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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…)

Colours run in the wash (Case review: O/550/17)

laundryThe Applicant in this case (Case No: O/550/171), ABC DETERJAN SANAYI VE TICARET ANONIM SIRKETI, filed an application for its ABC device in Classes 03 & 05. The Application claimed the colours red, blue, yellow and white.  The Opponent, The Procter & Gamble Company, filed a notice of opposition under Sections 5(2)(b) and 5(3) and relied on its EUTM Registrations for its monochrome Atomium mark in Class 03 and its coloured ARIEL ACTILIFT mark in Class 03 (subject to proof of use). (more…)

Brexit and IP: EUIPO Q&A document

brexit-1481028_1920The EUIPO has recently published a Q&A document relating to the impact of Brexit on EU trade marks (EUTMs) and registered community designs (RCDs). This document was effectively the third publication on the impact of Brexit on Intellectual Property after the EU Commission’s position paper last year and the EUIPO’s notice which was published in December 2017 (and updated in January 2018). (more…)

The Road to Brexit: EU Commission Draft Withdrawal Agreement and the UK PM’s Mansion House Speech

brexit-1481028_1920Last Wednesday the European Commission published its draft Withdrawal Agreement relating to the withdrawal of the UK from the EU and the European Atomic Energy Community. This was followed a couple of days later by a speech from the Prime Minister which set out some more details about the UK position. Intellectual property got a mention in both the Withdrawal Agreement and the Mansion House speech. (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…)

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…)