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Sky v Skykick: No More Blue-Sky Thinking for Sky Plc

blue-clouds-day-53594The CJEU judgement in the case of Sky v Skykick (C-371/18), issued on 29th January 2020, addresses some fundamental aspects of trade mark law. Most significantly, it finds that the inclusion of broad terms within a specification can be considered bad faith if there is no intention to use but insufficient clarity and precision within a specification is not in itself a ground for invalidity. (more…)

Brexit 2020 – Impact on Trade Marks and Designs

brexit-1481028_640When will the UK leave the EU?

The Withdrawal Agreement has now been ratified by both the European and UK Parliaments. As a result, the UK will enter into a transition period on 31 January 2020, during which the UK will no longer be part of the EU, but will still be bound by EU rules and treated like a Member State. In this scenario ‘Exit Day’ for the purposes of IP rights will not be until the end of this transition period, expected to be on 31 December 2020. (more…)

Turtle Trade Mark Troubles

Turtle

EU application No 1257407 

This post is a case review of Opposition No. B002686593, Certina AG v TRB International SA, EUIPO, 30th July 2019

Certina AG (the Opponent) filed an opposition against EU application No 1257407 for a figurative turtle mark in the name of TRB International SA (the Applicant) for all goods in class 14. The opposition was based on international trade mark registration Nos 116985(Earlier Mark 1) and 1175867 (Earlier Mark 2) designating the EU for the figurative marks. The Opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. (more…)

Case Review – O/797/18, Mont (Opposition), UK IPO, 12th December 2018

Mont Adventure Equipment Pty Ltd filed a UK designation of international registration No 1385791 for a mark on 27th November 2017 (see the opposed mark below), with a priority date of 10th November 2017. This designation was opposed by AA Textiles Ltd in respect of class 25, including “technical clothing, footwear and headgear for adventure sport and extreme adventure sport pursuits” under s5(2)(b) of the Trade Marks Act 1994. The Opponent relied on UK trade mark registration No 3191303, filed on 14th October 2016, for Mont Noir in class 25 for inter alia “clothing, headwear, footwear”. The case report can be found here.

The goods involved were acknowledged as identical. For Mont Noir, the average consumer was deemed to be the general public with a reasonable level of attention. However, in light of the specialist technical clothing covered by the Applicant’s specification, the average consumer for the opposed mark was deemed to have a higher than average level of care and attention.

While both marks were held to be averagely distinctive for clothing, for English-speaking consumers aware that the French terms involved mean “mountain” and “black mountain”, the evocative association weakened the distinctiveness of both marks when considered in relation to adventure sports clothing. (more…)

POP trade mark – case review

POP1

UKTM Application No. 3315911

Background

Positive Organisations & People Ltd (the Applicant) is the proprietor of UK Trade Mark Application No.  3315911 in Classes 35 and 41 (copy of mark shown).

This mark was opposed* by PSP COMPANY BVBA (the Opponent) under the fast track procedure on the basis of its earlier EUTM Registration Nos. EU016150773 (Mark 1) and EU016150807 (Mark 2) below in Classes 35 and 41 under Section 5(2)(b) of the Trade Marks Act 1994.

POP2

Mark 1

POP3

Mark 2

The Applicant filed arguments against the opposition arguing that there were clear differences between ‘POSITIVE ORGANISATIONS & PEOPLE’ and ‘People On Point’, which would be recognised by consumers.

A decision was made on the papers on 15 March 2019. (more…)

No Deal Brexit, Boris and IP

brexit-1481028_640Following Boris Johnson becoming the Prime Minister of the UK last month, and given his desire to leave the EU by the 31 October 2019 deadline with or without a deal, we have highlighted the UK government’s plans for trade marks, designs and patents in the event of a “No Deal” Brexit in more detail.

It is noted that in the event of a “No Deal” Brexit, the UK will leave the EU without any transition period and the “switch-over” date for IP, referred to as “Exit Day” below, will be 31 October 2019 (unless there are further extensions) (more…)

Brexit and IP – updated overview

brexit-1481028_1920

This article is an updated version of a previous Brexit related article which takes into account the UK’s revised date for leaving the EU.

