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
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
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
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
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
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
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
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
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
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
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
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
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 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
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
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
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
cw Inter Partes Decisions – Trade Marks – Opposition – The opponents filed evidence to say that they had first commenced to use the mark WACKERS from 1993 and goods (a game known as ‘Pogs’) were sold in the USA through such companies as Walmart during 1994 and 1995. The goods were also exhibited at … Continue reading Wackers (Trade Mark: Opposition): IPO 27 Nov 1998
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 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
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
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
Citations: [2005] EWHC 2584 (Ch) Links: Bailii Statutes: Trade Marks Act 1994 46 Jurisdiction: England and Wales Intellectual Property Updated: 25 September 2022; Ref: scu.235229
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
Judges: Lord Justice Coulson Lady Justice Nicola Davies And Lord Justice Birss Citations: [2022] EWCA Civ 594 Links: Bailii Statutes: Trade Marks Act 1994 46 Jurisdiction: England and Wales Intellectual Property Updated: 13 May 2022; Ref: scu.676997
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
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 claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark. Held: The word ‘Mail’ has not acquired a descriptive meaning, and nor is there any requirement in the law … Continue reading Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited): ChD 11 Jun 2003
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
The procedure for applying for the registration of a European Trade Mark did not involve the same issues as applied in England as to the use of the mark within the first five years, nor any statement of a bona fide intention to use the mark. Only exceptionally therefore could a European Trade Mark be … Continue reading Decon Laboratories Ltd v Fred Baker Scientific Ltd and Another: ChD 28 Feb 2001
The defendant appealed against an order made for payment of all the prosecutor’s costs in full on his conviction for only some of the trade mark offences prosecuted against him. Held: Where a defendant has been convicted on only some of several counts, it is wrong to order him to pay the whole of the … Continue reading Splain, Regina v: CACD 12 Jan 2010
Judges: Pelling QC HHJ Citations: [2008] EWHC 2796 (Ch) Links: Bailii Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 22 August 2022; Ref: scu.396460
The defendant appealed his sentence for conspiracy to supply counterfeit drugs. Held: The defendant need only serve the sentence if he failed to pay a penalty which the court had decided he could afford to pay. Appeal dismissed. Judges: Scott Baker LJ, Holland J, Loraine-Smith J Citations: [2006] EWCA Crim 2717 Links: Bailii Statutes: Medicines … Continue reading Valentine v Regina: CACD 10 Nov 2006
The claimant sought to bring his claim under a provision which required a complaint to the industrial tribunal to be made within four weeks of the dismissal unless the employment tribunal was satisfied that this was not ‘practicable’. He did not meet the limit. Held: Time limits in all statutory tribunals are jurisdictional in nature, … Continue reading Dedman v British Building and Engineering Appliances: CA 1973
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
Laws LJ: ‘Section 92(5) affords a positive and specific defence as to the use of the trade mark by the defendant. It does not provide a general defence of good faith … It seems to us that the provisions contained in section 92 have been devised to constitute a rigorous statutory code, involving offences initially … Continue reading Regina v McCrudden: CACD 2005
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
Judges: Lord Justice Latham Mr Justice Grigson Sir Edwin Jowitt Citations: [2004] EWCA Crim 2278 Links: Bailii Statutes: Trade Marks Act 1994 92(1) 104(1) Jurisdiction: England and Wales Crime Updated: 24 March 2022; Ref: scu.466414
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
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
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
(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
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 claimant alleged infringement of his registered trade marks ‘Money Saving Expert’ and associated terms. The defendant operated a service trading as ‘Money Claiming Expert’. Both services included advising those who might wish to claim refunds from banks. The claimant sought summary judgment. Held: The defence as filed proposed no real defence,merely putting the claimant … Continue reading Lewis v Client Connection Ltd: ChD 6 Jul 2011
