The Goodwill Maze – a case review of O-609-16 – (The Crystal Maze) Invalidity – 20 December 2016
Mad Professor Ltd’s (‘MP’) is the proprietor of UK No. 3060820 ‘The Crystal Maze’ (‘TCM’) for inter alia “team building events” in Class 41. Adventure Line Production SAS (‘ALP’) sought to invalidate the registration under Section 5(4)(a).
ALP based its passing off claim on use of TCM since February 1990 in respect of “entertainment services, in particular television programmes, games and challenges”. MP denied ALP’s claims arguing that (1) its mark was lawfully registered, (2) the marks are not identical, (3) ALP does not own the goodwill, (4) there is no misrepresentation, and (5) there is no damage.
Although MP’s mark was filed on 20 June 2014, the relevant date to consider whether there had been passing off was 21 June 2011 as this was the first date in which MP made use of TCM on its website. (more…)
This post contains a case review of T-312/15 in which the General Court discussed issues of the relevant public, comparison of marks and likelihood of confusion.
On 4 September 2012 Market Watch Franchise & Consulting, Inc. (‘MWFCI’) applied to register a EUTM for MITOCHRON in Classes 3, 5 and 35. On 8 April 2013 Glaxo Group Ltd (‘Glaxo’) opposed the Class 5 goods on the basis of Article 8(1)(b) in respect of its earlier UK registration for MIVACRON in Class 5.
The Opposition Division upheld the opposition on 17 December 2013. This decision was appealed and dismissed by the Second Board of Appeal (‘BoA’) on 20 March 2015.
MWFCI bought an action at the General Court (‘GC’) against the dismissal requesting that the GC annul the decision, reject the opposition and order EUIPO to pay costs. (more…)
Regulation (EU) No. 608/2013, which concerns the enforcement of Intellectual Property Rights (IPR), has been in force since January 2014, replacing the previous Council Regulation (EC) No. 1383/2003. The aim of the 2013 legislation is to simplify and clarify the procedure and existing system.
Importantly, the new Regulation extends the scope of IPR covered by Customs enforcement to:
- trade marks
- trade names
- design rights
- utility models
- devices designed, produced or adapted for the purpose of enabling or facilitating the circumvention of technological measures
- supplementary protection certificates for medical products or for plant protection
- plant variety rights
- topography of a semi conductor
- geographical indications
Case Review – T-3/15 K-Swiss v OHIM (Représentation de bandes parallèles sur une chaussure) – 4 December 2015 (Decision)
K-Swiss sought registration of the five stripe mark (see blog image) under the CTM designation of International Registration No. 932758 in Class 25 (“athletic shoes, namely tennis shoes, basketball shoes, cross-country and jogging shoes and casual shoes” as of 8 October 2013) on 23 May 2013.
The designation was refused protection on 4 March 2014 under Article 7(1)(b) – devoid of distinctive character. K-Swiss appealed this decision on 23 April 2014.
The Second Board of Appeal (BoA) dismissed this appeal on 30 October 2014 on the basis that the five parallel stripes do not have any original feature, such that they are banal generic embellishment in view of the widespread practice of using a stripe pattern on sports shoes.
The action to the General Court (Second Chamber) was filed on 6 January 2015. (more…)
We are delighted to report that there has been some good news in the fight against companies/individuals issuing misleading invoices which appear to be from the UK Intellectual Property Office (UK IPO) (previous IPcopy articles can be found here).
In this regard, a company trading as Intellectual Property Agency Ltd (IPA) and its director Mr Harri Mattias Jonasson were found liable for trade mark infringement and passing off and ordered to pay £500,000 plus legal costs to the UK IPO. (more…)
The following article is a review of case O/135/15 at the UKIPO.
Keystone IEA Limited (the Opponent) opposed Keystone Wealth Management Limited’s (the Applicant) Trade Mark Application No. 2655215 for “mortgage & protection advice, financial services” in Class 36 on the basis of Section 5(2)(b) of the Trade Marks Act 1994 (similar to an earlier mark for identical/similar services, resulting in a likelihood of confusion). The Opponent relied upon its Trade Mark Registration No. 2641172 covering “estate agents” in Class 36.
The Applicant responded stating that the services were sufficiently distinguishable, meaning there was no likelihood of confusion.
No further submissions were filed and a decision was made on the papers. (more…)
Wragge Lawrence Graham and Co held its annual Brands & Designs Seminar in London on 25 June 2015. As you would expect, the Seminar was extremely informative and interesting, and well attended!
Kate Swaine kicked off proceedings by discussing the rise in passing off cases throughout the last year. Kate posed the question as to whether the recent increase in passing off cases was highlighting a new trend. She asked whether this was due to misrepresentation seemingly being easier to define than likelihood of confusion, the fact that a brand has now expanded considerably further than just a ‘name’ and celebrities are more conscious of their own brand power, as well as the apparent constraints of a trade mark registration, making passing off a more attractive option. (more…)
The following case review of T53/13 first appeared in the ITMA review.
Vans applied to register the mark in question (see right) in Classes 18 and 25 on 14 September 2011 (No. 010263838), which was refused on 7 March 2012 on the basis of Article 7(1)(b) as the mark “consisted of a wavy line which slants and curves” and was devoid of distinctive character. Evidence to show acquired distinctiveness had a number of gaps such that it was held not to be possible to ascertain the degree of recognition by the relevant public.
The appeal filed on 2 May 2012 was dismissed by the Fifth Board of Appeal (BoA) on 14 November 2012. The BoA held that the mark was devoid of any distinctive character as the average consumer would see the mark as a “concept of a wavy line”, which is too vague as a badge of origin. Graphic line stripes are common in respect of goods in Classes 18 and 25, such that the relevant public would view the mark as “exclusively ornamental”. Also, the existence of earlier national registrations was irrelevant and evidence regarding acquired distinctiveness insufficient.
The action to the General Court (Fifth Chamber) was filed on 31 January 2013. (more…)
Following 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…)