INTELLECTUAL PROPERTY LAW

The Court of Appeal has reviewed the law on liability and account of profits in a judgment concerning the BEVERLY HILLS POLO CLUB trade mark (Lifestyle Equities C.V. & Anor v Ahmed & Anor [2021] EWCA Civ 675). The case is one of many that are winding their way through the courts concerning this brand. In this litigation, the judge at first instance found that the use of SANTA MONICA POLO CLUB infringed the BEVERLY HILLS POLO CLUB mark and devices, and also found passing off.

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

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

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

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

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

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

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

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

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

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

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

When is an online marketplace “targeting” consumers in a particular jurisdiction? This was the question that Mr Justice Michael Green wrestled with in his judgment in Lifestyle Equities CV & Anor v Amazon UK Services Ld & Ors [2021] EWHC 118 (Ch). The case involved trade mark infringement and passing off claims brought against Amazon regarding the sale of goods bearing the Beverly Hills Polo Club trade marks on amazon.com. The claimants are familiar faces in the English High

What does the fashion industry hang on? The Janger is designed for travel and holiday use (so probably isn't getting a lot of use at the moment!) Most fashion cases concern design right, copyright and trade marks. It is relatively unusual for patents and fashion to collide. The Janger Ltd v Tesco Plc [2020] EWHC 3450 (IPEC) (16 December 2020) was one of the last cases from 2020 and one of the few to look at patents and fashion. Janger had a patent for “A hangable garment hook

A case regarding “ballet flats” is likely the last time in which a UK court will sit as a Community Design Court, and the judgment was handed down expeditiously given the end of the Brexit transition period on 31 December 2020. The case involved registered Community designs (RCDs) and unregistered Community designs (UCDs), and issues of both validity and infringement. Deputy High Court Judge David Stone found: both the registered and unregistered design to be valid as they pr

My final IPKat post was dedicated to one of my favourite IP topics - designs. They are forgotten and misunderstood rights which is a shame because they straddle the issues facing all of the different IP rights. It's hard to truly understand designs without also understanding trade mark, patent and copyright law first. This post is a whistle stop tour of some recent design decisions you may have missed and the first in a regular series of six monthly posts on this topic which

UK unregistered design right (UK UDR) is a handy IP right which is often overlooked by rightsholders.  It protects the shape or configuration of the whole or part of a product for ten years from the date the design was first (or 15 years from the date it was first recorded in a design document if that period is shorter).  UK UDR does not protect surface decoration (unlike Community  unregistered design right and registered designs).  Since the recent procedural reforms in t

Legal costs are not always seen as the sexiest topic for a blogpost (anyone with colleagues who cycle into the office may have similar views about Lycra). However, the approach that the courts take toward costs is of huge practical importance and sometimes there is a decision which is sufficiently "wait, what?" that it deserves to be shared with a wider audience. I am talking of course about the Invista v Botes saga and the treatment of a Part 36 offer. What happened? In Janu

Just under four years ago the UK Intellectual Property Office commissioned research to address the lack of existing data on design infringement. The results of that research were published last week. My key takeaway is that the designs community does not appreciate the value of designs - particularly unregistered designs. This post aims to change that. Unregistered vs unregistered designs In the report, unregistered designs were rated at the bottom of the list of useful right

Four years is a long time in politics but not a particularly long time in the land of government reports. Just under four years ago the UK Intellectual Property Office commissioned research to address the lack of existing data on design infringement. The results of that research were recently published. Designs are an important part of the UK economy. In 2015, the UK design economy was worth 6% of the nation’s total economy. It was therefore considered a worthwhile exercise t