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…
Cartier International Limited and Montblanc-Simplo GmbH have recently succeeded in an application for a website-blocking order in Cartier v British Telecommunications [2016] EWHC 339 (Ch) (“Cartier 2”). The ruling is the second time the High Court has been asked by the Claimants to block websites selling trade mark infringing counterfeit goods. The first was Cartier…
The scope of protection conferred upon trade mark owners can often prove to be a controversial subject, particularly where the trade mark applied for has a decorative look and feel to it. Despite the EU trade mark system now being over 20-years-old, and case law well-established, it is an issue that shows no sign of…
Whether use of a trade mark in just one Member State is sufficient or not to support the validity of a CTM is an issue practitioners and Courts have struggled with since the CTM system began. The issue was addressed by the CJEU in their decision in ONEL back in 2012. Yet MINT, one of the first UK IPO…
