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May 8
2 min

Assessing damages is never easy

A recent judgment from the IPEC provides a warning for anyone pursuing damages claims in IP cases. The process is time consuming, complex and may cost more in legal fees than the ultimate award. There are several bases upon which damages can be awarded. This case looks at loss of an opportunity and the notional royalty which might have been charged for the use. It also considered whether a damages uplift was justified on the basis of the flagrancy of the infringement. The alt

Rosie Burbidge

May 8
4 min

Give this passing off case a butchers

Passing off is often added as an afterthought to a trade mark infringement action. In those circumstances, it is very often successful. The line between a deception (required for passing off) and likelihood of confusion (trade mark infringement) is subtle but there is a significant degree of overlap between the two. However, where there is no registered mark and it is first necessary to establish goodwill in a particular name, logo or get up, the relevant deception is much mo

MONOPOLY cannot last forever without regular use

Rosie Burbidge

May 8
2 min

MONOPOLY cannot last forever without regular use

The EU General Court has upheld the EUIPO Board of Appeal decision in the MONOPOLY trade mark case. This is a long anticipated and important decision which will have an impact on trade mark portfolios in the EU and beyond. In essence, the EU has ruled that it is not permissible to refile the same or a similar trade mark within the 5 year grace period during which non-use requirements do not apply. What happened? Hasbro filed an EUTM application for MONOPOLY, covering various

Rosie Burbidge

May 1
2 min

Trade mark infringement claim upheld

The Court of Appeal has upheld a finding of trade mark infringement, but overturned a passing off finding, in a case concerning two UK trade marks for British Gymnastics. The Court’s judgment in UK Gymnastics Ltd & Ors v British Amateur Gymnastics Association [2021] EWCA Civ 425 was published on 16 March 2021. The dispute was between British Amateur Gymnastics Association (BAGA), proprietor of two UK trade marks for British Gymnastics, and UK Gymnastics (UKG), which uses both

Rosie Burbidge

May 1
2 min

Chanel and Huawei logos are dissimilar

The EU General Court has upheld a Board of Appeal ruling in a dispute between Chanel and Huawei, finding that Huawei’s EUTM application for a figurative H/U shape was not similar to Chanel’s Double-C trade mark (Case T-44/20, 21 April 2021). Huawei applied to register the EUTM for goods in class 9 in 2017 (far left). Chanel opposed the Huawei application based on two French trade marks (middle and right): (1) a figurative mark for “Cameras, sunglasses, glasses; earphones and

Rosie Burbidge

May 1
2 min

Database extraction was authorised

This was a complex dispute concerning a claims management database. It involved alleged infringement of a database right, misuse of confidential information and breach of fiduciary duty. It was decided by His Honour Judge Cawson QC, sitting as a judge of the High Court in Manchester, on 19 March 2021. The claim was brought by claims management company DRSP against Thomas O’Connor and Octax Limited. Mr O’Connor worked for DRSP until February 2018, after which he became a consu

Which IP rights subsist in an XML Schema?

Rosie Burbidge

May 1
3 min

Which IP rights subsist in an XML Schema?

Disputes relating to software are often complex, with multiple parties and issues involved. However, they can also illuminate important questions. Software Solutions Ltd & Ors v 365 Health and Wellbeing Ltd & Anor, a judgment by HHJ Melissa Clarke in February 2021, is a good example. While numerous companies were involved in the case at various stages, the question essentially was whether version 5 of a mental health application called Beating the Blues (BTB v 5) infringed co

Satan Shoes - Nike and the devil tussle over trade mark exhaustion

Rosie Burbidge

Apr 19
2 min

Satan Shoes - Nike and the devil tussle over trade mark exhaustion

Occasionally IP disputes break into the public domain. This one has to do with Nike, a famous brand, and also to do with Satan. Rosie and Crafty Counsel investigated this issue as part of the Crafty Counsel Investigates series. Whilst the dispute was quickly resolved, the wider issues for brand owners worldwide remain noteworthy. What happened? A company called MSCHF was up to no good. They took some Nike Air trainers, added a drop of blood and water, and repackaged them as a

No penalty clause in IP Settlement Agreement: royalty clawback & 6 figure lump sum payment permitted

Rosie Burbidge

Apr 17
2 min

No penalty clause in IP Settlement Agreement: royalty clawback & 6 figure lump sum payment permitted

A judge in the Patents Court has ruled that terms concerning the ownership and validity of IP rights in a settlement agreement were not “unenforceable penalty clauses”, in a case concerning patents for roofing products: Permavent Ltd & Anor v Makin [2021] EWHC 467 (Ch). This case is very important in the context of IP settlement discussions. Creative solutions are often the key to reaching a longer lasting solution. However, if the contracting parties cannot have legal certai

The straw that broke the camel's CRYPTOBACK? Trade mark survives validity challenge

Rosie Burbidge

Apr 17
2 min

The straw that broke the camel's CRYPTOBACK? Trade mark survives validity challenge

The IP Enterprise Court (IPEC) has enabled smaller businesses to fight back against perceived intellectual property (IP) injustices. Its simplified procedure, capped approach to costs recovery and tight case management make it a much more effective means of dispute resolution for the majority of IP claims. A recent example of the IPEC in action looks at cryptocurrency. Wirex Ltd v Cryptocarbon Global Ltd & Ors concerns a UK trade mark registration for CRYPTOBACK. The trade ma

Walk like a PANTHÉ - Visual perception is key for fashion trade marks says EU

Rosie Burbidge

Mar 9
2 min

Walk like a PANTHÉ - Visual perception is key for fashion trade marks says EU

Is there a likelihood of confusion between the figurative signs pictured below (PANTHÉ and PANTHER) for “Clothing; Headgear” in Class 25? The EU General Court said "No". In doing so, they upheld a decision of the EUIPO Board of Appeal. The case is El Corte Inglés v EUIPO/MKR Design Srl (Case T-117/20). The judgment was published on 10 February 2021. So what happened? Spanish retailer El Corte Inglés opposed an EUTM application for the sign listed above (PANTHÉ) which was file

Who owns copyright works that an employee creates at home?

