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IP hub

Perspective - Blog

Clear as gin: M&S and Aldi take liquor bottle battle to the Court of Appeal

Published on 26 January 2024. By Rory Graham, Associate and Georgia Davis, Of Counsel

Intellectual property enthusiasts' favourite supermarket adversaries were back at loggerheads this week as M&S and Aldi appear before the Court of Appeal. The pair sought to thrash out a first instance decision handed down in the Intellectual Property Enterprise Court (IPEC) regarding alleged infringement of M&S' registered design rights in a gin bottle.

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Perspective - Blog

Online platforms should Swatch out: Samsung found liable for infringing third-party content available on the Samsung Galaxy App store

Published on 22 January 2024. By Sarah Mountain, Partner and Emma Dunnill, Senior Associate and Zoe Harvey, Associate

The Court of Appeal in Montres Breguet SA v Samsung Electronics [2023] EWCA Civ 1478 has dismissed Samsung's appeal and upheld a first instance decision which found it liable for trade mark infringement in relation to third-party watch faces available on the Samsung Galaxy App store. This judgment provides guidance on what constitutes "use" of a sign by an online app store and the applicability of the e-Commerce Directive hosting defence.

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Perspective - Blog

Thaler v Comptroller [2023] UKSC 49: the UKSC rules that AI cannot be an 'inventor'

Published on 10 January 2024. By Matthew Jones, Partner

To the surprise of no one, the UK Supreme Court (UKSC) has finally ruled that an artificial intelligence (AI) cannot be an inventor for the purposes of UK patent law. This judgment accords with the decisions of the lower courts in the UK and the initial ruling of the UKIPO. It also reflects similar findings from most of courts around the world where the claimant, Dr Thaler, brought similar actions.

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Perspective - Blog

The Sky's the limit for trade mark applications. Or is it?

Published on 12 July 2023. By Sarah Mountain, Partner and Ellie Chakarto, Associate and Noonie Holmes, Associate

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Perspective - Video

The Unified Patent Court – Are the benefits of national courts being forgotten amidst the excitement of the UPC opening?

Published on 03 July 2023. By Matthew Jones, Partner

Patent Litigation Partner Matthew Jones is joined by Sarah Breckenridge, Investment Manager at Erso Capital to discuss the recent excitement surrounding the opening of the Unified Patent Court.

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Perspective - Blog

Generative AI and intellectual property rights—the UK government's position

Published on 03 May 2023. By Helen Armstrong, Partner and Jani Ihalainen, Associate and Joshy Thomas, Knowledge Lawyer

The IPO is to produce a code of practice by the summer that will provide guidance to support AI firms in accessing copyright protected works as an input to their models.

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Perspective - Blog

M&S v Aldi – lookalike claims lit up by design rights

Published on 24 March 2023. By Ciara Cullen, Partner and Harpreet Kaur, Associate and Jack McAlone, Associate

As lookalike products rise in prominence, the Intellectual Property Enterprise Court's (IPEC) recent ruling that the sale and advertisement of Aldi's 'Infusionist' range of favoured gins infringed M&S's UK registered designs protecting the light-up bottles containing its 'Snow Globe' gin range (Marks and Spencer PLC v Aldi Stores Limited [2023] EWHC 178) highlights the utility of registered design rights in circumstances where other intellectual property rights (IPR) are often less able to provide protection.

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Perspective - Blog

Lookalikes and passing off—bottle design get-up claim (Au Vodka)

Published on 07 November 2022. By Ciara Cullen, Partner and Sarah Mountain, Partner and Samuel Coppard, Senior Associate

Currently there's significant activity in the lookalikes space. The Au Vodka claim (Au Vodka v NE10 Vodka [2022] EWHC 2371), which focuses on bottle design 'get-up', arrived in the courts for an interim injunction hearing in September 2022. Au Vodka's application was dismissed. The judgment shows that passing off—get-up claims based on shape can be challenging to bring, particularly at the interim stage, and prompts the question of whether it's possible to bring Cofemel and copyright into the lookalikes arena.

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Perspective - Blog

Trade mark infringement: Amazon inadvertently hits its target

Published on 07 June 2022. By Sarah Mountain, Partner and Emma Dunnill, Senior Associate

Online businesses should take note of a recent Court of Appeal decision, in which Amazon was found to have infringed BEVERLY HILLS POLO CLUB (BHPC) trade marks by targeting and making sales of US branded goods to consumers in the UK and EU (Lifestyle Equities CV v Amazon UK Services Ltd [2022] EWCA Civ 552). The decision also provides a helpful reminder of the relevant case law and the key principles of targeting.

