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How Wimbledon secured their colour mark

Wimbledon

Photo courtesy of Roy Scott

In a first for IPcopy, we have a podcast for you today!

Zane Shihab,  partner at Kerman & Co LLP, and Manuela Macchi, partner at Keltie LLP, speak to LawInSport CEO, Sean Cottrell and Editor, Chris Bond about the importance of trade mark registration in sport and take review the merits of Wimbledon’s successful registration of the purple and green colour mark.  (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…)

Brexit through the Lens of IP Law

brexit-1481028_1920According to the Government’s White Paper on exiting the EU, the 65 million people of the UK are now willing the Government to make the negotiations happen (see PM’s Foreword, paragraph 4). I must have missed my reprogramming session as I’m still waiting for reality to snap back to normal….

However, even if we are now all on board the Brexit Bus, next stop the cliff edge followed swiftly by the foot of the cliff, it’s still good to see a well researched article on the impacts of Brexit on the IP sphere. The world has, of course, been awash with Brexit News Bulletins ever since the result came in but the latest addition,  The Legal Consequences of Brexit through the Lens of IP Law, comes with a sterling pedigree, namely Richard Arnold (a judge at the High Court), Lionel Bentley (University of Cambridge), Graeme Dinwoodie (University of Oxford) and Estelle Derclaye (University of Nottingham). (more…)

IPcopy: Top 10 IP posts in 2016

Every year you make me wear this. Santa better bring me a bone this time....[Photo by ellierhu at Morguefile.com]

Every year you make me wear this. Santa better bring me a bone this time….[Photo by ellierhu at Morguefile.com]

It’s that time of year again when, despite your best efforts, possibly the worst music ever created in human history drills itself into your brain and you find yourself humming such “classic” lines as:

So here it is Merry Christmas
Everybody’s having fun
Look to the future now
It’s only just begun.

Based on what happened this year I can only hope Slade are wrong when they say that “it’s only just begun” – Brexit, the US elections, Ed Balls making it to Blackpool – the shocks have come thick and fast this year and I was rather hoping 2017 might be a little…boring.

So, what does next year have in store? Who knows …. but IPcopy notes that the effects, if any, of the unexpected outcomes of the Referendum and the US Election probably won’t really start to bite until 2017….Merry Christmas everyone!

In the rest of the post below we take a quick look back IPcopy’s Top 10 IP related posts from 2016. Before we do that however I’d like to remember in a small tribute two members of the Keltie family that are sadly not with us this Christmas, David Keltie and Lindsey Gordon-Thomas. David of course set up the firm I am part of just over 28 years ago and succeeded in his desire to “create something amazing”. Lindsey worked in our accounts department and was, like David, one of the nicest, happiest and most positive guys you could ever meet. David and Lindsey both possessed an infectious laugh and wherever they are right now I’m certain it’s buzzing. David, Lindsey, it was my pleasure to have known you both.
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Common soft IP related mistakes made by SMEs

mistake

Photo by DTL at morguefile.com

IP value and risk

Risk is the chance of something going wrong, and the danger that damage or loss will occur. By its very nature, there are both rewards and risks associated with IP. For anyone involved in IP, then IP related risks are part of working life.

However many ignore the risks associated with IP or only react when the risk has materialised, which is most times too late. Also, many of the IP related risks that companies face are due to their own lack of awareness or proper understanding of IP, and/or their own actions or lack of actions.

Soft IP

There are multiple forms of IP such as patents, trademarks, copyright, etc. etc.

The term ‘soft IP’ is sometimes used to refer to trademarks, copyright, and domain names, in contrast to ‘hard IP’, which is sometimes used to refer to patents.

I accept that use of this phrase is controversial among some IP practitioners, and that the term soft IP may mean slightly different things from one IP practitioner to another

This paper focuses on soft IP and in particular on trademarks, domain names and social media handles, and some of the common mistakes made by SMEs as far as these forms of IP are concerned. (more…)

ITMA becomes CITMA

d5qznw49Today marks the official launch of The Chartered Institute of Trade Mark Attorneys (CITMA) following the grant of the Royal Charter to the Institute in April and the formal issue of the Great Seal of the Realm.  Keltie welcomes its new ‘Chartered Trade Mark Attorneys’ and congratulates the Institute on its hard work in securing this recognition for itself and its members.

Royal Charters are reserved for bodies that work in the public interest and which can demonstrate pre-eminence, stability and permanence in their particular field. The grant of the Royal Charter to the Institute is an endorsement of the high standards that the Institute has set for its members in qualification, regulation and education since it was established in 1934 and it brings the Institute in line with other notable professional bodies such as the Chartered Institute of Patent Attorneys (CIPA).

Joanna Lucas-Munce 24 November 2016

Keltie hosts Sports IP Seminar with LawInSport

lawinsport-seminar

(l-r): Adam Lovatt, Manuela Macchi, Sean Cottrell, Zane Shihab, Sean Corbett

Last Thursday, Keltie joined forces with LawInSport to present an afternoon of interactive presentations and discussions regarding the importance of IP in Sport.

To kick off the presentations, Sean Corbett, Brand Protection Manager at Formula One Management Limited, discussed the use and protection of IP and, in particular, trade marks, in sport and the battles that major sports brands face in protecting their trade marks and enforcing their rights. The take home message was to ensure that trade mark owners in the sports field allocate adequate resources and time to maintain, police and enhance their portfolios of registered trade marks to support the value of their brand and attract sponsors. (more…)

Make America Great Again: The Trade Mark

trumpWhilst perusing a book of Trump quotes while buying a greetings card recently, I noted that one of his statements was directed toward an IP issue, namely his campaign slogan, “Make America Great Again”, and how he’d trademarked the saying.

Given that a favourite pastime of the US media seems to be fact checking everything Trump and Clinton say, IPcopy took a gander at the USPTO trade mark register to find out. (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…)

Brexit means Brexit

brexit-1481028_1920It’s been just over two months since the UK decided to take back control and, as the summer parliament recess comes to an end, IPcopy thought it would be a good time to take stock of where things stand.

The process of Brexit has been split between three Ministers – the Three Brexiteers of Johnson, Fox and Davis – which has already resulted in some turf wars. David Davis, heading up the Department for Exiting the European Union, has raised some eyebrows by claiming that the UK could do one-to-one trade deals with individual member states of the EU (it can’t) and that he wants to negotiate a trading area 10 times the size of the EU which sounds impressive until you realise that that would actually be 1.5 times bigger than the economy of the entire planet Earth1. (more…)