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USPTO hashes out new guidelines for Hemp trademarks

Written by Laura Cannon- a Southampton Solent University student on 10 May 2019

At the beginning of this month the US Patent and Trademark Office (USPTO) issued guidelines on how it will handle trademarks for 'hemp' businesses, following the legislation of 'hemp' known as the 'Farm Bill', which was signed by Donald Trump in the US in December 2018.
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LL Cool J wins trade mark lawsuit

Written by Mekael Rahman on 29 April 2019

A hip-hop festival can no longer employ the same name as James Todd Smith’s (LL Cool J) 1985 hit single i.e. Rock the Bells, without the rapper’s permission.
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Expanding the empire: Rihanna files trademark for ‘Fenty Skin’

Written by Sena Tokel, Student From Solent University on 12 April 2019

The powerhouse make-up and lingerie Fenty brand is growing. On March 25th, Rihanna filed an application with the United States Patent and Trademark Office (USPTO) to register “Fenty Skin”, giving indication that the singer might be extending her Fenty Beauty line.
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Stella McCartney faces trade mark battle over ‘Fur Free Fur’

Written by Demi- Leigh Mason, a student at Southampton Solent University on 10 April 2019

Stella McCartney, a vegetarian luxury brand, has been using the term ‘Fur Free Fur’ since 2001 for products which are typically made using a blend of sustainable materials such as modacrylic, cotton or polyester, to ‘incorporate the look and feel of fur but without any animal cruelty’.
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EU grants Irish Whiskey GI

Written by Laura Cannon- Solent University student on 08 April 2019

It was announced on April 2nd by the Irish Whiskey Association (IWA) that the European Commission has approved a geographical indication (GI) protecting the methods of producing Irish whiskey.
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Apple v Swatch: Swiss watchmaker wins trade mark dispute

Written by Sena Tokel, student from Southampton Solent University on 03 April 2019

Watchmaker Swatch group has triumphed in a legal battle with US tech giant Apple over the use of its “Tick Different” slogan which Apple has argued is an infringement of its “Think Different” advertising campaign.
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Weinstein Co. Sued Over Use of Iconic Phrase

Written by Sena Tokel, Student from Southampton Solent University on 21 March 2019

Horse-racing announcer Dave Johnson filed a lawsuit on Wednesday seeking unspecified damages against the makers of Bill Murray’s 2014 film “St Vincent” with claims Weinstein Co. infringed the use of his signature trademarked phrase “and down the stretch they come.”
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Decorative fabrics eligible for Trademark registration: CJEU

Written by Laura Cannon- Solent University student on 15 March 2019

As a result of the recent case of Textilis V Svenkst Tenn, the Court of Justice of the European Union’s fifth chamber issued its ruling on March 14th 2019 after a Swedish appeals court sought clarification on European case law.
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Brexit, trade marks and issues to consider (part 1)

Written by Samuel O'Toole on 06 March 2019

29th of March is a monumental day in history for many reasons, for starters on this date in 363 Roman Emperor Julian defeated the Sasanian army in the Battle of Ctesiphon, in 1999 the Discovery Space Shuttle completed its first docking with the International Space Station and this year, 2019, the UK will leave the EU. Whilst trade marks were not in the minds of Roman Emperor Julian and the astronauts in the International Space Station they are on our mind at Lawdit.
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Skoda Settles Trademark Dispute with Monte Carlo Fashion

Written by Sena Tokel, Student from Southampton Solent University on 20 February 2019

New Delhi garments manufacturer Monte Carlo fashion and Czech motor company Skoda have entered into a trademark agreement following a dispute last year which saw the fashion brand suing Skoda India over the use of its ‘Monte Carlo’ edition car.
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Hello Kitty owner targets counterfeiters in trademark infringement suit

Written by Laura Cannon- Solent University student on 13 February 2019

On February 2nd 2019 a complaint was filed by the owner of popular children’s character ‘Hello Kitty’ against a Californian based company due to the allegation that it is producing counterfeit products that infringe the ‘Hello Kitty’ trademarks and copyright.
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An author files trademark suit against unnamed cybersquatter

Written by Laura Cannon- Solent University student on 01 February 2019

On January 25th Jacob Vigil a new Mexico-based author and radio personality accused an “unknown corporate entity” of trademark infringement, dilution, false designation of origin, unfair competition and cybersquatting at the US district court for New Mexico.
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Jack Swagger wants to trade mark his wrestling name

Written by Mekael Rahman on 29 January 2019

Jake Hager Jr. aka Jack Swagger, the former World Wrestling Entertainment (WWE) superstar made his MMA debut at Bellator 214 on 26 January 2019 against J.W. Kiser. The American professional wrestler and mixed martial artist had discussed his fight with the press before the big night and even talked about his former employer, the WWE, and the possibility of trademarking his wrestling name.
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To use on not to use: Attorney General Szpunar’s opinion on Viridis Pharmaceutical

Written by Fatima Amedu on 28 January 2019

The pharmaceutical industry has become increasingly more competitive. This competition causes companies to do all they can to secure the branding of their products (drugs) before they are available for commercial consumption. Consequently, it can sometimes be difficult for drug manufacturers to understand what constitutes ‘general use’ under the European Union Trade Mark Regulation (‘EUTMR’).
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Wendy’s accused of trade mark infringement

Written by Mekael Rahman on 25 January 2019

Jaymo’s Sauces, LLC (‘Jaymo’s’), an Illinois Limited Liability Corporation with its principal place of business located in Dunlap, Illinois, has filed a complaint in the US District Court for the Central District of Illinois for damages and injunctive relief against The Wendy’s Company (‘Wendy’s’), a Delaware Corporation i.e. the famous burger chain which has its principal place of business located in Dublin, Ohio.
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Rihanna takes father to court

Written by Mekael Rahman on 18 January 2019

Rihanna, the famous Barbadian singer, songwriter, and actress, has taken her father to court in the US for allegedly milking her name in order to advance his entertainment business.
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Wagamama wins TM dispute against ‘Wakayama' instant noodles

Written by Laura Cannon- Solent University student on 09 January 2019

The well-known Japanese inspired British restaurant chain, has successfully prevented the registration of rival trademark 'Wakayama' after it was ruled by the UK Intellectual Property Office that it was too similar to the existing restaurants trademark.
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Use it or lose it, the implications of not using a trade mark

Written by Samuel O'Toole on 13 December 2018

Once registered, the work of a trade mark proprietor does not end. In fact it is only just the beginning. In addition to keeping an eye on trade mark applicants attempting to register identical or similar marks to your own, the registration needs to be put to genuine use.
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Cadbury loses latest trade mark battle

Written by Mekael Rahman on 07 December 2018

Cadbury recently lost a trade mark battle with rival Nestle. Following the latter’s complaint, the Court of Appeal ruled against the former which tried to update its existing trade mark, intending to acquire protection for a larger ambit of confectionery.
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Forever 21 settle Puma Fenty footwear suit

Written by Lucky Rathore a year 10 work experience on 16 November 2018

In March of last year, the German brand of Puma filed stipulation of dismissal against Retailer Forever 21, at the US district court for the district of California.
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Trade mark invalidation process (UK)

Written by Samuel O'Toole on 01 November 2018

Trade mark invalidation is a process whereby a party may seek to have a registered trade mark removed from the register as if the trade mark was never entered onto it.
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Kevin Hart Settles Trade Mark Lawsuit

Written by Mekael Rahman on 26 October 2018

Scott Montoya, the owner of Laugh Out Loud Comedy Productions filed to dismiss his case against Kevin Hart earlier this month, on October 16. The former had originally filed a lawsuit, claiming the actor was attempting to rip off his work.
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Drink and drive combined as billionaire Elon Musk announces ‘Teslaquila’ liquor brand

Written by Sena Tokel on 19 October 2018

American car company Tesla officially filed an application with US Patent and Trademark Office to trademark ‘Teslaquila’ on October 15th. CEO Elon Musk joked on Instagram as part of an April Fool’s last year about releasing a Tesla-themed tequila brand due to Tesla going bankrupt, however what was once a joke has now become reality and a new venture for the entrepreneur.
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Confused with the likelihood of confusion?

