Posts Tagged ‘trade marks’
Friday, January 13th, 2012
Yesterday ICAAN opened its doors to applications for generic top level domains (gTLDs). Applicants will be able to apply for specific words or letters as an alternative to the recognised top level suffixes of .com, .net and .org. Examples of early applications are .london and .pepsi (i.e. http://mybrand or customerservice@mybrand).
The changes have led to widespread concern, with companies fearing reputational damage if their key brands and trade marks fall into the wrong hands. However, with a non-refundable “evaluation fee” of $185,000 and careful policing promised by the registries, there should be a significant barrier in the way of most Internet fraudsters.
The industry is estimating we will see around 1,500 initial applications for gTLDs. In our opinion, gTLDs represent a new frontier on the Internet and, in turn, a great opportunity for companies to stake their claim with key trade marks or creative new branding.
Posted by Oliver Laing, who specialises in intellectual property agreements, anti counterfeiting and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.
Oliver Laing
0115 908 4854
olaing@brownejacobson.com
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Rating: 9.0/10 (2 votes cast)
Tags: Brands, gTLDs, ICAAN, Intellectual Property, top level domains, trade marks
Posted in Brands, Intellectual Property | No Comments »
Friday, December 16th, 2011
The ECJ ruling in Frisdranken Industrie Winters BV v Red Bull GmbH may make it harder to enforce trade mark rights against “behind the scenes” service providers who participate in the production of infringing goods.
Winters, a Dutch company, filled cans branded with names like “Bullfighter” and “Pitbull” with soft drink mix. The cans were produced by Smart Drinks, who then sold the finished products. As Smart Drinks were registered in the British Virgin Islands, Red Bull sued Winter for infringement of its Benelux trade mark.
The ECJ ruled that service providers would not infringe trade marks when executing a technical part of the production process of the final product where they had no interest in their external presentation. Winter created the technical conditions for Smart Drinks to use the products, but did not use the products themselves.
This position is likely to be controversial. The European Commission noted that this may allow producers to avoid enforcement by dividing the production process amongst such service providers.
Dave Drew
0115 976 6226
ddrew@brownejacobson.com
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Tags: benelux trade mark, European Commission, frisdranken industrie winters bv v red bull gmbh, smark drinks, trade marks
Posted in Intellectual Property | No Comments »
Wednesday, November 23rd, 2011
The UK’s Trade Mark registry has ruled that chocolate manufacturers Cadbury can continue to trade mark a particular shade of purple used on its packaging, following a challenge by rival brand Nestle on the basis that Cadbury’s use of the purple colour was not distinctive enough to warrant protection.
Cadbury are likely to claim as a victory the ruling that they have built up enough distinctive character in their purple shade through their use of it on chocolate in bar and tablet form and eating and drinking chocolate products.
However, it is worth noting that the registry agreed with Nestle that this distinctive association did not extend to their chocolate cakes, chocolate assortments, and some confectionery chocolate, and therefore Cadbury’s attempt to register trade marks in these areas was refused. Nevertheless, many will regard this as a victory for Cadbury in its long-running battle with Nestle.
Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com
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Tags: cadbury, colour trade marks, distinctive character, Intellectual Property, nestle, trade marks
Posted in Advertising & Marketing, Brands, Intellectual Property | 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
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Tags: community designs, ECJ, European Court of Justice, Intellectual Property, ip, pepsi, pogs, product design, registered designs, Trade Mark, trade marks
Posted in Intellectual Property | No Comments »
Friday, September 23rd, 2011
The European Court of Justice (ECJ) has given its preliminary ruling on the the questions referred to it by MR Justice Arnold concerning the use of a competitor’s trade mark as a keyword.
The ECJ ruled (amongst other points):
- a trade mark proprietor can prevent a competitor from using a keyword identical to their own trade mark to advertise goods or services identical to those covered by their trade mark where such use is liable to have an adverse effect on the functions of the trade mark: the ‘indicating origin’ function of a trade mark will be adversely affected if the advertising displayed as a result of the keyword does not enable an internet user to ascertain whether the goods or services advertised originate from the trade mark proprietor or a third party.
