Unregistered rights are protected by the law of passing off in the UK. In the recent decision of the IPEC in Stone v Wenman, the court reiterated and applied some key principles in the law of passing off. The Claimant in the case, a spiritual author and holistic therapist, applied for and registered the mark…

The scope of protection of a trade mark registration is a key question faced by trade mark practitioners when advising on rebrands. The recent Oatly case [Oatly AB v Glebe Farm Foods Limited [2021] EWHC 2189 (IPEC)] raises some interesting questions in the context of a likelihood of confusion and unfair advantage. Oatly owned a…

As with other aspects of trade mark law, the UK and EU have adopted asymmetrical arrangements about exhaustion post-Brexit. The arrangements result in uneven outcomes on enforcement against parallel imports for UK and EU right-holders. It remains to be seen how the principle of exhaustion of UK rights will develop in the hands of the…

Guerlain, the luxury French perfume, cosmetics and skincare house, has emerged victorious in their three year-long attempt to obtain registration of a three-dimensional EU trade mark in respect of the shape of one of their lipsticks (the mark applied for shown below):     Application before the EUIPO and the Board of Appeal   The…

Summary Tefal applied to register “a plain red dot affixed centrally to the bottom of a cooking receptacle (such as a pan, saucepan)” (below). The goods covered were “frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, woks” in Class 21.   The UK IPO refused the application because Tefal had not shown that…

In a recent decision by the First Board of Appeal, Gleissner’s Sherlock Systems satisfied the test for abusive practice in its attempted revocation of the mark, KEYNOTE. Gleissner is infamous within IP circles for his large portfolio of domain names, companies and trade marks, with seemingly little to no goodwill as a foundation. The strategy…

The crucial date 31 December 2020 has passed and we are now a month into 2021. Even though, in the last two months, the relationship between the UK and the EU had highly dramatic moments, from an IP point of view, things went smoothly and with an incredible velocity, that we would not have predicted,…

In the High Court case of Sazerac Brands, LLC & Ors v Liverpool Gin Distillery Limited & Ors [2020] EWHC 2424 (Ch), conducted under the Shorter Trial Scheme, the Defendants’ use of its AMERICAN EAGLE sign was found to have infringed the Claimants’ registered rights in its mark, EAGLE RARE. The First Defendant’s UK trade…

When I started writing this article, the news came out that the UK and the EU had reached an agreement on the Northern Ireland border checks,  so the UK  would remove controversial clauses from the Internal Market Bill that were breaching the Withdrawal Agreement with the EU. Last night, Boris Johnson met Ursula von der…