International Lawyers Network (LexBlog United Kingdom)

Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor [2024] EWCA Civ 29 (26 January 2024) When assessing the likelihood of confusion between two marks in a trade mark clearance or infringement context, the orthodox approach of the diligent IP practitioner might be to set the two marks out next to one another,...

Introduction In the recent decision of the UK Patents Court in Oxford University Innovation v Oxford Nanoimaging Limited [2022] EWHC 3200 (Pat), the Court was asked to consider whether UK legislation protecting consumers from unfair contract terms applied to a contract made between Oxford University and a DPhil (doctorate) student. The Court held that the legislation in...

The case of Aiwa Co. Ltd v Aiwa Corporation is a useful reminder to brand owners, particularly those who are looking to revive a brand, of what amounts to “genuine use” of a registered trade mark. The case particularly considers whether the sale of second-hand goods by third parties in the UK can constitute genuine use of...

The Duke and Duchess of Sussex submitted a trade mark application with the World Intellectual Property Office last year to register “SUSSEX ROYAL” in the UK, EU, Australia, Canada and the US. The application covers a range of goods and services in six classes, including printed publications; clothing; promotional and public awareness campaigns; volunteer projects...

A mere three and a half years after the 2016 referendum on membership of the European Union, the UK looks set to “leave” the EU on 31 January 2020. Instead of exiting without a deal (which at one stage looked distinctly possible), the UK’s departure will be pursuant to the New Withdrawal Agreement. Under this...

A dispute concerning the screenplay for the 2016 Hollywood biographical comedy “Florence Foster Jenkins” (FFJ) – a film about a tone-deaf New York socialite who labours under the delusion that she is a talented opera singer – has this month produced a Court of Appeal decision centering on the parties’ own adjustment to reality. Apart...

When TV format creator Mark Duffy struck upon the tongue-in-cheek name “The Pets Factor” for what was (presumably) a talent competition for domestic animals, he might well have smiled at his own ingenuity. Conversely, when Simon Cowell heard about the name (via Mr Duffy’s application to register it as a UK trade mark in classes...

The Court of Appeal for England and Wales was asked to consider a case where 2 companies were using the same name in different territories, both legitimately, but one decided to exploit traffic mistakenly hitting its website by using targeted ads[1] The dispute involved two businesses who shared the “Argos” name, but on different sides...

On 4 July 2018, Russian IP Court rendered a landmark judgment in case No. A40-132026/2017. Under the merits of the case, LLC Azbuka Vkusa (trademark holder) sued LLC Registrator R01 (prominent domain registrar) seeking to cease delegation of the disputed domain name. It was apparent that the claimant’s trademark AZBUKA VKUSA was infringed in the domain...

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 perhaps regrettable commercial/legal decision by the sports giant, whilst also demonstrating the usefulness of the IPEC as a means of speedy and effective...

On 26 April, the UK ratified the EU’s Unified Patent Court (UPC) agreement. Although much of intellectual property law and practice is already harmonised amongst EU member states, a UPC would set up a common patent court for the hearing of intellectual property cases, and the direct applicability of its rulings, across all EU member...

Introduction From Bullseye to Mastermind and from The Chase to Eggheads, it is undeniable that the public love a TV game show.  Who (in the UK) doesn’t remember Judith Keppel sensationally becoming the first winner of Who Wants to be a Millionaire?  A total of 14.9 million UK viewers (that is about a quarter of...

Readers of this blog may well be familiar with the regional exhaustion rule which applies to IP rights in the EU, including (for the time being) the UK.  Under this rule, IP rights can be exhausted where they are put on the market with the consent of the proprietor in one part of the EU,...

The United Kingdom’s vote on June 23, 2016 to withdraw from the European Union has left many issues in flux, including the rights of owners of European Union Trademark registrations (EUTMs), formerly Community Trade Marks (CTMs). While details of the separation have yet to take shape, below are some points to keep in mind: The...

Just over a week ago, the population of the UK voted in a referendum to leave the European Union.  This was something of a shock, particularly for those of us in the legal profession who get to appreciate the effects that EU harmonisation of law can bring for our clients. The result is starting to...

The UK has for a long time had laws in place that make it illegal for IP owners to make “unjustified threats” to bring proceedings for infringement of registered IP rights.  In recent years, this prohibition has been narrowed to exclude threats made in respect of primary infringement (i.e. manufacturing, importing or supplying services), but...

Introduction The world has “internationalised” at an astonishing rate in the last 20 to 30 years.  People are better travelled and are familiar with overseas hotels, restaurants and media.  And it is the same with consumer brands: in the UK we are as familiar with Hershey’s chocolate from the US and Vegemite spread from Australia...

IP owners continue to get punishment dished out to them, and not on a consensual basis.   A recent decision of the UK’s Court of Appeal has reviewed the rules that dictate when parallel (or “grey”) market product can be rebranded to match the brand used by the market leader in the national market concerned. The...