Kluwer has finally released the second edition of its “European Trademark and Design Law” commentary, edited by the eminent Charles Gielen (known to many British practitioners from his expert witness role in the WAGAMAMA case), and the co-editor of this blog, Verena von Bomhard. This work appears as a series of short article by article…
Christmas is upon us! We have no idea where 2016 has gone, but to distract you from the turkey eating season the Kluwer Trademark team thought you could do with a Christmas quiz. Some of it requires knowledge, but not all so don’t worry! And you will be relieved to hear that there is no…
The UK High Court (‘HC’) decision in Victoria Plum Ltd v Victorian Plumbing Ltd & Ors [2016] EWHC 2911 concerns the use of AdWords by co-existing competitors bidding on each others’ names. Of particular interest are the issues raised by the parties’ co-existence and involves an unsuccessful defence of “honest concurrent use” (a defence not provided…
On 18 October 2016, His Honour Judge Hacon (‘Hacon’) handed down his decision in AMS Neve Limited v Heritage Audio S.L. [2016] EWHC 2563 (IPEC). This concerned an application, under the Civil Procedure Rules Part 11, by the Spanish defendant ‘Heritage’ for a declaration that the English Courts do not have jurisdiction to try the…
In March 2016, the UKIPO refused registration of the mark A DOG IS FOR LIFE NOT JUST FOR CHRISTMAS in its entirety on the grounds that it would merely be seen as a non-distinctive inspirational and promotional strap line. The applicant (the Dogs Trust charity) argued that the mark had already been successfully registered in…
UK trade mark applications encountering no conflict with a third party rarely make mainstream news. However, last month the application to register the mark “SHOULD’VE” in the name of Specsavers B.V. at the UK Intellectual Property Office (UKIPO) roused significant interest in the media, including in The Times. The fact that this made the news…
Last month saw an interesting case before the UK High Court in relation to a counterclaim to trade mark infringement for a declaration that the EUTM in question was invalid as the registration was neither a “sign” nor “capable of being represented graphically” within the meaning of Article 4 of Council Regulation (EC) 207/2009) (the…
All conversation (about trade marks at least) in the UK relates to Brexit at the moment. A lot has been written when in all honesty there is very little to say. Verena’s post on 28th June is excellent – the only thing I would add is that whilst I am sure that no current EUTM…
Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455 On 25 May 2016, the Court of Appeal held that the series mark provision in the UK Trade Mark Act is compatible with EU law. In March the decision in the trade mark conflict between Comic Enterprises and Twentieth Century Fox was…
In BMW v Technosport ([2016] EWHC 797 (IPEC)), BMW have had a largely successful outcome in this case before the UK Intellectual Property Enterprise Court over the use of a number of their trade marks by an unauthorised repairer. The case follows BMW AG v Deenik (C-63/97) the leading CJEU case on the key issue…
