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Welcome to the Sunlit Uplands – 10 things about Brexit and IP

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With the Coronavirus pandemic dominating the headlines you might have assumed that Brexit was all finished. However, there’s still plenty to be aware of as far as the UK’s departure from the EU is concerned. So, here are 10 things you need to know about Brexit and Intellectual Property. (more…)

The Importance of Branding in Precision Medicine

christine-sandu-RGvxmouRioE-unsplashBranding has a very important role to play in any industry. However, it is crucial in the field of precision medicine, which is by its very nature, personal. For this reason brand names in the precision medicine field should resonate with people (think ‘hearts and minds’).

A brand name that speaks positively to the public will help you to earn consumer loyalty and trust in what is an extremely fast growing and competitive industry.

It is also particularly important that trade marks in the precision medicine field are selected with care owing to the potential implications of confusion arising if one brand were to be mistaken for another.

This article discusses some of the key recommendations when it comes to branding and trade marks with a particular focus on the field of precision medicine. (more…)

IP for Startups: Top 5 Things You Need to Know

Jonathan Goodacre (UK and European Patent Attorney) of Keltie provides some tips and advice to newcomers to IP in a short subtitled video and covers:

  1. The different types of IP protection that you might encounter (e.g. patents, trade marks and designs);
  2. Registered v unregistered rights;
  3. Applications v granted rights;
  4. The difference between registrability v Freedom to Operate;
  5. IP rights are jurisdictional.

1 June 2020

COVID-19 – Effects on Intellectual Property (IP)

virus-4937553_1920IP Offices around the world have announced special measures to take account of likely business disruption, not only to their own operations but also to those of their customers, from the Coronavirus outbreak. Here we summarise the measures of the EUIPO, EPO, WIPO, UKIPO and IPOI.

If you feel that your ability to respond to an IP deadline is affected by the Coronavirus situation then please contact your normal IP representative who will be able to advise on the options that may be available. It is important to note that the various IP Offices are applying different special measures and the extent of such special measures may not be immediately be apparent. Please also note that the special measures across the various IP Offices mentioned below are changing constantly so please check with your representative for the latest news.

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IP Audits

audit-2823174_1920Wouldn’t it be nice to have some free money to spend on evaluation of your company’s intellectual property?

Well, I’m pleased to tell you that with the generous support of the UK Intellectual Property Office, this is exactly what is on offer.

The scheme in question is called the IP Audits Plus service. It gives those company’s that apply, and are selected, access to a fund of £3,000 (inc. VAT) to spend on evaluation of the company’s IP position (only £500 of which is funded by the company). The money can be spent with a qualified patent or trade mark attorney of the company’s choosing to conduct an Audit of the firm’s IP assets and provide a report. (more…)

Joe’s called himself Hugo Boss but will Boss Lycett?

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Photo by wax115 at Morguefile.com

Comedian Joe Lycett has legally changed his name by deed poll to Hugo Boss, in a protest against the German fashion brand’s apparent aggressive approach to enforcing its rights in the BOSS trade marks. The Comedian Formerly Known As Lycett’s actions appear to have been sparked by a legal battle between Hugo Boss and a Welsh brewery, called Boss Brewing, who were forced to change the name of their beers from ‘Boss Black’ and ‘Boss Boss’ to ‘Boss Brewing Black’ and ‘Bossy Bossy’. (more…)

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

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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…)