Tag: England

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After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case
2
Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!
3
COVID-19: UKIPO declares “interrupted days” to extend deadlines
4
Cofemel’s first UK outing – The wooly world of copyright and designs
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Lucky number 7: IPEC small tracks claims can be issued in 7 new locations and are no longer tied to London
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To 3D, or not to 3D, that is the question: Another twist in the Rubik’s Cube and its EU trade mark protection
7
Music to our ears: some clarity on joint authorship of copyright
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UKIPO knocks undefeated Reds off their perch – The LIVERPOOL trade mark and lessons for brand owners
9
Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200
10
The Claridge’s Affair: A win, but at what cost?

After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case

After the CJEU’s ruling earlier this year (as discussed here), the Sky v Skykick case has now returned to the English High Court and Lord Justice Arnold on 29 April 2020 issued a final judgment in the case (see full text of the judgment here).

Although Sky’s trade marks were found to be partially invalid on the ground that they were applied for in bad faith, Sky was still ultimately successful in establishing infringement.

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Is it a bird? Is it a plane? No, it’s an infringement of a reputable mark!

The EUIPO recently upheld an opposition by DC Comics to protect its reputable SUPERMAN mark from a similar sign, despite the applicant’s sign covering a different class of goods. The decision confirms that, for there to be a sufficient risk of injury under Article 8(5) EUTRM, the public must perceive a ‘link’ between the sign and the earlier mark. The mere fact the two marks cover different classes of goods and services is not inherently a barrier to such a link. Here the link arose largely from the earlier mark’s reputation, and commercial connections between the two classes in question.

Some will see the EUIPO as swooping to the rescue to protect the hard-earned reputations of brands; others will see this as an unreasonable expansion of rights beyond a mark’s designated classes, and a Kryptonite to legitimate activity.

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COVID-19: UKIPO declares “interrupted days” to extend deadlines

Following similar measures from the EUIPO and other national registries (see here), the UK Intellectual Property Office (the UKIPO), has declared 24 March 2020, and subsequent days until further notice, “interrupted days”. This means that any deadlines for patents, supplementary protection certificates, trade marks, designs, and applications for these rights, which fall on an interrupted day will be extended until the UKIPO notifies the end of the interrupted days period.

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Cofemel’s first UK outing – The wooly world of copyright and designs

In Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC), the Intellectual Property Enterprise Court (“IPEC”) has issued the first UK decision made since the Court of Justice of the European Union’s controversial decision in Cofemel (C-683/17).

Why does this matter?
The Cofemel decision indicated that there is a harmonised concept of what constitutes a ‘work’ under copyright law throughout the EU, which is not restricted by any defined categories and should not take into account any aesthetic considerations.

Accordingly, there has been much discussion about the UK’s closed list of copyright protectable subject matter under the Copyright, Designs and Patent Act 1988 (“1988 Act”) and the concepts of ‘artistic works’, ‘sculptures’ and ‘works of artistic craftsmanship’ under section 4 of the 1988 Act and whether these are incompatible with EU law. Previous prominent Court decisions such as the Lucasfilm decision in the Stormtrooper Helmet case have also been thrown into question.

This decision is the first time that a UK Court has had to deal with this apparent incompatibility.

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Lucky number 7: IPEC small tracks claims can be issued in 7 new locations and are no longer tied to London

The expansion of the UK Intellectual Property Enterprise Court (the “IPEC”) has continued with claims now able to be issued in seven new locations outside of London.

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To 3D, or not to 3D, that is the question: Another twist in the Rubik’s Cube and its EU trade mark protection

The long running and highly publicised Rubik’s cube case has taken another twist. On 24 October 2019, the EU General Court confirmed the cancellation of the EU trade mark for the 3D shape. The mark was cancelled because its essential characteristics were deemed necessary for its technical function (i.e. the shape’s ability to rotate).

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Music to our ears: some clarity on joint authorship of copyright

In the recent decision of the case Kogan v Martin, the UK Court of Appeal overturned an Intellectual Property Enterprise Court (IPEC) decision and identified a new test for determining when contribution is sufficient to be recognised as a joint author of a copyright work.

The case has now been remitted for a retrial before a different judge, due to the judge of first instance adopting an erroneous approach to the evidence and applying incorrect legal standards.

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UKIPO knocks undefeated Reds off their perch – The LIVERPOOL trade mark and lessons for brand owners

To the interest of many a scouser and football fan alike, Liverpool Football Club’s attempt to register as a UK trademark LIVERPOOL has been rejected by the UKIPO on the grounds that the word is of “geographical significance” to the city. Liverpool FC had filed its application in regards to various goods in relation to football and the filing had attracted significant public attention.

Other English football clubs (Everton, Chelsea and Tottenham) have managed to register several trade marks for each of their respective area names. In addition Southampton Football Club has managed to register SOUTHAMPTON as an EU trade mark. As a result, it is not surprising that Liverpool FC would seek to register a similar mark to help protect its valuable brand.

However, as a result of the filing the club received significant backlash from the people of Liverpool, including their own supporters, and – probably in a related move – Liverpool FC has said that it does not plan to appeal the refusal and it has withdrawn the application. An additional trade mark application for LIVERPOOL with different claims has also been withdrawn.

The matter presents a great case study for brand owners on balancing the need to protect their brand whilst being considerate of the potential adverse PR that will come with the application for certain trade marks.

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Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200

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.

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The Claridge’s Affair: A win, but at what cost?

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.

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