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Case Review: C-530/12 P OHIM v National Lottery Commission

file0001764062159This is the latest decision by the Court of Justice of the European Union (“CJEU”) in respect of Case T-404/10 National Lottery Commission v OHIM – Mediatek Italia and De Gregorio.

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The vexed question of “use as a trade mark”

stacked-booksToday on IPcopy we have a guest post from Carmen Champion, an IP barrister in Sydney, on the subject of “use as a trade mark”.

In a couple of recent cases in Australia, dealing with businesses as disparate as home elevators and halal butcheries, the courts have considered (or in one case, ignored!) that question central to trade make disputes: was the mark in question “used as a trade mark”? (more…)

London Tech Week 2014 – Top trade mark issues

LTW14-Logo-slideFurther to our post on patent related issues that were raised in our London Tech Week IP seminars and workshops, here is the trade marks instalment based on the common themes that surfaced in our discussions involving trade marks. (more…)

Could CALDEA cause confusion? Case Review

CJEUIn this case review, which was first published in the June issue of the ITMA review, we look at case T-26/13 (dm-drogerie markt GmbH & Co KG v OHIM, CJEU, General Court (Third Chamber), 12 February 2014) and the assessment of likelihood of confusion between the trade marks CALDEA and BALEA.

On 22 July 2010, Semtee filed a Community Trade Mark application for the word mark CALDEA for, inter alia, “soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices” (class 3), “consultancy relating to business management of leisure premises, non-medical, making use of water, in particular heated water, for relaxation, leisure, physical maintenance of and keeping fit in the field of health” (class 35) and “personalised consultancy, advice and assistance relating to the operation of a leisure centre, non-medical, relating to water, in particular heated water, for relaxation, leisure, physical maintenance and keeping fit in the field of health” (class 44).

The application was published on 20 September 2010 and dm-drogerie markt GmbH & Co KG (“dm-drogerie”) filed a notice of opposition against registration of the mark for the above-mentioned goods and services based on its earlier international trade mark No 0894004, BALEA, in classes 3, 5 and 8 (covering, inter alia, “soaps, perfumeries, essential oils, preparations for hygienic and beauty use”) designating protection in the European Union (EU). The Applicant claimed infringement under Article 8(1)(b) of Council Regulation (EC) No 207/2009.

The Opposition Division rejected the opposition and dm-drogerie filed a notice of appeal with OHIM against the decision. (more…)

Black and White Trade Marks – Change in OHIM/IPO Practice

pensFollowing on from our recent blog item detailing the changes in dealing with colour marks at the UK IPO and OHIM, we would like to now consider how these decisions will affect our filing practice in respect of new trade mark applications.

Previously, it was common practice to file for a trade mark in black and white, or grey scale, in order to obtain the broadest protection possible. It was accepted that a mark registered in black and white would allow the proprietor to use the mark in colour and maintain protection. Essentially, it allowed for one application to be filed in black and white, instead of numerous applications for various colour combinations. (more…)

ITMA London Evening Meeting ‘OHIM & IPO Case Update’

logo-itmaThe ITMA London Evening Meeting ‘OHIM & IPO Case Update’ given by Amanda Michaels and Charlotte Scott of Hogarth Chambers took place yesterday and was attended by a number of people from Keltie. Some particular subjects of note that were discussed at the meeting were the Lifestyle Supplies v Ultimate Nutrition Inc case and the Common Communication on the Common Practice of the Scope of Protection of Black & White Marks.

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Quasar Trade Mark Appeal Case highlights importance of evidence

file000267804564This article concerns an appeal by the proprietor (“Quasar”) of UK Trade Mark No. 2409353 Q-ZAR in Classes 25, 28 and 41 (“the Mark”) against the decision issued on 11 March 2013, which revoked the marks protection in all goods and services of the registration pursuant to Section 46(1)(a) of the Trade Marks Act 1994 (“the Act”), namely:

Class 25: Clothing, footwear, headgear

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; electronically activated toys; electronically activated chest pack amusement games utilising electronic weapons and target apparatus for simulating combat conditions; toy guns, laser activated toys and video game machines; protective padding

Class 41: Entertainment services; amusement centre services and recreational services (more…)

Pharmaceuticals: European Regulatory Clearance

OLYMPUS DIGITAL CAMERAToday on IPcopy we have a guest post from Rob Jacob of Stephenson Harwood LLP on the subject of pharmaceutical name approvals.

Choosing a name for a prescription pharmaceutical product is not an easy task. You need a name that sets your product aside from the competition, something catchy, something memorable and most importantly something management and marketing believe in and can use to sell to the market – by no means an easy task. However, choosing such a name is not the end of the story. In fact, it is just the beginning. Getting a pharmaceutical name approved by both legal and the regulators is where the task really begins. The rules and regulations surrounding the clearance of pharmaceutical names are complex and fraught with hurdles that must be overcome.

Legal clearance is about ensuring that your proposed brand does not infringe a third party’s trade mark. Regulatory clearance is completely different and is the focus of this entry. Whilst this brief entry can’t do the topic justice, it will hopefully act as an introduction to the issues involved. (more…)

Chinese Trade Mark Reforms

Great WallThe new Chinese Trade Mark Reforms will come into effect on 1 May 2014. The key points of the amendments are as follows:

  • Applications are required to be made in good faith;
  • Multi-class applications are available;
  • Protection is available for sound marks;
  • Additional protection for prior right holders and a clarification of well-known marks;
  • Statutory time limits have been added;
  • No automatic right of appeal should an Opponent be unsuccessful in an opposition;
  • Introduction of an invalidation procedure;
  • Increasing compensation in infringements and fines for improper use of unregistered trade marks; and
  • Providing for relevant measures for repeat infringers.

I will deal with some of the key points below. (more…)

Coat of Arms and Trade Marks – Dual Protection or Mutual Antagonism? seminar

coat of armsThis blog is inspired by the ‘Coat of Arms and Trade Marks – Dual Protection or Mutual Antagonism?’ Seminar attended on 19 March 2014. The Speakers at the Seminar were Clive Cheesman, Richmond Herald of The College of Arms, Mark Engelman, Head of Intellectual Property at Hardwicke, Simon Johnson, Barrister at Enterprise Chambers, and Dr Richard Anthony, Bursar and Fellow of St Edmund’s College, University of Cambridge.

By way of background, the perpetual right to bear arms in England, Wales, Northern Ireland and the majority of monarchies within the Commonwealth, is granted to appropriate bodies by the College of Arms (also known as Heralds’ College or Heralds’ Office). This is a royal corporation consisting of professional officers of arms, overseen by the Earl Marshal, a hereditary office held by the Duke of Norfolk. The College of Arms was first incorporated in 1484 by King Richard III and given regulatory authority since 1522. Scotland operates a different system to the rest of the UK and this is overseen by Lord Lyon. (more…)

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