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Keep an Eye on Your Mailbox – Appoint a UK Representative for Trade Marks Filed Through WIPO

Oct 05 2022

A direct United Kingdom (UK) trade mark application to the UK Intellectual Property Office (UKIPO) contains a requirement to name a UK address for service. In contrast, it has been a standing practice of the UKIPO to process International Trade Mark Registrations via the Madrid Protocol designating the UK without requiring a UK service address. The UKIPO would only require to specify a UK service address in circumstances where objections or oppositions are raised in relation to the International Trade Mark Registrations during prosecution. However, the recent decision in MARCO POLO (O/681/22) has called this UKIPO’s practice into question.

Can Dawgs Free-Ride on Bulls – Interpretation of Unfair Advantage for UK Trade Marks

Sep 19 2022

The UK High Court has rejected an appeal filed by Monster Energy to register its trade mark ‘RED DAWG’. The court deemed that it could take unfair advantage of the famous energy drink brand’s trade mark ‘RED BULL’. The case (Monster Energy Company v Red Bull GmbH [2022] EWHC 2155 (Ch)) was initially held before the UKIPO before Monster Energy’s appeal to the High Court.

Aug 31 2022

Cadbury has proven the adage that perseverance is the key to success as their continued and well-document pursuit over the registration of the colour purple has finally seen success in Société des Produits Nestlé S.A. v Cadbury UK Limited [2022] EWHC 1671 (Ch). The UK High Court has partially upheld the Cadbury appeal over UKIPO’s previous 2019 decision. Hopefully, this will bring clarity to businesses wishing to register colour marks instead of creating further ambiguity around the registrability requirements of colour marks and other non-traditional marks.

Swatch v Samsung: App Store Operators are Not Intermediaries and Can be Liable for Trade Mark Infringement

Aug 30 2022

The High Court of Justice of England & Wales has recently held Samsung liable for trade mark infringement for watch faces sold on the Samsung Galaxy App store (“Samsung’s Store”) and infringing Swatch Group’s trade mark rights. The judgement provides useful guidance on intermediary liability specifically regarding app store operators.

The New Digital Frontiers: How IP is Adapting to Virtual Worlds, from NFTs to Virtual Products

Aug 25 2022

Virtual products, the metaverse, and non-fungible tokens (NFTs) have recently been expanding and receiving considerable attention from investors, the general public; as well as the art world. Within the span of a year, NFT-backed virtual works of art have been reaching new height, from Beeple, Everydays: The First 5000 Days (March 2021 – US$69.3 million) to The Merge (December 2021 – US$91.8 million). Today, the most valuable living artist in history is a virtual work of art author (Pak, author of The Merge).

High Court Split 3-3 in Landmark Decision on the Patentability of Computer Implemented Inventions in Australia

Aug 22 2022

The High Court has issued its eagerly awaited decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat). Six High Court Justices presided over the appeal from the Full Federal Court of Australia (Full Court Decision), which we wrote about in November 2021. The High Court was split 3-3, meaning the appeal was dismissed and Aristocrat’s patent application will not proceed to grant.

The split decision leaves the question of the patentability of computer implemented inventions (CIIs) somewhat unresolved in Australia.

Lovely Jubbly? Fictional characters are capable of copyright protection in the UK

Jul 21 2022

Considering the UK’s rich history of literature, it may be somewhat surprising to know that there was very little case law discussing whether copyright might subsist in a fictional character. However, on 8 June 2022, the UK courts finally tackled whether a fictional character can be protected under copyright law in Shazam Productions Ltd v Only Fools The Dining Experience Ltd & Ors [2022] EWHC 1379 (IPEC).

Developers Denied Double Dipping Damages

Jul 12 2022

The rule against double recovery, which operates to ensure plaintiffs are not compensated twice in respect of the same loss, is well-known and generally arises for judicial consideration where there are joint and several tortfeasors. The recent decision of Look Design and Development Pty Ltd v Edge Developments Pty Ltd & Flaton [2022] QDC 116 by Judge Long SC of the District Court of Queensland considered the rule against double recovery in the context of separate proceedings against different defendants. This case confirms that where damages for copyright infringement are compensatory, the fact that a plaintiff has already received an amount of damages from one infringer will serve to reduce the damages payable by the other.

The NFT Collection: The rise of NFTs – Copyright strikes back? (Part 3)

Jul 07 2022

In a recent post, we examined the regulatory landscape of NFTs (see here). In our third of our series on NFTs, we will address the intellectual property concerns often highlighted by NFT critics.

Latvian Citizen Fined US$4.5 Million and Sentenced to More than 4 Years of Imprisonment for Fraudulent Trade Mark Renewal Scheme

Jul 04 2022

Misleading renewal notices to trademark owners continue to cause confusion and, in some cases, unnecessary fees paid to fraudulent schemers that do not result in renewal of a trademark registration. Recently, a Latvian citizen was sentenced to more than four years in U.S. prison and fined over US$4.5 million in restitution, after he pleaded guilty to a three-year scheme that defrauded thousands of U.S. trademark owners of over US$1.2 million.

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