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Intellectual property

 

Trade marks

The Intellectual Property Office defines a trade mark as: “a sign which can distinguish your goods and services from those of your competitors. It can be for example words, logos or a combination of both.” A trade mark is a badge of origin, used so that customers can recognise the product or service of a particular trader.

A trade mark has to be applied for and registered. To be registrable a trade mark must be:

* distinctive for the goods or services for which it is to be registered;

 * not deceptive or contrary to law or morality; and

 * not similar or identical to any earlier marks for the same or similar goods or services.

Trade marks are registered for particular classes of goods or services. There are 34 classes of goods and 11 classes of services. There are UK trade marks, EU trade marks and trade marks in the law of most countries. There are international treaties which facilitate the registration of trade marks in foreign countries.

Traders should consider the issue of trade marks in the context of the larger topic of intellectual property. Disputes between competing traders in this context often involve the related topic of passing off which relates to the protection given in the UK legal systems to unregistered trade marks and business reputation.

Traders need to consider:

* what trade marks, names, logos, sounds, scents, flavours, colours, textures and product appearances might benefit from protection;

* whether any similar marks etc. are already registered;

* how to apply for registration; whether to apply for trade mark registration in the UK, EU and in foreign countries;

* how to protect an existing portfolio of trade marks.

It is possible for a trader to apply himself for registration .The IPO website provides various types of trade mark searches to reveal which marks are already registered. However it will normally be advisable to employ a trade mark attorney to advise on the options and make an application for registration.

See further: Apply to register a trade mark

Principal legislation: Trade Marks Act 1994; Community Trade Mark Regulation (Council Regulation 40/94 of 20 December 1993).

 What’s new item on this topic [see What’s new page or archive for full item]:

08/04/2020: Bonzo Dog Doo Dah Band members may register their name

Rodney Slater and Others v Anglo Atlantic Media Limited [2020] EWHC 710 (Ch)

High Court of Justice Intellectual Property List Hearing dates: 25 February 2020

In 2005 a Mr Carruthers, a promotor and manager, conceived and organised an anniversary concert for the Bonzo Dog Doo-Dah Band (the Band). Other concerts followed, merchandise was sold, and an anthology made in 2016. In October 2015 the company which Mr Carruthers represented, Anglo Atlantic Media Limited AAM) applied to register the sign below:

The Bonzo Dog Doo-Dah Band trame mark

 

as a UK Figurative mark in classes 9 (Music recordings etc.) and 41 (Entertainment) and the mark was accepted without objection by the Intellectual Property Office (IPO) and entered on the register on 8 January 2016.

In October 2017 the Band members made an application (to the IPO seeking a declaration of invalidity and cancellation of the mark on the grounds that it had been registered in bad faith, as AAM knew that neither Mr Carruthers nor itself held any goodwill in the mark. The Band members also applied to register BONZO DOG DOO DAH BAND as a plain text mark.

In October 2019 the Registrar of Trade Marks ruled that Anglo Atlantic Media Limited had registered its mark in bad faith and allowed the Band members to register their plain  text mark. The judge stated: “ Nevertheless, I still find that filing the application was an act of bad faith. Unless there is an agreement to the contrary (which I have found there was not), or unless the band is created by a record company (which it was not), persons or businesses who engage with a band in the way that [Anglo Atlantic Media Limited] (and before it Mr Carruthers/his companies) has, should not be registering trade marks the effect of which would be to put them in complete control of the name of the band they represent and which would have the potential effect of preventing the band from undertaking the activities it should be free to do under its own name.”

However, in March 2019 AAM had filed two actions against the Band members in the High Court claiming conspiracy to injure, malicious falsehood, misrepresentation and trademark infringement. The Band members applied to have the claims struck out as an abuse of process.

The High Court has now ruled that the causes of action in the High Court as pleaded by AAM were incomplete, prolix, offended the principle of absolute privilege and many of the facts underlying the causes of action had been decided by the Registrar of Trade Marks giving rise to issue estoppel. The actions were totally without merit.

Comment: the High Court judgment allows the Band members to have their trade mark and remove the mark registered by AAM. Legaleze notes however that the AAM mark is still on the official register as at 23 April 2020. The moral of the t ale is that music bands, as any business, should consider at the earliest opportunity the merits of applying to register a trade mark to protect their name or logo.

[Original case report provided by BAILII is acknowledged with thanks. Contains public sector information licensed under the Open Government Licence v3.0. Legaleze is solely responsible for the article or summary.].

