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16 December 2016

Trademark implications of Brexit, Trump and Samsung Note 7 crisis feature in our most-read list of 2016

As 2016 draws to a close, it’s time to take a look back at the blogs which received the most reads in the past 12 months. 

30 November 2016

Specsavers secures SHOULD’VE trademark registration; hits out at inaccurate media coverage

Eyewear giant Specsavers has successfully secured registered trademark protection on the term SHOULD’VE, a shortened version of its well-known tagline ‘Should’ve gone to Specsavers’. The initial application at the UK Intellectual Property Office spurred negative media reaction earlier this year, with reports claiming that it demonstrates the overreach of trademark law. However, in exclusive comments to World Trademark Review, Antony Douglass, principal IP counsel at Specsavers, has hit out at the “inaccurate commentary” surrounding the mark.

18 November 2016

High Court holds common assumption invalid

The High Court recently held that a claimant could not rely on an argument of common assumption in relation to the purchase of disputed IP rights, as this relied too heavily on subjective intention. The court emphasised that parties have the ability to contractually agree termination provisions and therefore, only the terms of the contract – not the pre-contractual negotiations – should be taken into account.

11 November 2016

Settlement agreement precludes trademark infringement

The ambiguity of a settlement agreement in Oran Pre-Cast Ltd v Oranmore Precast Ltd has proved costly for the claimant, as the IP Enterprise Court found that the broad terms of the agreement precluded the clear trademark infringement and passing off claims brought against a former employee and his new company.

28 July 2016

Sky’s the limit for Skyscape when seeking a declaration of non-infringement

After Sky's solicitors wrote to Skyscape alleging that it was infringing a number of Sky's trademarks, Skyscape asked the court to grant a declaration of non-infringement. Although a viable tool in infringement cases, there are issues that claimants should bear in mind when seeking a declaration of non-infringement.

07 July 2016

Barcelona and Neymar top football trademark rankings; high-flying Leicester need to shore up their defence

Research conducted by World Trademark Review reveals the leading trademark filers in the football world, with FC Barcelona, AC Milan and Manchester United topping the list. It also demonstrates that Leicester City – a team that shocked the football fraternity by winning the Premier League title two months ago – do not yet have a trademark portfolio that matches its newfound success; although a club spokesperson tells us that it has plans to change that.

24 June 2016

“Don’t panic”: call for calm as Brexit vote creates uncertainty over future scope of trademark protection

The UK electorate has voted to leave the European Union, meaning that after months of campaigning and speculation, trademark professionals now face the very real prospect of a changed IP landscape. The exit won’t become a reality until 2018 at the earliest, meaning that EU trademarks and registered Community designs currently remain valid in the United Kingdom. However, in the interim there is a lot to be negotiated, with the UK Institute of Trademark Attorneys urging rights holders “not to panic”.

10 June 2016

Toyota hits out at trademark misuse as Brexit campaigning enters home stretch

In less than two weeks the UK electorate will vote on whether the country should remain a member of the European Union. The campaign from both sides has intensified as polling day approaches. Yesterday Toyota became embroiled in the debate, hitting out at the unauthorised use of its trademarks by the ‘leave’ camp.

26 May 2016

Lessons from the José Mourinho trademark tussle with Chelsea

It has been reported that the delay in announcing José Mourinho as the new Manchester United manager is partly down to trademark negotiations with his previous club Chelsea. While extremely unlikely to scupper his appointment, the development provides a useful lesson on the management of personal brands.

19 May 2016

Plain packaging gets green light in the UK as court dismisses legal challenge

The High Court in London has rejected a challenge to legislation introducing plain packaging for tobacco products. The decision was handed down just a day before the new regime makes effect, meaning that the UK will shortly become the latest country to implement plain packaging.

01 September 2015

Office improves fast-track opposition process, but flaws remain

The UK Intellectual Property Office has revealed the take-up level for its ‘fast-track’ trademark opposition process and also introduced a new costs cap to encourage further growth. However, one industry commentator argues that “serious brainstorming” is needed on how to make it a more viable option for risk-averse SMEs.

21 August 2015

Disney faces a dismal conundrum over new Banksy art project

A Banksy-led art show, titled Dismaland and taking satirical swipes at entertainment giant Disney, has opened in a British seaside town. A trademark application for DISMALAND has also been filed. The result presents Disney’s IP team with a conundrum – do they swing into action against potentially infringing use of their intellectual property or look the other way and avoid the negative coverage that often accompanies legal actions.

06 August 2015

Beano hopes that Pixar responds to its comic approach to guerrilla marketing

This week British comic The Beano has built on its “classically cheeky” reputation with a series of marketing stunts that ‘gently parodies’ new Pixar movie Inside Out. Unusually for a campaign that ambushes a third party’s marketing campaign, The Beano's editor-in-chief has told World Trademark Review he hopes the target reacts to it.

26 February 2015

Reform of the groundless threats regime takes another step forward

The UK government has today outlined measures to reform the groundless threats regime, responding to the proposals published by the Law Commission last year.

27 January 2015

Rangers deal highlights difficulty of valuing - and capitalising on - a troubled brand

Rangers International Football Club has released a statement to the London Stock Exchange, announcing that the club has entered into agreements with SportsDirect.com Retail Limited and associated companies to provide a long-term on-going credit facility of up to £10m – with trademarks central to the deal. The natural question to ask is whether the club got the best deal possible while using its prime IP asset as leverage.