Written by Samuel O'Toole on 10 October 2018

A “likelihood of confusion on the part of the public” is a requirement for both a section 5(2) trade mark opposition and a section 10(2) trade mark infringement action.
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Victory Leaves A Sweet Taste in the Mouth for Haribo

Written by Leanne Davies on 03 October 2018

The company Trade Group Europe has had its Trademark application stopped in its tracks by sweet giant Haribo, who were concerned that the figurative trademark sought after would cause confusion with the already registered Danish trademark belonging to Haribo.
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Uber is a now a verb

Written by Samuel O'Toole on 27 September 2018

Uber CEO: “very few brands become verbs; for Uber to have achieved this shows how we’ve captured imaginations and become an important part of our customers’ lives”.
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New Logo for Papa John’s

Written by Mekael Rahman on 26 September 2018

Papa John’s International Inc. has filed a new logo with the U.S. Patent and Trademark office, dropping the apostrophe from its name.
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Have a break. Have a trade mark?

Written by Alex Baker on 26 July 2018

The European Court of Justice has dismissed an appeal by Kit Kat creator Nestlé in regards to their desire to trade mark the shape of their chocolate treat within the EU.
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A not so “Lush” trademark infringement battle

Written by Hannah Chapman, a student at Southampton Solent University on 23 July 2018

After a successful win against Amazon in 2014, Lush (a trademark of Cosmetic Warriors Limited) who are known for their beauty cosmetics have filed a claim for trademark infringement against competitor Luscious Cosmetics.
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EU General Court upholds trade mark revocation for non-use

Written by William Ball, a year 10 work experience student from Saint Edmund's Catholic School on 18 July 2018

The EU General Court has backed and allowed the revocation of Star Television Production’s figurative trade mark by the European Union Intellectual Property Office.
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UK trade mark applications on the rise

Written by William Ball, a year 10 work experience student from Saint Edmund's Catholic School on 18 July 2018

The number of trade mark applications filed at the UK Intellectual Property Office last year was nearly triple the total number filed 23 ago in 1995, new reports show.
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Nestle loses again in EU over Koala mark

Written by Ellis Sweetenham on 13 July 2018

Nestle haven’t have the best of luck when it comes to trade marks in the EU, and it seems the luck hasn’t yet changed as they are on the losing end of an appeal.
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‘Trump TV’ trademark impeded by UKIPO

Written by Alex Baker on 11 July 2018

The UK Intellectual Property Office (UKIPO), the organization that adjudicates trade mark oppositions in the UK, has found in the opponent’s favor and refused the registration of a trade mark in the UK for ‘Trump TV’ submitted by ‘Trump International’ in October 2016, a company owned by global entrepreneur Michael Gleissner.
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Trademark Bullies: Marvel and DC Comics

Written by Manpreet Taak, a pupil at Cantell School on 06 July 2018

Two of the largest comic book publishers (Marvels and DC Comics) are believed by many to be Trademark bullies, disallowing any other comic publishers or writers to include the word superhero on the cover.
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Puma EUIPO appeal dismissed

Written by Ellis Sweetenham on 29 June 2018

The Court of Justice for the European Union has this week rejected an appeal from the European Union Intellectual Property Office in respect of sports brand Puma’s trade marks.
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Prada gets Nada

Written by Mark Reed on 10 June 2018

The EU General Court throws out Trade Mark appeal by Prada after Indonesian Hotel files the word mark ‘The Rich Prada’.
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Doctor Drai v Doctor Dre

Written by Michael Coyle on 11 May 2018

Rapper extraordinaire Dr Dre this week lost a dispute over his name to a gynaecologist Draion M Burch who was seeking to trade mark the name Dr Drai. Dr Dre is known for such musical ditties as https://www.youtube.com/watch?v=_CL6n0FJZpk and Burch for his novel 20 Things You May Not Know About the Vagina.
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Dj Khalid’s ‘Best’ not enough!

Written by Leanne Davies on 23 April 2018

DJ Khalid the well known music personality has failed at an attempt to register his sons name, a word that has already been previously registered.
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Renewal of Scotch Whisky Trade Mark in China

Written by Mekael Rahman on 17 April 2018

The Scotch Whisky Association (SWA) has successfully renewed their collective trade mark of the valuable spirit until 2028 and consequently, Scotch whisky will continue to be legally protected from locally produced Chinese copies.
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UK Government department in Queen image TM bid

Written by Ellis Sweetenham on 12 April 2018

The UK Government department for Business, Energy and Industrial Strategy has made an application with the UK Intellectual Property Office to protect an image of the Queen as a trade mark.
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Nando's v Fernando's

Written by Tegan Reed aged 13 yrs old, a student at Medina College on 15 March 2018

Fernando's may be forced to change its name and other images such as their cockerel logo after being accused of copying the other businesses name/other branding. (Nando's).
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Moody Magic!

Written by Leanne Davies on 13 March 2018

The Spanish authorities have seized 10,00 items of counterfeit Harry Potter goods totalling 305,000 Euros.
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McGregor v Mac

Written by Robyn Mcilwaine a student at Southampton Solent University on 01 March 2018

Conor McGregor is currently set for a trademark battle with global brand Mac Cosmetics
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South Africa to host WIPO Respect for IP Conference

Written by Mekael Rahman on 24 January 2018

Later this year in South Africa, the World Intellectual Property Organisation (WIPO) along with other important international establishments will be looking to have the second international conference on ‘Respect for IP’.
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Man tweets and gets fined

Written by Michael Coyle on 23 January 2018

William Godfrey posted sensitive police information on Twitter was fined in Maidstone Crown Court and after admitting breaking the Data Protection Act 1998.
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Formalising franchise deals and registering IP rights

Written by Mekael Rahman on 19 December 2017

A recent ruling by the Court of Appeal in London underscores the significance of formalising franchise agreements in writing and the importance of promptly registering any intellectual property (IP) rights a business may have.
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Cryptocurrencies time to trade mark?

Written by Michael Coyle on 26 November 2017

The market valuation of all of the cryptocurrencies combined has surpassed the market cap of leading financial service provider Visa, by $30 billion. So crypto currencies are of course here to stay but how many of them have filed for a trade mark? Not many....
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Written by Leanne Davies on 24 November 2017

The Court of Appeal has rejected the shape of the famous London Hackney Cab as a trade mark
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Paypal v Pandora Media: settled

Written by Ellis Sweetenham on 24 November 2017

Back in May, it was reported on the Reading Room, that Paypal had taken trade mark action against Pandora Media over their logo change.
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Coachella v Urban Outfitters: settled

Written by Ellis Sweetenham on 04 October 2017

As previously reported on Lawdit’s Reading Room, the organisers of music festival Coachella brought action against clothing retailer Urban Outfitters for selling ‘Coachella branded’ clothing.
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Making threats becomes law from 1st October

Written by Michael Coyle on 01 October 2017

The Intellectual Property (Unjustified Threats) Act received Royal Assent on 27 April 2017.The Bill was introduced into the House of Lords on 19 May 2016 and aims to make life easier for us all!
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Trump loses 6 year fight over itrump