20/03/2020: Pet food manufacturers trade mark dispute

Natural Instinct Limited v Natures Menu Limited [2020] EWHC 617 (IPEC)

High Court of Justice Intellectual Property Enterprise Court 20 March 2020

Natural Instinct Limited and Natures Menu Limited are two competitors in the pet food market. Natural Instinct has two UK trade marks registered for "foodstuffs for dogs and cats" in class 31 of the Nice Classification.

Natural Instinct alleged that Natures Menu has used trade marks which infringed the former’s marks and it also alleged that the Defendant has engaged in unlawful passing off. The court upheld both claims.

Comment: the case provides an interesting example of the evidence requires to establish similarity ot trade marks and likelihood of consumers being confused.

[Original case report provided by BAILII is acknowledged with thanks. Contains public sector information licensed under the Open Government Licence v3.0. Legaleze is solely responsible for the article or summary.]

14/01/2019: Trade Marks Regulations 2018

The Trade Marks Regulations 2018 (SI 2018 No. 825) 14 January 2019

This instrument implements Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (“the Directive”). The Directive ensures that national trade mark registration systems of EU Member States remain effective as technology develops, and ensures a consistent approach to trade mark protection for businesses working across Europe.

The Regulations introduce a number of new provisions to UK trade mark law, alongside more minor amendments to a number of the existing provisions. The changes relate to areas such as: removing the current requirement that the trade mark must be capable of being represented graphically which will, for example permit the presentation of trade marks in an electronic format, such as an mp3 file. This change allows for the filing of, for example, sound or moving image file formats, as well as permitting new multimedia trade marks, which combine both moving images and sound.

 

Other significant changes will introduce new infringement provisions, which enable the detention by Customs authorities of potentially fake or counterfeit goods that are “in transit” from a country outside the EU customs territory, i.e. passing through the UK en route to a third country. Trade mark owners will also be able to take action to stop acts preparatory to counterfeiting, in relation to a broader range of items associated with packaging, labels or other materials to which a trade mark is applied. Some of the more minor amendments relate to such actions as: providing licensees with the right to intervene in infringement proceedings brought by the proprietor of the trade mark to obtain compensation for any loss; and issuing the notification for renewal to rights holders at least six months before the renewal date is due, rather than the current practice of four months.

 

02/02/2016: LTC fail in taxi design trade mark claim

The London Taxi Corporation Limited v Frazer-Nash Research Limited and anor

[2016] EWHC 52 (Ch)

The London Taxi Company (LTC) owns trade mark registrations for the shapes of the Fairway and of the TX1/TXII and claims goodwill in the shapes of the models. LTC claimed that the Defendants threatened to infringe their trade marks and to commit passing off by marketing a new model of London taxi referred to as the new ‘green’ Metrocab which is currently being trialled.

The judge found that the trade marks were “devoid of inherent distinctive character” in relation to goods in Class 12 and should be declared invalid on the ground that they consisted exclusively of the shape which gives substantial value to the goods. In his view the  design of the black cab would have been perceived by the average consumer of taxis as merely a variation of the typical shape of a taxi. The judge also ruled that the claim for passing off failed.

02/02/2016: IPO succeeds in action against copycat website

Comptroller-General of Patents, Designs and Trade Marks and anor v Intellectual Property Agency Limited and anor [2015] EWHC 3256 (IPEC)

The Intellectual Property Office (IPO) has succeeded in its claim in the High Court (Intellectual Property Enterprise Court or ‘IPEC’) against Intellectual Property Agency Limited (IPAL) which offered a trade mark and patent renewal service at a cost significantly higher than the same service offered by the IPO as the relevant official body.

Legaleze comment: this case is interesting from a number of aspects:

* it confirms previous cases that a government body may have a ‘goodwill’ to protect even though it does not carry on business in a commercial sense;

* the judge had no difficulty in finding that the IPO’s trade mark had been infringed even though on the face the mark owned by IPAL was not similar; the judge highlighted the textual similarity in the word “Intellectual Property Office” and “Intellectual Property Agency”;

* the sole director and shareholder was not able to shelter behind his company’s limited liability as he was found to have been a ‘joint tortfeasor’ with his company.

17/06/2015: Total succeed in claim agains YouView TV

17/06/2014: Total Ltd v YouView TV Ltd

Total Ltd (the claimant) issued proceedings alleging infringement of its registered trade mark by YouView TV Ltd (the defendant). The defendant counterclaimed for a declaration of invalidity and for rectification of the trade mark register.


The Intellectual Property and Enterprise Court ruled that the claimant's claim for infringement of its trade mark should succeed and it dismissed the counterclaim of the defendant.

