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BASF Plc v CEP (UK) Plc: ChD 26 Oct 1995

Section 10(3) does require proof that the use was such as was likely to cause confusion. Judges: Knox J Citations: Unreported, 26 October 1995 Statutes: Trade Marks Act 1994 810(4) Jurisdiction: England and Wales Cited by: Cited – Marks and Spencer Plc, Ladbrokes Plc, J Sainsbury Plc, Virgin Enterprises Ltd, British Telecommunications Plc, Telecom Securior … Continue reading BASF Plc v CEP (UK) Plc: ChD 26 Oct 1995

Regina v Rhodes: CACD 2002

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

British Airways Plc v Ryanair Limited: ChD 25 Oct 2000

The claimant alleged that disparaging adverts by the defendant infringed its trade marks and amounted to the tort of malicious falsehood. Held: There was no dispute that the mark had been used. The Act could not be used to prevent any use of another’s trade mark in comparitive advertising. In this case the advertisement, though … Continue reading British Airways Plc v Ryanair Limited: ChD 25 Oct 2000

Baywatch Production Co Inc v Home Video Channel: 1997

Proof of an infringement under Section 10(3) does require proof that the use was such as was likely to cause confusion. Citations: [1997] FSR 22 Statutes: Trade Marks Act 1994 810(1) Jurisdiction: England and Wales Cited by: Cited – Marks and Spencer Plc, Ladbrokes Plc, J Sainsbury Plc, Virgin Enterprises Ltd, British Telecommunications Plc, Telecom … Continue reading Baywatch Production Co Inc v Home Video Channel: 1997

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

Bravado Merchandising Services Ltd v Mainstream Publishing (Edinburgh) Ltd: SCS 1996

The petitioner was the proprietor of the trade mark Wet Wet Wet (the name of a popular music group). It was registered for (among other classes of goods) books. The defendant intended to publish a book about the group using ‘Wet Wet Wet’ as part of the title. Held: Distinguishing Mothercare, that that would be … Continue reading Bravado Merchandising Services Ltd v Mainstream Publishing (Edinburgh) Ltd: SCS 1996

Regina v Zaman: CACD 1 Jul 2002

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

Scandecor Development Ab v Scandecor Marketing Ltd and Another: ChD 9 Mar 1998

A company with same name as a registered trademark could trade under that name provided the use was honest and otherwise within the section. Citations: Times 09-Mar-1998, Gazette 25-Mar-1998, [1998] FSR 500 Statutes: Trade Marks Act 1994 11(2)(a) Jurisdiction: England and Wales Cited by: Appeal from – Scandecor Development Ab v Scandecor Marketing Ab and … Continue reading Scandecor Development Ab v Scandecor Marketing Ltd and Another: ChD 9 Mar 1998

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

Wakefield and Another, Regina v: CACD 11 Aug 2004

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

Mothercare UK Ltd v Penguin Books: CA 1988

The Trade Marks Act would only be concerned to restrict the use of a mark as a trade mark or in a trade mark sense, and should be construed accordingly. If descriptive words are legitimately registered [as a trade mark], there is still no reason why other people should not be free to use the … Continue reading Mothercare UK Ltd v Penguin Books: CA 1988

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

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

Ajinomoto Sweeteners Europe Sas v Asda Stores Ltd: QBD 15 Jul 2009

The claimant said that the defendant’s characterisation of its own products as ‘Good for You’ by reference to a description saying that it did not include the claimant’s product as a component, was a malicious falsehood. The defendant sold other products which did include Aspartame. The court was asked to determine the meanings. Held: The … Continue reading Ajinomoto Sweeteners Europe Sas v Asda Stores Ltd: QBD 15 Jul 2009

Sunrider Corporation (T/A Sunrider International) v Vitasoy International Holdings Ltd: ChD 22 Jan 2007

An application had been made to have the trade mark declared invalid. The owner replied saying that the five year period during which a mark might be challenged had expired. Held: The five year period commenced not from the date when the application for registration of the mark was made, but from the date when … Continue reading Sunrider Corporation (T/A Sunrider International) v Vitasoy International Holdings Ltd: ChD 22 Jan 2007

Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and An: ChD 8 Jul 1999

The affixing of a UK Trade Mark to packaging materials in the UK on the basis that the materials were to be exported before being affixed, to goods which outside the UK would not be infringing was not unlawful. Times 08-Jul-1999 Trade Marks Act 1994 10 (4) (a) England and Wales Intellectual Property Updated: 31 … Continue reading Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and An: ChD 8 Jul 1999

D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas: Chd 25 Jan 2008

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 … Continue reading D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas: Chd 25 Jan 2008

Thomas Pink Limited v Victoria’s Secret UK Ltd: ChD 31 Jul 2014

The claimant alleged infrngement of its trade mark. The defendant replied that the mark had not been reproduced exactly. And was invalid. Held: The claim succeeded. The difference was not sufficient to amount to a defence where the alteration did not change the essential and distinctive characteri of the mark. proprietor of a registered trade … Continue reading Thomas Pink Limited v Victoria’s Secret UK Ltd: ChD 31 Jul 2014

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

Emaco Limited, Aktiebolaget Electrolux v Dyson Appliances Ltd: PatC 26 Jan 1999

A company which was using a competitor’s trade mark in the context of an advert, which made misleading and derogatory comparisons, failed the ‘honest practice’ test, and was abusing the rights to use the other company’s mark under the Act. In this case however each party was guilty of such failures. Times 08-Feb-1999, Gazette 17-Feb-1999, … Continue reading Emaco Limited, Aktiebolaget Electrolux v Dyson Appliances Ltd: PatC 26 Jan 1999

Oracle America Inc v M-Tech Data Ltd: SC 27 Jun 2012

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

Regina v Johnstone: HL 22 May 2003

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

Levi Strauss and Co and Another v Tesco Stores Ltd and others: ChD 31 Jul 2002

The trade mark owners sought to restrain the defendants from selling within the EU, articles bearing their mark which had been imported other than through their own channels. The defendants resisted summary judgement after reference to the European Court of Justice, on the grounds that the Regulation was invalid as infringing a basic tenet of … Continue reading Levi Strauss and Co and Another v Tesco Stores Ltd and others: ChD 31 Jul 2002

Quinton v Peirce and Another: QBD 30 Apr 2009

One election candidate said that another had defamed him in an election leaflet. Additional claims were made in injurious falsehood and under the Data Protection Act. Held: The claim in defamation failed. There were no special privileges in defamation attaching to election materials. However the claimant had not been able to establish any malice. The … Continue reading Quinton v Peirce and Another: QBD 30 Apr 2009

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

Bhayani and Another v Taylor Bracewell Llp: IPEC 22 Dec 2016

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

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

Essex Trading Standards v Singh: Admn 3 Mar 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

Lewis v Client Connection Ltd: ChD 6 Jul 2011

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

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 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 . .