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IP hub

Blog

A battle between two warriors

Published on 28 November 2018. By Ben Mark, Legal Director and Holly Pownall, Associate

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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, Legal Director 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. By Paul Joseph, Partner and Adam Cusworth, Senior Associate

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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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Blog

"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, 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 Rebecca Rose, Associate and 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 and Paul Joseph, Partner

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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 Holly Pownall, Associate and 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, 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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Blog

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

Published on 16 May 2018. By Rebecca Rose, Associate and 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 Paul Joseph, Partner and 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 Paul Joseph, Partner and 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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Blog

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

Published on 13 November 2017. By Ben Mark, Legal Director and Holly Pownall, Associate

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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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Blog

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 and Paul Joseph, Partner

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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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Blog

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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Blog

Flagging the risk of a new type of trade mark infringement

Published on 10 July 2017. By Rebecca Rose, Associate and Paul Joseph, Partner

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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 Adam Cusworth, Senior Associate and 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

Published on 27 February 2017. By Rebecca Rose, Associate and Paul Joseph, Partner

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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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Blog

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

Published on 22 February 2017. By Ben Mark, Legal Director and Jani Ihalainen, Paralegal

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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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Blog

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

Published on 03 February 2017. By Henry Priestley, Senior Associate and Jani Ihalainen, Paralegal

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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

Published on 19 January 2017. By Paul Joseph, Partner

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

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Blog

Nvidia sweats over Hardware Labs' "threats"

Published on 19 January 2017. By Ciara Cullen, Partner and Adam Cusworth, Senior Associate

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Nvidia’s attempt to bring a groundless threats action against Hardware Labs in the English High Court has failed.

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Blog

Court of Appeal confirms criminal offences cover the sale of "grey" goods

Published on 15 December 2016. By David Cran, Partner

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The Court of Appeal (Criminal Division) has recently confirmed that the sale of "grey" goods can be a criminal offence under the Trade Marks Act 1994 (TMA).

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Blog

Confidential information "oiled" progress of new product development

Published on 14 December 2016. By Louise Morgan, Senior Associate and David Cran, Partner

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When is information confidential? A recent case gave cause for the English High Court to clarify.

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Blog

Fair dealing defence in copyright infringement – a key summary

Published on 27 October 2016. By Joshua Charalambous, Associate

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A recent key decision on fair dealing defence impacts reporting current events in copyright infringement claims.

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Blog

15% increase in counterfeit goods seized in 2015

Published on 11 October 2016. By David Cran, Partner and Ben Mark, Legal Director

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According to the "Report on EU Customs Enforcement of Intellectual Property Rights: Results at the EU Border 2015", the number of goods that were detained at the EU's external borders for suspected infringement of an IP right grew by an estimated 15% in 2015 compared with 2014.

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Blog

What do you know about hyperlinking to infringing content online?

Published on 28 September 2016. By Paul Joseph, Partner

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CJEU clarifies position on linking to infringing content - here's what you need to know

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Video

How ISP blocking orders provide a new and welcome form of redress against e-commerce counterfeiting

Published on 21 September 2016. By Ciara Cullen, Partner

Ciara Cullen, Partner in IP and Technology, tackles the topic of counterfeiting online, how it's impacting sectors such as retail and pharmaceuticals, and the new remedy available to brand owners.

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Blog

ISPs' appeal is "blocked" 

Published on 06 July 2016. By Ben Mark, Legal Director and David Cran, Partner

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In a judgment handed down today, the Court of Appeal, led by Lord Justice Kitchin, has overwhelmingly rejected the appeal by the five largest ISPs and upheld the High Court decision to grant Richemont a blocking order requiring those ISPs in the UK to prevent access to various third party websites from advertising and selling goods which infringe Richemont's trade mark rights.

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Blog

Brexit - a legal analysis: IP rights

Published on 28 June 2016. By Paul Joseph, Partner

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IP rights in the UK are all influenced and moulded to a greater or lesser degree by European law.

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Blog

House of Fraser held to account by Jack Wills

Published on 07 June 2016. By Jeremy Drew, Partner and Georgia Davis, Legal Director

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Blog

Comic Enterprises remains gleeful as CofA upholds series marks

Published on 31 May 2016. By Ciara Cullen, Partner and Louise Morgan, Senior Associate

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The Court of Appeal recently ruled on an outstanding aspect of the appeal brought by Twentieth Century Fox in the "Glee" trade mark dispute.

