The UK Supreme Court recently handed down its judgment in the long-running SkyKick v Sky trade mark battle. The court considered the key issue of ‘bad faith’ applied to the over-claiming practice and its implications for trade mark infringement matters.
Read MoreThe plant-based food industry is growing at a rapid pace, with popularity amongst consumers increasing because of its purported health and environmental benefits. However, a recent General Court decision in the EU highlights the difficulties brands face in obtaining trade mark protection for plant-based food if brands are not sufficiently distinctive (despite a tendency in the industry to develop brands which are a play on words of traditional food products).
Read MoreThe Italian Supreme Court recently issued a decision addressing whether the Vespa shape, already protected under copyright, was precluded from registration as a 3D mark. According to the Court, a shape’s artistic value usually confers substantial value which prohibits trade mark registration under Italian law.
Read MoreIn McD Asia Pacific LLC v. Hungry Jack’s Pty Ltd [2023] FCA 1412, fast-food giant McDonald’s and Australian dinner-time rival Hungry Jack’s faced off in the Federal Court of Australia over their burger names BIG MAC vs BIG JACK and MEGA MAC vs MEGA JACK.
Read MoreThe 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.
Read MoreThe Full Court of the Federal Court of Australia has reaffirmed that a registered trade mark can only be infringed by the primary user of a trade mark and there is no concept of authorisation of infringement recognised under Australian trade mark law.
Read MoreIn this internet age, where a brand can be damaged by a single, negative review going viral, never has it been more important for a brand owner to protect its image and reputation. The pandemic forced all shopping online for some periods and has dramatically changed consumer buying habits, increasing the risks of unauthorised and poor quality online selling for high-quality brands without appropriate measures in place.
How can you stop a third party selling your genuine goods in a manner that damages your brand? Be it poor customer service, bait and switch practices, long delivery times, substandard internet sites or poor returns policies, issues such as these, the prevalence of which has only been exacerbated by the pandemic, can create negative consumer associations with a brand. The answer – through an effective selective distribution strategy.
Read MoreA recent UK Court of Appeal case has highlighted the importance of assessing the conceptual similarity of marks and not just their aural and visual similarities, when considering a potential trade mark infringement.
The UK Court of Appeal was hearing an appeal from a decision of the Intellectual Property Enterprise Court concerning a claim by the British Amateur Gymnastics Association (“BAGA”) against UK Gymnastics and UK Gymnastics Affiliation (together “UKG”) for trade mark infringement and passing off. BAGA is a not for profit private company and recognised as the national governing body for the sport of gymnastics in the UK. UKG is a gymnastics sporting body that provides: membership services to individual gymnasts, gymnastics clubs and coaches; competitions; courses and badge/certification programmes among other services.
At first instance, HHJ Melissa Clarke found UKG liable for infringement of BAGA’s trade marks and passing off. UKG were granted permission to appeal on limited grounds which are listed below.
Read MoreLuxury car manufacturer Bentley Motors has lost its appeal against a ruling which found it infringed the trade marks of a small, family company called Bentley Clothing. A full copy of the decision can be found here.
Following the ruling, Bentley Motors must stop using the trade mark BENTLEY and their combination sign – the B-in-Wings logo and the word BENTLEY (shown below) – on clothing.
The U.S. Supreme Court confirmed that brand owners are not required to prove willful intent before obtaining a defendant’s lost profits. On April 23, 2020, the Supreme Court resolved a longstanding circuit split and unanimously held that trademark infringers may have to hand over their profits even if they did not willfully infringe.
In Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court was tasked with determining whether the rule that a plaintiff can win a profit remedy only after showing a defendant willfully infringed its trademark can be reconciled with the statute’s plain language. Ultimately, the Supreme Court sided with the plaintiffs, Romag Fasteners (Romag), holding that:
Read More“[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”
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