INTELLECTUAL PROPERTY LAW

In what may be a record for an IP case in the UK, the trial in Lutec (UK) Ltd & Ors v Cascade Holdings Ltd & Anor [2021] EWHC 1907 (Pat) lasted just over an hour. In his judgment published on 9 July 2021, Deputy High Court Judge David Stone found that four registered designs were infringed by two outdoor light fittings, known as the Helios Up Or Down light (Helios U/D) and the Helios Up And Down light (Helios U&D). The judge attributed the rapid resolution to “thorough prepar

This Court of Appeal decision is a helpful reminder that a lack of evidence of actual confusion is not necessarily fatal to a finding of trade mark infringement. The two IP specialist judges and one of the few female judges in the Court of Appeal upheld a finding of likelihood of indirect confusion between EU and UK trade marks for EAGLE RARE (registered for, respectively "bourbon whiskey" and "whiskey" and other goods in class 33) and a bourbon whiskey sold under the name AM

We first wrote about the impact of Brexit on UK trade marks over a year ago. We are now over 6 months in since the UK's departure from the EU and rapidly approaching the end of the transitional arrangements. 30 September 2021 is the deadline for filing a new UK application and claiming priority from an earlier EU trade mark application. This only applies if the EU mark was filed on or before 31 December 2020. Other important changes Separate trade mark filings are now require

An application to register a trade mark can constitute passing off, according to a recent judgment by Deputy High Court Judge John Kimbell QC in a case concerning the Litecoin cryptocurrency. The litigation was brought by Litecoin Foundation Limited (Litecoin Foundation) against three defendants: Inshallah Limited, Nasjet Limited and John Pepin. Litecoin Foundation claimed it has a substantial reputation and goodwill in the UK in Litecoin, which it had promoted and developed.

Oatly has hit a brick wall in its attempt to stop third parties from selling oat milk using the word "OAT" plus the letter "Y". A decision in the IP Enterprise Court (IPEC) that the use of the PUREOATY name does not infringe registered trade marks for OATLY demonstrates the difficulty of enforcing marks that include a descriptive element. The case is Oatly AB v Glebe Farm Foods. Swedish company Oatly brought the action for infringement of five registered EU (now comparable UK

A common trade mark filing strategy in the UK and EU is to file a broad trade mark specification. A broad specification makes enforcement easier and allows room for the pivots that are common in new businesses. The down side of broad trade marks is that they block the register for future applicants. This issue has been put into the spotlight thanks to the longstanding litigation between Sky and SkyKick - previously discussed here. In the latest SkyKick judgment, the Court of

In a decision likely to be welcomed by owners of 3D trade marks, the EU General Court has ruled that the shape of Guerlain’s Rouge G lipstick “is uncommon for a lipstick and differs from any other shape existing on the market”. The Court reversed the Board of Appeal’s finding, and found the shape could be registered as an EU trade mark. Guerlain applied for an EU trade mark (pictured) in September 2018 for “lipsticks” in class 3. It was rejected by the examiner under Article

A recent decision of the EU General Court looks like good news for celebrities. The singer Miley Cyrus had applied to register her name as an EUTM, but the EUIPO Board of Appeal found that there was a likelihood of confusion with an earlier figurative registration for CYRUS (pictured). In its judgment on 16 June, the General Court reversed that finding (Case T-368/20). The Court found that it was uncontested that Miley Cyrus is well known and “a public figure of international

The UK IPO, at least, seems resistant to Wonder Woman’s superpowers, after it rejected DC Comics’ opposition to a trade mark application for WONDER MUM for goods such as soaps, perfumery and deodorants in class 3. The application was filed by consumer goods company Unilever on 17 December 2019. DC Comics objected to the WONDER MUM trade mark on three grounds: (1) likelihood of confusion under Section 5(2)(b) of The Act. This was based on DC Comics’ EU trade mark for WONDER WO

There’s rarely been a better example of the risks of launching litigation without careful consideration than the recent IPEC decision in Fox Group International Ltd v Teleta Pharma Ltd [2021] EWHC 1714 (IPEC), a case concerning the brand REVOLAX. As HHJ Melissa Clarke summarised it in the opening paragraph of her judgment: “This case is a cautionary tale to potential claimants who are considering trade mark infringement proceedings against a potential defendant they suspect o

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

We are all aware that the pandemic hasn't necessarily led to a decrease of work across the board. One group of people who have been particularly busy are the staff at EUIPO. EUIPO received a record number of EUTM filings in 2020 - over 175,000* in a single year. This is an annual increase of more than 10%! which is remarkable given the impact of the pandemic on business during the year. Most of the growth came in the second half of the year, and EUIPO says it was led “by a si

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