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Perspective - Blog

Wonder Woman v Wonder Mum

Published on 12 April 2022. By Sarah Mountain, Partner and Sophie Tuson, Senior Associate and Noonie Holmes, Associate

The UK High Court has rejected an appeal by DC Comics (Partnership) (DC), owner of the 'WONDER WOMAN' trade mark, which sought to overturn a decision by the UK IPO to permit the registration of the mark 'WONDER MUM' by Unilever Global IP Ltd (Unilever).

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Perspective - Blog

Gin-uine use? The UKIPO concludes yes, despite limited evidence and variances between the trade mark as registered and as used

Published on 29 March 2022. By Ciara Cullen, Partner and Sarah Mountain, Partner and Courtney Brotherson, Associate

The UK Intellectual Property Office (UKIPO) has rejected an application by Inver House Distillers for the revocation of a competitor's trade mark. The mark in question is owned by Destileras M.G., S.L and Importaciones y Exportaciones Varma, S.A (the Proprietors) and consists of a 2D image of a distinctively shaped bottle, featuring the 'Master's logo' and a lion device (the Master's Mark). The decision was reached on the basis that the Proprietors had successfully demonstrated genuine use of their mark, in the UK.

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Perspective - Blog

Game over for hyperlinking sites, following Nintendo's recent blocking order success

Published on 08 February 2022. By Joshua Charalambous, Partner and Abigail Gim, Paralegal

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In a helpful and clear judgment from the IPEC, Nintendo has succeeded in obtaining a broad website blocking order, which includes websites that merely redirect, or link to, third party piracy websites. The decision represents an important win for Nintendo in its continuing efforts to curtail the spread of online piracy in the UK.

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Perspective - Blog

McDonald's battles to protect its 'Mc'-family

Published on 06 January 2022. By Ben Mark, Partner and Sarah Mountain, Partner and Ellie Chakarto, Associate

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McDonald's has successfully defended its 'Mc' branding, following an application by Children's Cancer Aid Limited (CCA) to register 'MCVEGAN' as a trade mark (the Application).

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Perspective - Blog

Counterfeiters beware: It all ends in tiers…

Published on 01 December 2021. By Sarah Mountain, Partner and Ellie Chakarto, Associate

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The UK Intellectual Property Office (IPO) recently published the 2020 – 2021 IP Crime and Enforcement Report (the Report). The Report highlights the current and emerging threats surrounding counterfeiting and is a collaboration between the IPO and the IP Crime Group (which is made up of enforcement agencies and industry representatives). The Report details the work carried out by these organisations, to prevent IP crime.

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Perspective - Blog

Sega’s battle against Man Utd in Football Manager trade mark case ends in settlement

Published on 25 November 2021. By Jeremy Drew, Head of Commercial and Samuel Coppard, Senior Associate and Harvey Briggs, Associate

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As first published by leading sports law resource LawInSport, Jeremy Drew, Samuel Coppard and Harvey Briggs discuss the settlement reached in the trade mark infringement proceedings brought by Man United against Sega and Sports Interactive in relation to Football Manager and offer key considerations when settling disputes of this nature.

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Perspective - Blog

Clutching at draws - whose moral rights are they anyway?

Published on 23 November 2021. By Ben Mark, Partner and Louise Morgan, Senior Associate

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In what amounts to a really bad day at the office for architecture practice, Richard Reid Associates (RRA), the High Court recently refused its applications to: (1) add additional defendants to ongoing proceedings; and (2) amend its pleadings to include additional moral rights infringement and breach of contract claims. To make matters even worse, the original defendant, property developer LME, also succeeded in striking out parts of RRA's original claim. We look at the procedural lessons that can be learnt from the judgment below.

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Perspective - Blog

Eurovision contestant and Rudimental come out on pop in copyright dispute

Published on 19 August 2021. By Jessica Pease, Associate

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The High Court has rejected a claim brought by one half of a duo who appeared on the Voice UK – the claim was brought against Eurovision 2021 contestant James Newman and members of Rudimental for allegedly infringing the copyright in one of her songs.

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Perspective - Blog

British Gymnastics sticks landing on appeal, but wobbles on injunction

Published on 13 August 2021. By Jeremy Drew, Head of Commercial and Ashleigh Fehrenbach , Senior Associate

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Last year, we reported that the Intellectual Property Enterprise Court (IPEC) had found in favour of national governing body (NGB) British Amateur Gymnastics Association (British Gymnastics), following its trade mark infringement and passing off claims against UK Gymnastics Ltd (UKG). You can read our detailed analysis of the case, which concerned use of word and device marks for 'UK GYMNASTICS', here.

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Perspective - Blog

Sky Kick Back! High Court finding of bad faith overturned by Court of Appeal in long-running Sky v Skykick saga

Published on 09 August 2021. By Ben Mark, Partner and Sarah Mountain, Partner

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On 26 July 2021, the Court of Appeal (CoA) handed down its much-anticipated decision in the latest instalment of the Sky v Skykick trade mark dispute.

