OHIM’s Boards of Appeal taking a hard line on absolute grounds against stylised marks, but is this on the right basis?

Not so long ago, one could simply add a flourish to an entirely descriptive word in order to achieve registration without an objection based on absolute grounds. Well, it looks like we can confidently say that those days are long gone, at least insofar as OHIM’s Board of Appeal is concerned. A look over April read more...
Subjects: Trade marks

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“Do’hhhh …!!” or should that be “Dough …!!” – Panrico shuts out another Donut brand in Europe

It may be surprising to many that up until now it has been very difficult to register a trade mark containing DONUTS (or a variation): (a)   in respect of “donuts” (or, if you like, “round-shaped dough biscuits”); (b)   in Spain or as a Community Trade Mark. That is, unless you are Panrico SA. If you read more...
Subjects: Trade marks

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Pushing the boundaries of trade mark law (Part 2) – Betty Boop imagery infringes Betty Boop word mark – one giant step for ideational similarity?

In Hearst Holdings Inc & Anor v AVELA. Inc & Ors [2014] EWHC 439 (Ch) (25 February 2014), Mr Justice Birss’ (he of Rihanna fame) has upheld passing off and infringement claims by Hearst for the unauthorised distribution of merchandise bearing Betty Boop imagery. The decision makes fascinating reading. Mr Justice Birss has once again read more...
Subjects: Trade marks

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Happy Quiche and Happy Sandwiches survive opposition from McDonald’s Happy Meal

We’ve all had one. A Happy Meal that is. Some of us might have continued to buy them in circumstances that might not be considered “age appropriate”, but there’s no shame in that. I’ll admit to having had some pretty good sandwiches in my day too. Quiches … not so much. The question as to read more...
Subjects: Trade marks

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HOME MAID troubles before Appointed Person – material differences between registered mark and mark as used scupper another opposition

Decisions from the Appointed Persons of the UKIPO have won a special place in our hearts here at KWM. While we can’t always agree on the outcome, the level of analysis and sheer common sense displayed is often a breath of fresh air (unsurprising given the calibre of those that are or have been APs), read more...
Subjects: Trade marks

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Using your trade marks in colour? Act now to confirm appropriate coverage in the UK and Europe for your valuable brands

IP practitioners have heard it all when it comes to rules of thumb. The infamous “10 percent rule” immediately springs to mind (ie. if there’s a 10% difference from the original work, then you’re not infringing copyright …). Another that is trotted out frequently is that a trade mark registered in black & white covers read more...
Subjects: Trade marks

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Pushing the boundaries of trade mark law (Part 1) – The Glee Club v Glee and “wrong way around” confusion

Well, fans of hit TV show GLEE will be rocked by the recent decision from Roger Wyand QC (sitting as Deputy Judge of the UK High Court) finding that the use of GLEE infringed a trade mark registration owned by Comic Enterprises Limited (CEL), for a series of two marks consisting of THE GLEE CLUB read more...
Subjects: Trade marks

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BPI’s Fragrance bottle shape mark rejected – but how different is distinctive enough?

The fragrance industry isn’t just about smelling good and paying people to take most of their clothes off and spray you with something as you walk by. In this market, the way a product is packaged is incredibly important. Is it not clear – based on years and years of educating consumers – that the read more...
Subjects: Trade marks

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No surprises? Keds’ side by side two stripe position mark rejected by OHIM’s Board of Appeal

Following hot on the heels (no pun intended!) of the decision of the Federal Court of Australia in adidas v Pacific Brands in Australia last year (in which KWM acted for adidas, here), position and logo marks in the fashion space are really hitting the headlines again in 2014. We reported earlier on the rejection read more...
Subjects: Trade marks

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