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
The claimant asseerted infringement of its trade mark, and the defendant replied challenging the validity of the registration. Judges: Sales J Citations: [2014] EWHC 1963 (Ch) Links: Bailii Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 24 August 2022; Ref: scu.526598
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 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 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
The claimant had alread challenged the validity of the defendant’s registered trade mark, but sought to do so now on grounds which could have been advanced in the earlier case. The claimant owned the trade mark ‘SPAM’ for canned meats, and the defendant had the mark ‘SPAMBUSTER’ for computer programs. Held: The claim was estopped. … Continue reading Hormel Foods Corporation v Antilles Landscape Investments NV: ChD 24 Jan 2005
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
It was a misuse of Trade Mark legislation to seek permanently to prevent the use of a substantial engineering design idea which was underlying the mark for which protection was sought. The judge revocation of the registration of the claimant’s mark on the ground, inter alia, that it was incapable of distinguishing the goods concerned … Continue reading Philips Electronics Nv v Remington Consumer Products Ltd: ChD 2 Feb 1998
Judges: Norris J Citations: [2011] EWHC 1036 (Ch) Links: Bailii Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 25 July 2022; Ref: scu.434888
There can be no copyright in a name as such; ‘Elvis’ insufficiently distinctive for a Trade Mark. Citations: Times 25-Mar-1997 Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 24 July 2022; Ref: scu.81696
Appeal against registration of mark. Citations: [2008] EWHC 3371 (Ch), [2008] Bus LR 1621 Links: Bailii Statutes: Trade Marks Act 1994 5(2)(b) Jurisdiction: England and Wales Intellectual Property Updated: 21 July 2022; Ref: scu.267664
IPO Opposition. Judges: Professor Ruth Annand Citations: 2161562B, [2006] UKIntelP o31706 Links: IPO, Bailii Statutes: Trade Marks Act 1994 Intellectual Property Updated: 19 July 2022; Ref: scu.273621
The claimant opposed registration of trade marks by the defendant. Judges: Arnold J Citations: [2013] EWHC 589 (Ch) Links: Bailii Statutes: Trade Marks Act 1994, Council Directive 2008/95/EC Jurisdiction: England and Wales Intellectual Property Updated: 18 July 2022; Ref: scu.471879
The defenders registered internet domain names. The claimants alleged an intended infringement of their trade marks, saying the defenders had a history of opening sites intended to deceive. The defenders who were resident in Greece said that the 1982 Act could not be used for a threatened delict, but only for a completed one. Held: … Continue reading Bonnier Media Limited v Smith and Kestrel Trading Corporation: SCS 1 Jul 2002
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 confusion of marks: ‘i) The likelihood of confusion must be appreciated globally, taking account … Continue reading Julius Samann Ltd and others v Tetrosyl Ltd: ChD 17 Mar 2006
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted registration of esure’s trade mark. Esure now appealed a ruling against it’s … Continue reading Esure Insurance Ltd v Direct Line Insurance Plc: ChD 29 Jun 2007
Both parties used the name ‘Elle’ in their respective products, a women’s magazine, and handknitting yarns. They disputed the registration of a trade mark for the latter in the UK. Held: The court endorsed the continuing applicabiity of the guidelines in Reef when a court was asked to upset a decision of a lower but … Continue reading Hachette Filipacchi Presse Sa v S Aprotex International (Proprietary) Ltd: ChD 24 Jan 2007
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
ECJ Opinion – Trade marks of such a nature as to deceive the public or liable to mislead the public as to the nature, quality or geographical origin of a product – Trade mark assigned by the proprietor together with the undertaking producing the goods to which the mark relates – Directive 89/104/EEC. Judges: Ruiz-Jabaro … Continue reading Elizabeth Florence Emanuel v Continental Shelf 128 Ltd (Approximation of Laws): ECJ 30 Mar 2006
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 sought summary judgment against the defendant for operating websites using domain names which included the claimant’s name and trade marks. Tesco had entered into agreements with a third party company who organised adverts for Tesco on other sites. Tesco approved the main sites which did not use the Tesco name, but the defendant … Continue reading Tesco Stores Ltd v Elogicom Ltd and Another: ChD 8 Mar 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 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
The owner of a registered trade mark ‘Premier’ sued for swing tags which carried the defendant’s full name ‘The Premier Company (UK) Ltd.’. Held: A trade mark use can fall within the scope of the Art 6.1 defence. There there was no passing off or Art.5.1(a) infringement in respect of these: ‘If the use by … Continue reading Premier Luggage and Bags Ltd v The Premier Company (UK) Ltd and Another: CA 26 Mar 2002
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
The court examined the development of the law in relation to comparative advertising. Jacob J said: ‘Prior to the coming into force of the Trade Marks Act 1994 comparative advertising using a registered trade mark of a competitor was, subject to minor exceptions involving the use of a company name, forbidden by section 4(1) of … Continue reading Vodafone Group Plc v Orange Personal Communications Services Ltd: ChD 1997