- the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark where the competitor takes unfair advantage of the distinctive character or reputation of the trade mark or where the advertising is detrimental to that distinctive character.
The first point is unsurprising – its what we’ve been seeing in the national court rulings. However, it will be interesting to see how broadly the second point is interpreted by the English courts.
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
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Tags: advertising, Brands, browne jacobson, ECJ, European Court of Justice, Intellectual Property, keywords, Marks & Spencer verse Interflora, Sara Mcneill, Trade Mark, trade marks, Trademarked words
Posted in Brands, 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
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Tags: European Court, ip, Merck, pharmaceuticals, trade marks
Posted in Intellectual Property | No Comments »
Monday, July 25th, 2011
In its eleventh programme of reform, the Law Commission has announced it will consider reforming the laws relating to groundless threats.
Currently, groundless threats of trade mark, design or patent litigation can be causes of action themselves.
Sabre rattling should obviously be discouraged, particularly as just the threat of infringement can be enough to make customers defect to rightsholders to avoid the threat of litigation.
But businesses harmed by allegations of infringement are often reluctant to bring a claim for groundless threats, particularly as they could be ordered to provide security for the rightsholder’s costs. When claims for groundless threats are brought, the costs can be disproportionate to the damage done by a threat. And in practice, the threats provisions can cause costs to increase, because rather than encouraging a litigant to set out its case clearly (which could result in an early settlement), litigants may seek to artificially narrow their claim to avoid threats actions.
So whilst the rationale behind the threats provisions is admirable, in practice they do not function effectively. Part of the solution may be amendment to the Civil Procedure Rules to allow declarations that threats are unjustified to be brought cheaply and quickly.
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
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Tags: designs, groundless threats, Intellectual Property, Law Commission, Patents, trade marks
Posted in Intellectual Property | No Comments »
Friday, June 10th, 2011
The English High Court has handed down its judgement in the legendary trade mark dispute between Team Lotus and Group Lotus.
The court decided that Team Lotus owns the goodwill in the Team Lotus name, but that the trade mark has been revoked because it did not use it for a five year period. This means that Team Lotus can still enforce its unregistered rights in the name. The court also found that Team Lotus is entitled to register new trade marks for Team Lotus. Team Lotus was also found not to have infringed the Group Lotus trade marks.
However, Team Lotus could not prevent Group Lotus from racing in Formula 1 using the JPS black and gold livery, and it was found to have breached an earlier licensing agreement entered into with Group Lotus.
Perhaps the proof of the pudding is in the eating – both teams can continue to line up at this season’s Grand Prix with the names and liveries they were using before the judgment!
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
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Tags: Intellectual Property, lotus, mark daniels, passing off, trade marks
Posted in Intellectual Property | No Comments »
Friday, March 11th, 2011
The High Court recently ruled that a series of advertisements were misleading and infringed the Claimant’s trade marks.
The Defendant, Rockwool, manufactures insulation panels used in construction. They carried out an advertising campaign, comparing their product with that of their competitor, Kingspan, using fire tests to demonstrate the combustibility of the goods. Kingspan argued that the claims made about their product were false and misleading.
Kitchen J held that Rockwool infringed Kingspan’s trademarks under Article 5(1)(a) and (2) of the Trade Mark Directive and Article 9(1)(a) and (c) of the CTM Regulation, by taking unfair advantage of their trade mark and discrediting it, and that , Rockwool had not met the condition, under the Comparative Advertising Directive, of objectively comparing the products. Another claim for malicious falsehood was dismissed.
The decision should serve as a warning to businesses to take greater caution in ruthless advertising campaigns involving competitor’s products!
Posted by Declan Cushley, 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.
Declan Cushley
0121 237 3993
dcushley@brownejacobson.com
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Tags: advertising, Kingspan, Rockwool, trade marks
Posted in Advertising & Marketing, Intellectual Property | No Comments »
Thursday, February 3rd, 2011
Rebranded in 2007 from the less than catchy UKTV G2, UKTV, jointly owned by BBC Worldwide and Virgin Media, applied to register DAVE as a European registered trade mark for goods and services including broadcasting services. Brand consultancy, Dave Soho Limited opposed the application claiming earlier unregistered rights. Last week, the Opposition Division upheld most of the opposition and UKTV’s application was refused for broadcasting services, as well as a whole host of other goods and services.
