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…
Early in the morning of the 24 June 2016 it was announced that, by a slim majority of 51.9% to 48.1% of the participating voters, the decision had been taken for the UK to leave the EU. While not legally binding on the UK government, this decision is politically binding and at this time clearly…
A decision from the Intellectual Property and Enterprise Court (“IPEC”) in Skyscape Cloud Services Limited v Sky PLC & ors [2016] EWHC 1340 (IPEC) has confirmed the continued dominance by Sky against entities incorporating their core mark, ‘SKY’. The case provides useful guidance on drafting declarations of non-infringement and has some interesting discussion on defining…
The UK Intellectual Property Office recently published a paper setting out an updated strategy on IP enforcement issues up to 2020 (see https://www.gov.uk/government/publications/protecting-creativity-supporting-innovation-ip-enforcement-2020). Its scope is broad, encompassing illegal online content and counterfeiting activity in all its forms, and it also has a strong international component. There are six main areas of focus. Two of…
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…
