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Trade marks
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Introduction

The Intellectual Property Office defines a trade mark as: “a sign which can distinguish your goods and services from those of your competitors. It can be for example words, logos or a combination of both.” A trade mark is a badge of origin, used so that customers can recognise the product of a particular trader. To be registrable a trade mark must be:

* distinctive for the goods or services for which it is to be registered;
* not deceptive or contrary to law or morality; and
* not similar or identical to any earlier marks for the same or similar goods or services.

Trade marks are registered for particular classes of goods or services. There are 34 classes of goods and 11 classes of services.

Trade mark searches: the IPO website provides various types of trade mark searches.

Principal legislation: Trade Marks Act 1994; Community Trade Mark Regulation (Council Regulation 40/94 of 20 December 1993).

What’s new item on this topic [see What’s new page or archive for full item]:

19/02/2018: IPO consults on trade mark law changes in light of Directive

Source: Intellectual Property Office: Consultation: Implementation of the Trade Mark Directive 2015

This Intellectual Property Office (IPO) has set out proposed amendments to UK trade mark law with a view to implementing the Trade Mark Directive. The consultation, which invites views on the drafting of the SI that will enact the necessary legal changes, closes on 16 April 2018.

Trade mark protection is governed by an EU legislative framework, which consists of an EU-wide trade mark covering all Member States (governed by a Regulation), together with national marks covering each individual Member State (harmonised by a Directive).

 

The IPO is now consulting on the substantive changes to trade mark law introduced by the Trade Mark Directive 2015/2436/EU and amendments to domestic law required in order to implement the Directive into UK Law.

 

02/02/2016: LTC fail in taxi design trade mark claim

The London Taxi Corporation Limited v Frazer-Nash Research Limited and anor

[2016] EWHC 52 (Ch)

The London Taxi Company (LTC) owns trade mark registrations for the shapes of the Fairway and of the TX1/TXII and claims goodwill in the shapes of the models. LTC claimed that the Defendants threatened to infringe their trade marks and to commit passing off by marketing a new model of London taxi referred to as the new ‘green’ Metrocab which is currently being trialled.

The judge found that the trade marks were “devoid of inherent distinctive character” in relation to goods in Class 12 and should be declared invalid on the ground that they consisted exclusively of the shape which gives substantial value to the goods. In his view the  design of the black cab would have been perceived by the average consumer of taxis as merely a variation of the typical shape of a taxi. The judge also ruled that the claim for passing off failed.

02/02/2016: IPO succeeds in action against copycat website

Comptroller-General of Patents, Designs and Trade Marks and anor v Intellectual Property Agency Limited and anor [2015] EWHC 3256 (IPEC)

The Intellectual Property Office (IPO) has succeeded in its claim in the High Court (Intellectual Property Enterprise Court or ‘IPEC’) against Intellectual Property Agency Limited (IPAL) which offered a trade mark and patent renewal service at a cost significantly higher than the same service offered by the IPO as the relevant official body.

Legaleze comment: this case is interesting from a number of aspects:

* it confirms previous cases that a government body may have a ‘goodwill’ to protect even though it does not carry on business in a commercial sense;

* the judge had no difficulty in finding that the IPO’s trade mark had been infringed even though on the face the mark owned by IPAL was not similar; the judge highlighted the textual similarity in the word “Intellectual Property Office” and “Intellectual Property Agency”;

* the sole director and shareholder was not able to shelter behind his company’s limited liability as he was found to have been a ‘joint tortfeasor’ with his company.

17/06/2015: Total succeed in claim agains YouView TV

17/06/2014: Total Ltd v YouView TV Ltd

Total Ltd (the claimant) issued proceedings alleging infringement of its registered trade mark by YouView TV Ltd (the defendant). The defendant counterclaimed for a declaration of invalidity and for rectification of the trade mark register.


The Intellectual Property and Enterprise Court ruled that the claimant's claim for infringement of its trade mark should succeed and it dismissed the counterclaim of the defendant.

