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Today on IPcopy we have a guest post from Carmen Champion, an IP barrister in Sydney, on the subject of “use as a trade mark”.
In a couple of recent cases in Australia, dealing with businesses as disparate as home elevators and halal butcheries, the courts have considered (or in one case, ignored!) that question central to trade make disputes: was the mark in question “used as a trade mark”? (more…)
The proposal to delete the requirement of graphical representation of a trade mark registered in the European Union
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mark) is driven by objectives such as modernising and improving the existing provisions of the Directive by amending outdated provisions, increasing legal certainty and clarifying trade mark rights in terms of their scope and limitations.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…)
IPcopy is pleased to welcome guest contributor Stacey C. Friends, Partner at Boston firm Ruberto Israel Weiner, who provides useful tips on trade mark protection for restaurant names and hospitality businesses in general, based on her extensive experience in advising individual restaurants as well as small, medium and large restaurant chains in the USA. The article is reproduced with the kind permission of the author. Keltie’s Manuela Macchi has added comments drawing a parallel with the UK and EU.
Retail, food and hospitality businesses often have more problematic trademark issues than other types of businesses due to their territorial nature. While software, consumer goods and many other businesses immediately function in interstate or international commerce, many restaurants, hotels, or retail stores start out doing business in one geographic location. Sometimes the business plan includes a strategy to expand or franchise, or perhaps the location of the business (e.g. a hotel in downtown Boston) naturally lends itself to national and international travelers and publicity.
As a lover of all things food-related, I was surprised this week to hear of a tasty baked good that hadn’t yet made it onto my radar – and a tasty baked good that has come to the world’s attention as the subject of an IP dispute, no less! What more could a girl ask for? Readers will probably already be aware of the ‘Duffin’ – the donut-muffin hybrid that has been made and gradually popularised by Bea’s of Bloomsbury since 2011, and that is now the subject of a trade mark registration by a company that supplies Starbucks (boo hiss taxes etc, etc).
Now, I’m no trade mark attorney – patents are more my bag – so if a contentious issue like this stumbled across my path, I’d be hailing down one of my esteemed trade mark colleagues to untangle it. But as it happens, I’ve spent most of this week committing as much trade mark law as possible to memory in preparation for professional exams, and this real-life example has served as excellent revision fodder.
A few basics of trademark law shed a lot of light onto this situation, and the real legal situation is rather different from the picture that might appear at first sight. Could big-bad Starbucks really stop Bea’s bakery, and others, from using the name Duffin? Well, purely as a self-training exercise, here’s my personal take on the situation.
Sausages made in Newmarket, Suffolk have been awarded the Protected Geographical Indication (PGI) status from the European Commission. The Suffolk sausages join the ranks of protected foods such as Stilton blue cheese and Melton Mowbray pork pies.
The PGI status means that only products actually originating in the specific town, region or country in question may be identified as such (for example, only sausages produced in the town of Newmarket and a very specific surrounding region may be named ‘Newmarket sausages’). Generally, the products in question have very specific flavours or characteristics and so strict rules also govern the manufacture of products marketed under the PGI status. For example, Newmarket sausages must be made from prime cuts of pork from the whole carcass (no offal) and must have a minimum meat content of 70%.
At the start of this year, Jay-Z and Beyoncé sought to register their daughter’s name – Blue Ivy Carter – as a trade mark to provide them with the sole right to use the name for a whole variety of products, from basketballs and teething rings, to hair care products and sound recordings. The application was made in name of BGK Trademark Holding, a company whose sole member is Beyoncé.
Guest contributor Annette Freeman writes:
When it comes to enforcing your hard-won trade mark rights, there’s the right way to do it and the wrong way to do it. As the old cliché says, it is wise to choose your battles; and it is also wise to carefully consider your weapons. To mix a few more metaphors, too often trade mark owners use a sledgehammer to crack a nut.
Having been contested in the UK Courts for the last 8 years, the Cadbury decision of 1 October 2012 (Société des Produits Nestlé SA v Cadbury UK Ltd  EWHC 2637 (Ch), 1 October 2012.) adds a little clarity to the murky waters of registrability of colour marks in UK trade mark law.
Guided largely by the Libertel decision in the CJEU (namely, that single colour marks may be registrable per se if described clearly and classified precisely through an internationally-recognised colour code system such as Pantone), Judge Birss QC moved one infant-step further and held that the context of the case must be assessed before any decision can be made on the registrability of a colour mark. Such assessment of the context of a case may include consideration of the limited availability of colours in relation to the goods and/or services in question and public perception of the mark. In Cadbury’s case, after consideration of the context of the case, its shade of purple was held by the High Court to be registrable in connection with milk chocolate products, though not the broader category of chocolate products in general.
Clearly, with around 100 years of evidence of use to support Cadbury’s claim to registration, the effects of this decision must be interpreted with some caution, though the focus on a general assessment of the context of a case is useful for other applicants wishing to register colour marks in the future.
Nick Bowie 17 October 2012
On 1 October 2012 the Patents County Court (PCC) introduced a small claims track to run beside the PCC multi-track.
The small claims track will be suitable for claims up to a value of £5,000 and is expected to be of benefit to individuals and SMEs who previously may not have wanted to start claims in the PCC.
Cases in the PCC small claims track will be handled more informally than in the PCC multi-track. Suitable cases relating to trade marks or passing off, copyright and unregistered design right may be brought in the PCC small claims track. However, claims concerned with patents, registered designs (including Community registered designs) and plant varieties may not be brought in the PCC small claims track.
If you’d like to know more, speak to your friendly neighbourhood trade mark attorney