Market Insight

Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.

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UK

New 20 JANUARY 2022

UKIPO refuses NORTON MOTORCYCLE RACING trademark application

The UKIPO has upheld a wide-ranging opposition by the Norton Motorcycle Co Ltd against an application in Class 12 to register NORTON MOTORCYCLE RACING by Norton Motorcycle Racing Limited based on direct confusion, likelihood of passing off and bad faith, but rejected the opponent’s claim to detriment to reputation.

16 DECEMBER 2021

A stealthy avoidance of summary judgment at the UK High Court

An application for summary judgment over a trademark infringement claim has failed on the basis that further information and evidence would be materially beneficial to the court. The case involved two entities launching similar products under similar brand names – an increasingly common scenario.

09 DECEMBER 2021

Oatly misses ‘oat’ on victory in UK trademark battle against PureOaty

Oatly’s loss to rival oat drink brand, PureOaty, demonstrates the limitations of trademark law in preventing competition from rival brands, and highlights the difficulties brand owners can face when trying to enforce marks containing descriptive elements.

18 NOVEMBER 2021

United Kingdom begins work on new post-Brexit exhaustion regime

As rights holders wait for an official response to the government’s consultation on the future of the United Kingdom’s exhaustion regime, a close analysis of the current situation offers valuable insight into this fraught area.

23 SEPTEMBER 2021

Sazerac EAGLE RARE prevails in the war of the whiskeys

A recent decision from the Court of Appeal is a timely reminder to trademark practitioners of the roles of direct and indirect confusion, and also highlights the importance of the perception of the average consumer.

02 SEPTEMBER 2021

TRANSFORM DENTAL/TRANSFORM trademark invalidated in its entirety

The UKIPO has declared the TRANSFORM DENTAL/TRANSFORM trademark, which was successfully registered in August 2020, invalid due to likelihood of confusion with a prior mark for similar goods and services.

19 AUGUST 2021

Further success for Sky in SkyKick saga, as partial invalidity finding is overturned

The UK Court of Appeal has issued its eagerly anticipated judgment in the long-running Sky v SkyKick saga, overturning the High Court ruling that Sky’s trademarks were partially invalid on grounds of bad faith and upholding the finding of infringement.

17 JUNE 2021

High Court rejects Puma’s claim that Nike’s FOOTWARE mark is descriptive

The UK Intellectual Property Office Opposition Division’s decision to reject an opposition by Puma against a Nike application to register FOOTWARE has been upheld by the UK High Court.

10 JUNE 2021

Italian consortium successfully opposes BROSECCO wine mark on the grounds of Prosecco PDO

The Consortium for the Protection of the Controlled Designation of Origin Prosecco has successfully opposed an application to register the trademark BROSECCO for wines, based on – among other things – the earlier protected designation of origin (PDO) Prosecco.

13 MAY 2021

Swatch successfully appeals Apple UK bad-faith parody claims

Swatch AG has successfully appealed a 2017 UK opposition decision in relation to its applications for SWATCH ONE MORE THING and ONE MORE THING, on the grounds that the intention to annoy Apple did not constitute bad faith.

15 APRIL 2021

QUIZ v QUIN shows that a strong conceptual meaning in one mark can outweigh significant visual and aural similarities with another

An appeal against the rejection of an opposition against the mark QUIN has been dismissed, finding that the average consumer would be unlikely to confuse it with the mark QUIZ or form a link between the two. On issuing his decision, the appointed person made a number of interesting comments about case management and the use of shortcuts for the purpose of procedural economy.

04 MARCH 2021

UK High Court upholds UKIPO decision to prevent registration of GEEKSTORE based on unregistered GEEKCORE

The UK High Court has dismissed an appeal of the UKIPO’s decision to prevent the registration of the figurative mark GEEKSTORE due to an earlier unregistered right in the word mark GEEKCORE, as its role on appeal is purely to examine whether the UKIPO hearing officer has erred in their assessment of the law.

