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IP Hub

Blog

British Gymnastics lands well in trade mark infringement proceedings

Published on 29 July 2020. By Joshua Charalambous, Senior Associate and Greg Burke, Associate

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The national governing body (NGB) for Gymnastics in Britain has succeeded in trade mark infringement and passing off proceedings against an organisation using the sign “UK Gymnastics”, in a Judgment which is likely to assist several Sport England and UK Sport-funded NGBs. In particular, it shows how to deal with organisations using signs which suggest they are an NGB (when they are not).

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Sega’s early win against Man Utd in Football Manager trade mark case

Published on 27 July 2020. By Jeremy Drew, Partner and Samuel Coppard, Associate

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As first published by leading sports law resource LawInSport, Jeremy Drew and Samuel Coppard discuss Man United’s trade mark infringement proceedings against Sega and Sports Interactive in relation to Football Manager.

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Blog

Reproduction of infringing content online: who's liable?

Published on 21 July 2020. By Ciara Cullen, Partner and Louise Morgan, Senior Associate

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Keyword advertising, search engine optimisation and liability for infringement via online marketplaces: In recent years, there has been a plethora of cases concerning the various ways that trade marks may be infringed, through use on the internet.

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All change! No extension means major changes for IP rights holders from 1 January 2021

Published on 02 July 2020. By Ben Mark, Partner and Sarah Mountain, Senior Associate

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Under Article 132 of the Withdrawal Agreement, 30 June 2020 was the last day that the UK could have requested an extension to the Brexit transition period. The COVID-19 outbreak prompted many to speculate that a request would be made but the deadline passed, without event.

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Blog

No hugs or kisses from the General Court

Published on 29 June 2020. By Sarah Mountain, Senior Associate and Samuel Coppard, Associate

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The General Court has dismissed an action brought by Global Brand Holdings, LLC (Global Brand), against the European Union Intellectual Property Office (EUIPO). The action concerned the EUIPO's refusal to register an EU trade mark (EUTM) for "XOXO" on grounds that it lacked distinctive character.

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Blog

Wheely good news for product designers?

Published on 17 June 2020. By Ben Mark, Partner and Alessandro Cerri, Associate

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In Brompton Bicycle, C-833/18, the CJEU has confirmed that copyright can subsist in designs that are shaped to achieve a certain technical result, provided certain conditions are met.

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Luxury and online marketplaces - the next chapter (Coty v Amazon)

Published on 01 June 2020. By Ciara Cullen, Partner and Sarah Mountain, Senior Associate

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On 2 April 2020, the CJEU ruled that storing infringing goods on behalf of a third-party seller, without knowing that those goods infringe trade mark rights does not constitute infringement, provided that the storing party does not pursue the aim of offering the goods for sale or putting them on the market.

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Blog

Landmark case sees trade mark specifications cut down on grounds of bad faith.

Published on 29 April 2020. By Ben Mark, Partner and Sarah Mountain, Senior Associate

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Today, the High Court handed down judgment in Sky v SkyKick. The judgment follows the CJEU's 29 January 2020 decision, which answered various questions that the High Court had referred to it, back in June 2018.

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Blog

COVID-19 prompts changes to working arrangements for the Court of Justice of the European Union

Published on 09 April 2020. By Louise Morgan, Senior Associate and Alessandro Cerri, Associate

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Prompted by the COVID-19 pandemic, the CJEU announced, on 19 March 2020, that it will be temporarily changing its working arrangements.

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Blog

EUIPO issues clarification on COVID-19 extension of time for trade mark and design proceedings

Published on 01 April 2020. By Alessandro Cerri, Associate and Ben Mark, Partner

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The EUIPO has issued a clarification in respect of Decision No EX-20-3 noting that the extension of deadlines in trade mark and design EUIPO proceedings to 1 May 2020 applies automatically.

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Blog

So Long Blues

Published on 28 February 2020. By Ben Mark, Partner and Greg Burke, Associate

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Following our previous IP hub update, Glaxo has suffered fresh survey woes.

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Blog

Nederlands Uitgeversverbond v Tom Kabinet Internet – a CJEU guide on how to play it by the book

Published on 11 February 2020. By Esme O'Hagen, Associate

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Tom Kabinet (the Defendant) is a Dutch company which sells used e-books online (the Books). The Books are purchased by the Defendant, either from individuals or official distributors, and are then re-sold for a lower price to customers who are registered on the Defendant's website as members of a "reading club".

