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Throw them (flowers) against a wall and see if it sticks – Banksy and Bad Faith
Banksy famously claimed that “copyright is for losers”; however, he has been furiously fighting to maintain the EU trade mark (EUTM) registration representing one of his best-known artworks, the ‘Flower Thrower’, despite his apparent disdain for IP rights.
COVID-19 – Effects on Intellectual Property (IP)
IP Offices around the world have announced special measures to take account of likely business disruption, not only to their own operations but also to those of their customers, from the Coronavirus outbreak. Here we summarise the measures of the EUIPO, EPO, WIPO, UKIPO and IPOI.
If you feel that your ability to respond to an IP deadline is affected by the Coronavirus situation then please contact your normal IP representative who will be able to advise on the options that may be available. It is important to note that the various IP Offices are applying different special measures and the extent of such special measures may not be immediately be apparent. Please also note that the special measures across the various IP Offices mentioned below are changing constantly so please check with your representative for the latest news.
Joe’s called himself Hugo Boss but will Boss Lycett?
Comedian Joe Lycett has legally changed his name by deed poll to Hugo Boss, in a protest against the German fashion brand’s apparent aggressive approach to enforcing its rights in the BOSS trade marks. The Comedian Formerly Known As Lycett’s actions appear to have been sparked by a legal battle between Hugo Boss and a Welsh brewery, called Boss Brewing, who were forced to change the name of their beers from ‘Boss Black’ and ‘Boss Boss’ to ‘Boss Brewing Black’ and ‘Bossy Bossy’. (more…)
Sky v Skykick: No More Blue-Sky Thinking for Sky Plc
The CJEU judgement in the case of Sky v Skykick (C-371/18), issued on 29th January 2020, addresses some fundamental aspects of trade mark law. Most significantly, it finds that the inclusion of broad terms within a specification can be considered bad faith if there is no intention to use but insufficient clarity and precision within a specification is not in itself a ground for invalidity. (more…)
Brexit 2020 – Impact on Trade Marks and Designs
When will the UK leave the EU?
The Withdrawal Agreement has now been ratified by both the European and UK Parliaments. As a result, the UK will enter into a transition period on 31 January 2020, during which the UK will no longer be part of the EU, but will still be bound by EU rules and treated like a Member State. In this scenario ‘Exit Day’ for the purposes of IP rights will not be until the end of this transition period, expected to be on 31 December 2020. (more…)
Turtle Trade Mark Troubles
This post is a case review of Opposition No. B002686593, Certina AG v TRB International SA, EUIPO, 30th July 2019
Certina AG (the Opponent) filed an opposition against EU application No 1257407 for a figurative turtle mark in the name of TRB International SA (the Applicant) for all goods in class 14. The opposition was based on international trade mark registration Nos 116985(Earlier Mark 1) and 1175867 (Earlier Mark 2) designating the EU for the figurative marks. The Opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. (more…)
Case Review – O/797/18, Mont (Opposition), UK IPO, 12th December 2018
Mont Adventure Equipment Pty Ltd filed a UK designation of international registration No 1385791 for a mark on 27th November 2017 (see the opposed mark below), with a priority date of 10th November 2017. This designation was opposed by AA Textiles Ltd in respect of class 25, including “technical clothing, footwear and headgear for adventure sport and extreme adventure sport pursuits” under s5(2)(b) of the Trade Marks Act 1994. The Opponent relied on UK trade mark registration No 3191303, filed on 14th October 2016, for Mont Noir in class 25 for inter alia “clothing, headwear, footwear”. The case report can be found here.
The goods involved were acknowledged as identical. For Mont Noir, the average consumer was deemed to be the general public with a reasonable level of attention. However, in light of the specialist technical clothing covered by the Applicant’s specification, the average consumer for the opposed mark was deemed to have a higher than average level of care and attention.
While both marks were held to be averagely distinctive for clothing, for English-speaking consumers aware that the French terms involved mean “mountain” and “black mountain”, the evocative association weakened the distinctiveness of both marks when considered in relation to adventure sports clothing. (more…)
When Harry met Selfridges
A name is not reason for confusion
In a decision of the UKIPO (O/219/18, HARRY GORDON’S BAR and HARRY GORDONS (Opposition), 5th April 2018), the IPO found in favour of retailer Selfridges, allowing the registration of its trade mark applications for HARRY GORDON’S BAR and HARRY GORDONS.
In May 2013, Selfridges applied for the above trade marks covering classes 29, 30, 32, 33 and 43 for goods including alcohol and services for providing drinks.
In August 2013, Harry’s New York Bar filed a notice of opposition against all of the goods and services in both applications. The Opponent argued that the use of the name HARRY in Selfridges’ trade marks resulted in similarities with its earlier marks HARRY’S, HARRY’S BAR and HARRY’S NEW YORK BAR, which it claims were first used in Paris in 1911.
The Opponent submitted that its bars can be found in luxury hotels that would be visited by the same sort of people who frequent Selfridges’ store on London’s Oxford Street. Therefore, use of the mark in such a prestigious establishment would “ride on the coat tails” of its existing reputation.
Selfridges rejected these claims, stating that its bar was named after the retailer’s founder, Harry Gordon Selfridge, and inspired by the popular TV series, Mr Selfridge, about his life. (more…)
Defensive Domain Name Registrations
A domain name is the address used to find a website on the internet; for example, www.keltie.com. If you have an online presence, registering your domain name will identify you as the owner of the website and prevent anyone else from using that domain name.
Defensive domain name registration is where a business pre-emptively buys a domain name to prevent other third parties from using it. A domain name can be purchased for a relatively low cost and can prevent a lot of hassle later down the line. In addition, you can redirect anyone who types in your defensive domain name to your main domain; this makes it easy for customers to find you, even if they make a spelling mistake. (more…)
• The threshold for similarity is low