Written by Michael Coyle on 18 August 2017

More bad news for President Trump. Armed with nothing but himself Tom Scharfeld prevailed after a six-year legal fight against Donald Trump. Trump on the other hand was armed with a team of lawyers that would make Mr Burns proud.
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Lidl in hot water in US over similar brand

Written by Ellis Sweetenham on 11 July 2017

Grocery store business Kroger, who are one of the biggest grocery stores in the US, have taken on Lidl over a line of products which they claim to be causing confusion with one of their own.
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Bringing a claim for Trade Mark infringement

Written by Mekael Rahman on 09 July 2017

So I want to bring a claim for trade mark infringement? I have an EU trade mark for pots and pans and a competitor is using pats and pens. The problem is we are an IT firm and they sell pet food. Please help?
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From Singhsbury's to Morrisinghs

Written by Michael Coyle on 28 June 2017

An enterprising businessman who was threatened with trade mark infringement by Sainsbury's has bowed to its pressure and renamed to Morrisinghs....the latter apparently consenting to the obvious trade mark infringement.
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Slogan T Shirts but what about the Trade Mark

Written by Michael Coyle on 21 April 2017

The Guardian this week reported in the Fashion magazine that slogan Tshirts were back in fashion...but what is the legal position regarding slogan t shirts https://www.theguardian.com/fashion/2017/mar/15/the-write-stuff-slogan-t-shirts-go-haute
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IWATCH not a part of the iFamily

Written by Dana Hughes on 12 April 2017

Apple sought registration for the trade mark 'IWATCH', Arcadia opposed this on the grounds it is descriptive and devoid of distinctive character. Lord Justice Arnold has dismissed Apple's appeal on the grounds that 'I' is descriptive of the product; and the prefix cannot have distinctive character based on the success of other Apple products using the 'i' prefix.
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The controversial battle between Nestlé and Cadbury

Written by Dimitra Angelopoulou on 06 April 2017

This article is referring to the dispute between the large chocolate manufactures Nestle and Cadbury over the shape of the KitKat chocolate bar. There have been many conflicting decisions and the decision of the Court of Appeal is to be released within this month.
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Five categories of trademarks often neglected

Written by Dimitra Angelopoulou on 04 April 2017

Although many business owners understand the importance of protecting their brand name they usually neglect to protect other characteristics, this article contains several categories of trademarks which can be protected and will be helpful to keep a brand's identity safe.
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Another stripe battle: Adidas v Puma

Written by Ellis Sweetenham on 22 February 2017

The ‘three stripe’ trade mark owned by sports brand Adidas has been the source of much contention over the past few years, with them bringing multiple actions against potential infringers.
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Punitive damages for IP infringements can be provided for by EU countries

Written by Thomas Mould on 03 February 2017

Punitive damages for IP infringements can be provided for by EU countries, rules EU court Businesses that infringe the intellectual property rights of others can be ordered to pay damages that value multiple what it would have cost them to licence the use of that IP legitimately, the EU's highest court has said. The Court of Justice of the EU (CJEU) said EU law does not preclude EU countries from drawing up national legislation that provides for punitive damages to be awarded to rights holders where their IP has been infringed.
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Trade marks - the applicant

Written by Mekael Rahman on 31 January 2017

A brief article on trade mark applicants. Highlighting who can and who can't file an application for trade mark registration.
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The rebranding of an old lady

Written by Michael Coyle on 17 January 2017

Juventus Football Club S.p.A., colloquially known as Juve, is a professional Italian association football club based in Turin, Piedmont....it has rebranded....
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Sale of Grey Goods - Criminal Offence

Written by Thomas Mould on 08 December 2016

R v C and others [2016] EWCA Crim 1617. The Court of Appeal has held that a criminal offence may be committed under the Trade Marks Act 1994 (TMA) through the sale, distribution or possession with a view to sale, of grey goods.
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Titanic v Titanic - trade mark litigation

Written by Thomas Mould on 06 December 2016

A legal battle over use of the word Titanic in the names of a Huddersfield spa and a Liverpool hotel has ended in success for the operators of the Huddersfield spa after they challenged the Liverpool operation’s use of the name.
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Trump’s trade marks

Written by Ellis Sweetenham on 24 November 2016

Whilst the President elect waits for the New Year it seems that Trump’s business mind has been ticking away.
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WIPO increases fees for Madrid filings

Written by Michael Coyle on 22 November 2016

WIPO has notified new fees for the registration and renewal of international trade marks registered under the Madrid Protocol and designating the UK, which will apply to applications, subsequent designations and renewals filed on or after 10 December 2016.
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Rubik’s Loses Trade Mark Case

Written by Fozia Cheychi on 10 November 2016

Rubik’s cube- the iconic multicoloured, three dimensional puzzle has lost the final round in its ongoing battle to hold on to a European Union trade mark for its distinctive shape.
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Court of Appeal clarify trade mark counterfeit crime

Written by Ellis Sweetenham on 09 November 2016

The Court of Appeal has recently laid down a decision in which it was confirmed that the unauthorised sale and distribution of goods where the use of the trade mark has been authorised, is a criminal offence.
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Rubiks Cube to lose trade mark protection?

Written by Thomas Mould on 07 November 2016

Rubik’s cube, one of the world’s most-recognised toys, may be stripped of some trade mark protection by an EU court this week — dealing a blow to efforts to safeguard product shapes that are deemed distinctive and functional.
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Specsavers Trade Mark

Written by Shipu Rahman on 26 September 2016

Optician group Specsavers has had its plan to trademark the use of "should've" and "shouldve" approved by the UK Intellectual Property Office (IPO).
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EU General Court finds that PUSH and PUNCH are similar! We say its bonkers

Written by Michael Coyle on 22 September 2016

Article 8 of the EUTM Regulation sets out the relative grounds on which a trade mark registration may be refused. One of which is the sign is similar to an earlier trade mark registered for identical or similar goods or services and there is a likelihood of confusion with the earlier mark. Sometimes with different member states problems can arise...
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Written by Abdullah Khan on 22 July 2016

Describing trademarks and a real life recent example.
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Brexit and trade marks- your questions answered

Written by Ellis Sweetenham on 01 July 2016

Following the nation’s decision on the 23rd June that the UK will no longer be a member of the European Union, there has been an influx of questions from concerned businesses regarding the status of their IP, especially their registered trade marks.
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Brexit or Bremain- A trade mark perspective

Written by Thomas Mould on 16 June 2016

The uncertainty or exiting the EU has cast doubt in legal circles as to what law will remain. Trade mark law is no different, there is a great deal of uncertainty to the protection afforded to trade mark owners if the UK leaves and whether UK trade mark practitioners can still register trade marks in the EU if we leave.
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Embarrassing brands

Written by Michael Coyle on 11 June 2016

Victor the 2016 Mascot is also a sex toy...http://www.lovehoney.co.uk/tv/576/ ( adult content) but are there other embarrassing brand launches?
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No to Niagra

Written by Michael Coyle on 30 April 2016

The proposed EU trade mark NIAGRA via the International registration system was rejected on absolute grounds Article 7(1)(b) and (c) of Regulation (EC) No 207/2009).
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BMW trade mark success in IPEC

Written by Ellis Sweetenham on 21 April 2016

BMW, the motoring giant brought action against a business who were claiming to have been an authorised BMW repair centre. They issued a claim for trade mark infringement of a number of their registered marks as well as a claim for passing off.
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The meaning of consent

Written by Michael Coyle on 17 April 2016

Trade mark infringment usually occurs where someone uses a trade mark without the consent of the owner. So in the absence of express consent by a trade mark proprietor to use his mark, consent will be inferred in only very limited circumstances.
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UKIPO offers guidance on collection societies

Written by Michael Coyle on 17 April 2016

The Intellectual Property Office (IPO) is responsible for monitoring and enforcing compliance with the Regulations implementing the Collective Rights Management Directive (“the Regulations”) in the UK.
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Today is the day of change!

