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IPcopy is pleased to welcome guest contributor Stacey C. Friends, Partner at Boston firm Ruberto Israel Weiner, who provides useful tips on trade mark protection for restaurant names and hospitality businesses in general, based on her extensive experience in advising individual restaurants as well as small, medium and large restaurant chains in the USA. The article is reproduced with the kind permission of the author. Keltie’s Manuela Macchi has added comments drawing a parallel with the UK and EU.
Retail, food and hospitality businesses often have more problematic trademark issues than other types of businesses due to their territorial nature. While software, consumer goods and many other businesses immediately function in interstate or international commerce, many restaurants, hotels, or retail stores start out doing business in one geographic location. Sometimes the business plan includes a strategy to expand or franchise, or perhaps the location of the business (e.g. a hotel in downtown Boston) naturally lends itself to national and international travelers and publicity.
In the post below IPcopy takes a quick look at some recent decisions in the world of chocolate and other types of confectionary on the topic of colour and 3D trade marks. The overview highlights some trends in EU jurisprudence on the distinctiveness requirement for the registrability and enforceability of such marks. Get ready to read about chocolate bunnies, jelly bears and many more.
As a lover of all things food-related, I was surprised this week to hear of a tasty baked good that hadn’t yet made it onto my radar – and a tasty baked good that has come to the world’s attention as the subject of an IP dispute, no less! What more could a girl ask for? Readers will probably already be aware of the ‘Duffin’ – the donut-muffin hybrid that has been made and gradually popularised by Bea’s of Bloomsbury since 2011, and that is now the subject of a trade mark registration by a company that supplies Starbucks (boo hiss taxes etc, etc).
Now, I’m no trade mark attorney – patents are more my bag – so if a contentious issue like this stumbled across my path, I’d be hailing down one of my esteemed trade mark colleagues to untangle it. But as it happens, I’ve spent most of this week committing as much trade mark law as possible to memory in preparation for professional exams, and this real-life example has served as excellent revision fodder.
A few basics of trademark law shed a lot of light onto this situation, and the real legal situation is rather different from the picture that might appear at first sight. Could big-bad Starbucks really stop Bea’s bakery, and others, from using the name Duffin? Well, purely as a self-training exercise, here’s my personal take on the situation.
Apple’s annual iPhone announcement is today and the liberal deployment of the Reality Distortion Field is expected to be trained on Fanbois the world over. However, in other Apple news comes notice from the UK Intellectual Property Office that an Apple trade mark case is being referred to the Court of Justice of the European Union (Case C-421/13 though there are no available documents at present).
The case concerns Apple’s trade mark application in respect of the layout of its stores. Yes, you read that correctly, Apple’s store layout trade mark!
On Friday 26th July 2013 Mr Justice Vos, sitting in the PCC, delivered a detailed judgment which is a stark reminder to traders not to “turn a blind eye” to competitors. In a complex case, in which the papers filled 17 lever arch files, the judge complimented counsel for managing to remain within the 2 day allocated time frame for this PCC matter. Although there was plenty of legal argument, the case ultimately turned on facts. Who was doing what, when, who knew what, when, and what they ought to have done about it. (more…)
In the case of Hultafors Group AB (Hultafors) V OHIM (Case T-537/11, April 19 2013), the decision of the Fourth Board of Appeal was upheld by the General Court confirming that there was a likelihood of confusion between a figurative Community trademark application incorporating the word ‘SNICKERS’ and an earlier Italian registration for the word mark ‘KICKERS’ in Class 25. Both marks covered goods including ‘clothing, footwear and headgear’. (more…)
Back at the beginning of May we looked at a consultation that was running at the UKIPO which sought the views of users and potential users of the UK national trade mark registration system about the introduction of a lower cost “fast track” opposition based on earlier registered or pending marks (see original post here). The consultation closed on 17 May 2013 and the Government’s response was released recently. In this post we take a quick look at the consultation again and the Government’s response.
BSkyB, the British Satellite Broadcasting company has won a case against the American multinational software corporation (Microsoft) in actions for passing off and for infringement of two CTM Registrations and two UK trade mark registrations for SKY. By way of these actions, BSkyB sought to prevent Microsoft from using “SkyDrive” as the name for their cloud storage service in Europe.
In a counterclaim, Microsoft filed for a declaration of partial invalidity in respect of the SKY trade marks on the grounds of descriptiveness for cloud storage services. (more…)
On 26 June 2013 Field Fisher Waterhouse held an excellent afternoon seminar on “Developments in UK and EU patent law”. David Knight’s session on 3D printing (“3D Printing – A licence to infringe IP rights?”) was particularly interesting as it looked at the implications for intellectual property rights owners arising from the developing field of 3D printing.
In this post we provide a (hopefully accurate!) recap of David’s talk and a look at the world of 3D printing. (more…)
The famous brand of shoes with heels and oversized red soles, which since 1992 has been so successful for their creator Louboutin, has long been immersed in a somewhat uncertain legal environment. Now a Dutch Court Adds New Dimension to Red Sole Saga by finding infringement, by Van Haren, of Louboutin’s red sole trade mark. (more…)