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Supreme caution required when applying double identity rule

Published on 17 March 2015. By Jeremy Drew, Partner and Georgia Davis, Legal Director

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.

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Juncker's Utopia: a virtual Europe without borders

Published on 06 March 2015. By Jeremy Drew, Partner and Ciara Cullen, Partner

It is 2015 and the relentless appetite for consumption of content has never been greater.

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An Enterprising look at survey evidence

Published on 05 February 2015. By David Cran, Partner and Ciara Cullen, Partner

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.

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IP Alert: Court of Appeal confirms Rihanna's image protected under the 'umbrella' of passing off

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

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.

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A landmark decision for brand owners: Court rules ISP blocking orders extend to trade mark rights

Published on 08 January 2015. By David Cran, Partner and Ben Mark, Legal Director

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.

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Vestergaard – creating another buzz

Published on 04 December 2014. By David Cran, Partner and Louise Morgan, Senior Associate

This long-running case [1] has now reached a finale – a High Court decision on the assessment of damages, handed down in October 2014.

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Threats in the spotlight

Published on 27 November 2014. By Jeremy Drew, Partner and Georgia Davis, Legal Director

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.

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No tax please, we're British – Culture test for video games tax relief comes into force

Published on 29 August 2014. By David Cran, Partner and Adam Cusworth, Senior Associate

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.

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Over EUR760 million worth of product seized by EU customs authorities in 2013

Published on 22 August 2014. By David Cran, Partner

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.

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"Fashioning" prior art – CJEU ruling on unregistered Community designs

Published on 07 August 2014. By Jeremy Drew, Partner

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.

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Don't delay when requesting a stay under the Community Trade Mark Regulations

Published on 04 August 2014. By Jeremy Drew, Partner and Adam Cusworth, Senior Associate

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.

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The problem with plain cigarette packaging

Published on 09 July 2014. By Jeremy Drew, Partner

This interview was first published on Lexis®PSL Commercial on 7 July 2014.

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OHIM's position on colour marks is not black and white

Published on 09 June 2014. By David Cran, Partner and Ben Mark, Legal Director

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').

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Copyright Alert: Browsing Defence

Published on 05 June 2014. By Paul Joseph, Partner and Ben Mark, Legal Director

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.

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Copycat packaging – time for reform?

Published on 02 June 2014. By David Cran, Partner and Ben Mark, Legal Director

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.

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Games content rating pricing: TIGA keeps pressure on PEGI

Published on 29 May 2014. By David Cran, Partner and Ben Nicholson, Associate

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.

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A 'lush' result for Cosmetic Warrior; another 'bomb' for Amazon

Published on 21 May 2014. By Paul Joseph, Partner and Ben Mark, Legal Director

Following a recent defeat in the High Court,

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Advocate General fashions a designer-friendly Opinion in Karen Millen v Dunnes Stores

Published on 08 May 2014. By Jeremy Drew, Partner and Ciara Cullen, Partner

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.

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Catch the pigeon - Jack Wills clips House of Fraser's wings in trade mark dispute

Published on 04 March 2014. By Jeremy Drew, Partner

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).

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'Total' win for FAGE in Greek yoghurt appeal

20 February 2014

The Court of Appeal has recently handed down judgment in one of only two recent cases concerning a claim for extended passing off.

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Rolex ruling-CJEU gives good news to EU rights holders

Published on 17 February 2014. By Jeremy Drew, Partner and Adam Cusworth, Senior Associate

This article was first published on Lexis®PSL IP & IT on 13 February 2014 and is in a Q&A format with Kate Beaumont.

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CJEU rules that linking and framing is not copyright infringement

Published on 13 February 2014. By Paul Joseph, Partner

The CJEU handed down an important decision this morning on online copyright infringement.

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No loss of confidence – establishing causation in confidential information claims

Published on 10 February 2014. By David Cran, Partner and Louise Morgan, Senior Associate

Richmond Pharmacology Ltd v Chester Overseas Ltd, Milton Levine and Larry Levine [2014] EWHC 2692 (Ch)

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New Customs Enforcement Regulation

Published on 20 January 2014. By David Cran, Partner

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.

