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POP trade mark – case review

POP1

UKTM Application No. 3315911

Background

Positive Organisations & People Ltd (the Applicant) is the proprietor of UK Trade Mark Application No.  3315911 in Classes 35 and 41 (copy of mark shown).

This mark was opposed* by PSP COMPANY BVBA (the Opponent) under the fast track procedure on the basis of its earlier EUTM Registration Nos. EU016150773 (Mark 1) and EU016150807 (Mark 2) below in Classes 35 and 41 under Section 5(2)(b) of the Trade Marks Act 1994.

POP2

Mark 1

POP3

Mark 2

The Applicant filed arguments against the opposition arguing that there were clear differences between ‘POSITIVE ORGANISATIONS & PEOPLE’ and ‘People On Point’, which would be recognised by consumers.

A decision was made on the papers on 15 March 2019. (more…)

Brexit – No Deal & IP

brexit-1481028_1920Previous articles on IPcopy have briefly discussed the possibility of how a “No Deal” Brexit will affect trade marks and designs. Since the UK is fast approaching the 29 March 2019 deadline for leaving the EU without a satisfactory deal in sight, we have highlighted the UK government’s plans for trade marks and designs in the event of “No Deal” in more detail. (more…)

Changes in UK trade mark law

UK flagAs of 14 January 2019, there have been important amendments to trade mark law in the UK. We have highlighted some of the key changes below. (more…)

Brexit update: Business as usual

brexit-1481028_1920Nothing over the last few weeks has done anything to dispel the uncertainty that hangs over Brexit. Parliament emphatically rejected the proposed EU withdrawal agreement on 15 January and the last week has seen a number of proposed amendments* to the withdrawal agreement defeated. There are now only around 50 days until Brexit and the UK’s position hasn’t changed much since Article 50 was triggered nearly two years ago…. (more…)

MIP IP Enforcement Forum 2018 – Forum Review

justice-2060093_1920On 14 November, Charlotte Wilding, Senior Associate at Keltie, attended and spoke at the Managing Intellectual Property’s IP Enforcement Forum 2018, which took place in the beautiful Le Méridien, Piccadilly.

The theme of the day concerned how best to deal with IP enforcement in view of the ever-expanding online world. Presentations included a range of topics relevant to IP and covered both the legal aspects of protection, as well as perspectives from marketing experts and academics. (more…)

To the Crystal Dome! Goodwill in “The Crystal Maze”

crystal mazeThe Goodwill Maze – a case review of O-609-16 – (The Crystal Maze) Invalidity – 20 December 2016

Background

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).

Pleadings

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…)

T-312/15 – Market Watch v EUIPO – Glaxo Group (MITOCHRON)

Court (Small)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.

Background

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…)

Customs Enforcement on IP Rights

customsBackground

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
  • copyright
  • design rights
  • patents
  • 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

(more…)

OHIM* tells K-Swiss to jog on with their 5 stripe mark

shoeCase Review – T-3/15 K-Swiss v OHIM (Représentation de bandes parallèles sur une chaussure) – 4 December 2015 (Decision)

Background

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…)

Misleading invoices – IP Scammers

DSC03616-BWe 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…)