China has been steadily overhauling its IP system for well over a decade. Last week, in the latest development, China joined WIPO’s Hague System for the International Registration of Industrial Designs bringing the total number of countries covered by the Hague System to 94. China is the largest market that remained outside of the Hague System until now. The EU, US, UK and Japan are all already members and the system is increasingly popular: the number of designs applied for
The Court of Appeal recently found that a company which had acquired the BEVERLY HILLS POLO CLUB trade marks was bound by an arbitration clause in an agreement signed by its predecessor. More details on the first instance decision are here. Arbitration clauses are common in many tech agreements and, as this case shows, these clauses can have far reaching an unintended consequences not just on the original parties but on their successors in title. The case is Lifestyle Equitie
The UK Intellectual Property Office (UKIPO) has launched a call for views on the designs system. It says this will “help us better understand how we can make the most of new opportunities and flexibilities now that we have left the EU, and how new and emerging technologies may impact the design system.” Designs don't just protect three dimensional items. They can also be used to protect GUIs, logos, graphical symbols and similar. They are increasingly used by many tech compan
The unitary patent represents the biggest change to the IP landscape in Europe since the Community Trade Mark (now EUTM). Even if you’re not in a patent heavy industry, it has significant potential ramifications. Currently patents are granted on a country by country basis. Under the new system, a patent applicant will have the option to apply for a “unitary patent" or "UP” designation which means their patent will be granted as a single right across all UP states. This means
What happens when two parties cannot agree about the interpretation of an IP licence agreement? This question was recently examined by Deputy Master Raeburn in a dispute between a designer, Damian Evans, and the producer of homeware products, Joseph Joseph Limited (JJL). The judgment is available here. Kitchenware designs Evans had signed an agreement with JJL in 2007, under which he licensed to the company the IP rights in his designs for kitchenware. This was amended in 201
In short, yes: the UK courts can grant a pan-EU injunction in proceedings that were pending on 31 December 2020, the day the UK left the EU. That was the conclusion of Sir Julian Flaux, Chancellor of the High Court, in his judgment in a dispute between Easygroup and Beauty Perfectionists (& others) over the latter’s use of the name easyCOSMETICS. Under the EUTM Regulation, EU member states can designate national courts as EU trade mark courts. These courts have jurisdiction t
A legal action for unjustified threats is a serious risk that trade mark owners run when making allegations of infringement, including by issuing takedown notices via online platforms such as marketplaces. As a recent decision showed, the risk of unjustified threats should not be taken lightly. The decision came in a dispute over knitting needles. The case dates back to November 2015, when Indian company KnitPro issued takedown notices to Amazon UK regarding wooden knitting n
easyGroup, which owns the IP rights for companies such as easyJet and easyHotel, has been active, and largely successful, in bringing actions against other companies using the “easy” prefix. However, it suffered a reverse in a recent judgment against an online retailer, easylife (Easygroup Ltd v Easylife Ltd & Anor  EWHC 2150 (Ch)). Chief Insolvency and Companies Court Judge Briggs dismissed easyGroup’s infringement and passing off claims against easylife. An important
The popular song Waiting All Night by the band Rudimental was not copied from a 2007 song Can You Tell Me, performed by Kelly-Marie Smith, according to a ruling by Mr Justice Zacaroli on 11 August 2021 (Smith v Dryden & Ors  EWHC 2277 (IPEC)). Ms Smith brought the action for copyright infringement in the English IP Enterprise Court (IPEC), claiming that both the music and lyrics of Rudimental’s song constituted copyright infringement. Waiting All Night was primarily wri
Can confidential discussions between parties in the UK be disclosed in parallel litigation in the US?
The Court of Appeal was divided on this question in AutoStore Technology AS v Ocado Group Plc & Ors  EWCA Civ 1003, which arose as part of proceedings in which AutoStore is suing Ocado for patent infringement.