Rosie Burbidge

Mar 9
2 min

Who owns copyright works that an employee creates at home?

One of the highlights of the pandemic has been the opportunity to catch up on a lifetime's worth of TV. Fortunately, there are some truly great TV shows including the comedy Silicon Valley. It is not for nothing that this great TV show has been described as a documentary! It confronts many of the business issues that face the tech industry in the US and beyond. One of my favourite episodes is a mini courtroom drama (a binding arbitration, if we're going to be precise). The ep

Goodbye Aunt Jemima, hello Pearl Milling Company

Rosie Burbidge

Mar 9
1 min

Goodbye Aunt Jemima, hello Pearl Milling Company

Trade marks may theoretically last forever but brands are subject to change. The Aunt Jemima brand of pancake mix and syrup will be renamed Pearl Milling Company, in response to concerns about racial stereotypes. The new brand harks back to the name of the originator of the self-rising pancake max and was announced by Quaker Oats (part of PepsiCo) on 10 February 2021. The Aunt Jemima brand, like the Washington Redskins, is being retired following the global attention that was

How do you win a fashion dispute? Find out why I love unregistered designs

Rosie Burbidge

Mar 7
5 min

How do you win a fashion dispute? Find out why I love unregistered designs

How can you stop someone from systematically copying your brand? What if it went further than just your designs and covered everything from your marketing strategy to your models? This major new UK fashion case shows the consequences which range from the predictable (copying valid designs has consequences) to the surprising (it isn't necessarily possible to stop all copycat behaviour). This case is a bit of a marathon read but it's a fantastic primer for anyone wanting to und

Rosie Burbidge

Mar 7
1 min

Image protection in the UK and beyond

Image rights are both hugely important and a fallacy. The UK, has no specific law of "image rights" but it is possible to protect a person's image through a patchwork of laws including passing off, trade marks, data protection and privacy. Rosie has contributed a chapter on the UK approach to image rights for Imagen y Derecho de la Moda, a South American Year Book which is available for purchase here! Rosie's article (which is translated into Spanish) provides an overview of

Influencers are advertising... and the ASA is watching

Rosie Burbidge

Feb 23
2 min

Influencers are advertising... and the ASA is watching

Influencers are advertisers. This has been clear for some time. But now influencers are trending for the wrong reasons as the Advertising Standards Authority starts to clamp down on the use of filters for beauty products and failure to identify paid content. Use of filters Advertisers should not use filters on photos promoting beauty products on Instagram if the filters are likely to mislead or exaggerate regarding the effect the product was capable of achieving. This was the

Rosie Burbidge

Feb 23
1 min

‘Genuine use’ for EU trade marks

The Court of Justice of the European Union (CJEU) has ruled that ‘genuine use’ for EU trade marks can be established through the provision of spare parts services or second-hand goods which are linked to the mark in question in Ferrari SpA v DU. Background In this case, Ferrari’s longstanding battle against revocation of the “Testarossa” mark was finally won. The Testarossa name related to a now defunct line of cars which Ferrari has ceased manufacturing and opponents argued

Why contracts are in writing: lessons from an oral trade mark co-existence agreement

Rosie Burbidge

Feb 22
2 min

Why contracts are in writing: lessons from an oral trade mark co-existence agreement

A recent decision by the Intellectual Property Enterprise Court reveals the problems that can arise when businesses that once shared name fall out and do not have a clear agreement in place. The case covered 22 issues(!) in total, including copyright infringement, trade mark validity and infringement and passing off. Following a two-day trial in November, Deputy High Court Judge David Stone handed down his judgment on 18 January 2021. The case was brought by Cormeton Fire Pro

Court Room Recordings are not necessarily for Public Consumption

Rosie Burbidge

Feb 22
2 min

Court Room Recordings are not necessarily for Public Consumption

Lockdown boredom has caused recordings of meetings with irate characters or funny, and accidental, filters to become internet sensations. From the heated Handforth Parish Council meeting to the absurdly necessary declaration, “I am not a cat”, in a virtual US courtroom, the public clearly has an appetite for these farcical recordings. However, it's important to remember that the basic rules on recording court hearings (i.e. don't do it) continue to apply in the digital realm.

Rosie Burbidge

Feb 19
1 min

USTR Notorious Markets List

In its annual review of markets that engage in or facilitate counterfeiting and piracy, the US Trade Representative has named 39 online markets (including many of Amazon’s foreign domains, Shopee and Taobao) and 34 physical markets. The European Commission published a similar list in its Counterfeit and Piracy Watch List in December 2020. Both lists provide useful information on the challenges IP rights owners face in enforcing their rights in the various online marketplaces,

ROSIE BURBIDGE