News

24 May 2011
Does a .com domain name expose a trader to claims abroad?
The European Court of Justice (“ECJ”) has recently looked at the impact of domain names on the issue of jurisdiction and has determined that the use of a .com or .eu domain name can be evidence that a trader is directing its activities outside of its own Member State and can therefore affect where that trader can sue or be sued.
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24 May 2011
The right to broadcast football: 1-0 to the owners of foreign decoder cards
Advocate General Kokott (“AG”) has advised the European Court of Justice (“ECJ”) that she considers it unlawful for football leagues to prohibit the use of imported decoder cards to show foreign coverage of football games. This opinion could alter the way the business of football works and the ability of copyright owners to control the use of content.
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23 May 2011
Advocate General provides his opinion on Interflora v M&S case
There may be light at the end of the tunnel for trade mark proprietors in the battle against keyword advertising. The Advocate General has now provided the ECJ with his non-binding opinion in the long running case of Interflora v M&S.
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23 May 2011
Formula One loses trade mark battle over F1
The EU General Court recently reached a decision on a trade mark case brought by Formula One Licensing BV.
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14 December 2010
Recalculation of UK trade mark opposition deadlines
Following the issue of a Tribunal Practice Notice by the UK Intellectual Property Office on 30 September, opposition deadlines will now fall a day ahead of that previously advised. Read our article for more information.
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14 December 2010
Infringement of the London Olympics Association Right – the New Regulations
The Olympic rings are amongst the most recognised symbol in the World. It is therefore crucial that the International Olympic Committee (IOC) and its national representatives, the London Organising Committee of the Games and Paralympic Games (LOCOG) defend their intellectual property rights against unauthorised use. If you are planning any Olympic Games-related activities or promotions make sure you are not infringing any intellectual property rights.
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14 December 2010
No trade mark protection for lego brick
The European Court of Justice (“ECJ”) has recently ruled that the three dimensional shape of the lego brick is not registrable as a trade mark. Whilst trade mark law may not offer protection for shapes, there are other forms of protection such as patent and design right protection. Read our article for more details.
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14 December 2010
Short domains up for grabs
Since Nominet’s establishment, there has been a restriction on registering short domain names (e.g. two letter and single character domain names). However, Nominet is now to make a number of short domain names available for registration. This is an opportunity for rights owners to get hold of catchy one and two letter domains which were previously unavailable.
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14 December 2010
Henry the hoover cleans up in a passing-off action
Numatic (the manufacturer of the well-known “Henry” vacuum cleaner) has won a claim for passing off against a competitor who was set to launch a new vacuum cleaner in the UK. The case highlights how passing-off can be extended to protect the shape of a functional product.
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14 December 2010
UK Intellectual Property Office floored by DDoS attack
On Saturday 16 October, the UK Intellectual Property Office’s website was subjected to a co-ordinated Distributed Denial of Service (DDoS) attack. The attack obstructed access to its website and for several days only a limited online service was available and customers were unable to file online patent or trade mark applications.
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14 December 2010
Revamp of the Patents County Court litigation rules and procedures
The Patents County Court (PCC) was established by Parliament in 1990 and deals with intellectual property disputes. In June 2009, a working group of the Intellectual Property Court Users’ Committee (the Working Group) published a consultation paper setting out proposals to reform the PCC. The new procedures came into force on 1 October 2010.
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12 April 2010
Passing off – still the full measure
In the recent case of Diageo North America Inc (Diageo) v Intercontinental brands (ICB), the High Court upheld an action of extended passing off against ICB, the manufacturers of VODKAT, confirming that VODKAT is not vodka.
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12 April 2010
Charities and not-for-profit organisations can no longer escape from paying music royalty fees
From April 2010 onards charities and not-for-profit organisations will need to pay a fixed annual fee if they want to play recorded and broadcast music at events and in public places.
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12 April 2010
AUDI finally wins battle to protect its slogan “Vorsprung Durch Technik”
This decision is a victory for any brand owners wanting to register slogans, and going forward it should be easier to obtain trademark protection for advertising slogans.
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12 April 2010
InterContinental Hotels Group victorious in landmark domain name ruling
The InterContinental Hotels Group (IHG) has succeeded in a groundbreaking domain name dispute.
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16 December 2009
Domain names - use and abuse
Domain names have considerable commercial value. Consequently the abuse of well established domains is a common way of generating revenue.
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16 December 2009
A Tale of Boo Hoo for Wasabi Frog
The High Court has granted the online women’s fashion retailer “boohoo.com” an interim injunction to stop a competitor from using the trade mark or domain name “Miss Boo”.
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16 December 2009
Sweet smell of success for Stella McCartney as Nude Brands fails to stop launch of STELLANUDE Eau de Toilette
Nude Brands Limited (NBL), a cosmetics company co-founded by Ali Hewson (wife of U2’s Bono), has been refused an interim injunction to prevent the launch of STELLANUDE by Stella McCartney Limited (SML).