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Breaking the (supply) chain

Published on 10 January 2014. By Paul Joseph, Partner and Henry Priestley, Senior Associate

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.

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Blog

You've been framed - High Court issues ISP blocking order

Published on 07 January 2014. By Paul Joseph, Partner and Adam Cusworth, Senior Associate

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 ...

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Harmonisation of EU copyright: the Commission consults

Published on 07 January 2014. By Paul Joseph, Partner and Henry Priestley, Senior Associate

The European Commission (the "Commission") is set to complete its review of copyright law in the EU by spring 2014.

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Trade secrets: proposed European harmonization – an update

Published on 11 December 2013. By David Cran, Partner

Following a study on trade secrets and confidential information in the internal market ...

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No copyright in software functionality – SAS v WPL, the final chapter

Published on 02 December 2013. By David Cran, Partner and Adam Cusworth, Senior Associate

The Court of Appeal has handed down its decision in the lengthy SAS Institute Inc. v World

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Banks beware: IP rights may trump customer confidentiality

Published on 27 November 2013. By David Cran, Partner

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.

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Blog

Mattel Left Scrambled without any Friends in the Court

Published on 25 November 2013. By Paul Joseph, Partner and Ben Mark, Legal Director

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) ...

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Groundless Threats: Time for Reform?

Published on 14 November 2013. By Jeremy Drew, Partner and Georgia Davis, Legal Director

Current IP legislation provides for protection against groundless threats in respect of IP infringement being brought by a rights holder against a competitor.

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A Wii forward, not a load of DS: anti-copyright measures and proportionality in the Copyright Directive

Published on 01 November 2013. By David Cran, Partner and Adam Cusworth, Senior Associate

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).

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Trade Secrets – A Unified European Regime?

Published on 21 October 2013. By David Cran, Partner and Louise Morgan, Senior Associate

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.

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Trade Mark Protection: Court of Appeal says distinctiveness is not enough

Published on 15 October 2013. By Jeremy Drew, Partner and Ciara Cullen, Partner

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.

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Copyright Guide 2013

Published on 12 September 2013. By David Cran, Partner

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.

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Rihanna's image protected under the 'umbrella' of passing off

Published on 10 September 2013. By David Cran, Partner and Adam Cusworth, Senior Associate

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.

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Blog

The Trade Mark Clearing House – Do You Need to Sign Up?

Published on 02 September 2013. By Paul Joseph, Partner

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).

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Trunki successfully wheels out design rival before the High Court

27 August 2013

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'.

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BSKYB on cloud 9 as court rules Microsoft's "SkyDrive" infringes its marks

Published on 31 July 2013. By Jeremy Drew, Partner

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.

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Vestergaard – guarding trade secrets

Published on 29 July 2013. By David Cran, Partner and Louise Morgan, Senior Associate

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.

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Interflora v Marks and Spencer

Published on 31 May 2013. By Paul Joseph, Partner

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.

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Copyright: Supreme Court Considers "Browsing Defence"

Published on 28 May 2013. By Nicole Jahanshahi, Associate

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.

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Cut off the head but beware that the sub-licence may not die

Published on 29 April 2013. By Paul Joseph, Partner and Henry Priestley, Senior Associate

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.

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High Court finds that "History" can be repeated

08 April 2013

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.

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High Court reaffirms no copyright protection for computer program functionality

Published on 30 March 2013. By David Cran, Partner and Ben Mark, Legal Director

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)

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Supreme Court clarifies what constitutes 'making' a patented product

Published on 25 March 2013. By Paul Joseph, Partner and Louise Morgan, Senior Associate

On 13 March 2013 the Supreme Court issued its weighty decision in the long-running case of Schütz v Werit([2013] UKSC 16).

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Surveying the legal landscape

Published on 26 January 2013. By Jeremy Drew, Partner

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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