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
IPO Trade Mark: Revocation – no use made of the mark by owner. Citations: [2013] UKIntelP o09213 Links: Bailii Statutes: Trade Marks Act 1994 Intellectual Property Updated: 14 November 2022; Ref: scu.472214
Trade Mark: Rectification Citations: [2013] UKIntelP o07213 Links: Bailii Statutes: ade Marks Act 1994 Intellectual Property Updated: 14 November 2022; Ref: scu.472206
Opposition – existing similar mark Citations: [2009] UKIntelP o08509 Links: Bailii Statutes: the Trade Marks Act 1994 5(2)(a) Intellectual Property Updated: 21 October 2022; Ref: scu.457311
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
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
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
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
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
PO Trade Marks – Inter Partes Decisions – Opposition – 2211189 Judges: Mr J MacGillivray Citations: OPP 51391, 2211189, [2003] UKIntelP o40203 Links: PO, IPO, Bailii Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 16 October 2022; Ref: scu.455801
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
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
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
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
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
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
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
The claimant had licensed the defendant to use its trademarks in connection with the naming of their hotels in Germany. The defendants failed to pay their fees as agreed, the claimants terminated the license and now sought payment under the termination provisions. The defendants alleged misrepresentation saying that they had agreed the fee after being … Continue reading Six Continents Hotels Inc v Event Hotels Gmbh: QBD 21 Sep 2006
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
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
cw Inter Partes Decisions – Trade Marks – Opposition Judges: Mr Foley Citations: OPP 49618, 2167177, [2001] UKIntelP o27601 Links: PO, IPO, Bailii Statutes: Trade Marks Act 1994 Intellectual Property Updated: 06 June 2022; Ref: scu.176534
Application for registration without evidence of proprietary interest in the name. Citations: Ind Summary 28-Feb-1994 Statutes: Trade Marks Act 1938 17(1) Jurisdiction: England and Wales Intellectual Property Updated: 04 June 2022; Ref: scu.83216
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
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
cw Ex Parte Decisions – Trade Marks Judges: Mr Layton Links: PO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 28 April 2022; Ref: scu.176784
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
[2014] UKIntelP o08014 Bailii Trade Marks Act 1994 England and Wales Intellectual Property Updated: 02 December 2021; Ref: scu.523940
[2013] UKIntelP o24313 Bailii Trade Marks Act 1994 592)(b) Intellectual Property Updated: 23 November 2021; Ref: scu.517126
[2014] UKIntelP o28514 Bailii Trade Marks Act 1994 England and Wales Intellectual Property Updated: 12 November 2021; Ref: scu.534587
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
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
(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
The originator of ‘Bach Flower Remedies’ had distributed them widely, and encouraged the use of the term as a general descriptive remedies. After the plaintiff had registered the names as trade marks, the respondent challenged the registration, and . .
The claimant sought to restrain the defendants from using the name ‘Bell Atlantic’ so as to cause confusion and a passing of the defendant had registered Internet domain names and sought to register trade marks similar to those of the claimants. The . .
IPO Ex Parte. . .