13/02/2014: Lush Cosmetics wins trade mark claim against Amazon


Cosmetic Warriors Limited & Lush Limited v Amazon.Co.Uk Limited & Amazon EU Sarl  [2014] EWHC 181 (Ch)  Hearing dates: 25th to 29th November 2013


The court ruled that Amazon had infringed the 'investment function' of Lush's trade mark when it suggested to users of its internal search engine, and in sponsored search results displayed in Google's search index, that Lush goods were for sale on its site when in fact they were not (Mr John Baldwin QC acting as a deputy judge at the High Court).


The judge also ruled that the 'origin function' of Lush's trade mark had been infringed by Amazon's use of the mark in the Google sponsored search results.The judge remarked that Amazon could not ‘ride rough shod over intellectual property rights’. The judge also found that Amazon infringed the 'advertising function' of Lush's trade mark after first finding that Lush had built substantial reputation for health and beauty products. Amazon's use of the Lush mark to attract customers to buy non-Lush products was therefore infringing.

10/02/2014: Glee Club owner succeeds in trade mark case against Twentieth Century Fox

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation
[2014] EWHC 185 (Ch)  Hearing Date: 7 February 2014


Comic Enterprises Ltd (the claimant) runs four stand-up comedy clubs branded with the UK 1999-registered trademark "The Glee Club". The trade mark is registered in respect of classes 25 (articles of outer clothing etc.) and 41(entertainment services; comedy services; night-club and cabaret entertainment etc.)

.
The court ruled:
(i) On the issue of partial invalidity, the description of the mark as covering 'entertainment services' was too broad). The registration of the mark would be revoked in part to accord with the new specification.
(ii) With regard to partial revocation of the mark, the claimant's mark was validly registered for the new specification of services.
(iii) The evidence suggested that there was a likelihood of confusion, which included the belief that the claimant's club was connected with the defendant's programme. Fox’s use caused dilution and tarnishing of the claimant’s mark and Fox had infringed the mark under s.10(2) and 10(3) of the Trade Marks Act 1994.television.

04/10/2013: Cadbury loses purple colour trade mark appea


Société des Produits Nestlé SA v Cadbury UK Ltd  [2013] EWCA Civ 1174


Cadbury successfully applied to register a trade mark which included a particular shade of purple for its chocolate packaging. The High Court dismissed an appeal against the grant of the trade mark by Nestlé.
The Court of Appeal has now allowed a further appeal by Nestlé on the grounds that Cadbury's description of the trade mark did not amount to a “ sign graphically represented” within the meaning of the EU Directive 2008/95 (to approximate the laws of the Member States relating to trade marks) art.2 because the description of the mark would result in the registration of multiple signs with different permutations, presentations and appearances, which were neither graphically represented nor described with any certainty or precision, or at all.


Legaleze comment: A trade mark law commentator has observed that colour marks are not unregisterable as a result of this decision, but the application has to be drafted with very great care. Cadbury might have avoided problems had it applied simply to register wrapping foil in pantone 2658C. l

02/07/2013: Microsoft ‘Skydrive’ infringes Sky TV trade marks


British Sky Broadcasting Group plc and other companies v Microsoft Corporation and another company [2013] EWHC 1826 (Ch

The Claimants (‘Shy’) took this action for passing off and for infringement of two registered Community trade marks (CTMs) and two UK registered trade marks (UKTMs) for the mark 'SKY' by which the Claimants sought to prevent the Defendants (‘Microsoft’) from us ing "SkyDrive" as the name for their cloud storage service throughout the European Union.

22/05/2013: High Court rules Marks and Spencer infringed Interflora’s trade marks


Interflora, Inc v Marks and Spencer Plc & another [2013] EWHC 1291 (Ch)


M & S pays Google to display advertisements for its flower delivery service on the search engine results page (or SERP) when an internet user uses Google's search engine to search for "interflora" and similar terms (a form of advertising variously referred to as "keyword advertising", "paid search advertising", "pay per click (or PPC) advertising" and "search engine advertising"). Interflora claimed that M & S thereby infringed Interflora's trade marks. M & S deny any infringement.


The High Court ruled that M&S had infringed the Interflora trade marks in using the Google ad service in the way complained of. The judge left open Interflora’s claims arising from Article 4 of the Misleading and Comparative Advertising Directive, but indicated that he thought the case did involve comparative advertising, contrary to the submissions made by M&S.

[Page updated: 23/04/2020]

 

 

 

 

 

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