Related insights: Brand Protection
The be-gin-ning of the end? Aldi found to infringe M&S' designs for festive liqueur bottles
20 Feb 2023
Casting our minds back to the festive period of 2021, news that Marks & Spencer had launched legal proceedings against Aldi for copying its products – at that time, its decorative gin liqueur bottles – was a hot topic in the general media.
Just over a year later (a decent timeframe for the first stage of intellectual property infringement proceedings), Judge Hacon sitting in the Intellectual Property Enterprise Court has held that Aldi has indeed infringed Marks & Spencer's registered design rights.
Just over a year later (a decent timeframe for the first stage of intellectual property infringement proceedings), Judge Hacon sitting in the Intellectual Property Enterprise Court has held that Aldi has indeed infringed Marks & Spencer's registered design rights.
Frosty reception: Iceland Foods' only EU trade marks invalidated
19 Jan 2023
In December 2022, the European Union (EU) Intellectual Property Office (IPO) Grand Board of Appeal decided to cancel EU trade mark registrations belonging to Iceland Foods Limited (IFL) for ICELAND and the figurative mark (right). The Grand Board confirmed the earlier invalidity decisions stating that the marks in question would be perceived by the relevant public as indicating that the goods and services provided under the marks originate from Iceland, as opposed to from IFL. The decision (at publishing, still subject to appeal) could mean that IFL loses all of its EU-wide registered trade mark protection for its key brand; these are the only EU trade mark registrations belonging to IFL on record.
How did Hasbro lose its 'Monopoly'? Bad faith in repeat trade mark filings
04 Aug 2021
The EU General Court has partially invalidated one of Hasbro's EU trade marks for MONOPOLY, finding that Hasbro acted in bad faith when it re-filed for an identical mark covering identical goods and services, attempting to artificially prolong protection and distort EU trade mark law. In its defence, Hasbro argued the practice was widespread – but does re-filing ever constitute a legitimate commercial strategy?
UKIPO invites views on UK parallel trade system post-Brexit
29 Jul 2021
Relevant to all UK consumers, The UK Intellectual Property Office has produced a consultation paper on the future of the UK's exhaustion of intellectual property rights and parallel trade regime post-Brexit.
Brexit and exhaustion of rights
02 Jul 2021
Parallel trade is the import (and export) of genuine goods protected by intellectual property ("IP") rights, and occurs where the IP rights are said to have been 'exhausted' – where the goods are put on the relevant market by, or with the consent of, the IP-right owner.
Brexit and trade marks
18 May 2021
Since 1 January 2021, the scope of protection afforded by European Union ("EU") trade mark registrations has not extended to the United Kingdom ("UK"). However, each owner of an EU trade mark ("EUTM") that was registered before or on 31 December 2020 has been granted a comparable registered and enforceable intellectual property ("IP") right in the UK, known as the 'comparable trade mark (EU)' – hereafter "CM(EU)" – which came into force automatically and free of charge on 1 January 2021.
A cautionary tale on transferring IP assets at an undervalue
02 Feb 2021
The Intellectual Property Enterprise Court has dismissed[1] a claimant's application for summary judgment which alleged that a licensee had infringed its registered trade marks and had breached the terms of its licence.
The Hajdu Halloumi decision – collective marks as badges of origin
04 Dec 2020
As the UK prepares to depart from the EU, it will introduce shortly a national regime for the protection of geographical indicators. Against this background, it is interesting to read how the scope of registered collective marks was interpreted widely by the High Court so as to defeat a UK trade mark application that had incorporated the entirety of an earlier collective mark as only one of its elements. The decision demonstrates how, despite being subject to the general rules pertaining to trade marks, collective marks can be useful and powerful assets. It also serves as a reminder of the approach to be adopted when assessing the extent to be which collective marks might share visual, aural and/or conceptual similarity with other marks.
Court finds no 'classic' bait and switch selling where there is no confusion
20 Nov 2020
'Bait and switch' selling is the act of marketing certain goods, but then substituting alternative goods when such goods are supplied. At its broadest, it is any attempt to get customers to accept something different from what originally attracted them. Such acts may be restrained if they are deemed to constitute an actionable misrepresentation.
UK Intellectual Property Office announces requirement for UK address for service
20 Nov 2020
Applicants for UK trade marks, designs and patents will be required to appoint a UK address for service going forward, according to a recent announcement by the UK Government.
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