify registration. Clause 12 of the Act clearly envisaged honest concurrent use. Here the name … Continue reading Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch: CA 7 Feb 2000

Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another: ChD 21 Oct 2004

The claimant alleged infringement of its trade mark. It registered a two dimensional mark which represented its razor which had three rotary blades on the head of the razor. The defendant manufactured and sold a similar design, and counterclaimed for a declaration that the mark was invalid. Held: The mark was invalid in that it … Continue reading Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another: ChD 21 Oct 2004

British Airways Plc v Ryanair Limited: ChD 25 Oct 2000

The claimant alleged that disparaging adverts by the defendant infringed its trade marks and amounted to the tort of malicious falsehood. Held: There was no dispute that the mark had been used. The Act could not be used to prevent any use of another’s trade mark in comparitive advertising. In this case the advertisement, though … Continue reading British Airways Plc v Ryanair Limited: ChD 25 Oct 2000

Assicurazioni Generali Spa v Arab Insurance Group (BSC): CA 13 Nov 2002

Rehearing/Review – Little Difference on Appeal The appellant asked the Court to reverse a decision on the facts reached in the lower court. Held: The appeal failed (Majority decision). The court’s approach should be the same whether the case was dealt with as a rehearing or as a review. Tanfern was limited to appeals from … Continue reading Assicurazioni Generali Spa v Arab Insurance Group (BSC): CA 13 Nov 2002

Johnson v Gore Wood and Co: HL 14 Dec 2000

Shareholder May Sue for Additional Personal Losses A company brought a claim of negligence against its solicitors, and, after that claim was settled, the company’s owner brought a separate claim in respect of the same subject-matter. Held: It need not be an abuse of the court for a shareholder to seek damages against advisers to … Continue reading Johnson v Gore Wood and Co: HL 14 Dec 2000

Bunt v Tilley and others: QBD 10 Mar 2006

The claimant sought damages in defamation in respect of statements made on internet bulletin boards. He pursued the operators of the bulletin boards, and the court now considered the liability of the Internet Service Providers whose systems had inevitably carried the traffic from the bulletin boards to their own customers. Held: The claims were struck … Continue reading Bunt v Tilley and others: QBD 10 Mar 2006

Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs.Com Ltd: CA 14 Jul 2004

Walker v Wilshire still Good Law After successfully appealing, the defendant claimant argued for a substantial part of its costs, saying that the defendant had unreasonably refused ADR. To pursue this, it now sought disclosure of the details of the without prejudice negotiations between them. Held: No distinction is to be made between party-to-party negotiations … Continue reading Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs.Com Ltd: CA 14 Jul 2004

Oracle America Inc v M-Tech Data Ltd: SC 27 Jun 2012

The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding information which would allow it to trade lawfully. The Court was now asked: ‘whether a person who … Continue reading Oracle America Inc v M-Tech Data Ltd: SC 27 Jun 2012

Regina v Secretary of State for Education and Employment and others ex parte Williamson and others: HL 24 Feb 2005

The appellants were teachers in Christian schools who said that the blanket ban on corporal punishment interfered with their religious freedom. They saw moderate physical discipline as an essential part of educating children in a Christian manner. Held: The appeal was dismissed. For Article 9 to be engaged (aside from certain other threshold conditions) the … Continue reading Regina v Secretary of State for Education and Employment and others ex parte Williamson and others: HL 24 Feb 2005

Regina v Johnstone: HL 22 May 2003

The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act could become criminal. The prosecutor appealed the decision of … Continue reading Regina v Johnstone: HL 22 May 2003

Autologic Holdings Plc and others v Commissioners of Inland Revenue: HL 28 Jul 2005

Taxpayer companies challenged the way that the revenue restricted claims for group Corporation Tax relief for subsidiary companies in Europe. The issue was awaiting a decision of the European Court. The Revenue said that the claims now being made by other companies should proceed through the Commissioners who could implement European law directly. The taxpayers … Continue reading Autologic Holdings Plc and others v Commissioners of Inland Revenue: HL 28 Jul 2005

British Telecommunications Plc and Another, Regina (on The Application of) v The Secretary of State for Business, Innovation and Skills: Admn 20 Apr 2011

The claimant sought judicial review of legislative provisions requiring Internet Service Providers to become involved in regulation of copyright infringements by its subscribers. They asserted that the Act and proposed Order were contrary to European law. Held: The request was refused. No obligation had yet fallen on the claimant, and the exact form and rules … Continue reading British Telecommunications Plc and Another, Regina (on The Application of) v The Secretary of State for Business, Innovation and Skills: Admn 20 Apr 2011

Kousar, Regina v: CACD 21 Jan 2009

The husband had been convicted of various criminal offences including under the 1994 Act. The wife appealed against her conviction for unauthorised use of a trade mark, having allowed counterfeit goods to be stored in the matrimonial home. Held: The appeal succeeded. The authorities referred to by the crown were attempts to draw parallels with … Continue reading Kousar, Regina v: CACD 21 Jan 2009

Best Buy Co Inc and Another v Worldwide Sales Corp. Espana Sl: ChD 8 Jul 2010

The claimant accused the defendant of making threats in connection with trade mark applications. The claimants operated under US trade marks associated with ‘Best Buy’ and sought similar marks in Europe. The defendant company traded under a similar style, and opposed the application, refering to its existing registrations. The claimants had proposed a co-existence agreement, … Continue reading Best Buy Co Inc and Another v Worldwide Sales Corp. Espana Sl: ChD 8 Jul 2010