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

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.
Read moreBrexit – a guide to protecting your rights from 1 January 2021

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

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.
Read moreNeat infringement claim leaves whiskey competitor’s trade mark on the rocks

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.
Read moreToo many cooks… 'Fit Kitchen' trade mark infringed

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.
Read moreBritish Gymnastics lands well in trade mark infringement proceedings

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).
Read moreSega’s early win against Man Utd in Football Manager trade mark case

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.
Read moreReproduction of infringing content online: who's liable?

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.
Read moreAll change! No extension means major changes for IP rights holders from 1 January 2021

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.
Read moreNo hugs or kisses from the General Court

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.
Read moreWheely good news for product designers?

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.
Read moreLuxury and online marketplaces - the next chapter (Coty v Amazon)

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

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.
Read moreCOVID-19 prompts changes to working arrangements for the Court of Justice of the European Union

Prompted by the COVID-19 pandemic, the CJEU announced, on 19 March 2020, that it will be temporarily changing its working arrangements.
Read moreEUIPO issues clarification on COVID-19 extension of time for trade mark and design proceedings

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.
Read moreSo Long Blues

Following our previous IP hub update, Glaxo has suffered fresh survey woes.
Read moreNederlands Uitgeversverbond v Tom Kabinet Internet – a CJEU guide on how to play it by the book

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".
Read moreFirst UK Court decision applying Cofemel

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.
Read moreCJEU hands down decision in Sky v SkyKick case

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.
Read moreTread Bentley when expanding your product offering

The High Court held that luxury car manufacturer Bentley Motors infringed BENTLEY clothing firm's trade marks.
Read moreDressing down for The Consortium for Balsamic Vinegar of Modena

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.
Read moreOnline intermediaries: Fresh guidance from the CJEU on the scope of the E-Commerce Directive

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.
Read moreLiverpool FC fail to register 'LIVERPOOL' trade mark alone

Liverpool FC has failed to register a trade mark for 'LIVERPOOL' at the UKIPO on the basis of the city's "geographical significance".
Read moreCopyright in designs: G-Stars in their Eyes

The CJEU has ruled on the requirements for copyright to vest in designs and applied art.
Read moreHigh Court does not "lycra" unjust Part 36 offers

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.
Read more"Goodwill Hunting": Latest on Cybersquatting

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.
Read moreBMW Rides to Victory

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.
Read moreHigh Court on the Pulse with RCDs
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.
Read more2019 TerraLex guide to navigating cross-border copyright rules

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

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.
Read moreAll that glitters is not "Gold"

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?
Read moreA battle between two warriors

The IPEC has recently considered the protection afforded to trade marks with an average level of distinctiveness.
Read more"Loss" in Translation

IPEC judge lifts costs cap of £25,000 for an inquiry as to damages
Read moreCJEU proves even easy copyright cases make bad law

Commentary on the recent CJEU decision in Renckhoff C-161/17 about the communication to the public right.
Read more"Content is fire, Social Media is gasoline" – Court of Appeal considers the challenges for interim injunctions in the digital age

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.
Read moreChristian Louboutin's red sole walks all over the Trade Mark Directive shape exclusion

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

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.
Read moreCJEU asks whether 'Glen' triggers an image of 'Scotch Whisky' in geographical indications case

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.
Read moreNew trade secrets law to drive breach of confidence claims

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.
Read moreClaimant gets its fingers 'pricked' in IPEC passing off claim

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.
Read moreHigh 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

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".
Read moreSky judge kicks bad faith questions to the ECJ

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.
Read more2018 TerraLex guide to navigating cross-border copyright rules

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.
Read moreCourt of Appeal drives through London Taxi's hopes of enforcing protection for its shape marks

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

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.
Read moreGetting to the heart of database right and copyright

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

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.
Read moreSpare parts and intellectual property: the distinction between "informative use" and "misleading use"

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.
Read moreFlagging the risk of a new type of trade mark infringement

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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