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Perspective - Blog

Non-fungible tokens (NFTs): are they a way for celebrities to 'reclaim' their image? And what happens to the IP?

Published on 06 August 2021. By Ciara Cullen, Partner

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Non fungible tokens, unique blockchain-backed certificates of authentication, can monetise digital assets, or in some instances help to 'reclaim' one's image – but it's not one NFT- fits-all for IP rights.

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Perspective - Blog

Goodwill, Bad Faith and Brotherly Luv: Court of Appeal finds "special circumstances" to allow defence to Passing Off claim

Published on 22 July 2021. By Ben Harris, Associate

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In a dispute between two half-brothers regarding the ownership of a music group name, the Court of Appeal (CoA) found "special circumstances" to permit arguments that would ordinarily be barred through estoppel.

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Perspective - Blog

(Sex) Pistols at dawn over Danny Boyle's new biopic series

Published on 19 July 2021. By Sophie Parkinson, Associate

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Sex Pistols band members accuse frontman John Lydon of being No Fun and creating Anarchy for refusing to authorise licences for the use of the band's music in Danny Boyle's forthcoming TV series, Pistol.

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Perspective - Blog

…and ONE MORE THING, an intention to parody is not (necessarily) bad faith

Published on 14 July 2021. By Ben Mark, Partner and Sarah Mountain, Partner

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In 2017, Apple successfully opposed two trade mark applications for the words 'SWATCH ONE MORE THING' and 'ONE MORE THING' (the OMT Applications). The OMT Applications were filed by Apple's long-time adversary, Swatch. Apple alleged that the phrase “ONE MORE THING” had come to be associated with it and that Swatch had filed the OMT Applications with the intention of parodying Apple.

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Perspective - Blog

William Grant & Sons v Lidl: where to be-gin?

Published on 16 June 2021. By Ciara Cullen, Partner and Ben Mark, Partner and Sarah Mountain, Partner

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On 25 May 2021, the Scottish Court of Session (SCOS) granted an interim interdict (akin to an interim injunction), which prevents Lidl from selling its own brand 'Hampstead gin' in Scottish stores, pending the outcome of the matter at trial.

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Perspective - Blog

Philip Warren & Son v Lidl – No case of mi-steak-en identity

Published on 25 May 2021. By Ben Mark, Partner and Ciara Cullen, Partner

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The High Court has dismissed a passing off claim brought by Philip Warren & Son Limited (PWS) against well-known supermarket, Lidl. The decision ultimately turned on the fact that PWS presented "insufficient evidence of a significant level of operative misrepresentation to any category of PWS' customers".

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Perspective - Blog

Patents Court finds alleged penalty clause is firm but fair

Published on 18 May 2021. By Ciara Cullen, Partner and Jessica Pease, Associate

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The Patents Court recently held that provisions in a settlement agreement, which restricted the ability to challenge IP rights in the future, were enforceable and did not amount to penalty clauses, as the defendant contended.

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Perspective - Blog

MONOPOLY - Hasbro fails to pass go in long-running trade mark dispute

Published on 13 May 2021. By Sarah Mountain, Partner and Samuel Coppard, Senior Associate and Jessica Pease, Associate

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The General Court has dismissed an appeal brought by Hasbro, Inc. (Hasbro) against the European Union Intellectual Property Office (EUIPO) following its decision that repeat trade mark filings for 'MONOPOLY' constituted bad faith.

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Perspective - Blog

'Brake-ing' news: public interest defence is available in breach of confidence and privacy claims, even where the information concerned has been unlawfully obtained

Published on 27 April 2021. By Ben Mark, Partner and Oliver Sainter, Senior Associate

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This recent High Court case concerns the accessing and sharing of emails, said to be private and confidential emails (the Emails), by the Defendants.

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Perspective - Blog

Stay on top of Intellectual Property

Published on 20 April 2021. By Ciara Cullen, Partner and Ben Mark, Partner and Sarah Mountain, Partner

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Whether you’re just starting out or launching a new product, there are a wealth of intellectual property issues to consider in the world of distilling. Here, Ciara Cullen, Ben Mark and Sarah Mountain outline those do’s and don’ts, the changing landscape and how to thrive in 2021 and beyond.

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Perspective - Blog

Court of Appeal upholds copyright infringement decision against digital radio aggregator

Published on 12 April 2021. By David Cran, Head of IP & Tech

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The Court of Appeal has refused TuneIn's appeal of a 2019 judgment finding that it had infringed the copyright of Warner and Sony by linking to online radio stations.

