INTELLECTUAL PROPERTY LAW

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

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

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

As brands expand into new areas, particularly those driven by emerging technologies, they are often looking for innovative and memorable trade marks. Nike appears to have scored with its registration of FOOTWARE for various tech-related goods and services. In a judgment on 27 May 2021, High Court Judge Mr Justice Zacaroli upheld a UK IPO Hearing Officer’s decision rejecting Puma’s opposition to Nike’s registration of FOOTWARE (Puma SE v Nike Innovate CV [2021] EWHC 1438 (Ch))

The retail space may still be recovering from some post Covid (& Brexit) turbulence, ecommerce continues to buck the trend. Etsy has acquired Depop, the British resale fashion platform, for a casual $1.6bn (£1.15bn). Trading and reselling vintage or recycled clothing online has now become a several multi-billion dollar market, but a multitude of IP issues come with it. Genuine Goods Not all products sold on platforms like Depop (or Etsy) are genuine. That great deal on a seco

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

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

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

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 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

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

The IPEC looked at children's toys in Luen Fat Metal and Plastic Manufactory Limited v Jacobs & Turner Limited t/a Trespass [2019] EWHC 11. Prepare for a fun time! Background The Claimant owns: a series of 3 UK word marks: FUNTIME, FUN TIME, and FUN-TIME in respect of “Class 28: Games, toys and playthings; electronic games”. an EU trade mark for the word FUNTIME for the same goods in class 28. The EU registration includes a note that “The trade mark was inherently distinctive

IPSoc recently had the latest in its successful run of education events. The talk from Simon Malynicz QC, SkyKick's leading counsel, gave an insider's perspective in the trade mark dispute which could have an important impact on trade mark law for many years to come. For background on the Skykick dispute see here, the referred questions are here. A handy summary from Simon's slides is below. In Simon's view, the dispute goes to the heart of what the trade mark register is for

Can a US corporation selling construction software only in the Americas under the name ARGOS be sued for infringement of a registered trade mark by a UK based consumer goods retailer who trades mainly in the UK and Ireland under the same name? This question is posed by Floyd LJ in the introduction to the Court of Appeal decision on the Argos Ltd v Argos Systems Inc [2018] EWCA Civ 2211. The formulation of the question may make it easy to guess the Court of Appeal's ultimate d