IP hub
As seen at CofA – split decision on 'own name' in Assos v Asos
The Court of Appeal has held that use of the ASOS brand by the well-known online clothing retailer, Asos, created a likelihood of confusion with and damaged the distinctive character of the earlier ASSOS Community Trade Marks owned by Assos, the specialist cycle clothing retailer, but Asos could nonetheless rely on the 'own name' defence to avoid trade mark infringement.
Read moreSupreme caution required when applying double identity rule
A recent High Court decision1 not only demonstrates the difficulty for trade mark owners in enforcing descriptive trade marks (and the risk that those trade marks may be found to be invalid) but also highlights potential pitfalls where trade marks co-exist within the same market.
Read moreJuncker's Utopia: a virtual Europe without borders
It is 2015 and the relentless appetite for consumption of content has never been greater.
Read moreAn Enterprising look at survey evidence
True to form, Mr. Justice Arnold's recent judgment in Enterprise Holdings Inc v. (1) Europcar Group UK Limited (2) Europcar International SASU [2015] EWHC 17(Ch) runs to an extensive 227 paragraphs.
Read moreIP Alert: Court of Appeal confirms Rihanna's image protected under the 'umbrella' of passing off
The Court of Appeal has today dismissed fashion retailer Topshop's appeal[1], confirming that Topshop's unauthorised use of an image of the famous pop star, Rihanna, amounted to passing off.
Read moreA landmark decision for brand owners: Court rules ISP blocking orders extend to trade mark rights
The High Court [1] has recently granted Richemont a blocking order requiring the five largest ISPs in the UK to prevent access to various third party websites from advertising and selling goods which infringe Richemont's trade mark rights.
Read moreVestergaard – creating another buzz
This long-running case [1] has now reached a finale – a High Court decision on the assessment of damages, handed down in October 2014.
Read moreThreats in the spotlight
Threats provisions remain an area of great interest and debate for many intellectual property specialists and the recent case of Cassie Creations Limited v Simon Blackmore and Mirrorkool Limited [2014] EWHC 2941 has again placed threats and their commercial application into the spotlight.
Read moreNo tax please, we're British – Culture test for video games tax relief comes into force
On 19 August 2014, regulations to determine a video game as "British" for the purposes of corporation tax relief for video games development came into force.
Read moreOver EUR760 million worth of product seized by EU customs authorities in 2013
According to the "Report on EU customs enforcement of intellectual property rights – Results at the EU border 2013", customs authorities in 2013 opened approximately 87,000 detention cases in respect of 36 million articles, accounting for a domestic retail value of more than €760 million.
Read more"Fashioning" prior art – CJEU ruling on unregistered Community designs
On reference from the Irish Supreme Court, the Court of Justice of the European (CJEU) has provided further commentary on the scope of prior art required to invalidate an unregistered Community design.
Read moreDon't delay when requesting a stay under the Community Trade Mark Regulations
In proceedings in which the defendants have already been found liable for passing off and trade mark infringement in respect of the BETTY BOOP trade marks, the High Court has rejected the defendants' application to have the remaining copyright infringement and trade mark invalidity proceedings stayed in favour of earlier, related Italian proceedings.
Read moreThe problem with plain cigarette packaging
This interview was first published on Lexis®PSL Commercial on 7 July 2014.
Read moreOHIM's position on colour marks is not black and white
OHIM has recently updated its 'Manual of Trade Marks Practice' so as to apply the Common Practice of the Scope of Protection of Black and White Marks (the 'Common Practice').
Read moreCopyright Alert: Browsing Defence
The Court of Justice of the European (CJEU) has today handed down its long awaited decision in the Meltwater[1] case, confirming the general availability of the "browsing defence" to internet users.
Read moreCopycat packaging – time for reform?
The Trading Standards Institute (TSI) has opposed the basis of a consultation by the Department for Business, Innovation and Skills (BIS) on whether to grant a private right of action to businesses that fall victim to copycat packaging.
Read moreGames content rating pricing: TIGA keeps pressure on PEGI
TIGA, the trade association which represents the UK video game industry, has increased the pressure on PEGI, the European game content rating system, to change its pricing policy.
Read moreA 'lush' result for Cosmetic Warrior; another 'bomb' for Amazon
Following a recent defeat in the High Court,
Read moreAdvocate General fashions a designer-friendly Opinion in Karen Millen v Dunnes Stores
An Advocate General of the CJEU has recently handed down his Opinion following a referral from the Irish High Court in the case of Karen Millen v Dunnes Stores.
Read moreCatch the pigeon - Jack Wills clips House of Fraser's wings in trade mark dispute
Well-known retail brand Jack Wills has successfully relied on its community trade mark of a pheasant (below and left) in infringement proceedings against House of Fraser's use of a pigeon logo (below and right).
Read more'Total' win for FAGE in Greek yoghurt appeal
The Court of Appeal has recently handed down judgment in one of only two recent cases concerning a claim for extended passing off.
Read moreRolex ruling-CJEU gives good news to EU rights holders
This article was first published on Lexis®PSL IP & IT on 13 February 2014 and is in a Q&A format with Kate Beaumont.
Read moreCJEU rules that linking and framing is not copyright infringement
The CJEU handed down an important decision this morning on online copyright infringement.
Read moreNo loss of confidence – establishing causation in confidential information claims
Richmond Pharmacology Ltd v Chester Overseas Ltd, Milton Levine and Larry Levine [2014] EWHC 2692 (Ch)
Read moreNew Customs Enforcement Regulation
With effect from 1 January 2014, the new Customs Enforcement Regulation 608/2013 (Regulation) gives customs authorities extended powers to detain counterfeit or pirated goods at the borders of the European Union.