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Perspective - Blog

Need for reasonable enquiries upon receipt of potentially confidential information

Published on 24 March 2021. By Carolin Ayres, Associate and Chris Ross, Partner

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The Court of Appeal recently held that a recipient of information will be bound by a duty of confidentiality if it was reasonable for them to have made enquiries as to the confidential nature of the information and they failed to do so (Travel Counsellors Ltd v Trailfinders Ltd [2021] EWCA Civ 38).

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Perspective - Blog

Oh (no) Polly – clothing brand infringed the design rights of a direct competitor the High Court finds

Published on 17 March 2021. By Sarah Mountain, Partner and Ellie Chakarto, Associate

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The High Court has held that G4K Fashion Limited, trading as 'Oh Polly', has infringed UK unregistered design rights (UKUDR) and community unregistered design rights (CUDR) owned by Original Beauty Technology Company Limited (Original Beauty) by copying several of its 'bodycon' and 'bandage' garments. Original Beauty was, however, unable to establish passing off.

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Perspective - Blog

Amazon in the clear as it fails to hit the target

Published on 10 February 2021. By Ben Mark, Partner and Samuel Coppard, Senior Associate

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The High Court has dismissed claims brought against Amazon by Beverly Hills Polo Club for alleged trade mark infringement, arising out of products sold on the US website amazon.com but which are visible to consumers in the UK and EU.

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Perspective - Blog

Hold your horses: Raceday data dispute likely to head to Supreme Court

Published on 06 January 2021. By David Cran, Head of IP & Tech and Georgia Davis, Of Counsel

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In a dispute, between suppliers of live betting and raceday data from racecourses, the Court of Appeal was asked to consider whether a duty of confidence could be applied to live sports data between its creation and broadcast when that information was available in real time. We look at the Court's decision, and the reasons for it, in more detail below.

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Perspective - Blog

Brexit – a guide to protecting your rights from 1 January 2021

15 December 2020

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Like many other areas of law, intellectual property (IP) will undergo a raft of changes overnight, when the Brexit transition period expires on December 31 2020.

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Perspective - Blog

Ferrari slams the breaks on trade mark revocation as the CJEU hands down a significant ruling on luxury goods and 'genuine use'

Published on 09 December 2020. By Sarah Mountain, Partner

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The European Court of Justice (CJEU) recently ruled that the use of an EU trade mark for sales of second-hand goods or spare parts can constitute 'genuine use' for the purposes of European trade mark law. The CJEU also found that where a mark is registered for a broad category of goods (in this case, "vehicles and their parts"), its use in respect of high-priced luxury sports cars and their spare parts only constitutes 'genuine use' for the entire category. The decision will be welcomed by luxury brand owners, in particular, those seeking to protect legacy or discontinued product lines.

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Perspective - Blog

Neat infringement claim leaves whiskey competitor’s trade mark on the rocks

Published on 02 November 2020. By Ciara Cullen, Partner and Ben Harris, Associate

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The producers of Eagle Rare bourbon whiskey have succeeded in their trade mark infringement claim against competitor, American Eagle. The case highlights the impact of market-specific context in determining whether consumers are likely to be confused by similar trade marks. Whilst the case has general relevance, it will be of specific interest to alcohol and luxury goods brands.

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Perspective - Blog

Too many cooks… 'Fit Kitchen' trade mark infringed

Published on 11 August 2020. By Ben Mark, Partner and Sarah Mountain, Partner

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On 29 July, Fit Kitchen Limited (FKL) won its case for trade mark infringement and passing off against Scratch Meals Limited (SML). Both FKL and SML provide healthy pre-prepared meals: FKL via an online subscription site, which allows users to customise meal choices, based on their individual macros and dietary preferences and SML, through the manufacture and sale of products to supermarkets.

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Perspective - Blog

British Gymnastics lands well in trade mark infringement proceedings

Published on 29 July 2020. By Joshua Charalambous, Partner

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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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Perspective - Blog

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

Published on 27 July 2020. By Jeremy Drew, Head of Commercial and Samuel Coppard, Senior 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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Perspective - 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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Perspective - Blog

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, Partner

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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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Perspective - Blog

No hugs or kisses from the General Court

Published on 29 June 2020. By Sarah Mountain, Partner and Samuel Coppard, Senior 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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Perspective - Blog

Wheely good news for product designers?

Published on 17 June 2020. By Ben Mark, Partner

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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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Perspective - Blog

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

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

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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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Perspective - 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, Partner

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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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Perspective - 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

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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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Perspective - Blog

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

Published on 01 April 2020. By 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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Perspective - Blog

So Long Blues

Published on 28 February 2020. By Ben Mark, Partner

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

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Perspective - Blog

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

11 February 2020

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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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