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Podcast: The Slants, A Year On
IPCopy is proud to present a podcast interview by Keltie Partner, Manuela Macchi, with Ronald Coleman, widely known in the IP community for successfully leading ‘The Slants’ trade mark case all the way to the US Supreme Court, securing US Federal registration.
The US Supreme Court judgement was handed down in June 2017, and on the path to this landmark ruling, Ronald had to grapple with fundamental principles of the US legal system, such as freedom of speech and the prohibition to register trade marks that are disparaging.
Little over a year from this judgement, we take a look back at the case with Ronald and discuss legacy, insights and ‘behind the scenes’ of the case. (more…)
Lionel Messi’s EU Trade Mark: how ‘Fame’ can change the conceptual comparison of marks
A judgement issued by the EU General Court on 26 April 2018 ended opposition proceedings started in 2011 over Lionel Messi’s application to register the mark MESSI + Logo as a EU Trade Mark. The Barcelona striker can finally see his surname registered. The full judgement is available in French or Spanish here.
Messi already owned a number of EU Trade Mark Registrations, in particular, for his full name LIONEL MESSI (EUTM Reg. 6353131), for LE0 MESS1 (stylised) (EUTM Reg. No. 9118852) and for his signature (EUTM Reg. Nos. 6353296 and 10394476), but the trade mark application in issue (EUTM Appl. No. 10181154) was just for the surname MESSI combined with a Logo (see the blog image at the top of this post). (more…)
New York City Bar Association Trademark and Unfair Competition Committee Seminar
During an unseasonably freezing spell in autumnal New York, I was honoured to be amongst the speakers at a NYC Bar Association seminar on 13 November 2017 organised and hosted by Ainslee Schreiber in her debut event since being recently appointed Chairwoman of the Trademark and Unfair Competition Committee of the Association.
Taking advantage of several International trade mark practitioners who were transiting through New York after the INTA Leadership Meeting in Washington, DC, the previous week, Ainslee organised and hosted an evening seminar on latest developments in key jurisdictions of interest to the Association’s members. Many braved the cold and it was a well-attended session, at the end of which I was delighted to meet Ronald Coleman, who successfully took THE SLANTS trade mark application all the way up to the Supreme Court and obtained registration of the mark.
Here is a review of the seminar with a few take-home points on each one of the presentations. (more…)
Designing design right protection in the Cayman Islands
Design registration will go live in the Cayman Islands on 1st of August this year and here is how it all started. (more…)
The Special One – Trade Marks and Image Rights
It has been widely reported in the general press in the last few days that ‘image rights’ issues have delayed the signing of the contract that brought Jose Mourinho to Manchester United as its next manager, following the departure of Louis van Gaal. However, as of this morning it appears that these issues have been overcome with confirmation that Mourinho has signed a three-year contract.
As we know, despite the 2015 Rihanna v Topshop Appeal decision, image rights as such are not protected by the English legal system, and the more discerning IP reporters have probably correctly identified that the tricky point might evolve around the registered trade mark for Mourinho’s name. (more…)
There are no easy games at this level: EU General Court Refuses Trade Mark Registration of FC Barcelona’s Crest Silhouette
In April 2013 FC Barcelona applied for the registration as a Community (EU) Trade Mark of the silhouette of its crest in relation to a range of goods in classes 16 (paper goods, stationery, etc), 25 (clothing, footwear, headgear) and services in class 41 (including sports activities).
The mark for which FC Barcelona was seeking registration is the following:
Rihanna, Topshop and a Narrow Opening to Image Rights in the English Legal System?
The English legal system does not acknowledge image rights. Celebrities cannot claim a monopoly on their image, nor a right to control the use of their name, likeness and other attributes that the public associates with them. Historically, they have resorted, as a compromise, to other forms of protection, such as registered trade marks and passing off (see explanation of passing off below), in particular.
However, a recent appeal judgement by the English Courts indicates that in certain circumstances, and depending entirely on the facts of the case, the Common Law tort of passing off can be “stretched” to prohibit the commercial use of celebrities’ images. This precedent is, in the view of the author, likely to be applied tightly, but presents an opening that celebrities will look to rely on to control the use of their image by unauthorised third parties.
The appeal judgement relates to the entertainment industry and follows a case successfully brought by pop-star Rihanna against the high street retailer Topshop. However, the implications for sports personalities, for whom a large proportion of the earnings originates from product endorsements, are self- evident and possibly greater that those for the entertainment industry. (more…)
Meisterkreis: German Luxury Brands United Against Counterfeiting
Following on from IPCopy’s 3 July post reporting from the Marques Luxury Brands Symposium that took place in Zurich at the end of June 2015, we are now bringing you a summary of the presentation given at the Symposium by Clemens Pflanz, founder and CEO of Meisterkreis. (more…)
Luxury Brands Symposium: The Protection of Luxury Brands in a Fast Moving World
Last week, senior members of Keltie’s Design Team, Manuela Macchi, Michael Moore and Emily Weal, attended the MARQUES Luxury Brands Symposium, which took place in the suitably exquisite surroundings of the Hotel Baur au Lac in Zurich.
The theme of the 2-day conference was the protection of luxury brands in a fast moving world. The full program can be viewed here.
Presentations covered a range of topics relevant to luxury brands and included not only the legal aspects of their protection but also perspectives from a marketing expert, an academic and a financial analyst on the industry and its outlook. (more…)
A Lawyer at Man Utd: Patrick Stewart on His Career in Football
On Tuesday night Keltie hosted and sponsored a presentation by Patrick Stewart, Director of Legal & Business Affairs at Manchester United. The event was organised by LBDC (‘Lawyers Business Development Club’) and brilliantly introduced by LBDC’s CEO Colin Carroll and Keltie Partner, Sean Cummings. We had a full house and were sorry that several interested people could not get a place. However, for those who could not attend and as a memo for those who could, here is a brief account of the talk, that leaves out the witty anecdotes (sorry, I know it’s those you are after, but I don’t think it’s fair to publish them on a blog). (more…)