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15 November 2016

Dogs Trust appeal upheld over inherent distinctiveness

An appointed person has upheld the Dogs Trust's appeal relating to inherent distinctiveness, after the UK Intellectual Property Office opposed the trademark application for A DOG IS FOR LIFE NOT JUST FOR CHRISTMAS on the basis on non-distinctiveness.

07 November 2016

Samsonite fails to oppose ROLLING SOLUTIONS

Samsonite’s opposition of the mark ROLLING SOLUTIONS on the grounds of confusion, acquired reputation and passing off has been rejected on all three counts. The rejection is in line with the limited protection entitled to marks which describe goods or services, although a better-defined Class 35 specification could have benefited the opponent.

01 November 2016

Changes to UK registered design fees come into effect

Changes to the fee structure for UK registered designs have now come into effect. Here's what practitioners should be aware of.

01 November 2016

United Kingdom: Protecting and enforcing renowned trademarks in non-registration jurisdictions

Many companies now operate in a global marketplace and enjoy a strong international reputation for their famous brands. However, problems can arise where brands are not registered as trademarks in every country where they have a strong reputation

26 September 2016

High Court upholds findings in TripAdvisor v Handsam

The High Court has dismissed TripAdvisor’s appeal against a hearing officer’s decision to reject its opposition to the registration of the logo mark HANDSAM SCHOOLTRIPSADVISOR as applied to certain goods and services such as printed manuals and business advice.

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”.

22 June 2016

“No conspiracy”: BREXIT trademark registrant on using IP to defend political discussion

Disputes over the use of third-party trademarks by campaigners in the run-up to this week’s UK referendum on EU membership have been widely reported. But a trademark for BREXIT has also been secured; and the owner tells World Trademark Review that – rather than an attempt to cash in on the ubiquitous term – he acted in a bid to prevent someone else from acquiring the mark and using it to stifle debate.

21 June 2016

Court of Appeal finds series registrations not incompatible with EU law

The Court of Appeal unanimously held that Twentieth Century Fox had infringed a registered trademark including the words ‘The Glee Club’, which belongs to the UK-based comedy club Comic Enterprises. The court has now determined that series registrations are in themselves not incompatible with the Trademarks Directive.

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.

29 April 2016

What a pandemonium!

An application was made by an individual to register PANDEMONIUM DRUMMERS as a UK trademark in Class 41. The Pandemonium Drummers Association opposed the application under the Trademarks Act 1994, claiming that it had earlier rights in the mark.

24 February 2016

General Court delivers bottle blow to Coca-Cola

The General Court has ruled that the shape of Coca-Cola’s ‘contour bottle without fluting’ is devoid of distinctive character and does not qualify for registration as a Community trademark. One industry expert told World Trademark Review that the decision highlights the particular challenges facing those seeking to protect containers and packaging as trademarks.

18 February 2016

Trademarks for shape of London taxis found invalid and not infringed

In a recent decision Justice Arnold found that a Community trademark and UK trademark based on the shape of the Fairway model of London taxi would be perceived by the average consumer of taxis as a variation in the typical shape of a taxi and therefore lacked distinctive character.