Written by Ellis Sweetenham on 23 March 2016

Today marks the day in which the new changes are brought into effect in relation to the European Union trade mark system.
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Bye bye OHIM and hello EUTM

Written by Michael Coyle on 16 March 2016

On 23 March 2016, the Office for Harmonization in the Internal Market (OHIM) will change its name to the European Union Intellectual Property Office (EUIPO), as set out in the Amending Regulation (Regulation (EU) 2015/2424 of the European Parliament and the Council). At the same time, the Community trade mark (CTM) will become the European Union trade mark (EUTM).
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UB40 name dispute creates family feud

Written by Ellis Sweetenham on 16 March 2016

80’s reggae band UB40 sold over 120 million hits throughout their time at the top, but in recent years the name has been the centre of a legal battle to establish who really has the rights to use it.
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EU Intellectual Property Office faces huge changes

Written by Thomas Mould on 14 March 2016

The Community trademark system was introduced in 1996, it is now facing its biggest reform. The recently adopted European Trademark Reform will bring substantial changes not only to Community trademarks but also for owners of national trademarks in the EU.
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Coca Cola fails to register shape of a bottle.

Written by Thomas Mould on 09 March 2016

Coca-Cola applied in 2014 to the Office for Harmonisation in the Internal Market (OHIM) to register a three-dimensional sign in the shape of a 'contour bottle without fluting' as a community trade mark to cover metallic, glass and plastic bottles.
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OHIM Trade Mark Reforms

Written by Thomas Mould on 30 January 2016

Reforms have been approved for OHIM and the trade mark landscape in the EU. Primary changes to the CTM system will come into force on 23 March 2016.
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IP Basics- Should I get a trade mark?

Written by Ellis Sweetenham on 25 January 2016

Any business in operation has a trade mark, whether it is known to them or not. What separates businesses that are proactive in protecting their brand is registration.
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Nestle Loses Bid To Trade mark 4 Finger Kit-Kat

Written by Fozia Cheychi on 21 January 2016

Swiss confectionery giant- Nestle has lost its bid to trade mark the shape of its famous KitKat chocolate bar in the UK. Rival confectioners are now free to make their own versions of the 4 fingered chocolate bar.
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Plain Packaging and trade marks

Written by Thomas Mould on 01 December 2015

Plain packaging has been adopted in several countries for products like tobacco and there have been talks to include fast foods in the industries that must use plain packaging.
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Planned Trade Mark Reforms

Written by Thomas Mould on 24 November 2015

The Council of Ministers have stated that the reforms are: "aimed at making trade mark registration systems throughout the European Union more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal certainty".
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Trying to harmonise Trade Mark law in the EU

Written by Michael Coyle on 12 October 2015

The European Trade Mark and Design Network has produced a common practice for use when assessing the inherent distinctiveness of figurative trade marks containing descriptive and/or non-distinctive words.
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When Wanksy met Banksy

Written by Michael Coyle on 07 October 2015

A street artist known as Wanksy is trying to clear up Manchester's streets...but will his hero Banksy do anything about it?
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Haribo v Lindt

Written by Thomas Mould on 25 September 2015

Haribo sued Lindt on the alleged infringement of its word trade mark ‘GOLDEN BEAR’.
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UKIPO and Singapore announce closer ties

Written by Michael Coyle on 21 September 2015

A new agreement was signed today when the UK and Singapore announced a closer working relationship. Both countries entered in to a new Memorandum of Understanding (MOU) between the UK Intellectual Property Office and the Intellectual Property Office of Singapore (IPOS) which will improve international cooperation between the two nations on issues involving copyright, patents, trade marks and designs.
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Bankia and Banky Confusion Yep!

Written by Michael Coyle on 18 September 2015

Thankfully common sense prevailed as the decision of OHIM's Second Board of Appeal was overturned to the extent that it had upheld the opposition against the registration of "BANKIA" in respect of "real estate services" in Class 36!
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Can a chocolate bar shape be registered as a trade mark?

Written by Lucio Morcillo Peñalver on 17 September 2015

We all love a Kit Kat! Its been on the market in the United Kingdom since 1937 and is owned by Nestlé. The basic shape of the Kit Kat has remained almost entirely unchanged since the 30s and Nestle filed to register the shape as a trade mark
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Lacking distinctive character

Written by Michael Coyle on 12 September 2015

A trade mark MIGHTY BRIGHT as a Community trade mark was dismissed by virtue of Article 7(1)(b) of Regulation No 207/2009, and infringement of Article 7(1)(c).
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A trade mark's reputation

Written by Michael Coyle on 08 September 2015

The ECJ has handed down a judgment on the extent of Unilver's reputation and the tests required under Article 4(3) of the Trade Marks Directive (2008/95/EC) to oppose a later trade mark in another member state. Iron and another v Unilever NV, Case C-125/14, 3 September 2015.)
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Insolvency and Trade Marks

Written by Thomas Mould on 19 August 2015

A trade mark, as we are all aware is an intangible asset which is imperative to a company’s brand, but what happens if the brand goes in to liquidation?
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Craft Beer Trade Marks on the Rise

Written by Thomas Mould on 18 August 2015

In 2013, the number of beer trade marks being granted totalled 1,331. This rose to 1,485 in 2014 and it is expected to rise again at an even higher rate this year.
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Adidas files lawsuit against Marc Jacobs

Written by Abdul Khan on 13 August 2015

German sportswear giant, Adidas, filed a trademark infringement lawsuit against Marc Jacobs International LLC on Wednesday 8th April 2015Adidas files lawsuit against Marc Jacobs
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Comic-Con, Generic Term?

Written by Thomas Mould on 05 August 2015

The rights holders of the Comic-Con trade mark are facing competition as other venues of comic conventions are applying to register their name, making the term Comic-Con generic.
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Band or Brand?

Written by Thomas Mould on 16 July 2015

Intellectual Property – Band Name or Brand Name? Most artists and bands are aware that it isn’t just their musical prowess that sells but also merchandise linked to the band. Most artists now take steps to register their trade marks.
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Scottish Labour Party Trade Mark Attempt

Written by Thomas Mould on 04 July 2015

Labour councillor Dennis Goldie applied last year to secure the name ‘Scottish Labour Party’ as a trade mark in the hope it would be used by a new stand-alone organisation.
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EU Trade Mark Reform

Written by Sam O'Toole on 03 July 2015

After two years of discussions the EU is set to reform the EU Trade Mark Directive (2008/95/EC) and Regulation (207/2009/EC).
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What is a trade mark ?

Written by Abbas Majid on 02 July 2015

Hi my name is Abbas Majid. I am a year 10 student studying at St George's Catholic school in Southampton. I have been studying trade marks at Lawdit and here is my first article..enjoy!
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Lego mark upheld

Written by Ellis Sweetenham on 23 June 2015

Lego has succeeded in its battle to uphold the Community trade mark which it owns in relation to the well-known yellow figurine after a competitor questioned its status.
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Canary Wharf loses trade mark

Written by Michael Coyle on 13 June 2015

Canary Wharf loses appeal Sometimes you do wonder why people appeal even when they have little or no chance of success. This was the case this month over the trade mark application by Canary Wharf Group Plc ('CWG') to register the sign 'CANARY WHARF' in relation to various goods and services including the goods real estate and services for Car parking services and building design services. The UKIPO rightly rejected the application on the basis of the 'absolute grounds' of objection set out in s3(1)(b) and s3(1)(c) of the Trade Marks Act 1994.
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Why Register Your Brand Name?

