In 2016 McMug Ltd successfully filed a UK trademark application for the mark OKAYEST for a number of products, including beer mugs, chinaware and flasks. However, AMC Photographics Limited challenged the mark's validity on the grounds that, among other things, it was devoid of distinctive character and was a wholly descriptive dictionary word (a superlative of okay). This case is a useful reminder that, even after registration, a mark can be challenged on the grounds of non-distinctiveness and descriptiveness.
Leicester City Football Club Limited recently opposed Leeds City Football Club Limited's application for a graphical trademark covering various goods and services in Classes 16, 25, 26 and 41. Leicester City's claims relied on its earlier mark for the acronym 'LCFC'. In comparing the goods and services covered by the two trademarks, the UK Intellectual Property Office held the parties' goods to be identical and their services to be identical or at least highly similar.
A UK Intellectual Property Office (UKIPO) opposition was recently brought by eBay Inc against an application by the games company SC Zumedia Games SRL to register a figurative trademark. eBay relied on two earlier registered UK word marks for EBAY in Classes 35, 38 and 41 and figurative EU trademarks in various classes. While the UKIPO accepted that eBay has a protectable goodwill, it was satisfied that there was no likelihood that a substantial number of eBay's customers would be misrepresented.
In 2017 an application was filed to register LIFEWEAR CLOTHING as a UK trademark for clothing and headgear. The application was opposed by Fast Retailing Co, Ltd, the owner of the well-known UNIQLO brand, based on their trademark registrations and the reputation of UNIQLO LifeWear, as well as their unregistered rights in the term 'life wear' for clothing. UNIQLO's earlier rights covered identical goods to those applied for, making it easier to argue a likelihood of confusion (or association) between the marks.
Under Section 46 of the Trademarks Act 1994, a registered trademark can be removed from the register if there has been no genuine use of that mark for five years or more. This is the crux of the so-called 'use it or lose it' argument. But how much evidence is needed to prove genuine use? This question was put to the UK Intellectual Property Office during a recent revocation application.
The Supreme Court recently handed down its judgment in the Warner-Lambert v Generics (UK) (Mylan) case concerning the validity and infringement of a patent claiming the use of pregabalin for treating neuropathic pain. The key issues which the court had to resolve were the tests for infringement of a second medical use claim and the test for plausibility of a claim such that it is sufficient.
The Supreme Court has ruled that trademark owners should indemnify internet service providers (ISPs) for the costs incurred in blocking access to websites that infringe their marks. The decision reverses the lower courts' rulings that these costs should be picked up by ISPs. However, the indemnity must be limited to reasonable compliance costs. Therefore, the ruling should not deter brand owners from applying for blocking orders in appropriate cases.
The exemptions to patent infringement applicable in the United Kingdom to life sciences products are often a source of confusion. This is not least because of the introduction of a third exemption in this area on 1 October 2014. The extent of protection offered by each exemption differs, but to some extent overlaps, and there is only slim guidance from the courts on two of the three.
The High Court has overturned a decision of the registrar of trademarks in which an opposition against an application for a stylised mark featuring the words 'VAPE & CO' was upheld. The opposition was filed by London Vape Company Ltd based on its stylised UK registration featuring the words 'THE vape.co'. The High Court upheld the appeal, noting that "if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion".
In the final chapter of the successful trademark infringement proceedings brought by Jack Wills Ltd against House of Fraser (Stores) Ltd, the High Court assessed the profits that the defendant retailer had to pay Jack Wills. The decision provides a useful explanation of the factors to be considered when undertaking an account of profits.
The Court of Appeal recently ruled on an outstanding aspect of the 'Glee' trademark dispute and confirmed the compatibility of Section 41 of the Trademark Act – concerning the registration of series marks – with EU law. Provided that series marks are sufficiently similar to meet the qualifying conditions set out in Section 41, they are individually entitled to the protection afforded to every trademark under EU law.
In the latest instalment of the ongoing saga involving the 'Trunki' suitcase, the Supreme Court has unanimously dismissed the appeal filed by Magmatic. This means that the Court of Appeal judgment stands, which held that PMS's 'Kiddee Case' did not infringe the registered design rights in Magmatic's Trunki case because the "overall impression" of the two products was sufficiently different.
In the latest instalment of the trademark dispute between Comic Enterprises and Twentieth Century Fox, the Court of Appeal upheld the 2014 High Court decision that use of the sign 'Glee' by Twentieth Century Fox in respect of its well-known television programme infringed a series of registered trademarks owned by Comic Enterprises Ltd, which runs a collection of comedy clubs named 'Glee' across the United Kingdom.
Section 52 of the Copyright Designs and Patent Act 1988 limits the duration of copyright in artistic works that have been industrially exploited with the copyright owner's consent to 25 years (ie, the same maximum protection available for designs). The government intends to revoke Section 52 in light of concerns raised by designers; but following further objections from businesses, controversial new repeal proposals have been drafted.
The European Court of Justice recently handed down its preliminary ruling on the registration and validity of shape marks following a referral from the High Court in the well-publicised case between Nestlé and Cadbury. The case, which began as a contested trademark application in 2010, concerned the Kit Kat chocolate bar, the shape of which Nestlé wished to register in Class 30.
According to the IP Crime Report 2014/2015, published by the national IP Crime Group, the Border Force detained more than 1.6 million infringing items over the reporting year, with an 'if genuine' retail value in excess of £56 million. The report also notes that a key emerging trend is the threat from social media. The Anti-counterfeiting Group and its partners are responding to this threat with several significant initiatives.
Following the Court of Appeal decision in the Assos v Asos trademark dispute, there have been two interesting developments which affect it. First, the Supreme Court has refused permission to appeal the Court of Appeal decision; second, the European Commission has set out plans to change the law so that the 'own name' defence will no longer apply to corporations.
The High Court has found that the introduction of the exception for private copying of copyright-protected works without a compensation scheme was unlawful. However, the court did not strike out the exception, instead granting the secretary of state three options to rectify the error. Whatever happens next, it is clear that change is required.
The key question faced by the Supreme Court in a recent case was whether a claimant in a passing-off action must have actual customers in the United Kingdom or whether it is sufficient to demonstrate that it has a reputation in the United Kingdom and internationally. The case centred on a dispute over Sky's use of the name 'NOW TV' for its internet television service.
The Court of Appeal has held that use of the 'ASOS' brand by well-known online clothing retailer Asos created a likelihood of confusion with and damaged the distinctive character of the earlier ASSOS Community trademarks owned by Assos, the specialist cycle clothing retailer, but that Asos could nonetheless rely on the 'own name' defence to avoid trademark infringement.