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The CITMA Paralegal Seminar ‘Madrid Protocol: tips and tricks – what paralegals need to know’

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(l-r: Roy Scott; Jonathan Clegg; Sharon Fleet; Melanie Oliver; Daniel Smart)

Following her Majesty the Queen’s approval of the ITMA’s Royal Charter and the news that the Trade Mark Administrators had in turn undergone a rebrand and become CITMA Paralegals, Keltie LLP were delighted to host the first CITMA Paralegal seminar on 27th October 2017 at their London office.

The seminar was chaired by Roy Scott from Keltie LLP, who in turn introduced the guest speakers: Sharon Fleet and Melanie Oliver (UKIPO), Jonathan Clegg (Cleveland Scott York) and Daniel Smart (Colman + Smart). (more…)

Pepsi Twist vs Lemon Twist

soft-2262307_640Today on IPcopy we have a guest post from Tyrone Walker of Moore Attorneys on the subject of a soft drink trade mark battle in South Africa. This post has been reproduced with the permission of the author. 

The soft drink battle of “PEPSI TWIST” versus “LEMON TWIST” continued in South Africa in the Supreme Court of Appeal.

In 2006, PepsiCo had applied for the registration of the trade mark “PEPSI TWIST”. Atlantic Industries (“Atlantic”), a wholly owned subsidiary of The Coca-Cola Company had opposed these trade mark applications. The basis of Atlantic’s opposition was that “PEPSI TWIST” was confusingly similar to their current trade marks  “TWIST”, “LEMON TWIST” and “DIET TWIST”. PepsiCo responded with a counter action by applying for the expungement (“removal”) of Atlantic’s marks. (more…)

IPcopy is 5! – Our Top 10 posts from the last 5 years

file2611249338382While listening to the radio last week I had cause to feel old when the presenter introduced the next track as celebrating 19 years of airplay. The track in question? Britney Spears’ “Hit Me Baby One More Time”. Unbelievably this was released in 1998 and even more unbelievably it was almost considered for the group Five….

Another  “where has the time gone?” moment came later in the week when our blog notification alert went off to note that IPcopy is five years old. This got us thinking about our most viewed posts and so here are our top 10 patent, trade mark and IP posts from our first five years. (more…)

European Commission Brexit Paper on Intellectual Property – a closer look

brexit-1481028_1920As noted in our post earlier this week, the European Commission has released its position paper on the treatment of intellectual property (IP) rights (including geographical indicators) after the UK completes its exit from the EU. It sets out general principles on unitary IP rights, geographical indicators, exhaustion, supplementary protection certificates and the protection of databases.

CITMA recently published its position paper on post-Brexit registered trade mark and design rights, and rights of representation. Many elements of the EU paper reflect the position of CITMA, in particular the unitary character of IP protection for European Union Trade Marks (EUTMs) in the UK and EU after the withdrawal date. However, there are two aspects of particular interest to UK practitioners that were not addressed: rights of representation and reciprocity of UK geographical indicators. (more…)

Brexit, IP and the European Commission’s Position Paper

brexit-1481028_1920Earlier in September the European Commission published this position paper on Intellectual Property Rights (including geographical indications) in the context of negotiations under Article 50 TEU.

The position paper, which runs only to 5 pages (actually a fairly meagre 3 and a half pages once you strip out the cover sheet and white space), notes that the UK’s withdrawal from the EU will create uncertainty both for Intellectual Property Right (IPR) holders in the UK and the remaining 27 members of the EU (EU27) in relation to the scope of protection of intellectual property rights.

The position paper goes on to set out some general principles that should apply when the Withdrawal Agreement comes into force. The paper mentions trade mark rights, design rights, supplementary protection certificates (SPCs), database rights and exhaustion of rights. Much media attention was also directed toward the section on Geographical Indications (GIs).

IPcopy has summarised the main points of the paper below but feels like the paper comes across as a bit of a weak effort. It’s quite a high level document which is looking at matters pretty much only from the point of view of EU27 stakeholders. There is nothing on representation rights for EU trade mark and design attorneys (which is important for UK stakeholders as well as attorneys) and nothing on the unitary patent system.

The paper also strays, to my mind at least, into the territory of future arrangements (see reference to UK putting in place domestic legislation for GIs) which is something that Michel Barnier said wouldn’t happen until “sufficient progress” had been made on the withdrawal negotiations. Or maybe I’m reading too much into it….. (more…)

Changes to EU Trade Mark Practice in October 2017

IMG_8533-1On 1 October 2017 a number of important changes to EU Trade Mark Practice will take effect.

Here is what you need to know: (more…)

New Balance’s Record Win in Chinese Trade Mark Case

New BalanceNew Balance has won a record pay-out in a Chinese trade mark case after three Chinese shoemakers were found to have infringed the brand’s trademarked slanting “N” logo.

In this rare trade mark victory, the Chinese court awarded more than 10 million yuan (£1.2m or $1.5m) to New Balance. The case is believed to be one of the largest awards ever given to a foreign company in a trade mark dispute in China.

Although small by international standards, the significant increase on previous penalties reinforces current attempts by China to crack down on the widespread problem of trade mark abuse; this is particularly in light of international pressure on Beijing to take more action on suspected intellectual property theft by Chinese companies. (more…)

#Hashtag Trade Mark Applications

hashtag-1120301__340Not that long ago, the hash symbol (#) was more commonly referred to as the “pound sign” or “number sign,” and its use in the early internet was primarily on chat services. That all changed 10 years ago when Chris Messina suggested to Twitter that it should start using hashtags to distinguish between groups and topics. Now, referring to the symbol as anything but a hashtag is guaranteed to get oneself labelled as #old. (more…)

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…)