Travel and leisure – IP Law Watch

The ‘Standard’ of Use Evidence in the EU – Advertising and Promotion Can be Enough to Show Genuine Use of a Service Without That Service Actually Crossing the Pond

Dec 21 2022

Does evidence showing booking, advertising and selling services in the EU constitute genuine use if the service actually registered takes place abroad?

This was the question contemplated by a recent decision of the General Court. The case T-768/20 (Standard International Management LLC v EUIPO) addresses the use of trade marks in the EU where the relevant brand operates hotel and leisure facilities outside the jurisdiction.

After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case

Apr 29 2020

After the CJEU’s ruling earlier this year (as discussed here), the Sky v Skykick case has now returned to the English High Court and Lord Justice Arnold on 29 April 2020 issued a final judgment in the case (see full text of the judgment here).

Although Sky’s trade marks were found to be partially invalid on the ground that they were applied for in bad faith, Sky was still ultimately successful in establishing infringement.

Cofemel’s first UK outing – The wooly world of copyright and designs

Feb 03 2020

In Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC), the Intellectual Property Enterprise Court (“IPEC”) has issued the first UK decision made since the Court of Justice of the European Union’s controversial decision in Cofemel (C-683/17).

Why does this matter?
The Cofemel decision indicated that there is a harmonised concept of what constitutes a ‘work’ under copyright law throughout the EU, which is not restricted by any defined categories and should not take into account any aesthetic considerations.

Accordingly, there has been much discussion about the UK’s closed list of copyright protectable subject matter under the Copyright, Designs and Patent Act 1988 (“1988 Act”) and the concepts of ‘artistic works’, ‘sculptures’ and ‘works of artistic craftsmanship’ under section 4 of the 1988 Act and whether these are incompatible with EU law. Previous prominent Court decisions such as the Lucasfilm decision in the Stormtrooper Helmet case have also been thrown into question.

This decision is the first time that a UK Court has had to deal with this apparent incompatibility.

We have a decision in the Sky v SkyKick case… and the long-awaited CJEU’s decision is good news for brand owners!

Jan 29 2020

On 29 January 2020 the Court of Justice of the European Union (CJEU) handed its decision in the referral from the English High Court in the Sky v SkyKick case. We have previously covered this case and its importance for EU and UK trade mark law (including with our summary of the opinion issued by Advocate General Tanchev, which can be seen here).

The CJEU’s ruling provides good news for trade mark owners as it largely maintains the status quo for EU and UK trade mark law, departing from the AG’s Opinion in a number of important ways.

Zara v Zara: The evolving world of “fashion”

May 13 2019

The recent decision in Inditex v EUIPO demonstrates the far reaching, evolving nature of fashion brands and the markets they can operate in and are expanding into.

In this case, Inditex (one of the world’s largest fashion retailers and owner of the fashion brand Zara) appealed the EUIPO’s decision to grant registration of the ‘Zara Tanzania Adventures’ mark in classes 39 (travel and tourism) and 43 (travel agency services). The appeal was based on the registration of its own ‘Zara’ mark in class 39. But how can a fashion brand object to a mark in the travel sector?

EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court

Feb 01 2018

EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.

EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.

Tag:Travel and leisure