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Isn’t it ironic? (Playboy in the IPEC – case review)


One of the many many Playboy trade marks… (UK00002355569)

THE CLAIMANT in this case, Michael Ross, applied to register the domain name “playboy.london” on 27th August 2014. The Defendant, Playboy Enterprises International, Inc (PEI), wrote to Ross on 21st October 2014 complaining of this registration. In his reply, Ross denied that he had registered the domain name in bad faith and refused to transfer the domain name. As a consequence, PEI submitted a successful complaint under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) seeking that the domain name be transferred.

Ross sought declarations and relief at the Intellectual Property Enterprise Court (IPEC) on the basis that: (a) he had not infringed PEI’s trade marks or passed off any goods or services as those of PEI; (b) he was entitled to keep the domain name; and (c) the threats in the letter of 21st October were unjustifiable. (more…)

Alma- The Soul of Italian Wine v OHIM: Case Review (Case T 605/13)

wine1On 4 March 2011, Alma-The Soul of Italian Wine LLP (‘The Applicant’) filed a Community trade mark (‘CTM’) application for a figurative mark “SOTTO IL SOLE ITALIANO SOTTO il SOLE” in respect of ‘wines’ in Class 33. Miguel Torres, SA filed an opposition against the above-mentioned mark based on its earlier trade marks, inter alia, CTM VIÑA SOL in Class 33, under Article 8(1)(b) and (5) of Regulation No 207/2009. The Opposition Division upheld the opposition and the Applicant filed an appeal with OHIM against the decision. (more…)

New role of ISPs combatting trade mark infringement

DiamondFourteen years after the adoption of the Directive on Electronic Commerce of 8 June 2000, relating to the liability of the ISPs within the EU, the roles of ISPs have evolved significantly and they no longer work in a solely technical capacity.

In principle, ISPs do not have any say on the content matter, they are simply offering a technical service. This task has however become required across a much broader spectrum since the emergence of Web 2.0, as users now have more opportunity to post and retrieve content on an interactive level.

ISPs which are merely acting as hosts benefit from a special status on non-responsibility. However, the legal obligations of ISPs have increased and in addition to the normal rules of liability, International and European Law have imposed on ISPs obligations to act against trade mark infringement by cooperating with the trade mark owners and the authorities. (more…)

Have A Break, Have A KitKat waiting for clarification from CJEU on three-dimensional mark

KitKat Nestlé applied to register its famous four-fingered Kit Kat bar as a three-dimensional registered trade mark. Cadbury opposed the application. On 20 June 2013, a decision by the UKIPO refused Nestlé’s trade mark application in class 30 for chocolate and various chocolate confectionery products but allowed the application in relation to cakes and pastries. Justice Arnold largely agreed with the hearing officer’s reasoning that the three-dimensional shape should not be registered because it lacked distinctiveness and had not acquired distinctiveness, and that the shape was necessary to achieve a technical result. However, he referred some interesting questions to the CJEU that could result in a significant change in the way in which we approach shape marks.      (more…)

The proposal to delete the requirement of graphical representation of a trade mark registered in the European Union

Hmm, smells like CTM 009891881

Hmm, smells like CTM 009891881

The present proposal of 27 March 2013 to recast Directive 2008/95/EC, which is seeking to partially harmonise the laws of the Member States relating to trade marks, and Regulation (EC) No 207/2009 (on the Community trade mark) is driven by objectives such as modernising and improving the existing provisions of the Directive by amending outdated provisions, increasing legal certainty and clarifying trade mark rights in terms of their scope and limitations. In particular, the proposal considers amending Articles 3 of the Directive and 4 of the Regulation to remove the obligation to represent a trade mark graphically. (more…)

A new ingredient in Chocolate: The Trade Mark

Chocolate CasesIn the post below IPcopy takes a quick look at some recent decisions in the world of chocolate and other types of confectionary on the topic of colour and 3D trade marks. The overview highlights some trends in EU jurisprudence on the distinctiveness requirement for the registrability and enforceability of such marks. Get ready to read about chocolate bunnies, jelly bears and many more.


SkyDrive v Sky: Microsoft lose against BSkyB over the use of the term “Skydrive”

sky logoBSkyB, the British Satellite Broadcasting company has won a case against the American multinational software corporation (Microsoft) in actions for passing off and for infringement of two CTM Registrations and two UK trade mark registrations for SKY. By way of these actions, BSkyB sought to prevent Microsoft from using “SkyDrive” as the name for their cloud storage service in Europe.

In a counterclaim, Microsoft filed for a declaration of partial invalidity in respect of the SKY trade marks on the grounds of descriptiveness for cloud storage services. (more…)

New dimension to Louboutin’s Red Sole Saga


Louboutin’s Trade Mark 008845539

The famous brand of shoes with heels and oversized red soles, which since 1992 has been so successful for their creator Louboutin, has long been immersed in a somewhat uncertain legal environment. Now a Dutch Court Adds New Dimension to Red Sole Saga by finding infringement, by Van Haren, of Louboutin’s red sole trade mark. (more…)

Trade Mark and Carry On (Posters, Trade Marks & the Tardis)

Illustration-Trade Mark and carry on“Trade mark and  carry on” is a slogan to bear in mind because, as the following cases illustrate, people often think a name, slogan or even a police box are free to use.

We see a good example with the famous slogan “Keep Calm and Carry On”, which was thought to be owned by the British government. Indeed, “Keep Calm and Carry On” was one of a series of propaganda posters made by the British government during World War 2 to reassure the population, a fact which remained unknown to the public for over half a century. In the early 2000s, a couple (named Manley) who owned the Britsh bookshop “Barter Books” rediscovered the posters in a box of old books.When the booksellers decided to display it in their library, it became very popular. The “Keep Calm” poster was exported worldwide and became one of the first really emblematic images of the 21st century.


ICANN & the Trademark Clearinghouse – relief for trade mark owners

icannlogoThe launch of new generic Internet domain extensions highly expands the domain name system and increases competition.

The press has widely reported the launch of the new generic top-level domains (gTLDs) which can include a geographic location (e.g. NYC), a generic term (e.g. Music) or a mark (Ralphlauren). Nearly 2000 applications should be added this year to the currently available gTLDs (.com, .net) and country code top-level domains (ccTLDs, e.g. geographical location .uk, .eu). The examination of hundreds of candidates revealed last year (see article in the Figaro blog here) the avid appetite of Amazon and Google for new extensions who spent millions to request 101 and 76 Internet extensions respectively revolving around digital content and media issues.

This is considered one of the most important changes in the structure of the Internet for years. A symbiosis has to be found to regulate the protection of trade mark owners and their Intellectual Property rights.

In this respect, The Internet Corporation for Assigned Names and Numbers (ICANN), which is responsible for the management of the top-level domain name space, has established a rights protection system through the creation of a database, called the Trademark Clearinghouse (TMCH),  for names that are the subject of a prior registration. The Trademark Clearinghouse has been available since 26 March.