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Blog

First UK Court decision applying Cofemel

Published on 30 January 2020. By Alessandro Cerri, Associate

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The IPEC has issued its first ruling following the CJEU's decision in Cofemel, finding that "complete conformity" with EU law would exclude any requirement of aesthetic appeal.

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Blog

CJEU hands down decision in Sky v SkyKick case

Published on 29 January 2020. By Ben Mark, Partner and Samuel Coppard, Associate

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This morning, the CJEU handed down its judgment for the much anticipated Sky v SkyKick case – certainly one of the most important trade mark referrals from the High Court over the past few years.

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Blog

Tread Bentley when expanding your product offering

Published on 08 January 2020. By Dani Barnes, Associate and Georgia Davis, Legal Director

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The High Court held that luxury car manufacturer Bentley Motors infringed BENTLEY clothing firm's trade marks.

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Blog

Dressing down for The Consortium for Balsamic Vinegar of Modena

Published on 18 December 2019. By Ciara Cullen, Partner and Charlie Gould, Trainee Solicitor

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Balsamic vinegar manufacturers (outside of Modena) can use the terms 'aceto' and 'balsamico' following a decision made by the CJEU relating to protected geographical indications.

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Online intermediaries: Fresh guidance from the CJEU on the scope of the E-Commerce Directive

Published on 15 November 2019. By Ben Mark, Partner and Sophie Tuson, Associate

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In Glawischnig-Piesczek, C-18/18 the CJEU has given fresh guidance on online intermediaries and the scope of their obligations under the E-Commerce Directive.

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Blog

Sandoz Purple leaves Glaxo Blue

Published on 12 November 2019. By Ben Mark, Partner and Greg Burke, Associate

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Surveys fail to persuade High Court of passing off.

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Blog

Liverpool FC fail to register 'LIVERPOOL' trade mark alone

Published on 28 October 2019. By Ben Mark, Partner and Samuel Coppard, Associate

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Liverpool FC has failed to register a trade mark for 'LIVERPOOL' at the UKIPO on the basis of the city's "geographical significance".

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Blog

Copyright in designs: G-Stars in their Eyes

Published on 23 September 2019. By Alessandro Cerri, Associate

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The CJEU has ruled on the requirements for copyright to vest in designs and applied art.

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Blog

High Court does not "lycra" unjust Part 36 offers

Published on 26 June 2019. By Ciara Cullen, Partner and Samuel Coppard, Associate

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In a recent High Court decision it has been held that parties must ensure that Part 36 offers are "genuine offers to settle" as the court will not order costs in circumstances where it is unjust to do so. Furthermore, the decision reinforces the significant weight that is given to whether or not an offeree accepts a Part 36 offer, regardless of whether relief is obtained by the offeree in the first instance.

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Blog

"Goodwill Hunting": Latest on Cybersquatting

Published on 09 May 2019. By Ben Mark, Partner and Sophie Tuson, Associate

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In a recent Court of Appeal decision, it has been held that cybersquatting (ie the practice of registering well-known brand names as internet domains to later resell them at profit) does not in and of itself amount to passing off. A claimant is still required to demonstrate relevant goodwill in the name or mark relied upon. It follows that an unused mark (which, by its very nature, lacks sufficient goodwill) is incapable of supporting an action for passing off based on cybersquatting.

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Blog

BMW Rides to Victory

Published on 06 March 2019. By David Cran, Partner and Ben Mark, Partner

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BMW, the well-known manufacturer of cars, motorcycles and engines, secured summary judgment in respect of its claim for trade mark infringement and passing off arising out of the registration of a UK company under the BMW name.

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Blog

High Court on the Pulse with RCDs

Published on 22 February 2019. By Sophie Tuson, Associate

In the fight between two wearable sports-tech giants, PulseOn v Garmin, the Court of Appeal has confirmed that the High Court correctly applied the test for infringement of Registered Community Designs and that Garmin's sports watch did not infringe PulseOn's design.

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Publication

2019 TerraLex guide to navigating cross-border copyright rules

Published on 30 January 2019. By Ciara Cullen, Partner

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We are delighted to present the TerraLex Cross‑Border Copyright Guide 2019, the fourth edition of this invaluable guide.

