Tag: trade marks

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Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry
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A No Deal Brexit – how will trade marks and designs look?
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Worth the fight: IP dispute resolution that won’t break the bank
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Australian liquor company may not get off scot(ch) free
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EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court
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A successful year for trade marks and designs worldwide
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UK to introduce new Unjustified Threats Bill across IP law
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Threats Not Groundless Because Proceedings are Ultimately Not Issued
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An Apple a Day Doesn’t Keep Litigation at Bay
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Fashion Law Newsletter – Spring/Summer 2016 Edition

Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry

If you are one of those intellectual property lawyers that likes to tell brand stories while travelling, this post is for you.

Last September, the European Court of Justice (ECJ) dismissed the appeal of the German Souvenir Federation (Bundesverband Souvenir), which had filed an invalidity action based on the descriptive character of the term “Neuschwanstein” (the name of a beautiful castle located in southwest Bavaria, Germany). The appellant argued that the mark may be used in trade to designate the geographical origin of the goods and services concerned (handbags, clothing, soft drinks, jewelry, etc.).

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A No Deal Brexit – how will trade marks and designs look?

UK Government issues guidance on IP matters if there is no deal struck

Over two years after the UK voted to leave the EU, there is an increasingly likely possibility that the UK will leave the EU in March 2019 without a deal agreed (although negotiations continue).  As a result, the technical guidance notes published on 24 September 2018 give businesses, brand owners and designers much needed insight into how such a scenario will look.

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Worth the fight: IP dispute resolution that won’t break the bank

Small businesses and individual rights holders are set to benefit from the Intellectual Property National Pilot Scheme in the Federal Circuit Court

A specialist IP list in the Federal Circuit Court of Australia (FCC) is open for business, with the goal of achieving quick, cheap and effective dispute resolution of intellectual property matters.

The Intellectual Property National Pilot Scheme commenced on 1 July 2018 and appeals to small and medium-sized enterprises, individual rights holders and young innovators who may have previously avoided the court system even though they had a legitimate right or a good defence, but found that it simply wasn’t worth the fight.

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Australian liquor company may not get off scot(ch) free

Proceedings recently commenced in the Federal Court of Australia by the Scotch Whisky Association (SWA) serve as a reminder of the ability to use the trade mark system to protect Geographical Indications (GIs) in Australia.  The use and protection of GIs in Australia will be of particular interest to followers of the Australian-European Union free trade negotiations, where GIs have been flagged by the European Union as a critical issue.

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EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court

EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.

EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.

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UK to introduce new Unjustified Threats Bill across IP law

The United Kingdom’s new Intellectual Property (Unjustified Threats) Act 2017 (the Act) was recently granted royal assent and is set to come into force in October 2017. The Act should make it easier to advise clients, avoid litigation and facilitate the negotiation of settlements by outlining what types of threats are unjustified. The Act will also harmonise the UK law on unjustified threats across patents, trade marks and design rights.

Currently, the law allows those accused of infringing intellectual property to sue for damages if threats of legal action against them are revealed to be groundless. This can lead to rights-holders becoming wary of challenging perceived threats to their intellectual property because they do not want to risk their threats being perceived as groundless and, as a result, do not exercise full protection of their intellectual property rights.

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Threats Not Groundless Because Proceedings are Ultimately Not Issued

In the UK, in a decision that will provide additional comfort to trade mark owners seeking to protect their intellectual property rights in the UK, the High Court held that a threat issued by a trade mark owner was not groundless simply because it was never followed up by proceedings being issued.

In Vanderbilt v Wallace & Ors [2017] EWCH 45 (IPEC), the High Court held that “the emphasis is on whether the acts actually infringe or, if done, would infringe, not on whether a proprietor actually sues for infringement. The phrase does not impose an obligation to commence legal proceedings for every act complained of.”

The case involved a long running trade mark dispute between the claimant and defendant, including several concurrent actions. In this instance the defendant had argued that section 21 of the Trade Marks Act 1994 established that where threats are made the trade mark proprietor has to bring a claim in relation to everything that is the subject of a threat, and that if they fail to do so then the threats can never be justified, even if there is infringement.

The Court disagreed. It stated that there are often valid commercial reasons why a trade mark owner may elect not to issue proceedings even if there is an obvious infringement. The Court will consider the validity of the claim on its own and whether the acts complained of constitute an infringement, regardless of whether proceedings have been issued following any threats to sue.

In addition to providing clarity, this outcome will please trade mark owners. Provided that they have established infringement they can send cease and desist letters without worrying about issuing legal proceedings that may not be commercially desirable.

By: Nóirín McFadden and Jamie Kershaw

An Apple a Day Doesn’t Keep Litigation at Bay

Victoria’s Supreme Court of Appeal has granted Apple and Pear Australia Limited’s (APAL) appeal in relation to their dispute with Pink Lady America LLC (PLA) over the refreshed “flowing heart” Pink Lady composite trade mark used in association with everyone’s favourite apple variety.[1],[2]

The dispute brought to light a number of crunchy commercial contract issues relating to agreements between APAL, PLA and the International Pink Lady Alliance (Alliance) that dealt with rights to particular trade marks registered in Chile (one of the key growing regions for the Cripps Pink and Rosy Glow apple varieties which are sold under the “Pink Lady” brand). PLA left the Alliance in June 2010.

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Fashion Law Newsletter – Spring/Summer 2016 Edition

Fashion has always been a repetition of ideas, but what makes it new is the way you put it together.” – Carolina Herrera

Welcome to the latest edition of Fashion Law, this edition touches on issues that demonstrate the impact of world events and technological changes on all businesses.

Fashion Law gives you the latest updates on legal issues affecting the fashion industry.

Please click here to read the Spring/Summer 2016 edition of Fashion Law.

Contact: Lisa Egan

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