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The government recently published a further Brexit IP regulation which corrects and clarifies certain provisions in the five Brexit IP regulations that came into force in 2019. The latest regulation also incorporates the United Kingdom's obligation in the Withdrawal Agreement to ensure that the outcomes of EU trademark and registered community design cancellation actions that are pending at the end of the Brexit transition period – currently 31 December 2020 – bind the comparable UK rights.
Traditionally, lenders have taken security over the tangible assets of borrowers. However, within the last few decades, lenders have begun to recognise that intangible assets (eg, IP rights) have realisable value and so potential to be used as part of a package – or even the basis – of security. While taking security over IP rights is now an established process, where the intellectual property is of significant value, careful consideration is required as to the rights to be secured and the type of security to be granted.
Licensors of IP rights may soon be unable to terminate licences where the licensee has gone into an insolvency process. The Corporate Insolvency and Governance Act, which recently came into force, reverses a previous legal position in relation to contracts for the supply of goods and services meaning that such contracts cannot be terminated simply because of a counterparty entering an insolvency process.
A recent Intellectual Property Enterprise Court decision is a useful reminder that a finding of trademark infringement is more likely where the mark has been used extensively and has an enhanced level of distinctiveness in the United Kingdom. Further, evidence of actual confusion can support and augment a court's assessment of the likelihood of confusion and need not be first hand or submitted in high quantities to be valuable.
The latest chapter in a long-running saga saw the High Court issue a final judgment in Sky v Skykick following the European Court of Justice's decision in January 2020. The High Court's judgment demonstrates that a finding of partial invalidity for overly broad trademarks due to bad faith may not necessarily taint the entire registration and deal a deathblow to the infringement claim.
The name Claridge's brings to mind one of the most luxurious hotels in London rather than court rooms and trademark law. Trading since 1856, the hotel is unlikely to have foreseen its recent dispute with a company which has sold candles and reed diffusers under the name Claridge since 2018. The case serves as a stark reminder that trademark searches must be completed prior to launching a new brand or product name.
The UK Intellectual Property Office recently upheld LinkedIn Ireland Unlimited Company's opposition to JK Solutions' registration of the word mark KINKEDIN in Class 45 designating, among other things, internet and video dating services. Despite the high degree of aural and visual similarity between LINKEDIN and KINKEDIN, the examiner held that there was no likelihood of confusion on the basis of conceptual dissimilarity alone.
In 2016 McMug Ltd successfully filed a UK trademark application for the mark OKAYEST for a number of products, including beer mugs, chinaware and flasks. However, AMC Photographics Limited challenged the mark's validity on the grounds that, among other things, it was devoid of distinctive character and was a wholly descriptive dictionary word (a superlative of okay). This case is a useful reminder that, even after registration, a mark can be challenged on the grounds of non-distinctiveness and descriptiveness.
Leicester City Football Club Limited recently opposed Leeds City Football Club Limited's application for a graphical trademark covering various goods and services in Classes 16, 25, 26 and 41. Leicester City's claims relied on its earlier mark for the acronym 'LCFC'. In comparing the goods and services covered by the two trademarks, the UK Intellectual Property Office held the parties' goods to be identical and their services to be identical or at least highly similar.
A UK Intellectual Property Office (UKIPO) opposition was recently brought by eBay Inc against an application by the games company SC Zumedia Games SRL to register a figurative trademark. eBay relied on two earlier registered UK word marks for EBAY in Classes 35, 38 and 41 and figurative EU trademarks in various classes. While the UKIPO accepted that eBay has a protectable goodwill, it was satisfied that there was no likelihood that a substantial number of eBay's customers would be misrepresented.
In 2017 an application was filed to register LIFEWEAR CLOTHING as a UK trademark for clothing and headgear. The application was opposed by Fast Retailing Co, Ltd, the owner of the well-known UNIQLO brand, based on their trademark registrations and the reputation of UNIQLO LifeWear, as well as their unregistered rights in the term 'life wear' for clothing. UNIQLO's earlier rights covered identical goods to those applied for, making it easier to argue a likelihood of confusion (or association) between the marks.
Under Section 46 of the Trademarks Act 1994, a registered trademark can be removed from the register if there has been no genuine use of that mark for five years or more. This is the crux of the so-called 'use it or lose it' argument. But how much evidence is needed to prove genuine use? This question was put to the UK Intellectual Property Office during a recent revocation application.
The Supreme Court recently handed down its judgment in the Warner-Lambert v Generics (UK) (Mylan) case concerning the validity and infringement of a patent claiming the use of pregabalin for treating neuropathic pain. The key issues which the court had to resolve were the tests for infringement of a second medical use claim and the test for plausibility of a claim such that it is sufficient.
The Supreme Court has ruled that trademark owners should indemnify internet service providers (ISPs) for the costs incurred in blocking access to websites that infringe their marks. The decision reverses the lower courts' rulings that these costs should be picked up by ISPs. However, the indemnity must be limited to reasonable compliance costs. Therefore, the ruling should not deter brand owners from applying for blocking orders in appropriate cases.
The exemptions to patent infringement applicable in the United Kingdom to life sciences products are often a source of confusion. This is not least because of the introduction of a third exemption in this area on 1 October 2014. The extent of protection offered by each exemption differs, but to some extent overlaps, and there is only slim guidance from the courts on two of the three.
The High Court has overturned a decision of the registrar of trademarks in which an opposition against an application for a stylised mark featuring the words 'VAPE & CO' was upheld. The opposition was filed by London Vape Company Ltd based on its stylised UK registration featuring the words 'THE vape.co'. The High Court upheld the appeal, noting that "if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion".