Region: Ireland

MARIE CLAIRE application rejected on grounds of bad faith and passing off

In <i>Marie Claire Netherlands BV v Marie Claire SA</i>, the hearing officer has upheld an opposition by Marie Claire SA and Brandwell (Irl) Limited against the registration of the trademark MARIE CLAIRE. Among other things, the hearing officer found that seeking to register the mark specifically to prevent the opponents from doing so did not constitute a “legitimate commercial practice”.

04 September 2013

Hearing officer warns against 'kitchen sink' approach to oppositions

In <i>TMR Restaurants Ltd v Société Anonyme Des Bains De Mer Et Du Cercle Des Etrangers</i>, the hearing officer has dismissed an opposition filed by the owner of the mark MONTE-CARLO against the registration of a figurative mark including the words 'The Monte Carlo'. Among other things, the hearing officer expressed his concern “about the all-too-common practice that has become part of the 'kitchen sink' approach to oppositions”.

19 July 2013

Government announces intentions on plain packaging legislation

The Irish government has announced that it intends to introduce legislation requiring standardised packaging for tobacco products. The press release confirmed that the intention is to "remove all form of branding - trademarks, logos, colours and graphics. The brand name would be presented in a uniform typeface for all brands, and the packs would all be in one plain neutral colour".

30 May 2013

BskyB successfully opposes registration of 'sky' logo mark

In <i>Walsh v British Sky Broadcasting Group PLC</i>, the controller of patents, designs and trademarks has upheld BskyB’s opposition against the registration of the figurative mark SKY BUSINESS CENTRES. Among other things, the controller held that BskyB’s SKY marks had reached a level of recognition that amounted to a reputation in the country, and that a substantial number of people would recognise the marks even if they never used BskyB’s goods/services.

19 March 2013

Patents Office publishes notice on IP TRANSLATOR and unacceptable class heading terms

The Irish Patents Office is the latest national IP office to publish a notice on its interpretation of the decision of the ECJ in <i>IP TRANSLATOR</i>. The office considers that the answer to the first question in the decision - namely, the goods and services must be identified with sufficient clarity and precision to enable the competent authorities and traders to determine the extent of protection of the mark - must take precedence over the answers to the second and third questions.

19 February 2013

When trade unionism and trademark law intersect

British and Irish trade union Unite has launched a legal campaign against the owners of glassware manufacturer Waterford Crystal in a bid to repatriate jobs to the Irish city. Interestingly, it has turned to trademark law as a tool to encourage negotiations.

15 February 2013

Danone's ACTIVIA mark revoked for non-use, except in respect of yoghurts

In <i>Nutrichem Diät + Pharma GmbH v Compagnie Gervais Danone</i>, the hearing officer has revoked Compagnie Gervais Danone’s trademark ACTIVIA in respect of all goods covered by the registration in Classes 30 and 32, and for all goods in Class 29 with the exception of yoghurts. Among other things, the hearing officer noted that reputation and goodwill are not sufficient to overcome an application for revocation that is grounded on non-use.

09 October 2012

Supreme Court decision on get-up - the best thing since sliced bread?

In <i>McCambridge Limited v Joseph Brennan Bakeries</i>, the Supreme Court has confirmed that the use by Joseph Brennan Bakeries of wholewheat bread packaging which was similar to the get-up of market leader McCambridge Limited was passing off, despite the presence of the distinctive BRENNAN’S house mark. The case shows that even use of a prominent house mark will not dispel confusion where there are similarities on an initial impression.

24 September 2012

‘Fair’ specification of goods considered in revocation proceedings

In <i>MIP Metro Group Intellectual Property Gmbh & Co Kg v Metro Industries Limited</i>, the hearing officer has rejected in part and granted in part an application for revocation of the mark METRO. Among other things, the hearing offer stated that “[w]hat is important is that the specification is such that the average consumer would deem it fair for the goods or services traded”.

20 January 2012

Bakery restrained from selling newly packaged bread in controversial decision

In <i>McCambridge Ltd v Joseph Brennan Bakeries</i>, the High Court has granted injunctive relief to McCambridge Ltd restraining Joseph Brennan Bakeries from selling its whole-wheat bread in a new packaging consisting of a re-sealable pack with a dark green rectangle and the BRENNANS mark on the front. The court was satisfied that consumers would associate such packaging with McCambridge’s whole-wheat bread.

17 January 2012

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