13/02/2014: Lush Cosmetics wins trade mark claim against Amazon


Cosmetic Warriors Limited & Lush Limited v Amazon.Co.Uk Limited & Amazon EU Sarl  [2014] EWHC 181 (Ch)  Hearing dates: 25th to 29th November 2013


The court ruled that Amazon had infringed the 'investment function' of Lush's trade mark when it suggested to users of its internal search engine, and in sponsored search results displayed in Google's search index, that Lush goods were for sale on its site when in fact they were not (Mr John Baldwin QC acting as a deputy judge at the High Court).


The judge also ruled that the 'origin function' of Lush's trade mark had been infringed by Amazon's use of the mark in the Google sponsored search results.The judge remarked that Amazon could not ‘ride rough shod over intellectual property rights’. The judge also found that Amazon infringed the 'advertising function' of Lush's trade mark after first finding that Lush had built substantial reputation for health and beauty products. Amazon's use of the Lush mark to attract customers to buy non-Lush products was therefore infringing.

10/02/2014: Glee Club owner succeeds in trade mark case against Twentieth Century Fox

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation
[2014] EWHC 185 (Ch)  Hearing Date: 7 February 2014


Comic Enterprises Ltd (the claimant) runs four stand-up comedy clubs branded with the UK 1999-registered trademark "The Glee Club". The trade mark is registered in respect of classes 25 (articles of outer clothing etc.) and 41(entertainment services; comedy services; night-club and cabaret entertainment etc.)

.
The court ruled:
(i) On the issue of partial invalidity, the description of the mark as covering 'entertainment services' was too broad). The registration of the mark would be revoked in part to accord with the new specification.
(ii) With regard to partial revocation of the mark, the claimant's mark was validly registered for the new specification of services.
(iii) The evidence suggested that there was a likelihood of confusion, which included the belief that the claimant's club was connected with the defendant's programme. Fox’s use caused dilution and tarnishing of the claimant’s mark and Fox had infringed the mark under s.10(2) and 10(3) of the Trade Marks Act 1994.television.

04/10/2013: Cadbury loses purple colour trade mark appea


Société des Produits Nestlé SA v Cadbury UK Ltd  [2013] EWCA Civ 1174


Cadbury successfully applied to register a trade mark which included a particular shade of purple for its chocolate packaging. The High Court dismissed an appeal against the grant of the trade mark by Nestlé.
The Court of Appeal has now allowed a further appeal by Nestlé on the grounds that Cadbury's description of the trade mark did not amount to a “ sign graphically represented” within the meaning of the EU Directive 2008/95 (to approximate the laws of the Member States relating to trade marks) art.2 because the description of the mark would result in the registration of multiple signs with different permutations, presentations and appearances, which were neither graphically represented nor described with any certainty or precision, or at all.


Legaleze comment: A trade mark law commentator has observed that colour marks are not unregisterable as a result of this decision, but the application has to be drafted with very great care. Cadbury might have avoided problems had it applied simply to register wrapping foil in pantone 2658C. l

02/07/2013: Microsoft ‘Skydrive’ infringes Sky TV trade marks


British Sky Broadcasting Group plc and other companies v Microsoft Corporation and another company [2013] EWHC 1826 (Ch

The Claimants (‘Shy’) took this action for passing off and for infringement of two registered Community trade marks (CTMs) and two UK registered trade marks (UKTMs) for the mark 'SKY' by which the Claimants sought to prevent the Defendants (‘Microsoft’) from us ing "SkyDrive" as the name for their cloud storage service throughout the European Union.

22/05/2013: High Court rules Marks and Spencer infringed Interflora’s trade marks


Interflora, Inc v Marks and Spencer Plc & another [2013] EWHC 1291 (Ch)


M & S pays Google to display advertisements for its flower delivery service on the search engine results page (or SERP) when an internet user uses Google's search engine to search for "interflora" and similar terms (a form of advertising variously referred to as "keyword advertising", "paid search advertising", "pay per click (or PPC) advertising" and "search engine advertising"). Interflora claimed that M & S thereby infringed Interflora's trade marks. M & S deny any infringement.


The High Court ruled that M&S had infringed the Interflora trade marks in using the Google ad service in the way complained of. The judge left open Interflora’s claims arising from Article 4 of the Misleading and Comparative Advertising Directive, but indicated that he thought the case did involve comparative advertising, contrary to the submissions made by M&S.

[Page updated: 020/02/2018

 

 

 

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