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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…)

The Community Trade Mark is changing – EU reform

IMG_8533-1

Background

Following the publication of the EU Trade Mark Directive and Community Trade Mark (CTM) Regulations Regulation (EU) No 2015/2424 (the Amending Regulation), CTM practice is set for a number of important changes.

The initial changes come into effect on 23 March 2016, with further changes to follow.  We highlight below the key points which we think you should be aware of: (more…)

“Metro”, “Metro Radio” & a question of genuine use

MetroThis article, which first appeared in the September 2015 ITMA Review, reviews a case which reiterates that, to prove genuine use, adequate proof of use needs to be submitted.

On 28 September 1994, Associated Newspapers Limited (‘ANL’) applied to register METRO in Class 16 (Registration No. 1586405 of 24 January 1997).

On 3 October 1997, Bauer Radio Limited (‘BRL’) applied to register METRO RADIO for a range of services covering advertising, marketing and promotional services (Class 35); telecommunications and a broad range of broadcasting services (Class 38); and a range of radio entertainment services and other activities including arranging, organising and provision of concerts, live and musical entertainment (Class 41) (Registration No. 2147054B of 23 July 1999).

On 22 May 2000, ANL filed an application for metro.co.uk and metro.com (series mark) under Application No. 2233378 which was published on 8 February 2008 for a wide range of goods and services in Classes 09 (digital music, etc.), 16, 35 (advertising and promotion of business services, etc.), 36, 38 (telecommunication services, etc.) and 41 (publishing services, organisation of exhibitions and shows, etc.). (more…)

No-go for Tokyo Olympic logo

tokyo logoToday we have a guest post from Kei Ikuta of the firm Nagashima Ohno & Tsunematsu. Kei Ikuta is a Japanese litigation lawyer specialising mainly in employment law, competition law and sports law.

The Tokyo Organising Committee of the Olympic and Paralympic Games (“TOC”) have decided to withdraw its Olympic logo (picture on the right).

On 24 July 2015, the logo was announced as having beaten 104 other candidates’ designs to be the 2020 Olympic logo.  TOC, making the announcement on 1 September 2015, have advised that they would start a new competition to choose a new Olympic logo.  (more…)

Meisterkreis: German Luxury Brands United Against Counterfeiting

marques_logoFollowing on from IPCopy’s 3 July post reporting from the Marques Luxury Brands Symposium that took place in Zurich at the end of June 2015, we are now bringing you a summary of the presentation given at the Symposium by Clemens Pflanz, founder and CEO of Meisterkreis. (more…)

Relocation of the Museum of Brands

MusuemofBrandsFrom the Museum of Brands comes this press release about their relocation:

The UK’s only museum dedicated entirely to brands is relocating on 6 October 2015  to larger premises on London’s Lancaster Road.  Since it opened  in Notting Hill’s Colville Mews in 2005, visitors to the Museum of Brands have increased fourfold, to a staggering forty thousand  in 2014. Continued growth and success have led the Museum to find a new, larger home at the London Lighthouse building, on Lancaster Road. As well as providing unrivalled insight into the history of British consumer society from the late 1800s, the move will enable the Museum to offer two unique venue spaces for hire during the day and the evening, perfect for conferences, drinks receptions and much more. (more…)

Keystone vs Keystone

Trade Mark Application No. 2655215

Trade Mark Application No. 2655215

The following article is a review of case O/135/15 at the UKIPO.

Background

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…)

Another round of the name game

ohimlogo_enProof 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…)

Brands & Designs Seminar Review (Wragge Lawrence Graham and Co)

WraggeWragge 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…)

Who Owns the Patent? Top Tip from a TM attorney

Question MarkToday we have a little tip for anyone who has run into difficulties locating a patent or patent application that is mentioned in the context of a product being marketed under the words “patent pending”, “patented” or similar. Sometimes it is easy to locate the patent property in question because, for example, the company offering the product/service is also the patent owner. Sometimes however it can be difficult to find the correct patent property.

This may be because the company in question owns thousands of patents and patent applications (good luck for example identifying all the patent filings made in relation to the Apple Watch). However, in some cases this is because the company selling the “patented” product/service is not the patent owner.

Perhaps the patent/patent application is held by a different company in the same company group or perhaps the inventors own the patents. In such circumstances what else can be done to try and locate the patent/patent application in question? (more…)

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