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 Board provided no support for the notion that a registrant has priority as to a specific service it was second to offer just because it was first to offer a different service that is a species of a genus that covers both specific services. The Trademark Trial and Appeal Board’s priority determination, which formed…
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…
The Brexit transition period has come and gone, and we are now almost 8 months into our post-EU life. One thing we can all agree on is that the way we work and the processes we use have been hit fairly hard. It will come as no surprise that the governmental bodies dealing with the…
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…
Background In 2016, Jaguar Land Rover (“JLR”) applied to register four UK trade mark applications for the shape marks of the Land Rover Defender 90 and Land Rover Defender 110 vehicles, in Classes 9, 12, 14, 28 and 37: All four applications were successfully opposed by Ineos Industries Holdings Limited (“Ineos”) in respect of most…
