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
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 mark as the word RAINYSEASON. The opponent (hereafter referred to as … Continue reading Rainyseason (Trade Mark: Opposition): IPO 10 Mar 2005
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.The Hearing Officer found points of similarity as well as points of difference in the respective sets of goods; (skincare preparations on … Continue reading Witchcraft (Trade Mark: Opposition): IPO 9 Aug 2007
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 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 same evidence and argument, but cited a different device mark. However, the Hearing Officer came to the same findings, dismissing opposition … Continue reading Pizza Pizza (Trade Mark: Opposition) O/187/01: IPO 19 Apr 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
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
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
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
The defendant alleged that the offence of which had been convicted, under the 1994 Act, infringed his rights under article 6.2 in reversing the burden of proof. Held: The principle that the duty of proof lay on the prosecution was subject to statutory exceptions. To place a legal (persuasive) burden of proof on the defendant … Continue reading Regina v S (Trade Mark Defence) (Roger Sliney v London Borough of Havering): CACD 20 Nov 2002
[2013] UKIntelP o24313 Bailii Trade Marks Act 1994 592)(b) Intellectual Property Updated: 23 November 2021; Ref: scu.517126
(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
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Judges: Lord Justice Green Citations: [2019] EWCA Crim 2253 Links: Bailii Statutes: Trade Marks Act 1994 92(1) Jurisdiction: England and Wales Criminal Sentencing, Intellectual Property Updated: 13 October 2022; Ref: scu.647041
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
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
The Court of Appeal should not tinker with sentences passed by lower courts in the absence of exceptional circumstances, or where they were wrong in principle, or were manifestly excessive. Here a sentence of 30 months for a professional and systematic breach of Trade Mark law was not to be set aside. The sentence was … Continue reading Regina v Gleeson: CACD 3 Oct 2001
Citations: [2003] EWCA Crim 3110 Links: Bailii Statutes: Trade Marks Act 1994 92(1)(c) Jurisdiction: England and Wales Crime Updated: 03 August 2022; Ref: scu.279858
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 complainant appealed dismissal of charges against the respondent of displaying for sale goods bearing marks identical to registered trade marks. The defendant asserted that he had reasonable grounds for belief that the goods were not counterfeit having cecked with market officials and a VAT inspector. The magistrates had acted on the basis that the … Continue reading West Sussex County Council, Regina (on the Application of) v Kahraman: Admn 13 Jun 2006
The defendant had been convicted of offences under the Act, and challenged a direction form the judge that the phrases ‘with a view to’ and ‘with intent to’ meant different things. Held: The judge’s direction was correct. ‘With a view to’ in this context, meant that the offender contemplated some result, without necessarily wanting or … Continue reading Regina v Zaman: CACD 1 Jul 2002
The court was asked if the section 92(5) defence applied where the defendant does not know of the existence of the registered trade mark in question. Held: The defence is not available in such a case. The court noted that section 92(5) speaks of a reasonable belief that the ‘manner’ of use of the sign … Continue reading Torbay Council v Singh: Admn 10 Jun 1999
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
Citations: [2001] FSR 63 Statutes: Trade Marks Act 1994 92 Jurisdiction: England and Wales Citing: Applied – Torbay Council v Singh Admn 10-Jun-1999 The court was asked if the section 92(5) defence applied where the defendant does not know of the existence of the registered trade mark in question. Held: The defence is not available … Continue reading Regina v Keane: CACD 2001
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
Judges: Lord Justice Munby and Mr Justice Keith Citations: [2010] EWHC 1304 (Admin) Links: Bailii Statutes: Trade Marks Act 1994 92(1)(c), Copyright, Designs and Patents Act 1988 107(1)(d)(ii) Jurisdiction: England and Wales Intellectual Property, Crime Updated: 02 February 2022; Ref: scu.420408
[2005] EWCA Crim 3692 Bailii Trade Marks Act 1994 92 England and Wales Crime Updated: 15 November 2021; Ref: scu.249345
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
The defendant had been accused of selling counterfeit trainer shoes. The prosecutor appealed against dismissal of the prosecution on the basis that the defenant had not known that they were counterfeit. Held: The onus of proof lay on the defendant to establish on objectively reasonable grounds that these were genuine goods. No reasonable bench could … Continue reading Essex Trading Standards v Singh: Admn 3 Mar 2009
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
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
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 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 claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the name. The defendants said that they came within the ‘own name’ exception. Held: The appeal … Continue reading Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others: CA 24 Feb 2010
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 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
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
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
PO Trade Marks – Appeals to the appointed person – Application No: 225408 – Opposition Judges: Mr Hobbs Qc Citations: Opp 52473, [2003] UKIntelP o14003 Links: PO, Bailii Statutes: Trade Marks Act 1994 Intellectual Property Updated: 09 June 2022; Ref: scu.192860
There was a conflict between the registered mark Gerri (for inter alia mineral water) and an alleged infringement ‘Kerry Spring’ for Irish mineral water from the Kerry Spring sold by a company called Kerry Spring Water. The referring court held ‘Gerri’ and ‘Kelly’ confusingly similar (by reason of aural confusion) and that there would be … Continue reading Gerolsteiner Brunnen v Putsch: ECJ 7 Jan 2004
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
The name ‘Parma Ham’ was controlled as to its use under Italian law, and the associated mark, the ‘corona ducale’, was to be applied to a sale of Parma Ham, including any packaging. Proper Parma Ham was imported and resold through the defendant’s stores, under the name Parma Ham, but without the mark being shown. … Continue reading Consorzio Del Prosciutto Di Parma v Asda Stores Limited and others: HL 8 Feb 2001
PO Trade Marks – Appeals to the Appointed Person Decisions – Application No: 2000169 Judges: Mr Hobbs Qc Citations: 2,000,169 Links: PO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 16 May 2022; Ref: scu.192904
Andrew Smith J: ‘No doubt in many cases the fact that a trader could ascertain whether a trade mark was registered by searching the register will make it extremely difficult to establish a belief involving ignorance of a registered mark is held on ‘on reasonable grounds’.’ Judges: Kay LJ and Andrew Smith J Citations: [2003] … Continue reading Regina v Rhodes: CACD 2002
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
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
The claimant sought damages for copyright infringement in respect of two works which parodied a song to which they owned the rights. Held: The amount copied, being as much as a quarter of the original work, meant that the claim was indefensible. When considering the grant of an injunction ‘the right approach is to start … Continue reading Ludlow Music Inc v Williams and others: ChD 2 Oct 2000
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 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
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 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
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
The parties had engaged in a bitter 95 day trial in which allegations of forgery, theft, false accounting, blackmail and arson. A company owning patents and other rights had become insolvent, and the real concern was the destination and ownership of . .
Trade mark conflict . .
