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09 July 2004

High Court halts application to adduce new evidence

The High Court of England and Wales has refused an application to (i) adduce new evidence, and (ii) amend the grounds of opposition in an appeal against a hearing officer’s decision to allow registration of the mark GOLDFISCHLI. The court held, among other things, that the issues raised had been conclusively decided at the earlier proceedings and could not be re-examined.

21 June 2004

Notice on filing requirements for design registrations issued

The UK Patent Office has issued Designs Practice Notice (4/01) to clarify the requirements for design applications. It is hoped that the notice will help to reduce the number of defective applications received by the Patent Office, in particular, those in which the representation of the design is incorrect.

15 June 2004

Trademarks Registry keeps FOOK off the register

A hearing officer at the UK Trademarks Registry has refused an application to register the mark FOOK on the grounds that it was contrary to accepted principles of morality. The hearing officer held that the mark was phonetically very similar (and identical in some dialects) to the English swear word 'fuck'.

08 June 2004

Use of COMPASS and COMPASS LOGISTICS points to infringement

The High Court of England and Wales has upheld the validity of a COMPASS Community trademark and has ruled that UK firm Compass Logistics Ltd's use of COMPASS and COMPASS LOGISTICS was likely to infringe that mark. The court held that Compass Logistics' earlier rights in its marks were of "mere local significance" in the European Union pursuant to Article 8(4) of the Community Trademark Regulation.

03 June 2004

Chanel succeeds in opposition to COCO DE MER registration

In Coco de Mer Ltd v Chanel Ltd, the High Court of England and Wales has upheld Chanel Ltd's opposition to the registration of COCO DE MER for goods in various classes of the Nice Classification. The court held that when considered as a whole the mark's dominant element was the word 'Coco' and this made it confusingly similar to Chanel's prior registered COCO mark.

01 June 2004

Oxford University feeling blue following failed cancellation action

A hearing officer at the UK Trademark Registry has dismissed an invalidation action, brought by a company that represents the interests of Oxford University, against a registration for the mark OXFORD BLUE. He held that although the university had built up a reputation in the trademark in relation to sporting achievements, it had no goodwill in the mark because it had not used it in trade.

28 May 2004

WEST HAM registration ends in a draw

The UK Trademark Registry has allowed in part an opposition to the registration of WEST HAM as part of a series of marks for football club merchandise on the basis that it is geographically descriptive under Section 3(1)(c) of the Trademarks Act 1994. It also noted that the WEST HAM mark was distinct from the other marks in the series and thus should be deleted from the application.

10 May 2004

Promise following asset purchase grants HERR-VOSS licence

In Blue IP Inc v KCS Herr Voss UK Ltd, the UK High Court has dismissed the plaintiff's claim for an injunction restraining the defendant from (i) using the mark HERR-VOSS, and (ii) registering or carrying on business under the name Herr-Voss. The court held that the defendant was entitled to use the mark and name as a result of a licence provided in correspondence as part of an asset purchase by the defendant.

04 May 2004

Famous marks afforded extended protection

The Trademarks Act 1994 has been amended to broaden the protection afforded to famous trademarks. The changes, which will take effect tomorrow, will bring UK law into line with the ECJ's reasoning in Davidoff and adidas that anti-dilution provisions should extend to cases where a similar or identical sign is used for goods similar or identical to those to which a famous mark applies.

30 April 2004

Appointed Person makes first reference to ECJ

An appointed person of the UK Patent and Trademark Office has for the first time referred a question to the ECJ. David Kitchin requested that the ECJ clarify whether the confusion that results from the sale of a business and assignment of a trademark associated with a particular individual's name to an unconnected party amounts to "lawful deception" in the meaning of the Community Trademark Directive.

20 April 2004

Court of Appeal hits the roof in design case

The Court of Appeal has found that a designer of components for conservatory roofs held design rights in the components "on trust" for the various companies of which he was a controlling shareholder. This is in spite of the fact that he was neither employed by, nor commissioned to create the designs for, the companies.

07 April 2004

New trademark rules get the go-ahead

The UK Patent Office has decided to press ahead with the implementation of new trademark rules following feedback from its formal consultation on the proposals. The Trademark (Amendment) Rules 2004 will come into force on May 5 2004 with the aim of helping small and medium-sized enterprises obtain and protect registered trademarks more effectively and at less cost.

25 March 2004

Trademarks Registry hard on BI-AGRA

In Pfizer Inc v Glenside Organics Ltd, a hearing officer at the UK Trademarks Registry has upheld Pfizer's opposition to the registration of the mark BI-AGRA for various agricultural products and chemicals. The hearing officer held that the proposed registration was confusingly similar to Pfizer's well-known VIAGRA mark and emphasized the importance that aural similarity can play where goods are ordered by telephone.

19 March 2004

MEZZACORONA wine mark not in breach of EU regulation

The Court of Appeal has upheld the registration of the MEZZACORONA mark for wines. It found that the mark complied with the EU regulation on the description of wines and thus could not be opposed on the basis of Section 3(4) of the Trademarks Act 1994, which precludes the registration of a mark if its use is prohibited by any provision of EU law.

09 March 2004

New practice for partnerships issued by Trademark Registry

The UK Trademark Registry has issued a notice setting out its new practice of allowing a partnership to be recorded as an applicant for, or proprietor of, a trademark. The registry's previous practice in such cases was only to record the partnership if it was a corporate body, or if some or all partners were listed.