26
Oct
2021
@WTR_Alerts Legal Update Alert - United States: In this dispute over the use of the name Edie Parker, a US district court has h… https://t.co/tSd3ACrd0s Read more
Industry Reports - More Updates
UK
Burges Salmon LLP
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23 Sep2021
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. Full text
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2 Sep2021
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. Full text
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19 Aug2021
Further success for Sky in <em>SkyKick</em> 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. Full text
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17 Jun2021
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. Full text
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10 Jun2021
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. Full text
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13 May2021
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. Full text
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15 Apr2021
<em>QUIZ v QUIN </em>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. Full text
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4 Mar2021
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. Full text
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11 Feb2021
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. Full text
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17 Dec2020
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. Full text
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26 Nov2020
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. Full text
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29 Oct2020
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. Full text
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15 Oct2020
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. Full text
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17 Sep2020
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. Full text
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20 Aug2020
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. Full text
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6 Aug2020
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. Full text
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16 Jul2020
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. Full text
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9 Jul2020
<em>PlanetArt v Photobox</em> 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. Full text
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2 Jul2020
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. Full text
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11 Jun2020
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. Full text