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Blog

Big 'Mac' Surprise

Published on 25 January 2019. By Ciara Cullen, Partner and Ben Mark, Partner

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In a decision that will send shock waves to many brand owners, particularly in the food and drink industry, the EU Cancellation Division has revoked McDonald's EUTM for 'Big Mac' in its entirety, even in respect of sandwiches, despite being McDonald's signature product worldwide.

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Blog

All that glitters is not "Gold"

Published on 09 January 2019. By Esme O'Hagen, Associate and Ciara Cullen, Partner

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How does the court calculate what a reasonable license fee is, and what conduct will be sufficient for the court to award additional damages under section 92(2) of the Copyright, Designs and Patents Act 1998?

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Blog

A battle between two warriors

Published on 28 November 2018. By Ben Mark, Partner

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The IPEC has recently considered the protection afforded to trade marks with an average level of distinctiveness.

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Blog

"Loss" in Translation

Published on 31 October 2018. By Ben Mark, Partner and Dani Barnes, Associate

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IPEC judge lifts costs cap of £25,000 for an inquiry as to damages

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Blog

CJEU proves even easy copyright cases make bad law

Published on 27 September 2018.

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Commentary on the recent CJEU decision in Renckhoff C-161/17 about the communication to the public right.

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"Content is fire, Social Media is gasoline" – Court of Appeal considers the challenges for interim injunctions in the digital age

Published on 17 July 2018. By Oliver Bray, Senior Partner and Georgia Davis, Legal Director

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The Court of Appeal has upheld part of an interim injunction granted to Australian sportswear company Frank Industries which restrained Nike from using the sign LDNR in its “Nothing Beats a Londoner” advertising campaign.

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Blog

Christian Louboutin's red sole walks all over the Trade Mark Directive shape exclusion

Published on 03 July 2018. By Ciara Cullen, Partner

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Christian Louboutin has been in and out of courts all over the world in the last few years over his iconic red-soled shoes. In the latest instalment of his litigation adventures, the Court of Justice of the European Union ("CJEU") has given a preliminary ruling on the interpretation of Article 3 of Directive 2008/95/EC ("Trade Mark Directive"), which covers grounds for refusal or invalidity of signs in respect of their shape. But does this ruling really take us anywhere?

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"Good faith" clause rehabilitates failing breach of confidence claim Health and Case Management Ltd v Physiotherapy Network Ltd [2018] EWCH 869 (QB)

Published on 26 June 2018. By Louise Morgan, Senior Associate

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This case provides an interesting example of a "good faith" clause providing protection for misuse of data in a situation where a confidential information clause failed to sufficiently protect against misuse of information.

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CJEU asks whether 'Glen' triggers an image of 'Scotch Whisky' in geographical indications case

Published on 20 June 2018. By Ciara Cullen, Partner

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The Court of Justice of the European Union (CJEU) has ruled on the interpretation of Article 16(a) to (c) of Regulation (EC) No 110/2008 on the protection of geographical indications of spirit drinks.

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Blog

New trade secrets law to drive breach of confidence claims

Published on 11 June 2018. By David Cran, Partner and Joshua Charalambous, Senior Associate

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This article explores what changes might need to be made to the existing protections given to trade secrets and in particular, the impact this might have in the insurance market.

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Claimant gets its fingers 'pricked' in IPEC passing off claim

Published on 16 May 2018. By Ciara Cullen, Partner

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What's the difference between a tattoo and a cactus? This isn't the start of a bad joke, but a serious question that was considered in front of Her Honour Judge Clarke in a recent passing off case in the Intellectual Property Enterprise Court. It turns out that – unsurprisingly – the differences between a tattoo and a cactus are so great that the Claimant's claim for passing off failed.

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Blog

High Court does not accommodate "Easy" trade mark and passing off claims W3 Ltd v easyGroup Ltd and another [2018] EWHC 7(Ch) 12 January 2018

Published on 22 February 2018. By Jeremy Drew, Partner and Georgia Davis, Legal Director

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In a judgment highlighting the inherent risks of litigation, the High Court has dismissed a claim for actionable threats of trade mark infringement against easyGroup Ltd in respect of the use of W3 Ltd's use of "EasyRoommate", as well as dismissing easyGroup's counterclaim claiming passing off and infringement of various trade marks containing the prefix "easy".