Following an extension agreed by EU leaders back in April, the UK is now expected to leave the European Union on 31 October 2019. The UK’s departure from the EU may have an effect on your Intellectual Property Rights. This article is designed to briefly set out those potential changes.

“Exit Day”

There is a key ‘switch-over’ date for IP, which is referred to here as “Exit Day”. The exact date of Exit Day will be different depending on the manner in which the UK leaves the EU.

In the event of a “No Deal” Brexit, where a Withdrawal Agreement has not been agreed by both sides, the UK will leave the EU without any transition period and Exit Day will be the end of the Article 50 period. Currently the end of the Article 50 period is 31 October 2019, though this date could potentially be extended again if there is still no agreement by that date.

If the Withdrawal Agreement is agreed by the EU and ratified by the UK, this provides for a transition period during which the UK will no longer be part of the EU, but will still be bound by EU rules. In this scenario ‘Exit Day’ is the end of this transition period (the end of December 2020 at least though potentially this date could also be extended).

References to “Exit Day” below should therefore be read as encompassing either the “No Deal” exit day or the exit date at the end of the transition period.

(more…)

Misleading Invoices: The Brexit Edition

brexit-1481028_1920In April 2019, the EU agreed a second delay to the UK’s departure from the EU and set a new departure date of 31 October 2019. Following EU leaders’ talks about the new Brexit delay, President Donald Tusk told the UK: “Please don’t waste this time”.

A couple of months on from Tusk’s press conference the UK appears to be doing everything it can to ignore that request as we watch the Conservative Party continue to tear itself apart by holding a leadership contest and the Labour Party leader continue the party’s policy of constructive ambiguity as far as its Brexit policy is concerned.

Although the UK political parties and most of the country seem to be gripped by an ongoing Brexit paralysis (#JustMakeItStop), one group of people have been quick off the mark hoping to cash in on the uncertainty around Brexit.

Yes, misleading IP related invoices are back and this time the companies sending the “invoices” are hoping to persuade their recipients into parting with their hard earned cash by paying for totally unnecessary UK trade mark and design registrations. (more…)

When Harry met Selfridges

cocktailA name is not reason for confusion

In a decision of the UKIPO (O/219/18, HARRY GORDON’S BAR and HARRY GORDONS (Opposition), 5th April 2018), the IPO found in favour of retailer Selfridges, allowing the registration of its trade mark applications for HARRY GORDON’S BAR and HARRY GORDONS.

In May 2013, Selfridges applied for the above trade marks covering classes 29, 30, 32, 33 and 43 for goods including alcohol and services for providing drinks.

In August 2013, Harry’s New York Bar filed a notice of opposition against all of the goods and services in both applications. The Opponent argued that the use of the name HARRY in Selfridges’ trade marks resulted in similarities with its earlier marks HARRY’S, HARRY’S BAR and HARRY’S NEW YORK BAR, which it claims were first used in Paris in 1911.

The Opponent submitted that its bars can be found in luxury hotels that would be visited by the same sort of people who frequent Selfridges’ store on London’s Oxford Street. Therefore, use of the mark in such a prestigious establishment would “ride on the coat tails” of its existing reputation.

Selfridges rejected these claims, stating that its bar was named after the retailer’s founder, Harry Gordon Selfridge, and inspired by the popular TV series, Mr Selfridge, about his life. (more…)

IP Developments in China – Trade Mark Focus

china-2306580_1920Almost as many trade mark applications are filed in China as in the rest of the World combined.  According to recently published WIPO statistics, Chinese trade mark applications accounted for 46.3% of all global trade mark filing activity in 2017 (a staggering 5.74 million Chinese trade mark applications were filed over the course of that year). The next busiest office was the US which accounted for 5% of global filings.

With so many applications being filed, it is no surprise that some are being filed dishonestly.  In fact, brand piracy in China is a serious problem and has been for some time. The “first-to-file” trade mark system in operation there has led to trade mark squatters registering trade marks which are copies or imitations of well-known or up-and-coming brands before the rightful owner is able to do so, thus blocking the rightful owners’ ability to register or even use its mark in China.  This issue is discussed at greater length in our previous blog post here.

In recognition of this issue, the Chinese trade mark authorities recently announced a number of draft provisions aimed at tackling dishonest trade mark applications.  I have summarised some of the key proposals below: (more…)