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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…)

London Technology Week (16-20 June) – Keltie IP Clinics and IP Seminar

ltw_part-of_button_180x150London Technology Week runs from 16 June to 20 June and, as noted on the London Technology Week website celebrates the vibrancy of tech innovation in our capital city. In a week of face to face events, businesses – from enterprise to start-ups – government, academia and general enthusiasts will come together to showcase London as a global tech leader.”

As part of London Technology Week, Keltie LLP will be holding a series of intellectual property (IP) clinics between 16 and 20 June where we will be able to provide advice relating to patents, trade marks and designs. On the 16 June from 2.30pm, Keltie will also be holding an IP seminar covering subjects such as:

  • An introduction to Intellectual Property (covering all forms of IP such as patents, trade marks and designs)
  • Brand Management (what to do when you’re choosing your brand identity)
  • Patents for computer-implemented inventions
  • Tax savings with UK patents (UK’s Patent Box)
  • Licensing agreements

(more…)

Non-Traditional Trade Marks & the Entertainment & Sports Industries – Seminar 4 April

intellectualproplaw-vert-blackOn Friday 4th April Manuela Macchi (Keltie) will be joining a panel at the 29th Annual Intellectual Property Law Conference of the American Bar Association in Arlington, Virginia.

The Non-Traditional Trademarks and the Entertainment & Sports Industries CLE will be covered on Twitter (#IPLSpring) by Phillip Turner, a first-year law student at Belmont University College of Law in Nashville, Tennessee. Phillip explains further on the  ABA-IPL Law Student Action Group blog: (more…)

Branding – is monolithic best?

BMW: A monolithic brand. Shown here on the IPcopy news wagon

BMW: A monolithic brand. Shown here on the IPcopy news wagon

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…)

Have A Break, Have A KitKat waiting for clarification from CJEU on three-dimensional mark

KitKat 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

Hmm, smells like CTM 009891881

Hmm, smells like CTM 009891881

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…)

Should ASDA have gone to Specsavers? CJEU decision in C-252/12 & UKIPO Practice Notice (1/2014)

spectaclesThe 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…)

OHIM website returns an “Error 404″ message

Despite their best efforts OHIM were unable to organise a successful website launch party in the local brewery

Despite their best efforts OHIM were unable to organise a successful website launch party in the local brewery

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…)

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