11 FEBRUARY 2021

Tefal fails to secure trademark protection for its red dot despite survey evidence

Tefal’s trademark application for its famous red dot on cooking appliances has been refused in the United Kingdom on the grounds that the company failed to show that a significant proportion of relevant consumers would regard the dot as a trademark guaranteeing the origin of the goods – despite a high street survey revealing that 60% of people associated the mark with the company.

17 DECEMBER 2020

UK Intellectual Property Office limits address for service rules to United Kingdom, Gibraltar and Channel Islands

As a result of Brexit, and following a UK-wide consultation, from 1 January 2021 any address for service at the UK Intellectual Property Office must be in the United Kingdom, Gibraltar or the Channel Islands, not the European Economic Area, subject to certain transitional exceptions.

26 NOVEMBER 2020

UK appointed person invalidates AFFINITY marks as descriptive but not customary

An appeal from the UK Intellectual Property Office has been dismissed, despite a finding that the hearing officer was incorrect to invalidate the AFFINITY trademark on the ground that it had become customary.

29 OCTOBER 2020

UK court finds that alleged bait-and-switch selling does not constitute trademark infringement

The Intellectual Property Enterprise Court has rejected the claims of a sound control product manufacturer that a previous distributor of its goods engaged in bait -and-switch-related trademark infringement and passing off on the basis that there was no likelihood of confusion, no damage to the key functions of the earlier marks and no actionable misrepresentation, while the relevant rights had been exhausted.

15 OCTOBER 2020

Battle of the bourbons – UK High Court finds that AMERICAN EAGLE infringes EAGLE RARE mark

Sazerac Brands has been successful in its UK High Court claim that the sale of bourbon whiskey under the brand American Eagle infringed its trademark EAGLE RARE. The AMERICAN EAGLE mark was also declared invalid.

17 SEPTEMBER 2020

Dior loses PRETTY SAVAGE trademark dispute in the United Kingdom

Luxury brand Christian Dior has failed to prevent the registration of UK trademark PRETTY SAVAGE, despite claims that the mark would take unfair advantage of – or be detrimental to – its own SAUVAGE mark.

20 AUGUST 2020

UK High Court rejects Land Rover’s appeal for registration of Defender shape marks

On appeal, Jaguar Land Rover Limited has lost its legal battle to protect various models of the Land Rover Defender four-by-four as trademarks in the United Kingdom. The UK High Court upheld the UK Intellectual Property Office hearing officer’s decision to refuse the applications for the majority of goods and services sought on the basis that they lacked distinctiveness.

06 AUGUST 2020

UK GYMNASTICS infringes British Gymnastics marks

The UK High Court has upheld the British Amateur Gymnastics Association’s claims that use of the UK GYMNASTICS logos and word mark in connection with services relating to gymnastics constitutes infringement and passing off of its own BRITISH GYMNASTICS marks – offering an essential lesson on consumer awareness.

16 JULY 2020

No-go for Nosecco following opposition by Prosecco

The UK High Court has dismissed an appeal against a UK Trademark Registry decision, finding that a device mark incorporating the term ‘Nosecco’ was evocative of and deceptive in relation to an earlier protected designation of origin for Prosecco.

09 JULY 2020

PlanetArt v Photobox offers practical tips for designing UK-targeted apps

The recent UK High Court judgment in PlanetArt v Photobox provides a comprehensive review of the application of trademark infringement law in the context of apps and downloadable mobile software, including helpful guidance for app designers to ensure that icon designs are branded differently enough to avoid clashing with competitors.

02 JULY 2020

UKIPO clarifies goodwill requirement for passing off in RECUP opposition appeal

An appeal concerning applications for various RECUP marks has overturned the first-instance ruling, finding that there had not been sufficient goodwill at the time to support a claim for passing off and that the opposition should not have succeeded.

11 JUNE 2020

UK High Court issues latest decision in MERCK trademark saga

The UK High Court has issued its decision in the long-running Merck v Merck trademark saga. It partially revoked the contested term ‘pharmaceutical substances and preparations’ and confirmed that online use of a mark can constitute use in the course of trade for the purposes of trademark infringement even where the infringing party is based outside of the United Kingdom and has never sold or supplied goods or services in the country under this mark.

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