Written by Thomas Mould on 10 April 2015

Why register your brand name? A trade mark is a valuable commercial asset and allows the owner to enforce their rights over the name.
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Stephen Hawking secures a trade mark

Written by Michael Coyle on 03 April 2015

Eddie Redmayne lookalike and physicist Stephen Hawking has applied to trade mark his name in relation to computer games powered wheelchairs greetings cards and health care.
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Los Angeles Based Artist Sues Versace For Copying Her T-Shirt Design

Written by Fozia Cheychi on 03 April 2015

British born artist- Kesshia Kumari is reportedly set to sue Italian luxury fashion house Versace for allegedly copying her t-shirt designs. The artist who is known by the name Kesh and is based in LA created the t-shirts as a collaboration with American clothing label- American Apparel. The t-shirts were created for the Spring/Summer collection and featured artwork by Kesh and were sold for $30. They were sported by celebrities such as Cara Delevingne, Jourdan Dunn and Wiz Khalifa.
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Bye Bye to the Google Trade Mark

Written by Michael Coyle on 01 April 2015

" Google, where I can buy a hoover?" Google has announced it will now abandon all of its trade mark registrations throughout the world. The trade mark has become generic and would not be enforceable as the term has become so generic with the activity of searching.
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Goodbye Mr Spock

Written by Michael Coyle on 28 February 2015

CBS is the registered owner of all the Star Treck trade marks including the Mr Spock marks (note its NOT Dr Spock- different Spock guy altogether) "Its illogical not to file and register a trade mark Captain..."
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Single but not for long...

Written by Michael Coyle on 27 February 2015

Scarlett Johansson's band the Singles has received a cease and desist letter and advised that it must change its name.The band along with Este Haim, Holly Miranda, Kendra Morris and Julia Haltigan, and recently published a song called Candy.
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Dilution Google to lose

Written by Ellis Sweetenham on 14 February 2015

Trade mark dilution is a legal term that can be applied to some of the world’s famous brands but what actually does it mean and what are the implications?
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Protecting your trademark abroad

Written by Gcobisa Bonani on 13 February 2015

Brands and trademarks are at the heart of every business and can be a valuable asset for any company. Registration of a trademark serves as a way of obtaining a monopoly for your particular mark.
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Nutty Parents

Written by Michael Coyle on 26 January 2015

A French court intervenes and has barred a couple from naming their daughter Nutella after the popular hazelnut chocolate spread.
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Je Suis OHIM

Written by Michael Coyle on 18 January 2015

OHIM has stepped in over the Je Suis Charlie trade mark filings
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AndyMurray launches his own logo

Written by Michael Coyle on 16 January 2015

Andy Murray was the first British man to win Wimbledon in 77 years. So following in the footsteps of Ronaldo ( CR7) and his fellow tennis stars Federer and Nadal he has launched his own brand
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Je Suis Charlie Trade Mark

Written by Michael Coyle on 14 January 2015

Some people will seek to make a quick buck from almost anything even tragedies. A trade mark has been filed via Benelux for JE SUIS CHARLIE
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Lord Sugar in the dog house over 'Big Dawg'

Written by Michael Coyle on 23 November 2014

The BBC1 show The Apprentice was under fire this week over the choice of a brand for a US drink. One of the team coined 'Big Dawg' which won the task. However news soon broke over a trade mark dispute.
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Is Crayola becoming Generic?

Written by Thomas Mould on 07 November 2014

Crayola has commenced legal action against Alex Toys LLC. The defendant has argued that the brand is generic. Is Crayola on the brink of becoming a generic brand for crayons?
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Star Wars Strikes Back Against Brewery

Written by Sophia Khan on 04 November 2014

Lucas film, the production company behind Star Wars, has filed a trade mark claim against a New York brewery who tried to register a beer named 'Empire Strikes Bock'.
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Trade Marks Part 2 Geographical places

Written by Michael Coyle on 17 October 2014

I want to register Savile Row as a trade mark? Geographical names may be registrable as trade marks if they do not indicate a geographic origin of the goods or services so marked (such as the place of manufacture, production or design of the product).
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Ronaldo in trade mark dispute

Written by Rehana Ali on 05 August 2014

World famous football star Cristiano Ronaldo has entered into a legal battle in the US regarding his proposed use of the ‘CR7’ trade mark.
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Victoria Secret infringes Pink's Pink

Written by Michael Coyle on 02 August 2014

Its another interesting Judgment from Mr Justice Birss, in Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch), in the Chancery Division of the High Court, England and Wales (doubling as the Community Trade Mark Court). Its 217 pages but Mr Birss found that the confusion between a shirt-maker with mass-market goods and underwear, would cause detriment to the repute of the shirt's brand..... “For example consumers are likely to enter one of the claimant’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake”. His Lordship....
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Glee for Glee Club. Glum for Glee show.

Written by Michael Coyle on 18 July 2014

Earlier in the year the US television show Glee was held to have lost a trade mark dispute with a night club in Birmingham The Glee Club. This week the same Judge (pending an appeal) ordered the TV show to change its name and awarded £100, 000 on account of costs.
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Lindsay Lohan sues Grand Theft

Written by Michael Coyle on 05 July 2014

4th July news. Lindsay Lohan sues Grand Theft Auto. Lindsay Lohan this week filed a right of publicity suit against the makers of the Grand Theft Auto video game in the New York Supreme Court.
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Sorry Luis 'Bite me' is registered

Written by Michael Coyle on 25 June 2014

After last night's fun Luis Suarez woke to the news that 'Bite me' is a registered trade mark as is 'Jaws' and Suarez. So whilst Luis chills from the stands for the next 20 years he needs to come up with a new brand. Any takers?
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Pomegranates - not legal!

Written by Khadija Cheema, an under-graduate student of Law on 23 June 2014

US Supreme Court ruling on the mis-labelling and trade mark law case involving POM Wonderful and Coca Cola Company
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A guide to Intellectual Property

Written by Izaz Ali on 21 May 2014

Intellectual Property (or "IP") is the term used to cover "intangible assets", therefore, something owned by an individual or company that does not have a fixed physical form; with the exception of a description or image on paper. The term IP covers a wide range of aspects, including: · Inventions; · trade marks; · brand names; · logos, art and designs; · music, software codes; · confidential information and trade secrets.
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Selling a trade mark

Written by Michael Coyle on 25 April 2014

If you are selling a business or simply moving the trade marks to another company within your group of companies it is important to deal with any assignments that may need to be completed.
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How to cancel a trade mark. Part 2

Written by Michael Coyle on 15 April 2014

More on trade marks and the rights of cancellation. In order to apply for a declaration of invalidity on absolute grounds, any natural or legal person can apply to invalidate a trade mark.
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How to cancel a trade mark

Written by Michael Coyle on 12 April 2014

Yipppee!!!! "I have a trade mark is it now completely safe and secure?" Well no, it can be attacked in a number of ways. Read on.................
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Passing off- Evidence Required

Written by Michael Coyle on 08 March 2014

In intellectual property law its useful to classify the available rights in to two categories. Registered rights and unregistered rights. Registered rights include patents, trade marks and registered designs. Unregistered rights include copyrights, designs, and goodwill/reputation. But how do you prove the latter?
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Pinterest in the scrap book? The Trade Mark Dispute

Written by Saowanee Kristin on 28 February 2014

Pinterest was the world’s largest growing social media site in 2013, topping 70 million active users, according to statistics from Search Engine Watch. Naturally, Pinterest has taken steps to protect their brand and intellectual property and engaged in a trade mark dispute with company Premium Interest who attempted to register a trade mark with the same name.
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Kaiser Thiefs

Written by Michael Coyle on 27 February 2014

The 21st equivalent of the Monkees have been accused of copyright infringement. It concerns the cover of their latest album.
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Written by Michael Coyle on 25 February 2014

