Hasbro Inc. (Hasbro), owner of the well-loved board game Monopoly, suffered a defeat on 22 July 2019, before the EUIPO Board of Appeal in relation to the MONOPOLY trade mark. The EU registration for the MONOPOLY trade mark was partially invalidated as it was found that Hasbro had acted in bad faith when filing the application as part of a ‘trade mark re-filing’ programme.Read More
Claridge’s Hotel Limited (Claridge’s) recently succeeded in challenging in IPEC the use of the CLARIDGE name by Claridge Candles Limited (Claridge Candles) – a small one-person business.
However, the success came at with a cost for the world renowned hotel as in doing so it lost one trade mark registration entirely and had a second mark reduced in scope due to a non-use counterclaim, highlighting one of the risks of instituting trade mark infringement action.Read More
Stores like Aldi are increasingly popular with UK consumers as a result of offering “copycat” products of well-known brands at drastically lower prices. However, with this rise in popularity, brand owners and creatives are being increasingly frustrated by finding their products and ideas at the mercy of imitation products.
One such aggrieved party was well known makeup brand Charlotte Tilbury (Tilbury), who found their “Starburst” lid design and the “Powder Design” of their “Filmstar Bronze and Glow” set had provided the ‘inspiration’ for Aldi’s own “Broadway Shape and Glow” set. Tilbury filled a UK High Court claim for copyright infringement over the products shown below, with Aldi adamantly rejecting that any copyright had been infringed in their ‘inspired’ makeup set.Read More
William Grant & Sons, the distiller, blender and owner of Glenfiddich, the independent whisky company which markets itself as the “World’s Most Awarded Single Malt Scotch Whisky”, was unsuccessful in its recent opposition of Glenfield’s label trade mark application.
Back in 2018, Mumbai-based business man Vivek Anasane filed a trade mark application for the label of his ‘Glenfield’ Scotch whisky in an attempt to expand his drinks company into the UK. This was quickly opposed by William Grant & Sons who argued that the Glenfield mark was “visually and phonetically highly similar” to the Glenfiddich word mark.
IPEC has ruled over the recent dispute between Beauty Bay (claimant) and Benefit Cosmetics (defendant) which arose after Benefit sold a Christmas gift set contained in a globe shaped box displaying the words “Beauty and the Bay”. The gift set was part of a 13 product collection celebrating 50 years since the Summer of Love and the company’s San Francisco heritage which included products like “Glam Francisco”, “I Left my Heart in Tan Francisco” and “B.Right by the Bay”.Read More
On 19 June 2019, the EU General decided a case about the validity of Adidas’ EU trade mark registration for three stripes. In the General Court’s decision (see here), the Court upheld the invalidity of the mark on the basis that: (i) the mark wasn’t used consistently and evidence of reversed/amended versions of the mark was inadmissible; and (ii) Adidas failed to show acquired distinctiveness across the EU, providing admissible evidence for only five EU Member States.Read More
The Court of Justice of the European Union (CJEU) recently confirmed that when assessing the actual use of a mark and the scope of protection afforded by a trade mark, the defining factor is the way in which it is perceived, and it is irrelevant that it is classified as a figurative or a position mark. In the CJEU’s decision in ECLI:EU:C:2019:471, the CJEU rejected German shoemaker Deichmann’s appeal to have Spanish competitor Munich SL’s trade mark revoked. The case revolves around the registered mark below, depicting a solid line cross on the side of a dotted outline of a shoe.Read More
We all have memories associated with iconic (car) designs. It could be our grandparents’ car, the car we used to drive when we were younger or that cool model we could not afford as students. Car designs often become icons and reflect socio-economic status and, for this reason, the automotive industry often offers remakes of classic models, such as the new Fiat 500, the new Mini and, of course, the new Porsche 911.
What happens to the design protection for iconic cars when they form part of a new released model? These are the issues that were tested by Porsche in two recent cases decided by the EU General Court (decisions T-209/18 and T-210/18). The key question from an IP perspective was whether a design incorporating a remake has the requisite novelty and individual character and, thus, should be deemed valid.Read More
The recent decision in Inditex v EUIPO demonstrates the far reaching, evolving nature of fashion brands and the markets they can operate in and are expanding into.
In this case, Inditex (one of the world’s largest fashion retailers and owner of the fashion brand Zara) appealed the EUIPO’s decision to grant registration of the ‘Zara Tanzania Adventures’ mark in classes 39 (travel and tourism) and 43 (travel agency services). The appeal was based on the registration of its own ‘Zara’ mark in class 39. But how can a fashion brand object to a mark in the travel sector?Read More
On 17 January 2019, the Singapore Ministry of Law and the Intellectual Property Office of Singapore issued the Singapore Copyright Review Report (the Report), which proposes a number of important amendments to the Singapore Copyright Act (the CA), following several rounds of public consultations in 2016 and 2017.
The objective of the proposed amendments is to ensure that the Singapore copyright regime keeps abreast of technological developments which have significantly changed how creative works are created, distributed and consumed. In this regard, the proposed amendments seek to enhance creators’ rights and users’ access to copyrighted works.Read More