Registrability in UK Law

Leading Cases
  • Thomson Holidays Ltd v Norwegian Cruise Line Ltd
    • Court of Appeal (Civil Division)
    • 17 December 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.

  • Angiotech Pharmaceuticals Inc. v Conor Medsystems Inc.
    • House of Lords
    • 09 July 2008

    In the Court of Appeal, Jacob LJ dealt comprehensively with the question of when an invention could be considered obvious on the ground that it was obvious to try. He correctly summarised the authorities, starting with the judgment of Diplock LJ in Johns-Manville Corporation's Patent [1967] RPC 479, by saying that the notion of something being obvious to try was useful only in a case in which there was a fair expectation of success.

  • Designer Guild Ltd v Russell Williams (Textiles) Ltd (trading as Washington DC)
    • House of Lords
    • 23 November 2000

    The first step in an action for infringement of artistic copyright is to identify those features of the defendant's design which the plaintiff alleges have been copied from the copyright work. The court undertakes a visual comparison of the two designs, noting the similarities and the differences. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal, or consist of general ideas.

  • H Young (Operations) Ltd v Medici Ltd
    • Chancery Division
    • 14 July 2003

    I do not think there is anything technical about this: the consumer is not expected to think in a pernickety way because the average consumer does not do so. In coming to a fair description the notional average consumer must, I think, be taken to know the purpose of the description. Otherwise they might choose something too narrow or too wide. The whole exercise consists in the end of forming a value judgment as to the appropriate specification having regard to the use which has been made.

  • Compass Publishing BV v Compass Logistics Ltd
    • Chancery Division
    • 24 March 2004

    The visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. Furthermore, if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion.

  • Youview TV Ltd v Total Ltd
    • Chancery Division
    • 09 November 2012

    I reject Mr Alexander's submission that one should construe database and database programs to "freestanding" ones. Mr Alexander's analogy with the car would only be relevant at all if the specification was limited so as to restrict it to goods where the database program was necessarily sold as a small part of a larger article. The specification in issue here does not have that effect.

  • IPC Media Ltd v Highbury-SPL Publishing Ltd
    • Chancery Division
    • 21 December 2004

    In copyright cases, chipping away and ignoring all the bits which are undoubtedly not copied may result in the creation of an illusion of copying in what is left. It is even possible to say that these similarities are surprising. But the similarities and the surprise they elicit are an artefact created by the very process of ignoring all the other grains. This type of artefact created by close attention only to the areas of similarity is a risk in any court proceedings.

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Books & Journal Articles
  • Shaving the Trade Marks Directive Down to Size?
    • Nbr. 63-4, July 2000
    • The Modern Law Review
    ...... of the exceptions, together with the question of the extent to which policy concerns should be built into other parts of the test of registrability. 13 In the United Kingdom these issues were recently addressed by the Court of Appeal in Philips Electronics NV v Remington Consumer Products Ltd. ......
  • The Intersection between Registered and Unregistered Trade Marks
    • Nbr. 35-3, September 2007
    • Federal Law Review
    ...... in the TMA for rejecting an application that are relevant when considering how unre gistered marks impact upon decisions as to registrability. The first ground for rejecting an application to register a mark that needs to be considered in this context is found in s 42(b ). That section ......
  • Lords Design Constraints
    • Nbr. 59-3, May 1996
    • The Modern Law Review
    ...... to parts of an article which ‘must match’ another article.6 The introduction of these restrictions upon registrability reflects a belief that problems exist in relation to complex products which do not correspond to the image of the commodity ......
  • A Square Foot of Old Scotland: Ownership of Souvenir Plots
    • Nbr. , September 2015
    • Edinburgh Law Review
    • 393-398
    ......9. Para 4.32. The Scottish Law Commission Report on Land Registration notes, “[w]e have seen it suggested that the non-registrability of souvenir plots means that ownership in them passes by simple contract. That is not so.”10. 10. Report on Land Registration (Scot Law Com No 222, ......
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Law Firm Commentaries
  • Protection Of Colour Combination Marks
    • Mondaq UK
    ......Subject to any appeal by Red Bull to the CJEU, the decision was a blow for brand owners, setting the test for registrability of two-colour marks very high. Indeed, the effect of the decision seems to be that colour marks comprising colour combinations are harder to register ......
  • Descriptive Trade Marks - Round 2
    • Mondaq United Kingdom
    ...... public have to make some mental activity to work out whether the mark refers to the quality of the goods, this may assist the mark's registrability. It would also help in registrability if members of the public are uncertain as to the nature of the reference to the quality or the character of the ......
  • Death By A Thousand Cuts? Court Of Appeal Refers Trade Mark Dilution Questions To ECJ
    • Mondaq United Kingdom
    ...... of Patten J on 26 July 2006 (which in turn was an appeal from a Trade Marks Registry decision of Mr Reynolds) on the issue of the registrability of word mark 'Intelmark', registered in class 35 for "marketing and telemarketing services." . The High Court held that Intel has a huge reputation ......
  • SLOGANS: Can They Be Registered As Trade Marks?
    • Mondaq United Kingdom
    ......The European Court of Justice (ECJ) recently ruled on the registrability of slogans as trade marks in Office for Harmonisation in the Internal Market v Erpo Möbelwerk GmbH (Case C-64/02). The case is the latest in a line ......
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