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
Aldous LJ said: ‘Pumfrey J in the Decon case suggested that the court’s task was to arrive at a fair specification of goods having regard to the use made. I agree, but the court still has the difficult task of deciding what is fair. In my view that task should be carried out so as … Continue reading Thomson Holidays Limited v Norwegian Cruise Line Limited: CA 17 Dec 2002
cw Inter Partes Decisions – Trade Marks – Opposition Judges: Mr M Reynolds Citations: 2009499, OPP 43532, [1998] UKIntelP o12498 Links: PO, IPO, Bailii Statutes: Trade Marks Act 1994 5(2)(b) Cited by: See Also – EE Elizabeth Emanuel (Trade Mark: Revocation) IPO 17-Oct-2002 IPO In the parallel opposition proceedings (BL O/024/02) which has been reviewed … Continue reading ‘Elizabeth Emanuel’: Application No 2009499: TMR 9 Jun 1998
cw Inter Partes Decisions – Trade Marks – Opposition Judges: Mr Foley Citations: OPP 49618, 2167177, [2001] UKIntelP o27601 Links: PO, IPO, Bailii Statutes: Trade Marks Act 1994 Intellectual Property Updated: 06 June 2022; Ref: scu.176534
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 court set out the applicable legal principles in trade mark infringement. The court considered the elements necessary to establish a defence under s10(6): The primary objective of section 10(6) of the 1996 Act is to permit comparative advertising . . As long as the use of a competitor’s mark is honest, there is nothing … Continue reading Cable and Wireless plc v British Telecommunications plc: ChD 1998
Where words in a product name were so generally descriptive as to be unable to distinguish the product from others, they could nevertheless be registerable as a Trade Mark with goodwill, after acquiring a secondary connotation. Citations: Times 08-Apr-1998, Gazette 07-May-1998, [1998] EWHC Patents 330 Links: Bailii Statutes: Trade Marks Act 1994 Intellectual Property Updated: … Continue reading Antec International Limited v South Western Chicks (Warren) Limited: PatC 27 Mar 1998
The registration of two trade marks (‘Budweiser’) with the identical names was against the Act since it would appear to encourage the very confusion the Act sought to avoid. Nevertheless, where there was genuine honest concurrent use, that use might justify registration. Clause 12 of the Act clearly envisaged honest concurrent use. Here the name … Continue reading Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch: CA 7 Feb 2000
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
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
The claimants owned a major brand mark used in the distribution of tea. The defendants operated in the sale of kitchen equipment. Whether a sign infringed a mark without due cause was to be resolved at trial by the judge on the facts. The infringer had to show that he had good cause for his … Continue reading Premier Brands Uk Ltd v Typhoon Europe Ltd: ChD 3 Feb 2000
The word ‘Premier’ although devoid of distinctive character in itself, but having been registered as a trade mark, had acquired a sufficient distinctiveness to justify and found an action for infringement and passing off. The test was whether through use of the trademark, a sufficient number both of potential purchasers of the claimants goods, and … Continue reading Premier Luggage and Bags Ltd v Premier Company (Uk) Ltd and Another: ChD 17 Oct 2000
It was no defence to an action for trade mark infringement to assert that although the registration covered activities of the type undertaken, the claimant did not actually provide services of that precise type. It is in the nature of such registrations that they reserve to the mark holder the right to develop his activities … Continue reading Discovery Communications Inc v Discovery Fm Ltd: IHCS 25 Jan 2000
Registered trade mark name was properly included in the title of a book about the name holder. Citations: Times 20-Nov-1995 Statutes: Trade Marks Act 1994 11-2-b Intellectual Property Updated: 18 May 2022; Ref: scu.78564
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
Judges: Arnold J Citations: [2018] EWHC 3226 (Ch) Links: Bailii Statutes: Trade Marks Rules 2008, Trade Marks Act 1994 74(b) Jurisdiction: England and Wales Intellectual Property Updated: 18 May 2022; Ref: scu.631375
PO Revocation Judges: Mr D Landau Citations: NO 82663, O-237-08 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 18 May 2022; Ref: scu.273218
The defendant had sold memorabilia using the claimant’s name, and marks for thirty years. He sought to make it clear that the products were not sourced from the club. They were purchased, generally, by people who wore them as badges of allegiance to the club. The claim of passing off failed because the club had … Continue reading Arsenal Football Club Plc v Reed: ChD 6 Apr 2001
Old Trade Mark infringement cases are to be viewed only with great care; on balance of convenience, the use of trade marked place name is to be allowed. Citations: Times 09-Dec-1997 Statutes: Trade Marks Act 1994 11(2)(b) Jurisdiction: Scotland Intellectual Property, Scotland Updated: 17 May 2022; Ref: scu.77754
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
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
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
It is possible to grant two identical trade marks in respect of beer where either there was no confusion, or an honest concurrent use could justify such double registrations. Citations: Times 20-May-1998 Statutes: Trade Marks Act 1994 11 12(2) Cited by: Appeal from – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik … Continue reading Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc: ChD 20 May 1998