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16 December 2009
Advocate General’s ruling on Google AdWords
The long awaited opinion of the Advocate General (AG) of the European Court of Justice (ECJ) has arrived.
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05 October 2009
New “Right Start” UK IPO service offers reduced cost risk for trade mark applicants
On 1 October 2009, the UK IPO introduced a new Right Start trade mark application service which enables applicants to defer payment of half the application fee until after it has determined whether the application meets the requirements for registration.
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05 October 2009
Application changes for a series of trade marks
From 1 October 2009, the Trade Marks Directorate of the UK Intellectual Property Office introduced a series of changes relating to applications for a series of trade marks.
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05 October 2009
Sponsored links on the internet - no Acte Clair as UK court refers questions to the ECJ
The issue as to whether or not sponsored links on the internet can constitute trade mark infringement in the UK is far from clear as demonstrated by two recent UK cases.
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15 July 2009
Colour combination trade mark application is rejected
This case importantly demonstrates that the representation of a trade mark must be complete, clear, precise and objective.
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15 July 2009
Watch out for trademark scams and bogus organisations
Once trade mark and patent applications are advertised, they enter the public domain and this provides an opportunity for bogus organisations to contact proprietors, dishonestly requesting payment of registration fees.
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15 July 2009
Reduction of 'opposition period' for UK Trade Marks
Following recent changes to the Trade Mark Rules, the opposition period following publication of a trade mark in the Trade Marks Journal has been reduced.
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15 July 2009
'Smell-a-like' and 'Look-a-like' perfumes prevented from "riding on the coat-tails of famous brands
The European Court of Justice recently resolved two references from the English courts regarding 'smell-a-like' and 'look-a-like' perfumes and packaging and found in favour of the brand owners.
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15 June 2009
FACEBOOK: A Follow Up
Having been inundated by applications from trade mark owners to prevent Vanity URL registrations, Facebook have withdrawn the facility for trade mark owners to register to protect themselves from use of their trade marks in Vanity URLs.
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14 June 2009
FACEBOOK: A warning to brand owners
From tomorrow, users of the Facebook website will be allowed to create personalised URLs for their Facebook pages. Find out how to protect your trade marks and brand names from being high-jacked.
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14 April 2009
40% reduction in Community Trade Mark fees
File Community Trade Marks before 1 May 2009 and save €150.
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15 January 2009
Crocodiles at War......again!
The long running battle between Crocodile International Private Limited (“Crocodile”) and La Chemise Lacoste (“Lacoste”) over the use of their respective CROCODILE marks continues.
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15 January 2009
Does your Community Design have individual character?
Under the Community Design Regulation (“CDR”), which came into force in 2001, it is a pre-requisite for protection that a design is new and has individual character. This article looks at the decision on a recent CDR case.
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15 January 2009
Interflora brings action over Google keywords
In August, Google changed its policy on keyword advertising. Under the new Google policy, trade mark owners can no longer prevent another party from sponsoring its trade mark(s) as a keyword in order to trigger search engine advertisements.
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15 January 2009
First ruling from the Company Names Tribunal
The newly formed Company Names Tribunal has handed down its first decision, ordering that Coke Cola Limited change its name and pay the sum of £700 to Coca Cola.
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15 January 2009
Three dimensional trade mark - the shape of a loudspeaker
This article examines Bang & Olufsen's failed application to protect the shape of one of its loudspeakers through a Community Trade Mark Application.
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15 January 2009
Opting out of Community trade mark search system
The United Kingdom, Ireland, Portugal and Sweden have opted out of the Community trade mark search system.
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01 September 2008
Proposed extension of copyright term for sound recordings
The European Commission has proposed a directive to extend the copyright term for sound recordings.
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01 September 2008
Nominet changes have little effect on overall cost of domain name disputes
Changes to Nominet's Dispute Resolution Service (DSR) policy and procedure do little to reduce the costs involved in putting together a complaint.
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01 September 2008
Accelerated trade mark registration process
The UK Intellectual Property Office has introduced a new fast-track trade mark application process for UK registrations.
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16 August 2008
Honest comparative advertising does not constitute trade mark infringement, rules ECJ
The ECJ has ruled that trade mark owners should not be able to sue for trade mark infringement in relation to honest comparative advertisements.
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16 August 2008
Latest Scam - unofficial Intellectual Property registration services
The UK Intellectual Property Office has warned that several businesses seeking to protect their intellectual property and brand rights are increasingly being targeted by certain dishonest organisations.
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16 August 2008
New rights for brand owners under the Companies Act 2006
On 1 October 2008 section 69 of the Companies Act 2006 is due to come into force giving a brand owner the right to object to a company name that is similar to a name in which the brand owner has goodwill.
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16 August 2008
Google changes its policy on keyword advertising
Google has announced a change to its policy on the use of trade marks as keywords. We discuss the impact on brand owners.
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