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Blog

Sky judge kicks bad faith questions to the ECJ

Published on 19 February 2018. By Sophie Tuson, Associate

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In a significant decision in Sky v Skykick [2018] EWHC 155, Mr Justice Arnold has referred a number of questions to the CJEU on bad faith and the clarity and precision of trade mark specifications. The CJEU's response may have significant implications for trade mark owners – particularly those holding very broad registrations.

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Publication

2018 TerraLex guide to navigating cross-border copyright rules

Published on 24 January 2018. By Ciara Cullen, Partner

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Drawing together contributions from copyright experts in 21 territories we have found are key to global businesses, this guide explores questions regarding legislation and regulation, ownership, infringement, remedies, enforcement and copyright reform on a country-by-country basis.

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Court of Appeal drives through London Taxi's hopes of enforcing protection for its shape marks

Published on 13 November 2017. By Ben Mark, Partner

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The Court of Appeal has dismissed an appeal against a High Court decision that 3D trade marks for models of London black taxis were invalid for lack of distinctive character.1

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TV formats are the real 'Minute Winner': High Court confirms TV formats can be protected as artistic works

Published on 01 November 2017. By Ciara Cullen, Partner and Sophie Tuson, Associate

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In a recent judgment, the High Court has provided helpful clarification on a particularly grey area of IP law by confirming that TV formats can be protected by copyright as artistic works.

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Blog

Getting to the heart of database right and copyright

Published on 03 October 2017. By Georgia Davis, Legal Director

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Getting to the heart of database right and copyright: Technomed Ltd and another v Bluecrest Health Screening Ltd and another [2017] EWHC 2142 (Ch), 24 August 2017 It's not often that a case features successful claims for both copyright infringement and database right infringement but this is one of those cases.

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Blog

Avoid getting in a spin: Lessons for managing future Registered Designs cases - Spin Master Limited v PMS International Group [2017] EWHC 1477

Published on 09 August 2017. By Georgia Davis, Legal Director and Jeremy Drew, Partner

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It is relatively rare for a case management conference ("CMC") to be of sufficient interest to be the subject of an article. However, these proceedings raised general issues of how to achieve short, cost-effective hearings where one or perhaps both parties were preparing for a much longer trial.

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Spare parts and intellectual property: the distinction between "informative use" and "misleading use"

Published on 01 August 2017. By Georgia Davis, Legal Director and David Cran, Partner

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The Court of Appeal has allowed an appeal against a decision of the Intellectual Property Enterprise Court ("IPEC") that a repair company had not infringed certain BMW trade marks.

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Flagging the risk of a new type of trade mark infringement

10 July 2017

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The Intellectual Property Enterprise Court has recently ruled that linking an own brand product listing on Amazon to a competitor's branded listing for the same product amounts to trade mark infringement (and passing off) in a dispute over flagpoles.

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Blog

UK Court grants first 'live' blocking order against streaming servers

Published on 25 April 2017. By Ciara Cullen, Partner

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The Football Association Premier League (FAPL) recently won its application for a court order that the six main retail internet service providers block access to streaming servers until the end of the 2016/2017 Premier League Season. The application covered live streaming only – i.e. it only applies when those servers are streaming infringing content.

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Blog

Court of Appeal rejects claim for misuse of confidential information in TV format

27 February 2017

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The Court of Appeal has confirmed a decision that confidential information was not misused by a large telecommunications organisation when it developed a television programme format with multiple similarities to one pitched to (and rejected by) it by individuals from the music industry a year previously.

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A punishment to fit the crime – CJEU allows punitive damages in IP infringement cases

Published on 22 February 2017. By Ben Mark, Partner

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In a recent decision, the Court of Justice of the EU (CJEU) ruled that the EU Enforcement Directive does not preclude the legal provision of punitive damages in infringement cases in EU Member States.

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The Survey Says! EU General Court decides on requirements for evidence on distinctive character

Published on 03 February 2017. By Henry Priestley, Partner

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A decision by the General Court highlights the requirement for comprehensive evidence of genuine use when seeking to prove acquired distinctiveness in relation to 3D marks in the EU.

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Publication

TerraLex Cross-Border Copyright Guide 2017

19 January 2017

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We are delighted to present the TerraLex Cross-Border Guide to Copyright 2017.

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