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 . .
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 . .
IPO Trade Mark: Revocation – no use made of the mark by owner. . .
Trade Mark: Rectification . .
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 . .
Trade Mark: Invalidity – allegation that Mark registered here by person faseley purporting to be the agent of the mark holder in the US. . .
Opposition – existing similar mark . .
Interlocutory Hearing in relation to a request by the Applicant for Security of Costs . .
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.
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 . .
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 . .
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 . .
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. . .
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 . .
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 . .
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 . .
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 . .
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 . .
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 . .
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 . .
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 . .
PO Trade Marks – Inter Partes Decisions – Opposition – 2211189 . .
IPO Trade Marks – Ex Parte Decisions . .
Objection that mark is customary within the trade. . .
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, . .
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 . .
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 . .
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 . .
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 . .
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 . .
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 . .
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 . .
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 . .
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 . .
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 . .
IPO Appeals to the Appointed Person Decisions – Trade Marks . .
cw Ex Parte Decisions – Trade Marks
IPO Ex Parte. . .
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 . .
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 . .
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 . .
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 . .
The claimant said that the defendant had infriged its rights by the use of its logo on their publications. . .
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 . .
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 . .
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 . .
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
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
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 . .
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