Discussions between the parties had taken place in 2018, and Ocado became aware that AutoStore intended to deploy information about these discussions before th
In what may be a record for an IP case in the UK, the trial in Lutec (UK) Ltd & Ors v Cascade Holdings Ltd & Anor  EWHC 1907 (Pat) lasted just over an hour. In his judgment published on 9 July 2021, Deputy High Court Judge David Stone found that four registered designs were infringed by two outdoor light fittings, known as the Helios Up Or Down light (Helios U/D) and the Helios Up And Down light (Helios U&D).
The judge attributed the rapid resolution to “thorough prepa
This Court of Appeal decision is a helpful reminder that a lack of evidence of actual confusion is not necessarily fatal to a finding of trade mark infringement. The two IP specialist judges and one of the few female judges in the Court of Appeal upheld a finding of likelihood of indirect confusion between EU and UK trade marks for EAGLE RARE (registered for, respectively "bourbon whiskey" and "whiskey" and other goods in class 33) and a bourbon whiskey sold under the name AM
Oatly has hit a brick wall in its attempt to stop third parties from selling oat milk using the word "OAT" plus the letter "Y". A decision in the IP Enterprise Court (IPEC) that the use of the PUREOATY name does not infringe registered trade marks for OATLY demonstrates the difficulty of enforcing marks that include a descriptive element. The case is Oatly AB v Glebe Farm Foods. Swedish company Oatly brought the action for infringement of five registered EU (now comparable UK
An application to register a trade mark can constitute passing off, according to a recent judgment by Deputy High Court Judge John Kimbell QC in a case concerning the Litecoin cryptocurrency. The litigation was brought by Litecoin Foundation Limited (Litecoin Foundation) against three defendants: Inshallah Limited, Nasjet Limited and John Pepin. Litecoin Foundation claimed it has a substantial reputation and goodwill in the UK in Litecoin, which it had promoted and developed.
We first wrote about the impact of Brexit on UK trade marks over a year ago. We are now over 6 months in since the UK's departure from the EU and rapidly approaching the end of the transitional arrangements. 30 September 2021 is the deadline for filing a new UK application and claiming priority from an earlier EU trade mark application. This only applies if the EU mark was filed on or before 31 December 2020. Other important changes Separate trade mark filings are now require
A common trade mark filing strategy in the UK and EU is to file a broad trade mark specification. A broad specification makes enforcement easier and allows room for the pivots that are common in new businesses. The down side of broad trade marks is that they block the register for future applicants. This issue has been put into the spotlight thanks to the longstanding litigation between Sky and SkyKick - previously discussed here. In the latest SkyKick judgment, the Court of
In short, "yes". Cybersquatters are a growing threat to brands. This trend has accelerated as e-commerce grows and consumers spend more time online. A new report suggests that cyber-squatters are cannier and more cunning than you might imagine.
For brand owners, resolving domain name issues and filing defensive registrations eats up considerable time and effort. But as many have found to their cost, ignoring cybersquatting can lead to consumer confusion, loss of sales, fraud
An integral part of the UK intellectual property system has been a focus on balancing creator protection with fair competition and consumer choice. Brexit means that this balance must once again be assessed as the EEA regime in relation to exhaustion (i.e. the movement of parallel imports AKA grey market goods) no longer applies in the UK. On 7 June 2021, the UK Government launched a consultation to collate views on the future of the exhaustion of IP rights in the UK. The con
After the many logistical issues posed by both Brexit and the pandemic and with sustainability at the forefront of everyone's mind, it is perhaps not surprising that there has been a 130% increase in businesses accepted to use the MADE IN BRITAIN mark on their goods. (Many more have applied but not met the relevant criteria.) What is the legal framework that underpins this brand name and what exactly does "Made In Britain" mean? Can anyone use MADE IN BRITAIN? Made in Great B
The High Court has recently provided guidance for employees in relation to the Recast Brussels Regulation. This guidance can be neatly summarised as: France 1 England 0. The High Court has ruled in favour of two former employees in a case concerning Article 22.1 of the Recast Brussels Regulation (RBR). The judgment in Semtech Corporation & Ors v Lacuna Space Ltd & Ors clearly sets out the test to be applied in deciding whether disputes relate to contracts of employment. The i