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Case Review – O/797/18, Mont (Opposition), UK IPO, 12th December 2018

Mont Adventure Equipment Pty Ltd filed a UK designation of international registration No 1385791 for a mark on 27th November 2017 (see the opposed mark below), with a priority date of 10th November 2017. This designation was opposed by AA Textiles Ltd in respect of class 25, including “technical clothing, footwear and headgear for adventure sport and extreme adventure sport pursuits” under s5(2)(b) of the Trade Marks Act 1994. The Opponent relied on UK trade mark registration No 3191303, filed on 14th October 2016, for Mont Noir in class 25 for inter alia “clothing, headwear, footwear”. The case report can be found here.

The goods involved were acknowledged as identical. For Mont Noir, the average consumer was deemed to be the general public with a reasonable level of attention. However, in light of the specialist technical clothing covered by the Applicant’s specification, the average consumer for the opposed mark was deemed to have a higher than average level of care and attention.

While both marks were held to be averagely distinctive for clothing, for English-speaking consumers aware that the French terms involved mean “mountain” and “black mountain”, the evocative association weakened the distinctiveness of both marks when considered in relation to adventure sports clothing. (more…)

When Harry met Selfridges

cocktailA name is not reason for confusion

In a decision of the UKIPO (O/219/18, HARRY GORDON’S BAR and HARRY GORDONS (Opposition), 5th April 2018), the IPO found in favour of retailer Selfridges, allowing the registration of its trade mark applications for HARRY GORDON’S BAR and HARRY GORDONS.

In May 2013, Selfridges applied for the above trade marks covering classes 29, 30, 32, 33 and 43 for goods including alcohol and services for providing drinks.

In August 2013, Harry’s New York Bar filed a notice of opposition against all of the goods and services in both applications. The Opponent argued that the use of the name HARRY in Selfridges’ trade marks resulted in similarities with its earlier marks HARRY’S, HARRY’S BAR and HARRY’S NEW YORK BAR, which it claims were first used in Paris in 1911.

The Opponent submitted that its bars can be found in luxury hotels that would be visited by the same sort of people who frequent Selfridges’ store on London’s Oxford Street. Therefore, use of the mark in such a prestigious establishment would “ride on the coat tails” of its existing reputation.

Selfridges rejected these claims, stating that its bar was named after the retailer’s founder, Harry Gordon Selfridge, and inspired by the popular TV series, Mr Selfridge, about his life. (more…)

Defensive Domain Name Registrations

domainA domain name is the address used to find a website on the internet; for example, www.keltie.com. If you have an online presence, registering your domain name will identify you as the owner of the website and prevent anyone else from using that domain name.

Defensive domain name registration is where a business pre-emptively buys a domain name to prevent other third parties from using it. A domain name can be purchased for a relatively low cost and can prevent a lot of hassle later down the line. In addition, you can redirect anyone who types in your defensive domain name to your main domain; this makes it easy for customers to find you, even if they make a spelling mistake. (more…)

Starbucks Success

starbucks-1972319_1920This post provides a review of a recent case, T-398/16 -Starbucks Corp v EUIPO and Hasmik Nersesyan.

 

Key points

• A global assessment involves weighing up the similarity of the marks and the goods or services
• The threshold for similarity is low

(more…)

Trade Mark Protection in China

china-2306580_1920Keltie was pleased to host Tian-ying Zhao and Wang Yanping from IntellecPro. They gave the Keltie Trade Mark team a very interesting seminar on trade mark protection in China. I have summarised 5 important points to bear in mind when filing trade marks in China. (more…)

Australia and New Zealand in a bit of a sticky situation over Manuka honey trade mark

Last month the UK Trade Mark Registry granted the New Zealand’s Manuka Honey Appellation Society Incorporated(*) a certification mark for the term “Manuka honey”. A certification mark is a specific type of trade mark which provides a guarantee that the goods or services bearing the mark meet a certain defined standard or possess a particular characteristic.

In this case, the certification mark will mean that buyers in the UK will be guaranteed that Manuka honey from New Zealand contains certain properties, such as antibacterial qualities, while Manuka honey produced in Australia will not carry this same guarantee. Australian honey makers would need to obtain approval from their New Zealand counterpart’s before they would be able to use the term, which seems unlikely given New Zealand’s efforts to secure the name for themselves. (more…)

Consultation on the Implementation of the Trade Mark Directive 2015

ConsultationThe UK Intellectual Property Office (UKIPO) has launched a consultation on changes to UK trade mark law in light of the amendments to trade mark law arising from the Trade Mark Directive 2015. The document includes a draft statutory instrument (SI) and discussion of some issues of particular interest. The UKIPO is seeking views from businesses, trade mark attorneys and other stakeholders on how these changes should be implemented. The consultation period will run for 8 weeks, until 16 April 2018. (more…)

Abuse of IP: The Effects of Counterfeiting on the Fashion Industry

louis-vuitton-2628969_640The phenomenon of counterfeiting has been around as long as couture itself. The rise of the internet and e-commerce has created an ideal breeding ground for counterfeiting due to the anonymity it provides and the proliferation of distribution channels. Protection against counterfeiting is difficult because it requires continuous monitoring of a brand and how its trade marks are used. (more…)

Mother Teresa’s Sari becomes a Registered Trade Mark

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pixabay.com

Mother Teresa died on 5th September 1997, in Calcutta, India. In her will she outlined that her likeness should not be used after her death for trade purposes, according to Biswajit Sarkar, an India-based lawyer who undertakes pro-bono work for the Missionaries of Charity, a religious Order founded by Mother Teresa.

Mother Teresa was known for wearing her characteristic white sari with three blue stripes on the borders, one thicker than the rest; this blue-and-white striped sari is woven specifically for the Missionaries of Charity by leprosy patients living in a home run by the Order. Nearly 4000 saris are woven every year. These garments are then distributed to nuns all over the world who work for the Missionaries of Charity and they are worn as a religious uniform. When Mr Sarkar heard about unauthorised sales of blue-and-white striped saris resembling that worn by Mother Teresa, and about instances of people trying to use Mother Teresa’s name for commercial gain, he applied to register a colour trade mark for the blue-and-white sari in India. (more…)

The Red Bull Colours: No Trade Mark Registration

red bullIn the case of Red Bull GmbH v EUIPO, the European General Court (General Court) held that neither of Red Bull’s blue/silver colour combination trade marks were valid; this may cause concern to businesses looking to protect a combination of two colours forming part of their branding.

Background

In 2005 and 2011, Red Bull registered two blue/silver colour combination trade marks due to having acquired distinctive character through use. However, in the years 2011 and 2013, Optimum Mark sp. z o.o. requested that both Red Bull trade marks be declared invalid. The EUIPO’s Cancellation Division granted this request, the First Board of Appeal dismissed Red Bull’s appeals and now the General Court has upheld these previous decisions.

The General Court’s decision has been seen as a blow to the chances of successfully registering ‘colour combination’ marks in light of the extensive list of requirements set out in the judgement. However, there are two underlying factors to consider in more detail: graphical representation and the description. (more…)