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IP hub

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, Senior Associate

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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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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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Blog

Patents Court finds alleged penalty clause is firm but fair

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

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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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Blog

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

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

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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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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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Blog

Stay on top of Intellectual Property

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

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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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Blog

Court of Appeal upholds copyright infringement decision against digital radio aggregator

Published on 12 April 2021. By Alessandro Cerri, Associate and David Cran, Head of IP and 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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Blog

Need for reasonable enquiries upon receipt of potentially confidential information

Published on 24 March 2021. By Carolin Mester , 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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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, Senior Associate and Ellie Ward, 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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Blog

Amazon in the clear as it fails to hit the target

Published on 10 February 2021. By Ben Mark, Partner and Samuel Coppard, Associate and Matt Davies, Trainee Solicitor

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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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Blog

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

Published on 06 January 2021. By David Cran, Head of IP and 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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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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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 Alessandro Cerri, Associate and Daniel Richards, Trainee Solicitor and Sarah Mountain, Senior Associate

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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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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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Blog

Too many cooks… 'Fit Kitchen' trade mark infringed

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

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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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Blog

British Gymnastics lands well in trade mark infringement proceedings

Published on 29 July 2020. By Joshua Charalambous, Senior 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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Blog

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

Published on 27 July 2020. By Jeremy Drew, Head of TMT 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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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, 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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Blog

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

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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

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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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, Of Counsel

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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

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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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Blog

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

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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, Head of IP and Tech 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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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 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, Of Counsel

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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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Blog

"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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Blog

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, Head of IP and Tech 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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