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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
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
GPM had acquired an internet domain name ‘citigroup.co.uk’. Citigroup alleged passing off and trade mark infringement. The claimant complained of an unjustified threat. The defendant counterclaimed, and sought summary judgment. Held: The claimants registered the domain name on the very day that the merger creating the defendant happened. The reputation to be protected was in … Continue reading Global Projects Management Ltd v Citigroup Inc and Others: ChD 17 Oct 2005
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
Trade mark – opposition by owners of Mark ‘Prosecco’ Judges: Mr Justice Nugee Citations: [2020] EWHC 1633 (Ch) Links: Bailii Statutes: Trade Marks Act 1994 3(3)(b) 3(4) 3(6) 5(4)(a) Jurisdiction: England and Wales Intellectual Property Updated: 20 December 2022; Ref: scu.652123
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
Judges: Chadwick LJ Citations: [1998] EWCA Civ 1523 Statutes: Misrepresentation Act 1967 3 Jurisdiction: England and Wales Citing: Cited – 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 … Continue reading E A Grimstead and Son Limited v McGarrigan: CA 13 Oct 1998
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
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
The defendant appealed summary judgment in a trade mark infringement case based on parallel imports of ACCU-CHEK blood testing strips for diabetics. The defendant said that the products were ‘CE’ marked and therefore intended for sale within the EU. Held: The function of a CE mark is not directed in any way to the question … Continue reading Roche Products Ltd and Another v Kent Pharmaceuticals Ltd: CA 20 Dec 2006
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
The claimant appealed against findings by the Hearing Officer as to the validity of the defendant’s registered trade mark. Judges: Briggs J Citations: [2011] EWHC 2021 (Ch) Links: Bailii Statutes: Trade Marks Act 1994 5(2)(b) 5(3) 5(4)(a) Jurisdiction: England and Wales Intellectual Property Updated: 01 October 2022; Ref: scu.442449
Judges: Arnold J Citations: [2010] EWHC 443 (Ch), [2010] RPC 21, [2010] ETMR 37 Links: Bailii Statutes: Trade Marks Act 1994 13 Jurisdiction: England and Wales Intellectual Property Updated: 01 October 2022; Ref: scu.403333
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
Appeal against registration of mark. Citations: [2008] EWHC 3371 (Ch), [2008] Bus LR 1621 Links: Bailii Statutes: Trade Marks Act 1994 5(2)(b) Jurisdiction: England and Wales Intellectual Property Updated: 21 July 2022; Ref: scu.267664
IPO Opposition. Judges: Professor Ruth Annand Citations: 2161562B, [2006] UKIntelP o31706 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Intellectual Property Updated: 19 July 2022; Ref: scu.273621
The Trade Marks Act 1994 must, so far as possible, be interpreted in accordance with the Directive, and the relevant provisions of the Directive conform to those of the Regulation. Kitchin J summarised the principles to be applied when testing for confusion of marks: ‘i) The likelihood of confusion must be appreciated globally, taking account … Continue reading Julius Samann Ltd and others v Tetrosyl Ltd: ChD 17 Mar 2006
The defendants appealed convictions for contempt of court, on the basis of having wilfully interrupted the court. The respondent said that no appeal lay. Held: The statute was ambiguous, and ‘there can be no good reason why a person convicted under s.12 should not have a right of appeal against conviction as well as against … Continue reading Haw and Another v City of Westminster Magistrates’ Court: Admn 12 Dec 2007
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled. Held: The claimant’s expert survey evidence was defective in several ways, but even so there was no evidence of confusion under the … Continue reading L’Oreal Sa and others v Bellure NV and others: ChD 4 Oct 2006
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
Trade Marks Judges: The Honourable Mr Justice Patten Citations: [2004] EWHC 2531 (Ch) Links: Bailii Statutes: Trade Marks Act 1994 46(1) Jurisdiction: England and Wales Intellectual Property Updated: 27 June 2022; Ref: scu.219480
The court examined the development of the law in relation to comparative advertising. Jacob J said: ‘Prior to the coming into force of the Trade Marks Act 1994 comparative advertising using a registered trade mark of a competitor was, subject to minor exceptions involving the use of a company name, forbidden by section 4(1) of … Continue reading Vodafone Group Plc v Orange Personal Communications Services Ltd: ChD 1997
The trade mark owner sought orders against a street vendor who sold articles using their marks. He asserted that the marks were not attached to show any quality, but were used by the fans as badges of allegiance. Held: The function of a trade mark was to guarantee the identity or origin of the goods, … Continue reading Arsenal Football Club plc v Reed: ECJ 12 Nov 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
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
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
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
PO Revocation Judges: Mr D Landau Citations: NO 82663, O-237-08 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 18 May 2022; Ref: scu.273218
IPO Appointed Person. Judges: Mr S Thorley QC Citations: 2183690, 2200534 Links: IPO 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. . . Lists of cited by and citing cases may be incomplete. … Continue reading Mark: EVERY IDEA SAFELY DELIVERED: TMR 29 Nov 2000
cw Inter Partes Decisions – Trade Marks – Opposition Judges: Mr M Reynolds Citations: OPP 50827, 2179158 Links: PO, IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 05 May 2022; Ref: scu.275024