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Blog

Move to unified European regime as trade secrets directive adopted by EU Parliament

Published on 25 April 2016. By David Cran, Partner and Louise Morgan, Senior Associate

Earlier this month, on 14 April 2016, the draft European Directive on the protection of trade secrets against their unlawful acquisition, use and disclosure was passed by the European Parliament (EP) at a first reading.

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Blog

Supreme Court sends Trunki packing for good

Published on 21 March 2016. By Jeremy Drew, Partner

In the latest instalment of the ongoing saga involving the Trunki case, the Supreme Court has unanimously dismissed the appeal filed by Magmatic.

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Blog

Pirates and popcorn: rise of site-blocking injunctions in EU

Published on 18 March 2016. By David Cran, Partner and Ben Mark, Legal Director

Whilst obtaining blocking injunctions against internet service providers (ISPs) have become an established practice in the UK, particularly within the film and music industry, the position is less clear cut elsewhere in the EU.

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Blog

Comic Enterprises feel gleeful after CofA upholds trade mark infringement

Published on 01 March 2016. By David Cran, Partner and Louise Morgan, Senior Associate

This recent hearing is the latest instalment in the "Glee" trade mark dispute between Comic Enterprises and Twentieth Century Fox.

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Blog

TerraLex Cross-Border Copyright Guide 2016

Published on 19 February 2016. By Paul Joseph, Partner and Jeremy Drew, Partner and David Cran, Partner

We are delighted to present our Cross-Border Copyright Guide 2016.

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Blog

EC's 2015 comms on copyright– appetiser to 2016's main course

Published on 09 February 2016. By Jeremy Drew, Partner and Ciara Cullen, Partner

As part of its Digital Single Market Strategy the European Commission released a Communication entitled "Towards a modern, more European copyright framework" on 9 December 2015.

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Blog

Stuck in the middle with (section) 52

Published on 28 January 2016. By Paul Joseph, Partner and Georgia Davis, Legal Director

IPO Consultation on the transitional arrangements for the repeal of Section 52 of the CDPA

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Blog

Supreme Court clarifies law on implied terms

Published on 21 January 2016. By Chris Ross, Partner

The Supreme Court has clarified the law on implied terms: in order for a term to be implied it must be necessary for business efficacy or alternatively be so obvious as to go without saying.

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Blog

Detention cases up as EU customs seizes €617m worth of goods

Published on 09 November 2015. By Ben Mark, Legal Director

According to the "Report on EU Customs Enforcement of Intellectual Property Rights 2014" published by the European Commission, there has been a rise in the number of interceptions of infringing goods by customs at external EU borders.

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Blog

Unjustified threats regime: Law Commission final report published

Published on 29 October 2015. By Georgia Davis, Legal Director

On 12 October 2015, the UK Law Commission issued its second and final report on groundless threats in IP infringement proceedings entitled "Patents, Trade Marks and Designs:

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Blog

The future of shape marks

Published on 26 October 2015. By Paul Joseph, Partner and Rebecca Rose, Associate

'What do you see?' This is a question most often associated with crystal balls, but it will now be asked by thousands of brand owners across the EU member states, whatever the shape of the goods they produce.

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Blog

IP Crime Report 2014-2015

Published on 30 September 2015. By Ben Mark, Legal Director

According to the "IP Crime Report 2014/2015" published by the national IP Crime Group, the Border Force detained over 1.6 million infringing items over the reporting year, with an "if genuine" retail value in excess of £56 million.

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Blog

Asos Supreme- what will a change in the law mean?

Published on 11 August 2015. By David Cran, Partner and Adam Cusworth, Senior Associate

Earlier in April, we wrote an article on the Court of Appeal decision in the Assos v Asos trade mark dispute.

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Blog

Private Copying Exception is deemed unlawful

Published on 20 July 2015. By Paul Joseph, Partner

In October 2014, the eagerly anticipated copyright exceptions came into force via a series of amendments to the Copyright Designs and Patents Act 1988.

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Blog

UK goodwill still reigns Supreme

Published on 22 June 2015. By David Cran, Partner and Ben Mark, Legal Director

The question to the Supreme Court was whether a claimant in a passing off action needs to have actual customers in the UK or whether it is sufficient to demonstrate that it has a reputation in the UK and internationally.

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