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Category Archives: Trade Marks
Consider a company selling non-pharmaceutical products to the general public (pharmaceutical products raise special issues, not discussed here).
The possible extremes of branding architecture are these:
- “one product [or product type, or service (type)], one brand”; and
- “monolithic”. (more…)
Nestlé applied to register its famous four-fingered Kit Kat bar as a three-dimensional registered trade mark. Cadbury opposed the application. On 20 June 2013, a decision by the UKIPO refused Nestlé’s trade mark application in class 30 for chocolate and various chocolate confectionery products but allowed the application in relation to cakes and pastries. Justice Arnold largely agreed with the hearing officer’s reasoning that the three-dimensional shape should not be registered because it lacked distinctiveness and had not acquired distinctiveness, and that the shape was necessary to achieve a technical result. However, he referred some interesting questions to the CJEU that could result in a significant change in the way in which we approach shape marks. (more…)
The proposal to delete the requirement of graphical representation of a trade mark registered in the European Union
The present proposal of 27 March 2013 to recast Directive 2008/95/EC, which is seeking to partially harmonise the laws of the Member States relating to trade marks, and Regulation (EC) No 207/2009 (on the Community trade mark) is driven by objectives such as modernising and improving the existing provisions of the Directive by amending outdated provisions, increasing legal certainty and clarifying trade mark rights in terms of their scope and limitations. In particular, the proposal considers amending Articles 3 of the Directive and 4 of the Regulation to remove the obligation to represent a trade mark graphically. (more…)
The Court of Justice of the European Union (herein after “CJEU”) has issued its judgment in Case C-252/12, Specsavers International Healthcare Limited and Others v Asda Stores Limited and the UKIPO has issued Tribunal Practice Notice 1/2014.
The Court of Appeal (England & Wales) (Civil Division) had stayed proceedings and referred five questions to the CJEU for a preliminary ruling as they felt that Article 9(1)(b) and (c) of Regulation No 207/2009 needed further clarification where a mark registered in black and white had been used extensively in colour. In particular, questions 4 and 5 asked: (more…)
A new OHIM website was recently released to some fanfare. According to the Alicante Newsletter: “The site has been developed in collaboration with users, who have tested its functionalities and provided valuable feedback through the development process”.
Unfortunately however it seems as though the online filing functionality was one area where the site testing may have been a little lacking. There have been some reports appearing online about technical issues (here and the 11 December entry here) and the OHIM website itself has carried a number of announcements regarding this matter. However, based on some recent experiences that we have been made aware of IPcopy wonders if the new OHIM site is currently fit for purpose? (more…)
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…)