Posts Tagged ‘ip’
Friday, March 2nd, 2012
The Advertising Standards Authority (ASA) has banned Sofa King’s regional press ad which included the slogan “The Sofa King – Where the Prices are Sofa King Low!” after receiving three complaints.
The ASA held the slogan could be “interpreted as derivative of a particular swear word which consumer research had found to be a word so likely to offend that it should not be used in ads at all, even when it was relevant to the name of a product”. It concluded that it was likely to cause “serious or widespread offence” and that the ad breached the CAP Code.
The Sofa King have defended their use of the slogan stating that they have not received any complaints directly. The general online opinion appears to be that it’s all just a bit of tongue in cheek fun. However, the slogan does suggest a serious swear word so that once a formal complaint was made to the ASA, it had little choice but to ban the slogan.
Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.
Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
Tags: advertising, advertising standards authority, cap code, Intellectual Property, ip, marketing, Sara Mcneill, sofa king
Posted in Advertising & Marketing, Brands, Intellectual Property | No Comments »
Friday, December 9th, 2011
A Strategy published yesterday and highlighted by the IPO’s press release sets out measures to help small and medium size businesses protect their IP rights.
The strategy picks up a number of proposals for the future (such as the creation of a register of IP advisors, online training tool, and provision of audits) and some that are already in place such as online patent service “Ipsum” which allows businesses to find patents and related documentation online.
All steps are welcomed if they result in SME’s developing and protecting IP. So often SMEs only become aware of IP rights and their protection as a result of an internal dispute or on the departure of a key developer. Lets hope these measures will allow SMEs to be sufficiently informed at an early stage to prevent unnecessary disputes from arising.
Posted by Richard Nicholas, who specialises in commercial, IT and outsourcing agreements, complex projects for private and public sector clients, collaboration, distribution & agency contracts, e-commerce and consumer law.
Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com
Tags: copyright, Intellectual Property, ip, IPO, Ipsum, SME's
Posted in Advertising & Marketing, Brands, Intellectual Property, Retail | No Comments »
Monday, November 21st, 2011
The Chinese phone manufacturer ZTE plans to focus on manufacturing smartphone in a bid to crack the US telecommunications market. ZTE will move from producing lower-end ‘feature phones’ – a hugely successful export to emerging economies like India – and concentrate on fourth generation smartphones.
This latest phase of ZTE’s phenomenal rise from its origins as a trader of accordions and low grade telephones, coincides with growing political tensions between the US and China. The US House intelligence committee recently launched an investigation into the security threat posed by the Chinese technology firms operating in the US market. ZTE and Huawei, another multi-national telecommunications firm, are both under scrutiny.
These developments highlight the sheer structural breadth of the Chinese economy, simultaneously industrialising from subsistence agriculture at one end to manufacturing cutting edge smart phones at the other. It also reveals US concern about losing its primacy in hi-tech innovation. For all the rhetoric about ‘threats to national security’, it is the threat to US business interests that really concern American lawmakers.
Dave Drew
0115 976 6226
ddrew@brownejacobson.com
Tags: fourth generation smartphone, Intellectual Property, ip, smartphones
Posted in Manufacturing | No Comments »
Thursday, October 27th, 2011
The European Court of Justice (ECJ) has followed the Advocate General’s opinion by dismissing an appeal against the General Court’s ruling that Pepsi’s design registration for “pogs” was invalid.
The design was previously ruled invalid because it did not create a different overall impression on the informed user than an earlier Promer design. A key facet of Pepsi’s appeal was that the General Court had incorrectly defined the “informed user” and his level of attentiveness.
The ECJ disagreed with Pepsi and stated that informed user lies “somewhere between … the average consumer… who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise”.
Although this is a welcome clarification, this case concerned a very simple design, and it seems likely that the courts will continue to grapple with this concept in less straightforward design fields.
Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.
Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
Tags: community designs, ECJ, European Court of Justice, Intellectual Property, ip, pepsi, pogs, product design, registered designs, trade marks
Posted in Intellectual Property | No Comments »
Wednesday, August 3rd, 2011
The European Court of Justice has previously held that trade mark proprietors cannot object to pharmaceuticals being repackaged if repackaging is necessary to market the product, it does not affect the products’ condition, the packaging clearly identifies the repackager, is not defective, and the importer gives notice to the trade mark proprietor.
Merck brought two cases complaining that various companies had infringed its trade marks by selling repackaged products which stated the repackaging had been carried out by one company when it had actually been carried out by another company in the same group.
Last week the court held that Merck’s rights were sufficiently protected by the companies marketing the pharmaceuticals putting their name on the packaging and therefore there was no trade mark infringement.
It is also worth noting the court’s previous comments that derogations from free movement of goods will only be permitted to the extent necessary to protect the specific subject matter and the essential function of a trade mark.
Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.
Giles Parsons
0121 237 4557
gparsons@brownejacobson.com
Tags: European Court, ip, Merck, pharmaceuticals, trade marks
Posted in Intellectual Property | No Comments »
Thursday, June 16th, 2011
The long standing dispute between the creators of Miffy and Hello Kitty’s companion Cathy has finally been settled.
Miffy, a small white female rabbit, was created in 1955 by Dick Bruna. Cathy, also a small white female rabbit, was created by Sanrio in 1976.
In 2010 Mercis Media BV (Mr Bruna’s copyright management firm) brought trademark and copyright infringement proceedings against Sanrio. Why it took Mr Bruna 34 years to bring proceedings is unclear…
Sanrio was ordered to stop production, sale and marketing of Cathy character goods in the Netherlands, Belgium and Luxembourg and to pay €25,000 per day if it did not comply, up to a maximum of €2m.
Sanrio appealed and filed a counter claim seeking the Miffy trade mark be removed from the register.
The matter has now been resolved, with Sanrio agreeing to no longer use the Cathy character. Both parties have also agreed to donate €150,000 jointly to the victims of the Japan earthquake. A very commendable settlement indeed.
Oliver Laing
0115 908 4854
olaing@brownejacobson.com
Tags: Brands, copyright, hello kitty, Intellectual Property, ip, miffy, trade marks
Posted in Brands, Commercial dispute resolution, Commercial Litigation, Intellectual Property | No Comments »
Tuesday, April 19th, 2011
Whether it’s an angry ex-colleague, ex-employee or ex-director – if your business has valuable confidential information that it needs to protect, these people will inevitably know about it.
When that person leaves – how do you stop them from disclosing information about your product or company to other suppliers?
We looked at practical legal steps (restrictive covenants, contractual provisions) and technical/IT steps that you can use to prevent the loss of IP, data and know-how in a recent workshop and picked up some useful industry perspectives from those who attended.
If all else fails then the court will intervene, occasionally with a fairly stringent perpetual injunction, prohibiting that person from (ever!) disclosing that information, as in a recent case involving a golf trolley device .
To get such a prescriptive remedy however you’ll need to act fast, demonstrate a real threat and that other remedies will not suffice. Getting the right IP and contractual protection in place before you reach a dispute can significantly improve your chances.
Posted by Richard Nicholas, who specialises in commercial, IT and outsourcing agreements, complex projects for private and public sector clients, collaboration, distribution & agency contracts, e-commerce and consumer law.
Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com
Tags: Commercial contracts, confidential infomation, ip
Posted in Commercial contracts, In-house Lawyers, Intellectual Property, IT Contracts, Outsourcing | No Comments »
Friday, March 25th, 2011
M&S has purchased ‘interflora’ as an adword (a Google search for Interflora now displays an advertising link to M&S’ flower delivery service). Does M&S’ use of the word infringe Interflora’s trade mark rights?
The Advocate General has now provided an opinion in the case of Interflora v Marks & Spencer stating that a trade mark owner can forbid the use of a trade mark in such circumstances where the advertising link:
- is liable to lead some members of the public to believe that the competitor is a member of the trade mark owner’s commercial network; and/or
- displays or mentions the trade mark and the advertiser thereby attempts to benefit from its power of attraction, reputation or prestige
Surprisingly the Advocate General believes that the advertisement may confuse searchers in to believing that M&S is part of the Interflora network. If the court’s hypothetical searchers are so easily confused then adword purchasers will need to select their adverts very carefully.
Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com
Tags: advertising, advocate general, Brands, Intellectual Property, ip, online advertising, trade marks
Posted in Advertising & Marketing, Brands, Intellectual Property | No Comments »
Thursday, March 24th, 2011
The case of Dame Vivienne Westwood v Anthony Knight [2011] EWPCC 008 witnessed the first trial heard by HHJ Birss QC under the new Patents County Court (PCC) procedural rules.
Issues of trade mark infringement, copyright infringement, and passing off aside, the judgment has attracted interest because of Judge Birss’ flexible and streamlined approach to trial management.
In particular, the solicitors for the claimant complimented the new regime stating that it provided a “faster, cheaper way of getting expert justice in IP cases”. As an example, the Court ordered a telephone hearing a few days before trial in order to address issues which would have otherwise taken up valuable time at trial.
The case highlights Judge Birss’ hands-on approach to case management and makes the PCC look very attractive as a faster and cheaper alternative to the High Court, particularly for claimants who feel confident that they can fund their case within the £50,000 costs cap.
Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.
Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com
Tags: Intellectual Property, ip, patents county court, PCC
Posted in Intellectual Property | No Comments »
Thursday, February 3rd, 2011
The Secretary of State for Culture Jeremy Hunt announced that Ofcom will review the feasibility of the blocking powers created by the Digital Economy Act.
This perhaps shows that the Government has recognised that these powers, as currently envisaged, will be extremely difficult to implement and may do little to stem the tide of online copyright infringement.
The Digital Economy Act, and the anti-filesharing agenda of such creative arts trade associations as the BPI that lies behind it, have been on the ropes for some time. In November last year the High Court granted permission to BT and TalkTalk to judicially review the Act.
Meanwhile a pending decision of the European Court of Justice in Scarlet v Sabam could have a significant impact in the way the UK courts interpret the Act.
The fight is far from over yet but for the moment it seems that the filesharers are having the better of the early skirmishes in what will be a long and bloody battle!”
Posted by Nick McDonald, who specialises in intellectual property law including copyright, patents, trade marks, passing off, design disputes, breach of confidence, database rights and IT.
Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com
Tags: digital economy, Intellectual Property, ip, ofcom
Posted in Intellectual Property | 1 Comment »
Wednesday, December 1st, 2010
The High Court has confirmed that rights infringement of internet hosted material can only occur in the country where the host server is based.
In the case of Football Dataco Limited and others v Sportradar, the claimants ran a site which exploited certain data relating to English and Scottish football matches. Sportradar ran a similar site hosted on webservers in Germany and Austria. Dataco argued that when the British public viewed Sportradar’s site, this infringed Dataco’s UK copyright and database rights. The High Court disagreed.
Whilst this decision does clarify the law on this point, it does not particularly assist in aiding the prevention of online infringement. In fact it may influence some operators to host infringing data on servers in selectively sourced countries…thereby making the protection of intellectual property rights in relation to the internet even more difficult than it already is.
Holly Mitchell
0115 908 4886
hmitchell@brownejacobson.com
Tags: copyright, Intellectual Property, ip, ip infringement, online infringement
Posted in Commercial Litigation, Intellectual Property | 1 Comment »
Thursday, November 25th, 2010
Following on from our opinion earlier in the year, Nominet (the UK domain name registry) will make available certain single character and two letter domain names.
From 1 December 2010 until 17 January 2011, owners of registered trade marks which match their desired “short” domain name will have the first option to apply, upon providing evidence that they have used their trade mark in the UK before 1 January 2008.
Following this will be a second sunrise period for owners of relevant unregistered marks and then a landrush period before a general release (dates to be confirmed).
Rights holders might be tempted to apply immediately on 1 December. Nominet expects fierce competition for the domain names, but beware! Applications will be published, and rival applications will proceed to an auction. Applicants should consider the potential commercial advantages of filing closer to 17 January, since Nominet has confirmed that where there are rival applications, no priority will be given to the earliest application.
Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.
Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
Tags: domain registration, Intellectual Property, ip, Nominet, short domain names, trade marks
Posted in Intellectual Property | No Comments »
Friday, November 12th, 2010
Earlier this month the Prime Minister announced an independent six-month review of the Intellectual Property system in the UK (the “Technology Blueprint”). He said “…the Government can help make Britain the most attractive place in the world to start and invest in innovative technology companies.” However, much of the discussion around IP neglects the value of trade marks and good branding. Of course protecting creative ideas and expressions by copyright or patent is important, don’t forget the value of a good well protected brand. A trade mark as a badge of origin is important but the mark also indicates an investment in reputation, added value and creativity. When thinking about your IP don’t forget the value of a good brand.
Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.
Peter Ellis
0115 976 6269
pellis@brownejacobson.com
Tags: Brands, copyright, Intellectual Property, ip, technology blueprint, trade marks
Posted in Intellectual Property | No Comments »
Friday, October 8th, 2010
“The inventor protected anywhere and everywhere in the same way. What a beautiful dream!” – so said a lawyer of the late 19th Century.
Notwithstanding countless international treaties on trade since that time, and the recognition of IP rights across jurisdictions and at both a national and international level, we are still far from international harmonisation of law and procedure. The Anti-Counterfeiting Trade Agreement (ACTA), published in April this year, is the latest attempt. ACTA is a proposed international agreement whose purpose would be to establish international standards on intellectual property protection. ACTA is another attempt by governments to negotiate a common international standard on how countries should act against large scale infringements of IP rights.
ACTA is being negotiated by 10 developed countries and the European Union. It is moving slowly to a consensus. As it does, however, criticism is mounting that the final agreement will amount to an infringement of human rights, thereby restricting the right of an individual to buy something which he knows is not an original. As a senior judge recently stated, the consumer is not stupid. So, given that ACTA is negotiated by governments, far removed from ordinary people, has the individual lost out?
Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.
Peter Ellis
0115 976 6269
pellis@brownejacobson.com
Tags: acta, anti counterfeiting trade agreement, counterfeit goods, Intellectual Property, ip
Posted in Intellectual Property | No Comments »
Wednesday, September 15th, 2010
The European Court of Justice has ruled that the Lego brick cannot be registered as a trade mark because its shape is necessary to obtain a technical function, ie to enable another Lego brick to be attached to it. The court found that the exclusion applies even where, within the shape, there are other non-essential characteristics with no technical function.
So where does that leave products whose shapes are dictated by technical functions? Design protection may be available for some features of shapes, but again there is an exclusion applying to features of a design which are solely dictated by technical function, so community registered and unregistered design rights may be of little assistance. If the product is novel and inventive, it may qualify for patent protection.
The ECJ gives little guidance as to when any non-technical features are sufficiently relevant so as to bring the shape within trade mark protection. Those seeking such protection will have to place a great emphasis on any non-technical features, to get over the hurdle of registrability – something which the Lego brick failed to do.
Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.
Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
Tags: design protection, Intellectual Property, ip, patent protection, trade marks
Posted in Intellectual Property | 1 Comment »
Wednesday, September 15th, 2010
Do we make assumptions about the origin of goods on the basis of a single letter?
The Office of Harmonization for the Internal Market (OHIM) says not – an application for a community trade mark by Borco to register the Greek letter alpha – α – for wines was held to lack distinctive character, being a simple reproduction of the letter and also a mark that Greek consumers would not see as an indicator of origin.
Advocate General Bot thinks otherwise and contends the OHIM’s practice of automatically rejecting applications to register single letters as trademarks without a full assessment is wrong.
This decision follows swiftly on from recent decisions on colour marks and confirms that all marks must be examined on their capability of distinguishing their particular goods from those of others.
It is hard to see how the ECJ could fail to follow the Advocate General’s opinion. Clearly there are no short cuts to examining distinctiveness no matter how short the mark!
Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.
Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com
Tags: distinctive character, Intellectual Property, ip, trade marks
Posted in Intellectual Property | No Comments »
Thursday, June 17th, 2010
In the High Court recently, the Telegraph Media Group Limited successfully defended a claim of defamation made by Dr Sarah Thornton, the author of Seven Days in the Art World. The Telegraph successfully argued that the words complained of in its review of the book were not capable of being defamatory.
The judge recognised that any definition of “defamatory” must incorporate some qualification or threshold of seriousness, so as to exclude trivial claims. He preferred the following definition:
“the publication of which he complains may be defamatory of him because it substantially affects in an adverse manner the attitude of other people towards him, or has a tendency so to do”.
This interpretation provides defendants with another weapon in their armoury. Plus in an increasingly pro-publisher environment, coupled with the prospect of claimants not being able to recover success fees and ATE insurance premiums from defendants, it may make potential claimants think twice before commencing an action.
Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
Tags: Brands, Commercial Litigation, defamation, ip
Posted in Brands, Commercial Litigation, Intellectual Property | No Comments »
Thursday, June 10th, 2010
The High Court has upheld a decision that consent given under a co-existence agreement to the registration of a trade mark for certain goods was a bar to opposition on relative grounds, citing section 5(5) of the Trade Marks Act.
Omega Engineering argued that Omega SA had no right to oppose its application to register OMEGA in respect of certain goods since it had expressly agreed not to do so under a co-existence agreement between the two parties. Omega SA argued, amongst other things, that the co-existence agreement was irrelevant to an objection made on relative grounds. Mr Justice Arnold disagreed stating that it would be unjust if a party who had consented to the registration of a trade mark could successfully oppose the application to register it.
This has to be the right decision otherwise the usefulness of co-existence agreements would be severely threatened.
Posted by Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
Tags: Intellectual Property, ip, trade marks
Posted in Commercial contracts, Commercial Litigation, Intellectual Property | No Comments »
Thursday, April 22nd, 2010
In March this year, Justice Secretary Jack Straw announced that there would be a 90% reduction in the recoverability of success fees in relation to defamation claims. The plans were also in line with the recommendations laid out by Lord Justice Jackson in his report published back in January.
Publishers welcomed the move but the oncoming election has led to the reforms being derailed. A number of MPs have also openly opposed the reforms because the proposals would not adequately protect the “little guy” who sues the publisher. Does this mean these same MPs disagree with the conclusions and recommendations of the Jackson report? It is only a matter of time before defendants are given greater protection against liability to pay success fees and after-the-event insurance premiums in defamation cases, and publishers will feel that not passing this legislation is an opportunity missed.
Posted by Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com
Tags: Brands, Commercial Litigation, defamation, ip, jackson review
Posted in Brands, Commercial Litigation, Intellectual Property | No Comments »
Friday, February 12th, 2010
In the recent case of The Codemasters Software Co. Limited v Automobile Club De L’Ouest (“ACO”), the High Court adopted a commercial approach to interpretation of an IP indemnity in favour of Codemasters.
ACO had warranted under a licence agreement with Codemasters that the use by Codemasters of car manufacturers’ names, trade marks and car designs would not infringe any IP rights anywhere in the world. However, when Codemasters incorporated certain materials into its computer game, car manufacturers claimed that ACO did not have the rights to grant such licences. Codemasters sought to rely on an indemnity in the licence agreement with ACO under which ACO agreed to indemnify Codemasters against claims by third parties. ACO argued that the claims made by the car manufacturers were not claims of ‘breaches of warranty’ and were not therefore covered by the indemnity.
The Court held that there are good reasons why parties agree to indemnities against third party infringement claims: generally the licensor of intellectual property rights is in a better position to ascertain whether the exploitation will infringe third party IP rights. Accordingly, the Court ruled in favour of Codemasters.
This has got to be the right interpretation and will be reassuring to licensees. However, licensees must ensure that licensor warranties and indemnities are clear and unambiguous and not open to interpretation.
Posted by Sara McNeill
0121 237 3930
smcneill@brownejacobson.com
Tags: ip
Posted in Intellectual Property | No Comments »
