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 to be distinctive of Gola shoes, and the mark was not invalid. Furthermore the claimants established infringement.
Etherton J
[2008] EWHC 88 (Ch)
Bailii
Trade Marks Act 1994
England and Wales
Citing:
Cited – Sieckmann v Deutsches Patent- und Markenamt ECJ 12-Dec-2002
(Judgment)A graphic representation within article 2 had to enable the sign to be represented visually, and the representation clear and precise, self-contained, easily accessible, intelligible, durable and objective to be registered as a trade . .
Cited – Henkel Kgaa v OHMI (Intellectual Property) French Text ECFI 23-May-2007
According to consistent case-law, for a trade mark to possess distinctive character within the meaning of the article, it must serve to identify the product in respect of which registration is applied for as originating from a particular . .
Cited – O2 Holdings Ltd. and Another v Hutchison 3G Ltd (No 2) ChD 23-Mar-2006
. .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
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 . .
Cited – Julius Samann Ltd and others v Tetrosyl Ltd ChD 17-Mar-2006
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 . .
Cited – Reckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .
Cited – Lego System Aktieselskab v Lego M Lemelstrich Ltd ChD 1983
An association was claimed between irrigation equipment supplied by the defendant and plastic toy bricks made by the plaintiff.
Held: When looking for the likelihood of confusion in a passing off action between parties whose activities lie in . .
Cited – Arsenal Football Club Plc v Reed CA 21-May-2003
The claimant had obtained a judgment in the European Court on reference from the Chancery Division as to its claim against the defendant. On attempting to have that judgement enforced, the Chancery court found that the European Court had made a . .
Cited – Dawnay, Day and Co Limited; Dawnay, Day International Limited etc v Cantor Fitzgerald International etc CA 24-Jun-1999
Where a party had leant its name to a joint venture on an implied licence that the name could be used whilst it remained a party to the joint venture, that licence expired when the company ceased to be a party to the joint venture. The court would . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 23 December 2021; Ref: scu.263876