Protectability in UK Law

Leading Cases
  • Reckitt and Colman Products Ltd (t/a Colmans of Norwich) v Borden Inc. and Others
    • House of Lords
    • 08 Feb 1990

    Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff.

  • Biogen Inc. v Medeva Plc
    • House of Lords
    • 31 Ott 1996

    His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance ( as Renan said, la v�rit� est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge's overall evaluation.

  • Thomson Holidays Ltd v Norwegian Cruise Line Ltd
    • Court of Appeal
    • 17 Dic 2002

    In my view that task should be carried out so as to limit the specification so that it reflects the circumstances of the particular trade and the way that the public would perceive the use. If the test of infringement is to be applied by the court having adopted the attitude of such a person, then I believe it appropriate that the court should do the same when deciding what is the fair way to describe the use that a proprietor has made of his mark.

  • Reed Executive Plc v Reed Solutions Plc
    • Court of Appeal
    • 03 Mar 2004

    The "average consumer" is a notional individual whereas the substantial proportion test involves a statistical assessment, necessarily crude. Whichever approach one uses, one is essentially doing the same thing – forming an overall ("global") assessment as to whether there is likely to be significant consumer confusion. It is essentially a value judgment to be drawn from all the circumstances. Further conceptional overelaboration is apt to obscure this and is accordingly unhelpful.

  • Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd
    • Court of Appeal
    • 31 Gen 1984

    Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.

  • Generics (UK) Ltd v H Lundbeck A/S
    • Chancery Division (Patents Court)
    • 04 Mag 2007

    Paragraph [45] is, to my mind, key. The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.

  • Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and Others
    • Chancery Division
    • 02 Mar 2010

    The applicant may believe that he has a superior right to registration and use of the mark. For example, it is not uncommon for prospective claimants who intend to sue a prospective defendant for passing off first to file an application for registration to strengthen their position. Even if the applicant does not believe that he has a superior right to registration and use of the mark, he may still believe that he is entitled to registration.

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Books & Journal Articles
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Law Firm Commentaries
  • Nothing beats a good TM LWYR – Nike’s questionable LDNR campaign
    • LexBlog United Kingdom
    • International Lawyers Network
    • 22 Agosto 2018
    A July 2018 decision of the UK Intellectual Property Enterprise Court (IPEC) appears to have put paid to Nike’s recent “Nothing beats a Londoner” ad campaign. The case highlights, with hindsight, a...
    ......Before launching any new brand, a well-advised business will consider the availability and “protectability” of its proposed brand. An availability or “clearance” check can be either a quick and dirty “desktop” search (namely, a review of the ......
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