Europe – IP Law Watch

The UKIPO Updates its Policies to Tackle Ineffective Addresses for Service

Apr 17 2024

The UK Intellectual Property Office (UKIPO) has released an update this month in relation to the issue of trade mark applicants and owners providing a valid address for service. Particularly following Brexit there has been concerns about would-be trade mark owners filing applications with false or ineffective addresses for service and as a result the UKIPO is now taking a more proactive approach using their powers under Rule 11 of the Trade Mark Rules 2008.

A Lidl Decision With Big Implications–Court Of Appeal Edition

Mar 26 2024

The Court of Appeal of England and Wales upheld the previous judgment (see here) that Tesco Clubcard logos infringed Lidl’s trade marks and constituted passing off. Although it found that Tesco did not infringe Lidl’s copyright, it is time for Tesco to rebrand its Clubcard logo.

Artistic Value May Prevent Protection of the Vespa Shape as a Trade Mark in Italy

Mar 19 2024

The Italian Supreme Court recently issued a decision addressing whether the Vespa shape, already protected under copyright, was precluded from registration as a 3D mark. According to the Court, a shape’s artistic value usually confers substantial value which prohibits trade mark registration under Italian law.

The Cloudy World of Look-a-Like Products – Aldi Successfully Defends Allegations of Trade Mark Infringement

Feb 06 2024

Recently the High Court of Justice of England and Wales handed down its judgment in a trade mark infringement proceeding between Aldi v Thatcher’s that had been being watched by many.

The Battle of the Bulls: NBA Fail to Invalidate Pizza Texas Bulls Trade Mark Similar to the Chicago Bulls Logo in the United Kingdom

Jan 08 2024

The National Basketball Association (NBA) has lost the appeal of its invalidation action against a United Kingdom (UK) trade mark filed by Pizza Texas Bulls Inc (Pizza Bulls) in classes 30, 39, and 43 in NBA Properties Inc. v. Pizza Texas Bulls Inc [2023] EWHC 3040 (Ch). Interestingly, the NBA was successful in the European Union (EU) in relation to identical marks under Opposition No B3146352, and prevented the Pizza Bulls mark being registered in the EU.

Upcoming UKIPO Representation Changes – The Effects of Brexit Continue

Nov 14 2023

One of the effects of Brexit was that the UK introduced a requirement for a UK based representative for all UK national trade marks, patents and designs and international registrations designating the UK in January 2021. However, there was a grace period for comparable trade marks or re-registered designs deriving from an EU national trade mark or international registration designating the EU.

WIPO Updates Deadlines for Responses to Provisional Refusals

Nov 08 2023

Businesses seeking registration of trade marks overseas will have greater clarity on deadlines for responding to provisional refusals, following an update by the World Intellectual Property Office (WIPO). As of 1 November 2023, local intellectual property offices are required to give the holders of Madrid System international trade mark registrations (IR Holders) a minimum period of 60 days or two months to respond to provisional refusals.

UK Trade Mark and Design Reform Consultation

Sep 12 2023

The UKIPO Transformation Programme

The UKIPO launched a transformation programme to modernise their trade mark and design services by the end of 2025. The aim is to replace their existing processes with a fully digitalised system in line with increased volume of work and customer demand.

Just Because the Court can, Doesn’t Mean it will: The Difficulty in Seeking to Avoid an Injunction Following a Finding of Copyright Infringement in the UK

Jul 07 2023

As reported previously in our blog post here, earlier this year the High Court of England and Wales found in Lidl’s favour regarding allegations of trade mark infringement, passing off and copyright infringement by Tesco. However, Tesco has suffered a further loss following a supplementary hearing focused on what the most appropriate form of relief was for copyright infringement (although it was agreed by the parties that Lidl was entitled to an injunction in light of findings of trade mark infringement and passing off).

A Lidl Decision with big Implications – UK High Court Finds that Tesco’s Clubcard Logo Infringes Lidl’s logo

May 05 2023

In a recent decision, the High Court of England and Wales has found that Tesco’s use of the yellow and blue Tesco Clubcard logos (reproduced below) infringed Lidl’s trade marks (see the relevant Lidl marks below) and also gave rise to copyright infringement and passing off.

Tag:Europe