Clearly this is not the end. UKTV has two months to decide whether to appeal. Indications are that it may well do so as, in an interesting twist of events, two days after the Opposition decision, UKTV filed a new application in the UK for DAVE covering goods and services for which the European opposition was successful. A more favourable decision from the UK Office would seem unlikely but nevertheless this is a interesting negotiation tactic of DAVE-jà-vu.
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
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Tags: BBC Worldwide, DAVE, Dave Soho Limited, trade marks, Virgin Media
Posted in Brands, Intellectual Property | No Comments »
Thursday, December 23rd, 2010
The General Court of the European Union has dismissed Lindt’s appeal against the examiner’s decision refusing registration of its 3D reindeer, bunny and bell as Community trade marks. Storck’s chocolate mice also suffered the same fate.
Why? Such shapes are devoid of distinctive character as they are the typical chocolate-shaped goods that one finds in their stocking at Christmas or receives as a gift at Easter, thus they fail to meet the requirements for shape protection under the Community trade mark regime. Unfortunately, the red ribbon collar and little silver bell didn’t help the reindeer and bunny leap over the distinctiveness hurdle either.
Was it the right decision? Well, it was certainly consistent with previous case law (think back to Guylian’s seahorse-shaped chocolate). Also, bearing in mind the ultimate purpose of a trade mark, to act as a badge of origin, the decision must be correct.
Posted by Sarah Fellows, who specialises in non-contentious intellectual property, and IT commercial agreements; familiar with a range of sectors, including technology, biosciences, retail and education.
Sarah Fellows
0115 976 6242
sfellows@brownejacobson.com
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Tags: Intellectual Property, Lindt, 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
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Tags: Brands, copyright, Intellectual Property, ip, technology blueprint, trade marks
Posted in Intellectual Property | No Comments »
Friday, September 17th, 2010
It’s all change for the Patents County Court. A new judge (Colin Birss QC) coupled by new rules, including cost capping and more robust case management powers, should see an even greater shift in emphasis in the newly named IP County Court towards a low cost and speedy dispute resolution process. These changes should be welcomed by critics as they go to the very heart of how best to improve intellectual property dispute resolution in the UK. The intended purpose of the court was always to provide greater access to justice to SMEs – and it is hoped that these changes will not only herald a new era for the court itself but also foster a greater confidence amongst innovators and brand owners that conducting IP disputes in the UK can be cost and time effective.
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
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Tags: IP County Court, Patents, patents county court, trade marks
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
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Tags: design protection, Intellectual Property, ip, patent protection, Trade Mark, 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
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Tags: distinctive character, Intellectual Property, ip, Trade Mark, trade marks
Posted in Intellectual Property | No Comments »
Friday, August 27th, 2010
Oracle (formally Sun Microsystems) brought infringement proceedings against M-Tech for importing disk drives (bearing the SUN trade marks) without its consent into the European Economic Area (EEA) that had been first marketed outside the EEA. Under European trade mark law, putting goods on the market in the EEA without the trade mark owner’s consent amounts to trade mark infringement.
Oracle deliberately does not publish information about whether its goods have first been sold in the EEA, making it virtually impossible for re-sellers to know where the goods were first marketed. This acts as a deterrent to the importation of Oracle hardware generally, regardless of place of first marketing.
M-Tech said Oracle’s policy was contrary to European competition law but the High Court granted summary judgment in Oracle’s favour. The decision was overturned by the Court of Appeal who decided that M-Tech had a real prospect of success with its so called “Euro-defences”.
M-Tech still needs to establish those arguments in order to win its case and we could be waiting some time for an answer, given that a reference to the Court of Justice of the European Communities looks likely.
Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements
Emma Tuck
0121 237 3908
etuck@brownejacobson.com
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Tags: competition law, grey goods, Intellectual Property, parallel imports, trade marks
Posted in 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
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Tags: Intellectual Property, ip, Trade Mark, trade marks
Posted in Commercial contracts, Commercial Litigation, Intellectual Property | No Comments »