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
cw Inter Partes Decisions – Trade Marks – Opposition Judges: Mr M Knight Citations: OPP 48009 / 48010 / 48011 Links: PO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 12 May 2022; Ref: scu.175836
The name ‘Elvis Presley’ was not of itself sufficiently distinctive to justify registration as a trade mark, being neither adapted to distinguish any particular goods nor capable of distinguishing them. Citations: Gazette 19-May-1999 Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 11 May 2022; Ref: scu.85762
The name ‘Elvis Presley’ was not of itself sufficiently distinctive to justify registration as a trade mark, being neither adapted to distinguish any particular goods nor capable of distinguishing them. Citations: Times 22-Mar-1999 Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 10 May 2022; Ref: scu.81866
Old contract clearly licensing use of Trade Mark name created a continuing right to use the name and was not now to be restrained by Trade Marks legislation. Citations: Times 01-Jun-1998 Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 10 May 2022; Ref: scu.81263
IPO Ex Parte. Judges: Mr A James Citations: 1577271, 1577275 Links: IPO Statutes: Trade Marks Act 1994 Cited by: See Also – Mark: (SHAPE) CUSHION (No 2) TMR 18-Aug-1998 IPO Ex Parte. . . Lists of cited by and citing cases may be incomplete. Intellectual Property Updated: 10 May 2022; Ref: scu.276061
One of two project developers registered a Trade Mark constituting the name of the proposed development in his own name. The assets were, as always intended, later transferred into the limited company, and the two developers were directors. It was held that company name could not be divorced entirely from its trading name, and the … Continue reading Jonathan Ball, McDermot Will and Emery(A Firm) v The Eden Project Ltd, The Eden Trust: PatC 11 Apr 2001
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
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
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
cw Inter Partes Decisions – Trade Marks – Opposition Judges: Mr M Reynolds Citations: OPP 50827, 2179158 Links: PO, IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 05 May 2022; Ref: scu.275024
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
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
IPO Opposition. Judges: Mr M Tuck Citations: 2007601 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.276139
IPO Opposition. Judges: Mr M Reynolds Citations: 1580234 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.276099
IPO Opposition. Judges: Mr G Salthouse Citations: 2102999 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.275260
IPO Opposition. Judges: Mr M Reynolds Citations: 2262413 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.274425
IPO Invalidity. Judges: Mr D Landau Citations: 2019522 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.274428
IPO Revocation Judges: Mrs A Corbett Citations: 2152209 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.273482
IPO Opposition. Judges: Dr W J Trott Citations: 2018230 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.275259
IPO Opposition. Judges: Mr M Foley Citations: 2200309 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 01 May 2022; Ref: scu.274826
IPO Application for a Declaration of Invalidity Judges: Mr M Foley Citations: 2191404 Links: IPO Statutes: Trade Marks Act 1994 3(6) Intellectual Property Updated: 01 May 2022; Ref: scu.274722
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
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
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
cw Ex Parte Decisions – Trade Marks Judges: Mr Layton Links: PO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 28 April 2022; Ref: scu.176784
application to quash a forfeiture order made pursuant to s.97 of the Trade Marks Act 1994 Citations: [2018] EWHC 1255 (Admin) Links: Bailii Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 24 April 2022; Ref: scu.618413
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
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
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: The Honourable Mrs Justice Joanna Smith DBE Citations: [2022] EWHC 95 (Ch) Links: Bailii Statutes: Trade Marks Act 1994 76 Jurisdiction: England and Wales Intellectual Property Updated: 24 March 2022; Ref: scu.671314
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
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
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
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
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
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
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
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
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
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
Appeal by Shorinji Kempo Unity from a decision of the Hearing Officer. SKU opposed the application of the British Shorinji Kempo Foundation to register the trade mark. Warren J [2014] EWHC 285 (Ch) Bailii Trade Marks Act 1994 Intellectual Property Updated: 29 November 2021; Ref: scu.521393
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
[2005] EWCA Crim 3692 Bailii Trade Marks Act 1994 92 England and Wales Crime Updated: 15 November 2021; Ref: scu.249345
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 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
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
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
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