La registrazione protegge il marchio nell'intero territorio italiano e nello Stato di San Marino e può essere riconosciuta nella Città del Vaticano. Tutti i segni (parole, figure o forme) rappresentabili graficamente se rispondenti ai requisiti di novità, distintivita' e novita' sono marchi registrabili. Sono registrabili anche i suoni rappresentati graficamente, le combinazioni di colori e le tonalità di colore.
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The Absolute and Relative Grounds for Refusal

Written by Rehana Ali on 14 February 2014

Trade Mark legislation lays down a number of rules and conditions that must be satisfied before a trade mark may be registered, If you’re considering registering a trade mark it is important that you are aware of the absolute and relative grounds for refusal as detailed in sections 3 and 5 of the Trade Marks Act 1994.
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Defences to an action for Trade Mark Infringement

Written by Rehana Ali on 14 February 2014

The Trade Marks Act 1994 provides for a number of defences in response to an action for trade mark infringement, the following article provides an insight into the types of defence that may be available to a potential defendant.
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Red Bull v Bull Dog

Written by Rehana Ali on 07 February 2014

If a party is accused to have taken advantage of the repute or distinctive character of another trade mark, the party having taken that advantage will only be in trouble according to European legislation if he does not have ‘due cause’ to do so. Confused?... the following assists in clarifying the position.
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New Powers for the UK Border Force

Written by Michael Coyle on 07 February 2014

How to enforce the IP which you have spent a small fortune in securing is one of the hardest things to do in protecting your creative assets. In the UK, our border agency derives its powers from the Council Regulation (EU) 608/2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No. 1383/2003...........read on...
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Spotify and Forgotify

Written by Michael Coyle on 01 February 2014

Having 4 million unheard tracks according to the founders of Forgotify is a "a musical travesty". But is it Trade Mark infringement? Er...... no.
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The Premier league and Trade Marks

Written by Michael Coyle on 01 February 2014

The Premier League and Trade Marks Yesterday’s transfer inactivity still amounted to some spending of £130m in January, up £10m from last year. So whilst Sky’s Jim White tried to break the sound barrier over United’s Tom Lawrence’s loan deal to Yeovil and yes for three months! the rest of us just wondered whatever happened to the beautiful game.
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Survey evidence in a trade mark dispute

Written by Saowanee Kristin, a post- graduate student on work experience at Lawdit on 31 January 2014

In other jurisdictions it is common place for survey evidence to be admissible in trade mark disputes; however this is not always the case in the UK. Judges need to be persuaded that the evidence will be worthwhile before they will sanction them. This article looks at the benefits and disadvantages of using survey evidence in a trade mark dispute.
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Jensen v Healey

Written by Michael Coyle on 31 January 2014

Fighting over a trade mark can be quite an exhausting task. Especially so if its an iconic bran dear to many. The Jensen trade mark is an excellent case in point....
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James Bond was a drunk

Written by Michael Coyle on 14 December 2013

James Bond was a drunk. Bond has his reputation, his looks, his trade marks and catchphrases, his books and films are circulated throughout the world. However Bond is a piss head, an alchie, an old soap and probably a large dose of viagra would not even help the great man rise to the level we are used to. He was that wasted most of the time.
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Comparative Advertising latest developments

Written by Tom Mould, an under-graduate student of Law on 12 December 2013

Aldi in Ireland has entered a legal battle with Dunnes Stores over a comparative advertising campaign involving trade mark infringement and misleading commercial practices.
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Profanities in trade marks

Written by Aasim Durrani on 03 December 2013

A look at several notable cases where applicants have sought to register profanities as part of a trade mark.
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I Need to Register my Mark

Written by Rehana Ali on 24 November 2013

Thinking of registering a trade mark? There are a number of key considerations you must bear in mind. This article provides an insight into the requirements under the Trade Marks Act 1994 and gives practical guidance on the steps that should be taken to avoid your proposed trade mark being opposed by an earlier rights holder.
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Starbucks CTM Declared Invalid

Written by Rehana Ali on 19 November 2013

Starbucks HK Ltd lost an appeal this month against a decision dismissing its action for passing off and trade mark infringement for the CTM ‘NOW’, they also lost an appeal against the granting of a counterclaim to the media company Sky Broadcasting Group for invalidity of their CTM.
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Trade marks and infringement

Written by Michael Coyle on 16 November 2013

I have a trade mark, it is being infringed, what is the law? The legislation UK trade mark law can be found in the Trade Marks Act 1994 (‘TMA’) and in the Community Trade Marks Regulations (‘CMTR’). The law in relation to infringement is contained in ss 9 and 10 of the Trade Marks Act 1994 ('TMA 1994') for UK trade marks and in Art 9 of the Community Trade Marks Regulations ('CMTR') for CTMs.
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Animals fall out over trade mark

Written by Michael Coyle on 15 November 2013

The Animals' fall out over name and goodwill. Eric Burdon the lead singer and front of the animals challenges UKIPO's decision and wins! There is a house in New Orleans They call the Rising Sun And it's been the ruin of many a poor boy And God, I know I'm one Its a world famous song. Sold millions upon millions http://www.youtube.com/watch?v=5A-4VGfx5lU but sadly there has been a dispute over the rights to the name of the band.
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Take the fast track for Trade Mark Oppositions

Written by Rehana Ali on 15 November 2013

A new trade mark opposition procedure was launched by the UKIPO last month in response to concerns that SME’s are deterred from issuing proceedings, due to the cost and administrative burden of filing an opposition.
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Scrabble Trade Mark Revoked

Written by Rehana Ali on 08 November 2013

Many of you may be familiar with the popular board game Scrabble, unfortunately for the UK owners the registration of the tile mark was revoked and last month an appeal against the revocation was rejected.
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Lonsdale Sports Ltd v Erol 2013: High Court Allows Appeal

Written by Rehana Ali on 31 October 2013

Lonsdale have been successful in their appeal against a mark they considered would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Londsdale marks pursuant to section 5(3) of the Trade Marks Act 1994.
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Monopoly in an -onopoly, at least for games

Written by Michael Coyle on 30 October 2013

This week had a couple of interesting appeal's to the Appointed Person. One of which concerned the mark Galatopoly. The Appellant sought to appeal a previous decision based on a successful opposition by Hasbro owners of Monopoly. Bottom line is don't choose -opoly for a game when Monopoly is watching. They have a monopoly on Monopoly. See Case O-382-13
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Davidoff: Trade Mark Infringers Beware…

Written by Rehana Ali on 29 October 2013

Unfortunately for successful trade mark owners, counterfeiters regularly attempt to gain commercial advantage by selling imitation or fake goods bearing the successful mark. The issuing of trade mark infringement proceedings is the usual response by the registered trade mark owners in order to gain some form of legal redress. The German Federal Court of Justice (GFCJ) has recently referred an interesting case based on trade mark infringement to the Court of Justice in the European Union (CJEU).
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Starbucks trade mark Duffin

Written by Michael Coyle on 20 October 2013

A trade mark once registered in the territory you are seeking to protect grants the owner a monopoly ie you are the only one entitled to use it to the exclusion of anyone else. So eyebrows were raised this month when Starbuck registered Duffin as a trade mark. It upset a few people not least the creator of the Duffin, which is what you get when you cross a muffin in the shape of a coffin.....no not really. Its a donut/muffin thingy.
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Dr Marten to put the boot in

Written by Michael Coyle on 20 October 2013

Dr Marten the world renowned owner of the Doc Marten boot has launched litigation in the US for infringement of its trade mark.
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When is an expert an expert?