Read moreBreaking the (supply) chain
Determining the source of infringing goods put on the market is often a priority for trade mark owners seeking to prevent sales of infringing products.
Read moreYou've been framed - High Court issues ISP blocking order
The UK High Court has once again shown its support for copyright holders, granting six major film companies blocking orders under the Copyright Designs and Patents Act 1988 against the UK's six main internet service providers ...
Read moreHarmonisation of EU copyright: the Commission consults
The European Commission (the "Commission") is set to complete its review of copyright law in the EU by spring 2014.
Read moreTrade secrets: proposed European harmonization – an update
Following a study on trade secrets and confidential information in the internal market ...
Read moreNo copyright in software functionality – SAS v WPL, the final chapter
The Court of Appeal has handed down its decision in the lengthy SAS Institute Inc. v World
Read moreBanks beware: IP rights may trump customer confidentiality
The German Supreme Court has recently asked the Court of Justice of the European (CJEU) whether a bank can refuse to disclose confidential information about one of its customers to a third party who alleges that the customer is using the bank's services to sell counterfeit products and infringe the third party's trade marks.
Read moreMattel Left Scrambled without any Friends in the Court
Following a recent defeat in the Court of Appeal in relation to the validity of its three-dimensional tile mark (J W Spear & Son Ltd, Mattel Inc. and Mattel UK Ltd v Zynga Inc [2013] EWCA Civ 1175) ...
Read moreGroundless Threats: Time for Reform?
Current IP legislation provides for protection against groundless threats in respect of IP infringement being brought by a rights holder against a competitor.
Read moreA Wii forward, not a load of DS: anti-copyright measures and proportionality in the Copyright Directive
On 19 September 2013, Advocate General Sharpston gave an Opinion on questions referred to the Court of Justice of the European by the Tribunale de Milano (Italy) (Case C-355/12 Nintendo Co Ltd v PC Box Srl).
Read moreTrade Secrets – A Unified European Regime?
Earlier this year, a study was prepared for the European Commission relating to the treatment of Trade Secrets and Confidential Business Information within the internal market.
Read moreTrade Mark Protection: Court of Appeal says distinctiveness is not enough
The Court of Appeal for England and Wales recently handed down its much anticipated ruling in Cadbury's long-drawn-out battle to maintain its UK trade mark registration for the colour purple.
Read moreCopyright Guide 2013
We are pleased to attach a link to an overview of UK copyright, which we trust will prove a useful reference for any copyright issues that you may face, whether in the context of disputes or commercial matters.
Read moreRihanna's image protected under the 'umbrella' of passing off
The High Court has recently held that the fashion retailer Topshop's unauthorised use of an image of the famous pop star, Rihanna, amounted to passing off.
Read moreThe Trade Mark Clearing House – Do You Need to Sign Up?
In January 2012, ICAAN began allowing organisations to apply for new Generic Top Level Domains (gTLDs) which will operate alongside the 280 Country Code Top Level Domains (.com and .co.uk etc) and the 22 existing gTLDs (.biz and .info etc).
Read moreTrunki successfully wheels out design rival before the High Court
The High Court has recently found that design rights and copyright in the well-known 'Trunki' rideon suitcase for children were infringed by a Hong Kong based competitor's ride-on suitcase for children called the 'Kiddee Case'.
Read moreBSKYB on cloud 9 as court rules Microsoft's "SkyDrive" infringes its marks
The High Court has ruled in favour of British Sky Broadcasting Group plc ("BSkyB") following a trade mark dispute with Microsoft Corporation ("Microsoft") over Microsoft's "SkyDrive" online storage facility.
Read moreVestergaard – guarding trade secrets
The Supreme Court has ruled, in the final stage of this case, that an ex-employee could not have misused confidential information if she did not know about (i) the confidential information; and (ii) the fact of its misuse.
Read moreInterflora v Marks and Spencer
Following years of legal wrangling between Interflora and Marks and Spencer (M&S) in respect of keyword advertising, on 21 May 2013, the High Court handed down a substantial 99 page judgment, ultimately, in favour of Interflora as trademark owner.
Read moreCopyright: Supreme Court Considers "Browsing Defence"
The Supreme Court has handed down its long awaited decision in the Meltwater case which addresses important questions about the application of copyright law to internet browsing.
Read moreCut off the head but beware that the sub-licence may not die
In the recent High Court decision VLM Holdings Limited v Ravensworth Digital Services Limited [1] Mann J has ruled that a sub-licence is capable of surviving termination of its head licence in certain (albeit, fact-specific) circumstances.
Read moreHigh Court finds that "History" can be repeated
A highly anticipated High Court decision was handed down 1 February 2013 dismissing claims for trade mark infringement and passing off brought by A & E Television Networks LLC and its UK subsidiary AETN against Discovery Communications Europe Ltd.
Read moreHigh Court reaffirms no copyright protection for computer program functionality
In what should be the final instalment in a long-running case, on January 25 2013 a decision was issued in SAS Institute Inc v World Programming Ltd[i] following the referral back to the High Court from the European Court of Justice (ECJ)
Read moreSupreme Court clarifies what constitutes 'making' a patented product
On 13 March 2013 the Supreme Court issued its weighty decision in the long-running case of Schütz v Werit([2013] UKSC 16).
Read moreSurveying the legal landscape
The Court of Appeal has handed down its much anticipated judgment on the admissibility of survey evidence in the long running trade mark dispute between Marks & Spencer and Interflora.
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