Latest by Ben Mark

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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Sandoz Purple leaves Glaxo Blue

Published on 12 November 2019. By Ben Mark, Partner and Greg Burke, Associate

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Surveys fail to persuade High Court of passing off.

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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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"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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BMW Rides to Victory

Published on 06 March 2019. By David Cran, Partner 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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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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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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"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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Court of Appeal drives through London Taxi's hopes of enforcing protection for its shape marks

Published on 13 November 2017. By Ben Mark, Partner

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

Published on 22 February 2017. By Ben Mark, Partner 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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15% increase in counterfeit goods seized in 2015

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

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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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ISPs' appeal is "blocked" 

Published on 06 July 2016. By Ben Mark, Partner 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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Pirates and popcorn: rise of site-blocking injunctions in EU

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

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

Published on 09 November 2015. By Ben Mark, Partner

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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IP Crime Report 2014-2015

Published on 30 September 2015. By Ben Mark, Partner

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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UK goodwill still reigns Supreme

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

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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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, Partner

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, Partner

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

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

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, Partner

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, Partner

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

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

Following a recent defeat in the High Court,

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Mattel Left Scrambled without any Friends in the Court

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

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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High Court reaffirms no copyright protection for computer program functionality

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

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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