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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…)

A “To Do” suggestion for the new IP Minister

brexit-1481028_1920“Uncertainty abounds” might as well be the summary for any article that’s written at the moment about Brexit.

After a 2017 in which the Prime Minister apparently sought to find out just how many times she could shoot her own party in the foot (triggering Article 50 before the UK was ready, setting out unnecessary redlines and calling a snap General Election) we somehow managed to agree a deal in the first phase of the EU talks. However, the shape of the UK’s post-Brexit relationship is still unknown and the negotiations are on a break while everyone works out what they want. (more…)

EUIPO Notice on Brexit – December 2017

On 5th December, the European Commission issued a notice, countersigned by the EUIPO, to right-holders of, and applicants for, EU trade marks (EUTMs) and Registered Community Designs (RCDs), looking at the potential scenario in which no agreement is reached between the UK and the remaining 27 EU Member States in the Brexit negotiations.

The notice states that, unless a ratified withdrawal agreement establishes another withdrawal date or the period is extended, on 30th March 2019 the UK will become a “third country”, i.e. it will no longer be an EU Member State. Any EUTM or RCD rights granted by the EUIPO on or after the withdrawal date will only be valid in the 27 EU Member States and will no longer have effect in the UK.

It is expected that the UKIPO will recognise EUTMs and RCDs that were registered prior to the above cut-off date by granting protection on the UK Register. However, IPcopy recommends giving consideration to filing UK and EU trade marks and designs simultaneously, to ensure adequate protection. (more…)

ADEC “steals” ANC colours

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ADEC logo

Today on IPcopy we have a guest post from Tyrone Walker of Moore Attorneys on the subject of political party logos in South Africa. This post has been reproduced with the permission of the author. 

The African Democratic Change (“ADEC”) party was officially launched on 1 December 2017 in South Africa. A representation of its logo is depicted right. (more…)

New York City Bar Association Trademark and Unfair Competition Committee Seminar

statue-of-liberty-267948_960_720During an unseasonably freezing spell in autumnal New York, I was honoured to be amongst the speakers at a NYC Bar Association seminar on 13 November 2017 organised and hosted by Ainslee Schreiber in her debut event since being recently appointed Chairwoman of the Trademark and Unfair Competition Committee of the Association.

Taking advantage of several International trade mark practitioners who were transiting through New York after the INTA Leadership Meeting in Washington, DC, the previous week, Ainslee organised and hosted an evening seminar on latest developments in key jurisdictions of interest to the Association’s members. Many braved the cold and it was a well-attended session, at the end of which I was delighted to meet Ronald Coleman, who successfully took THE SLANTS trade mark application all the way up to the Supreme Court and obtained registration of the mark.

Here is a review of the seminar with a few take-home points on each one of the presentations. (more…)

The CITMA Paralegal Seminar ‘Madrid Protocol: tips and tricks – what paralegals need to know’

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(l-r: Roy Scott; Jonathan Clegg; Sharon Fleet; Melanie Oliver; Daniel Smart)

Following her Majesty the Queen’s approval of the ITMA’s Royal Charter and the news that the Trade Mark Administrators had in turn undergone a rebrand and become CITMA Paralegals, Keltie LLP were delighted to host the first CITMA Paralegal seminar on 27th October 2017 at their London office.

The seminar was chaired by Roy Scott from Keltie LLP, who in turn introduced the guest speakers: Sharon Fleet and Melanie Oliver (UKIPO), Jonathan Clegg (Cleveland Scott York) and Daniel Smart (Colman + Smart). (more…)

Pepsi Twist vs Lemon Twist

soft-2262307_640Today on IPcopy we have a guest post from Tyrone Walker of Moore Attorneys on the subject of a soft drink trade mark battle in South Africa. This post has been reproduced with the permission of the author. 

The soft drink battle of “PEPSI TWIST” versus “LEMON TWIST” continued in South Africa in the Supreme Court of Appeal.

In 2006, PepsiCo had applied for the registration of the trade mark “PEPSI TWIST”. Atlantic Industries (“Atlantic”), a wholly owned subsidiary of The Coca-Cola Company had opposed these trade mark applications. The basis of Atlantic’s opposition was that “PEPSI TWIST” was confusingly similar to their current trade marks  “TWIST”, “LEMON TWIST” and “DIET TWIST”. PepsiCo responded with a counter action by applying for the expungement (“removal”) of Atlantic’s marks. (more…)

IPcopy is 5! – Our Top 10 posts from the last 5 years

file2611249338382While listening to the radio last week I had cause to feel old when the presenter introduced the next track as celebrating 19 years of airplay. The track in question? Britney Spears’ “Hit Me Baby One More Time”. Unbelievably this was released in 1998 and even more unbelievably it was almost considered for the group Five….

Another  “where has the time gone?” moment came later in the week when our blog notification alert went off to note that IPcopy is five years old. This got us thinking about our most viewed posts and so here are our top 10 patent, trade mark and IP posts from our first five years. (more…)