Written by Michael Coyle on 13 October 2013

International superstar Rihanna was back in court this week as the High Court has ruled on whether evidence brought in her case for passing off against Topshop was trade or expert evidence. Rule 35.4(1) of the Civil Procedure Rules. The case is Fendy and others v Arcadia Group Brands Ltd (t/a Topshop) [2013] EWHC 1945 (Ch), 5 July 2013
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‘Mafiozo’ wine dispute

Written by Rehana Ali on 11 October 2013

An Italian consumer was recently outraged at the use of the term 'Mafiozo' (similar to 'Mafia') as a trade mark on a bottle of wine.
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ASOS in a Trade Mark Dispute with ASSOS

Written by Saowanee Kristin on 09 October 2013

Online fashion giant ASOS, an acronym of ‘As Seen On Screen’, captures trends from celebrities and markets a mixture of their own affordable brand alongside designer labels from around the globe succeeds against specialist cyclist retailer ASSOS in a trade mark dispute.
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Colour Purple. Cadbury loses appeal

Written by Mchael Coyle on 04 October 2013

The Colour Purple- Cadbury loses appeal. So there are various types of trade marks that can be protected, word, word logo, shapes etc. You can even protect a smell or a colour. But its not so easy.
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Types of Trade Marks

Written by Rehana Ali on 03 October 2013

Trade marks may come in many shapes and forms, providing that they meet the crucial requirement of graphic representation. This article looks at the differing types of trade marks that are capable of registration.
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Revocation of Trade Marks

Written by Rehana Ali on 27 September 2013

On overview on the grounds for an application for revocation of a trade mark registration, with a sample case of an unsuccessful revocation application.
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'Monte Carlo' Trade Mark Infringement/Invalidity

Written by Rehana Ali on 20 September 2013

Societe Anonyme des Bains de Mer et du Cercle des Etrangers a Monaco v Anglofile International Ltd (t/a Monte Carlo Casino Entertainment) 11 Sept 2013 In this very recent case the claimant made a claim against the defendant, inter alia for trade mark infringement, the defendant in response counter claimed for invalidity of the claimant’s trade marks.
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Golden Balls wins trade mark dispute

Written by Michael Coyle on 20 September 2013

The owners of the Golden Balls trade mark refused to give up their claims to the trade mark despite a six year legal battle and many thousands of pounds. Businessman Gus Bodur, 50, and his wife Inez, 49, have been in these last 6 years defending the right to use Golden Balls against the FIFA Ballon d'Or - a globally recognised Oscar type trophy thingy for the world's best footballer. FIFA claimed -( btw FIFA has pots of money - note the Quatar world cup nonsense) trade mark infringement.
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Trade Marks Act 1994 Confusion = Refusal?

Written by Rehana Ali on 13 September 2013

An application for Trade Mark registration may be refused if there is the possibility that the proposed mark may cause confusion amongst consumers with a mark that has already been registered. Such a scenario took place in Skype v British Sky Broadcasting Group PLC.
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Trade mark infringment and Victoria Secret

Written by Michael Coyle on 08 August 2013

Thomas Pink, the well known UK clothing brand has been using its trade mark 'Pink' since 1984. It has launched an action for trade mark infringement against Victoria’s Secret for trade mark infringement because it uses its own brand “PINK” for lingerie products, and which it says is confusing for consumers.
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Sky v Microsoft

Written by Rehana Ali on 19 July 2013

Sky recently brought an action for Passing off and Trade mark infringement against Microsoft's Skydrive service.
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Registering a trade mark in Italy

Written by Michael Coyle on 05 July 2013

It is important that you protect your brand in the goods and services you are offering for sale and in the correct country. In Italy the registration of a trade mark grants you exclusive rights in the trade mark throughout the entire Italian territory including the State of San Marino and the Vatican City. All forms of signs (ie word, device or shape) are capable of acting as a trade mark provided they can be graphically represented and fulfil the requirements of trade mark law in that they are amongst other things distinctive.
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Microsoft set to appeal High Court ruling

Written by Aneela Akbar on 04 July 2013

Microsoft intend to appeal a High Court ruling by Mrs Justice Asplin in which she ruled that Microsoft infringed Sky International's trade mark 'Sky' by marketing one of its products as SkyDrive. She also ruled that Microsoft was liable for passing off its SkyDrive product as Sky Internationals.
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Siekmann, does this really mean smells cannot be trademarked?

Written by Tom Mould Work Experience June 2013 on 13 June 2013

Analysis of case law on whether a smell may be registered as a Trade Mark. The need for the mark to be represented graphically is a fundamental principle and pre-requisite of the registration process of a trade mark, article discusses the difficulties faced in registering smells as trade marks.
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Trade Marks and Adwords

Written by Michael Coyle on 25 May 2013

Marks & Spencer did infringe Interflora's trade marks when using Interflora in adwords without Interflora's consent. All Trade Mark Solicitors and Barristers welcome this decision finally! A full transcript of the decision can be read here http://www.bailii.org/ew/cases/EWHC/Ch/2013/1291.html
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EU Trade Mark Application Structure Set to Change

Written by By Samuel Martin - Work Experience on 29 April 2013

The EU Trade Mark application structure may change by the end of 2013. The structure will give businesses the option to apply to register a trade mark in one single class rather than a minimum of three classes.
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Curb Your Enthusiasm

Written by Michael Coyle on 17 April 2013

http://www.bailii.org/ew/cases/EWHC/Ch/2013/109.html Mr Justice Peter Smith has this week released his decision concerning the trade mark dispute in the Chancery Division, between the TV channel name DISCOVERY HISTORY and THE HISTORY CHANNEL.
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Getty Images to Appeal photos.com Decision

Written by Aasim Durrani on 16 April 2013

Getty Images is to appeal to the General Court against OHIM's decision to refuse registration of photos.com as a trade mark on the basis that it lacks the requisite level of distinctiveness.
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'Carbon Green' Trade Mark Rejected

Written by Aasim Durrani on 16 April 2013

The General Court has upheld the decision to reject the registration of 'Carbon Green' as a trade mark on the basis that is is descriptive and not distinctive enough to meet the legal threshold for registration.
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Do I Really Need a Trade Mark?

Written by Aasim Durrani on 15 April 2013

A good trade mark does more than simply meet the legal threshold for registration; it forms part of a business' growth strategy.
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Cheaper and Faster EU Trade Mark Registration in 2014

Written by Samuel Martin on 09 April 2013

Proposed changes to EU Trade Marks by 2014. Reform of EU Trade Mark registration procedure and the potential benefits to UK businesses, particularly small to medium sized businesses. Trade mark registration to become faster and cheaper and more specific to businesses needs.
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Online Trade Marks

Written by Rehana Ali on 17 December 2012

The case of Getty Images (US) Inc. V OHIM the General Court of the Court of Justice of the European Union (CJEU) illustrates that the use of domain name does not necessarily constitute use of a trade mark.
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An excellent case for all photographers

27 January 2012

The excellent Patents County Court (PCC) held this month that the defendants' image infringed the claimant's copyright in its photograph consisting of a red London bus travelling across Westminster Bridge, with a black and white background.
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Once upon a time in Trade Mark Law....

