Related insights: IP Disputes and Litigation

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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?
WBD_Services_Dispute

Colin v Cuthbert - PR as a tool in legal battles

27 Apr 2021
"Colin the Caterpillar" was officially trade marked in 2008. A little over 10 years later, Aldi started selling Cuthbert the Caterpillar. Marks & Spencer has this month filed a claim against Aldi claiming Aldi's Cuthbert has violated its intellectual property in Colin. Notably, Marks & Spencer has not yet brought claims against the other retailers who also sell caterpillar cakes. Aldi will be asked to remove Cuthbert from its shelves and to refrain from selling similar products in the future. In response, Aldi has announced that it intends to sell a limited edition version with profits going to charity and has asked if "Colin and Cuthbert [can] be besties".
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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.
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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.
WBD_Services_IP_Tech

Spotlight thrown onto imaging orders – Court of Appeal issues warning shot

08 Oct 2020
With advances in forensic tools, it has become increasingly common for courts to grant imaging orders (in support of search orders) for the quick and comprehensive preservation of electronically stored data on hard drives, laptops, etc. An advantage of imaging orders is that they allow the search process to be far less intrusive and disruptive for the business/premises that are being searched. On the other hand, a disadvantage is that the imaging process does not discriminate between documents that pertain to the issues of the proceedings and are covered by the search orders from documents that are irrelevant and/or privileged.