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Category: Legal Updates

Trade Mark Infringement and Director Liability: Hornby Street Ltd v Lifestyle Equities CV

Background Hornby Street Ltd was a company producing and selling clothing, footwear, and headgear goods bearing the mark SANTA MONICA POLO CLUB and featuring a logo depicting polo players on horseback. Lifestyle Equities CV and another (Lifestyle), owners of trade marks for BEVERLY HILLS POLO CLUB and a comparable polo player logo (see image below), sued Hornby Street Ltd for trade mark infringement on the basis that the mark being used was similar to their established trade mark rights and…

What is Trade Mark "Distinctive Character"?

What is Distinctive Character? By definition, a trade mark must be able to distinguish the goods and services of one business undertaking from those of another. This allows a consumer to choose between products from different sources when selecting one for purchase. When a trade mark application is filed, it is examined to determine whether it has sufficient distinctive character. But what does this mean, and how is it assessed? A recent decision taken by UK Intellectual Property Office (UKIPO)…

Chocolate Bar Moulds - Design Registration for "Snap Bar Mould" Held Invalid

On 22nd January 2024, the UK Intellectual Property Office (UKIPO) issued a decision on a case which called into question the validity of a "snap bar mould", the subject of UK design registration no. 6136045 in the name of Paul Cardy (Mr Cardy). The design application had been filed on 10th May 2021 and showed a single image of a ‘"5-celled silicone snap bar mould". The illustration under the design registration was depicted below: A "snap bar" is a bar…

Sole Freedom: The Question of the Foot Patch Design

On 22nd January 2024 a decision was taken by the UK IPO regarding the validity of a registered design no 6196574 in the name of UAB ORBIO WORLD (UAB). The registered design was filed on the 15th March 2022, showing a ‘cosmetic patch’. The main illustration of the design is depicted below: The invalidity action was filed by MB ‘VIZUALI RECLAMA’ (MB) on 14th July 2022 on the basis that the product depicted in the registered design created the same…

Lifestyle Equities CV v Amazon UK Services Ltd - Territorial Trade Mark Boundaries Must Apply to Online Retailers

On 6th March 2024, the giant retail platform Amazon was defeated by a Supreme Court decision which ruled Amazon had infringed UK and EU trade marks by targeting British consumers from  its US "amazon.com" website. This case was brought by Lifestyle Equities, who own registered trade marks in the UK and the EU for the words ‘Beverly Hills Polo Club’ and its logo. It was brought at a date when the UK was still part of the EU and although…

The "1984" Trade Mark Dispute - Be Careful When Choosing Your Grounds

The book "1984" by George Orwell is widely considered to be one of the greatest and most thought-provoking books ever written. In the modern day we are already experiencing some of the societal aspects that Orwell had predicted way back in 1949 when he penned the book, such as mass surveillance. Fast forward to February 2024 and a trade mark dispute concerning the right to register "1984" was decided, with an award being made in favour of the Orwell Estate.…

UKIPO Study - Social Media Influencers and Their Impact on Counterfeit Goods

A recent study conducted by the UK Intellectual Property Office (UKIPO) has shed light on the significant influence social media influencers have on consumers, not least when it comes to purchasing counterfeit products. The findings of the study has revealed a striking gender disparity. It found that 24% of males between the ages of 16 and 60 in the UK were prompted to buy counterfeit goods as a direct consequence of endorsements of so-called "influencers" using social media. This percentage…

Be Careful What You Say – Intellectual Property and Unjustified Threats

In 2023, a London cyclist, who posts footage to a YouTube Channel under the name of 'Chapona Bicyclette' showing vehicles making dangerous manoeuvres around or near cyclists, uploaded footage of a van overtaking the cyclist in an allegedly dangerous manner. The cyclist also sent the footage to the company that owned the van (Cornices Centre), with an expectation of an apology and assurance that the driver of the van would receive an appropriate reprimand. Instead, the cyclist received an email…

Thatchers Cider Company Limited v Aldi Stores Limited – Another Win for Branding "Lookalikes"

On 24th January 2024 a decision was issued by the IPEC court (Thatchers Cider Company Limited v Aldi Stores Limited [2024] EWHC 88 (IPEC), determining that Aldi’s ‘lookalike’ cloudy lemon cider did not infringe Thatchers’ trade mark registration, nor did it pass it off as its own. It would seem that Aldi has, once again, successfully evaded liability for another of its alleged "imitation" products. Whilst some quarters had hoped the decision would depart from those that came before it…

European Patent Office (EPO) Update - New Discount Scheme from 1st April 2024

The European Patent Office (EPO) has recently announced a new fee system aimed at bolstering support for small enterprises and individual inventors. This initiative, effective from the 1st April 2024, offers discounts of 30% on various fees for European patent applications made by so-called "micro-entities", which are defined as being either (a) companies with fewer than 10 employees and a turnover under €2m, or, (b) individual inventors. The move aligns with the EPO's commitment to fostering innovation and easing the…

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