Proof of use should be timely and clear – case law review T-41/12 LS Fashion, LLC v OHIM
This case concerns an opposition filed by Sucesores de Miguel Herreros, SA (the Opponent), the predecessor in title to the Intervener, Gestión de Activos Isorana, SL (Isorana) on the basis of Article 8(1)(b) Council Regulation (EC) No 207/2009 (CTMR), claiming a likelihood of confusion with its earlier Spanish trade mark registration for LOREN SCOTT, covering “clothes for ladies, men and children, included [sic] boots, shoes and slippers” in class 25. (more…)
For any avid readers of the IPcopy (hi mum), you will have noticed that the subject of misleading invoices rears its ugly head on a regular basis. To summarise, if you are the owner of an intellectual property (IP) right then you may from time-to-time receive communications that resemble official looking invoices for IP services. Such misleading invoices are sent directly to the IP owner and are designed such that they give the impression to the IP owner that they have to either use the service offered or pay the amount listed, often at inflated rates.
In a positive development in the fight against companies imitating official Intellectual Property Offices, the UK Intellectual Property Office (UKIPO) has succeeded in bringing legal proceedings against Mr Aleksandrs Radcuks (trading as ‘Patent and Trade Mark Office’) and Mr Igors Villers (trading as Patent and Trade Mark Organisation), who admitted and settled the UKIPO’s claims of passing off. (more…)
Monday 2 September 2013 saw Ministry of Sound, the well-known dance music brand, launch UK copyright infringement proceedings against the music-streaming service Spotify on the grounds that it has refused to take down users’ playlists that copy many of Ministry’s compilation albums. (more…)
Following in the footsteps of other world-class footballers wishing to take advantage of the growing commercialisation of football (or “soccer” for our American friends), Gareth Bale has applied to register his famous heart-shaped goal celebration as a trade mark at the UK Intellectual Property Office. Details of Bale’s application for the word mark ELEVEN OF HEARTS can be found here, while the application for the logo can be found here.
With either a big-money transfer to the King of Spain’s Real Madrid or a large contract-extension in the pipeline, the Tottenham Hotspurs’ Number 11 could be forgiven for rolling over on his bed of £50 notes and going back to sleep. However, given that the average footballer’s career spans around fifteen years, IPcopy would not be surprised to see more and more footballers bringing out their own branded football boots (like Ronaldo’s R9 or Cristiano Ronaldo’s CR7 boots, both released in partnership with Nike) or tiny briefs (à la David Beckham).
As for choosing which trade mark to protect, they would have to go some way to beat the imagination of NBA player Anthony Davis, who spent part of his first pay-check obtaining trade mark protection (“FEAR THE BROW!”) for his prominent uni-brow – check out the brow in his headshot here!
Nick Bowie 18 June 2013
The Hobbit studios Warner Bros., New Line Cinema, MGM and producer Saul Zaentz have moved to block the further circulation of Global Asylum’s recently-released Age of the Hobbits film by filing a lawsuit in the U.S. District Court.
Despite including a disclaimer within the strapline of its film (“They’re not Tolkien’s Hobbits… They’re Real”), Asylum have been accused of “…promoting and advertising its low-budget film using the confusingly similar and misleading title Age of the Hobbits, in an intentional and willful attempt (i) to trade on the popularity and goodwill associated with the Tolkien novels, the extraordinarily successful Lord of The Rings film trilogy, and the famous HOBBIT mark, (ii) to free-ride on the worldwide advertising campaign in connection with the forthcoming Hobbit films, and (iii) to divert customers and potential customers away from the Hobbit films”.
Having been contested in the UK Courts for the last 8 years, the Cadbury decision of 1 October 2012 (Société des Produits Nestlé SA v Cadbury UK Ltd  EWHC 2637 (Ch), 1 October 2012.) adds a little clarity to the murky waters of registrability of colour marks in UK trade mark law.
Guided largely by the Libertel decision in the CJEU (namely, that single colour marks may be registrable per se if described clearly and classified precisely through an internationally-recognised colour code system such as Pantone), Judge Birss QC moved one infant-step further and held that the context of the case must be assessed before any decision can be made on the registrability of a colour mark. Such assessment of the context of a case may include consideration of the limited availability of colours in relation to the goods and/or services in question and public perception of the mark. In Cadbury’s case, after consideration of the context of the case, its shade of purple was held by the High Court to be registrable in connection with milk chocolate products, though not the broader category of chocolate products in general.
Clearly, with around 100 years of evidence of use to support Cadbury’s claim to registration, the effects of this decision must be interpreted with some caution, though the focus on a general assessment of the context of a case is useful for other applicants wishing to register colour marks in the future.
Nick Bowie 17 October 2012