In a contract for the purchase of airplanes, the plaintiff claimed misrepresentation, and as a result, rescission and damages. The issue was whether, once the right to rescind had been lost, any claim for damages had also lapsed under section 2(2). Held: The power to award damages was properly an alternative to rescission, which a … Continue reading Zanzibar v British Aerospace (Lancaster House) Ltd: QBD 31 Mar 2000
IPO Opposition – application made in bad faith Judges: Mr M Knight Citations: 2146098 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.275342
IPO Opposition. Judges: Mr G Salthouse Citations: 2102999 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.275260
IPO Opposition. Judges: Mr M Reynolds Citations: 2262413 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.274425
IPO Invalidity. Judges: Mr D Landau Citations: 2019522 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.274428
IPO Revocation Judges: Mrs A Corbett Citations: 2152209 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.273482
IPO Application for a Declaration of Invalidity Judges: Mr M Foley Citations: 2191404 Links: IPO Statutes: Trade Marks Act 1994 3(6) Intellectual Property Updated: 01 May 2022; Ref: scu.274722
The applicant sought registration of the mark ‘Linkin Park’ under the classifications including posters. The name had been used by a music band, and objection was made, saying it would jeopardise the guarantee of origin associated with the name. Held: ‘The purchasers, and potential purchasers, of posters etc. purchase particular posters because they represent something … Continue reading Linkin Park: TMR 3 Aug 2004
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
The question was raised on whether, given its derivation from article 5 of the trade mark directive, non-trade mark use could be caught by sections 10(1) to (3). Held: There was no trade mark infringement by the use of a common laudatory word. The trade mark registration was cancelled. Courts should look to whether they … Continue reading British Sugar Plc v James Roberston and Sons: ChD 17 Feb 1996
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
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
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
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
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
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
The affixing of a UK Trade Mark to packaging materials in the UK on the basis that the materials were to be exported before being affixed, to goods which outside the UK would not be infringing was not unlawful. Times 08-Jul-1999 Trade Marks Act 1994 10 (4) (a) England and Wales Intellectual Property Updated: 31 … Continue reading Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and An: ChD 8 Jul 1999
The claimant alleged infringement by the defendants of its ‘Gola’ trade mark designs. The defendant said the registration was invalid because the stripes on the shoes were not distincive being seen as part of the design of the shoe rather than as an indication of origin. Held: The evidence established that the design was seen … Continue reading D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas: Chd 25 Jan 2008
The claimant alleged infrngement of its trade mark. The defendant replied that the mark had not been reproduced exactly. And was invalid. Held: The claim succeeded. The difference was not sufficient to amount to a defence where the alteration did not change the essential and distinctive characteri of the mark. proprietor of a registered trade … Continue reading Thomas Pink Limited v Victoria’s Secret UK Ltd: ChD 31 Jul 2014
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
Appeal by Shorinji Kempo Unity from a decision of the Hearing Officer. SKU opposed the application of the British Shorinji Kempo Foundation to register the trade mark. Warren J [2014] EWHC 285 (Ch) Bailii Trade Marks Act 1994 Intellectual Property Updated: 29 November 2021; Ref: scu.521393
A company which was using a competitor’s trade mark in the context of an advert, which made misleading and derogatory comparisons, failed the ‘honest practice’ test, and was abusing the rights to use the other company’s mark under the Act. In this case however each party was guilty of such failures. Times 08-Feb-1999, Gazette 17-Feb-1999, … Continue reading Emaco Limited, Aktiebolaget Electrolux v Dyson Appliances Ltd: PatC 26 Jan 1999
[2005] EWCA Crim 3692 Bailii Trade Marks Act 1994 92 England and Wales Crime Updated: 15 November 2021; Ref: scu.249345
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
The plaintiff church sued the defendant, a Member of Parliament, for remarks made by the defendant in a television programme. He pleaded fair comment and the plaintiff replied with a plea of malice, relying on statements made in Parliament. The question arose at trial whether such reliance infringed Article 9. Held: It did. The plaintiff … Continue reading Church of Scientology of California v Johnson-Smith: QBD 1971
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
(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
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
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
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
The plaintiffs alleged the involvement of the defendant in a conspiracy to defraud. He had been domiciled in England, but had moved to Germany. He denied that the UK court had jurisdiction. The court of appeal said that jurisdiction was determined at the issue of the writ. The defendant appealed. Held: Where one defendant was … Continue reading Canada Trust Co and Others v Stolzenberg and Others (No 2): HL 12 Oct 2000
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
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
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
