Intellectual Property, Taylor Wessing updates

United Kingdom

Contributed by Taylor Wessing
Claridge's, candles and cautionary tales
  • United Kingdom
  • 07 October 2019

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.

UKIPO considers whether LINKEDIN is similar to KINKEDIN
  • United Kingdom
  • 05 August 2019

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.

UKIPO considers distinctiveness of OKAYEST for consumer products
  • United Kingdom
  • 25 March 2019

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.

UKIPO considers dispute between football clubs
  • United Kingdom
  • 28 January 2019

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.

UKBAY v eBay – opposition based on eBay's earlier rights
  • United Kingdom
  • 21 January 2019

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.


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