Written by Jean-Michel Omanga on 11 February 2011

Neuschwanstein is a German castle widely known worldwide. There is a trade mark quarrel about the castle. The quarrel is between the Bavarian Castle Department and the German Federal association Bundesverband Souvenir Geschenke Ehrenpreise e. V. (BSGE).
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The Onel vs Omel trade mark dispute

Written by Jean-Michel Omanga on 14 December 2010

Halgelkruis Beheer BV applied to register the word sign OMEL at the Benelux Office for Intellectual Property for goods and services (BOIP). Halgelkruis planned to use the trade mark OMEL in Scandinavian countries. Leno Merken B. V. was the proprietor of an earlier CTM, ONEL registered for goods and services. Leno Merken had operated as a firm for over 40 years only in the Netherlands, offering its services under the trade mark ONEL.
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Asics v Skechers

Written by Lawdit Solicitors on 21 June 2010

It has been reported this week that a claim for trade mark infringement has been brought by Asics America Corp against Skechers USA Inc.
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IPO Announces New Online Service

Written by Ben Evans on 21 June 2007

The UK Intellectual Property Office (UK-IPO) announced this morning (18/06) that it will be providing a new free patents publication service on its website, allowing users to view and download patents on the day of their publication.
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Enforcement of IP Rights

Written by Husna Bano on 16 April 2007

The exploitation of the IP system as an important and powerful tool for wealth creation and poverty reduction is at the centre of the vision and strategy of WIPO.
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Search Engines in US

Written by Husna Bano on 13 April 2007

The US state of Utah has outlawed the use of other people's trade marks to generate business through search engines. The plan has been called unconstitutional and impractical.
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Mattel Loses Trade Mark Battle with 'Barbie'!

Written by Daniel Doherty on 25 July 2005

Mattel has recently lost a legal battle over the name ‘Barbies (sic) Shop’, a shop which sellsCanadian leather, rubber and fetish wear. The shop is run by a woman who says that she has always been known by the name ‘Barbie’. This adds to a chain of trade mark infringement cases the toymaker has lost recently.
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FAQs Trade Marks

Written by Michael Coyle on 24 December 2003

Frequantly Asked Questions: Trade Marks and Related Issues. Contents 1.What is intellectual property? 2.How do patents, trademarks, designs and copyright differ from each other? 3.What are patents? 4.What are trade marks? 5.What are common law rights in trademarks? 6.What are designs? 7.What is copyright? 8.What is the Patent Cooperation Treaty? 9.What is the European Patent Convention? 10.What is the Community Trade Mark Treaty? 11.What is the Madrid Agreement/Protocol (international trademarks)? 12.What is the Hague Agreement Concerning the International Deposit of Designs? 13.What do "©", "TM", "®" "SM", "patent pending", "patent regn. no.", "regd. design no." and "design patent no." mean? 14. What is Passing Off?
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An overview of Trade marks

Written by Michael Coyle on 22 December 2003

Trade Mark Rights Intellectual property rights confer temporary exclusive rights based on territoriality; they are regarded as indispensable assets that help further trade in the EU. It is important, though, that the laws that offer protection to those who have invested significantly in research and development of a certain product do not go as far as to allow them to dominate the market place or unduly restrict the free movement of goods. The interplay between intellectual property rights, competition law and the rules on free movement of goods has given rise to a series of European and national case law which as we shall see raise as many questions as it has sought to answer. This is illustrated by the various interpretations of Article 7 of the Trade Mark Directive 89/104/EEC. These above complexities arise from a number of factors. Firstly, the intellectual property laws of member states are still not fully harmonised. Secondly, the question arises as to how competent the European Community, and in particular the European Court of Justice are to deal with substantive matters relating to intellectual property rights such as free movement of goods and the issue of re-labelling and repackaging. This is principally because intellectual property rights are referred to only in Article 30 (previously Article 36) of the EC Treaty, which provides an exception to the fundamental principle of free movement of goods, which has not been altered by the Single European Act or the Maastricht Treaty. The development of a consistent community-wide approach to what constitutes a lawful use or an abuse of intellectual property rights will depend on the approach taken to certain fundamental matters. These include the consequences of differing national laws, the importance attached to the scope and function of intellectual rights, the extent to which the EC and national courts are empowered to determine matters and the application of general EC law principles. Functions and Usage of Trade Marks Article 2, of the Council Directive 89/104/EEC (The Trade Mark Directive) states that a trademark: 'May consist of any sign capable of being represented graphically, particularly words, including personal; names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.' Trade mark rights are territorial, which means that the right to a certain mark is valid only in a country where the mark has been registered or is otherwise protected. The protection is differently shaped in different states, which can cause problems with international trade, but many of these problems are coped with through international treaties making the rules uniform. However, despite a history of more than a hundred years of broad international treaties harmonising trademark laws, there is no international rule on how to handle exhaustion of trademark rights. During previous decades, the European court of Justice (ECJ) has significantly changed its view on trade marks. In the 1970's, the court expressed a low valuation of trademark rights, for example in the case of Sirena S.R.L. v. EDA S.R.L. the court regarded trademarks as no more than an obstacle to the free movement of goods. However in 1990, Case C-10/89 SA CNL-SUCAL NV v. Hag GF AG the court found trademarks as an essential element in the system of undistorted competition which the treaty seeks to establish and maintain." Trade marks are today increasingly important as instruments to connect between customers and the commercial origin of a product. From a trademark owners perspective, an advertising function can be identified. Every time a brand is viewed, the viewer will be reminded of the product, and maybe triggered to purchase the item. This is a function related to the market-steering function of a trade mark. Products from different producers are often very similar to each other in quality and design, which leaves the consumer with only the trademark as a guide for choice. To make its customers more loyal, trademark owners are trying to make their trademarks as strong as possible, by building strong identities around them, connecting them with a certain lifestyle, a process called "branding". The importance of strong trademarks is accentuated on internet trade, as customers shopping on the net have no guarantee for the quality of the product other than the brand. Branding tends to be profitable for trade mark holders, as many customers are willing to pay comparatively high prices for products labelled with the strongest brands, irrespective of that other products might be of better quality. Examples of these successful branded trademarks are Coca-Cola, Levi's and Tommy Hilfiger. The goal is of course to get as much revenue as possible from the marketing of the product, and with strong trademark measures like price differentiation's and differentiation in quality between countries, dumping of excessive stocks on low price markets etc becomes possible. This development however, is counteracted by the ever-increasing international trade in branded products. There exists a conflict of interests on this point, between trademark holders that want to maximise their profits, and persons trading branded goods in second hand, from low-price markets to high price markets. Traders, who take advantage of price differences, are called "parallel traders". They re-import goods that are dumped abroad, and parallel-import goods that are cheaper on its home market than in the importing country. They also side-import foreign goods similar to goods produced in the importing country. It is obvious that parallel trade is likely to obstruct branding, because customers are simply likely to make their purchases from the cheapest source.
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Domain Names Tropical Resorts Management -v Morgans=

Written by Daniel Doherty on 21 December 2003

In Tropical Resorts Management and others v. Morgan In this case the High Court was asked to consider whether merely owning rather than actually trading under a domain name amounted to the tort of passing off.
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Easyjet Airline Ltd

Written by Daniel Doherty on 11 April 2003

The First Claimant is the airline company EasyJet, it conducts most of its business through Internet transactions and was reported to have spent in the region of £30 million in advertising alone. Its mark comprised of a distinctive get up in an orange and white colour.
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Metatags Abuse

Written by Michael Coyle on 08 February 2003

Meta Tag Abuse Anyone who owns a website need to take note of two recent UK court decision, which states that the use of a trade mark as a meta-tag could amount to an infringement of your trademark. Those who own a website should ensure that they are not infringing another's trademark as a meta tag to enhance their ratings.
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Trade Marks Directive

Written by Michael Coyle on 04 January 2003

The Trade Mark Directive The law relating to trade marks within the European Union has been made uniform by virtue of the Trade Mark Directive, which approximates the laws of Member States relating to trade marks.
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Trade Marks and the Free movement of goods

03 January 2003

Intellectual Property Rights And The Rules On The Free Movement of Goods. The question of the extent to which a trademark owner can prevent parallel imports gives rise to the relationship between intellectual property and the free movement of goods being considered in detail.
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