INTELLECTUAL PROPERTY LAW

In the United Kingdom it is not a requirement for a trade mark or design licence to be registered at the UK Intellectual Property Office (UKIPO), so why bother? If a licence is not registered, any rights held by a licensee are ineffective against any third party to whom the licensor’s rights are later assigned to provided that the third party is ignorant or unaware of the licence. This means the third party takes free from the licence and can ultimately prevent the licensee f

What connects Leonardo Da Vinci, a Christmas miracle and the possible award of exemplary damages? The answer lies in a recent High Court judgment by Mr Justice Jacobs (Salt Ship Design AS v Prysmian Powerlink SRL). The case concerned designs for a cable lay vessel produced by Salt Ship Design for Prysmian. The judge found that Prysmian (a company with annual revenue of €10 billion) had made the designs available to another designer, Vard Design AS, which was associated with t

When can component parts of a product be protected as unregistered Community designs (UCDs)? The Court of Justice of the EU (CJEU) recently answered that question in a case concerning design rights in a Ferrari car (Case C-123/20). The case, which was before the German Federal Court of Justice (BGH) related to the Ferrari FXX K model, presented to the public in December 2014 (pictured). Ferrari alleged that Mansory Design (and Mansory’s CEO) infringed its UCDs by marketing ki

We recently reported on the Litecoin case where an application to register a trade mark was found to constitute passing off (see blog post here). Whilst cryptocurrency and celestial beings may not, at first glance, have a lot in common, this decision considers similar issues. A recent IPEC decision over the mark ARCHANGEL ALCHEMY raised some similar issues. This was a dispute between two spiritual and holistic therapists regarding the sale of metaphysical/spiritual education

Good news for international trade mark filing! On 28 September, 2021, the United Arab Emirates Government and WIPO announced that the UAE will be joining the Madrid System. The UAE will be the 109th country to join the Madrid System (which now covers 125 countries). The Madrid Protocol will enter into force for UAE on 28 December, 2021. This is a big deal for brand owners looking for trade mark protection in the UAE, as filing costs have historically been particularly high in

We’ve all become more conscious of climate change and other environmental issues over the past 25 years – and that can be seen in the increase of “green” EU trade mark applications filed in that period. Research findings A recent study by EUIPO (Green EU trade marks: Analysis of goods and services specifications, 1996-2020) found that terms related to the protection of the environment and sustainability (such as photovoltaic, solar heating, wind energy and recycling) increase

In early 2021, Deputy High Court Judge David Stone (sitting in the IP Enterprise Court, IPEC) in a dispute over the use of the name CORMETON in relation to mechanical fire safety goods and services found there was trade mark infringement and passing off, but not copyright infringement. (You can read more about this decision here). He also ordered appropriate injunctions, delivery up, disclosure and orders for the election of a damages inquiry/account of profits. By the Summe

Who has the power to control the use of the Sex Pistols IP rights? That was essentially the question decided by Sir Anthony Mann in Jones & Anor v Lydon & Ors, a decision of the High Court in August 2021. Most of the former band members want to give permission for use of its music in a planned TV series directed by Danny Boyle, but John Lydon (Johnny Rotten) opposes that permission. Two of the band members brought the action, seeking to enforce an eight-paragraph 1998 Band Me

Moral rights disputes don’t come to court very often, so Mrs Justice O’Farrell’s judgment in The Front Door (UK) Lt (t/a Richard Reid Associates) v The Lower Mill Estate Ltd makes for interesting reading. The particular hearing concerned various applications arising in a case over the development of "Silverlake", a holiday village in Weymouth. The claimant (The Front Door, trading as Richard Reid Associates) is an architectural practice and the defendant (The Lower Mill Esta

The popular song Waiting All Night by the band Rudimental was not copied from a 2007 song Can You Tell Me, performed by Kelly-Marie Smith, according to a ruling by Mr Justice Zacaroli on 11 August 2021 (Smith v Dryden & Ors [2021] EWHC 2277 (IPEC)). Ms Smith brought the action for copyright infringement in the English IP Enterprise Court (IPEC), claiming that both the music and lyrics of Rudimental’s song constituted copyright infringement. Waiting All Night was primarily wri

We take legal research very seriously - in order to fully understand the implications of the most tasty dispute of the year, Colin vs Cuthbert, we had to undertake a detailed examination of Colin, including, of course, his taste. What we discovered will have implications for businesses across the land. The furore over Colin v Cuthbert has died down and the dispute appears to be heading toward settlement (either that or Cuthbert has had a very long time to file his Defence). C

Miss Recorder Amanda Michaels, sitting as a judge in the IPEC, has upheld a claim for passing off in a dispute between two jewellery designers. The claim was brought by Alyssa Smith Jewellery Limited, founded by Alyssa Smith, against Alisa Goodstone, who trades as Alyssa Jewellery Design. Ms Smith has operated a business since 2009, including via the websites www.alyssa-smith.com and (later) www.alyssasmith.co.uk as well as using the Twitter handle @AlyssaJewellery. She claim

In short, "yes". Cybersquatters are a growing threat to brands. This trend has accelerated as e-commerce grows and consumers spend more time online. A new report suggests that cyber-squatters are cannier and more cunning than you might imagine. For brand owners, resolving domain name issues and filing defensive registrations eats up considerable time and effort. But as many have found to their cost, ignoring cybersquatting can lead to consumer confusion, loss of sales, fraud

After the many logistical issues posed by both Brexit and the pandemic and with sustainability at the forefront of everyone's mind, it is perhaps not surprising that there has been a 130% increase in businesses accepted to use the MADE IN BRITAIN mark on their goods. (Many more have applied but not met the relevant criteria.) What is the legal framework that underpins this brand name and what exactly does "Made In Britain" mean? Can anyone use MADE IN BRITAIN? Made in Great B

The pandemic has had a deadly toll on bricks and mortar retail. This has particularly affected some department stores, including the flagship stores of brands like covid-casualty Top Shop. Is this a sign of things to come or is there an opportunity for a new renaissance? The Financial Times recently looked at this issue in detail. The answer seems to be a mix of architectural opportunities, mixed use spaces (weddings in Selfridges!) and, potentially, some bulldozing. We have

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 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