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

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

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

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

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

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

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

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

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

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

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

A case had been referred to the court as to the interpetation of the articles in the Directive. The court replied asking whether the subsequent Ansul judgement answered the questions raised.
Held: By agreement with the parties, only one of the . .

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 . .

Acts

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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

Global Projects Management Ltd v Citigroup Inc and Others: ChD 17 Oct 2005

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

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

Arsenal Football Club plc v Reed: ECJ 12 Nov 2002

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

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

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

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

Mark: EVERY IDEA SAFELY DELIVERED: TMR 29 Nov 2000

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

Zanzibar v British Aerospace (Lancaster House) Ltd: QBD 31 Mar 2000

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

Linkin Park: TMR 3 Aug 2004

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

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

British Sugar Plc v James Roberston and Sons: ChD 17 Feb 1996

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

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

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

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

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

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