No immunity for credit card processors of counterfeit goods: Gucci allowed to press claim

Following the success of its 2008 case in which Gucci secured permanent injunctions against certain defendants, collectively known as "Laurette" for the sale of counterfeit Gucci products on a website called TheBagAddiction.com, Gucci brought proceedings in 2009 against Durango Merchant Services, Frontline Processing Corp, and Woodforest National Bank, alleging that they aided and assisted Laurette by offering credit card processing services which enabled infringing sales over the internet to take place.

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Subjects: Trade marks

Is the apprehension of a threat by a “reasonable businessman” different from a “reasonable person”?

In Best Buy Co. Inc v Worldwide Sales Corporation España S.L. [2010] EWHC 1666 (Ch), the High Court of Justice (UK) had to consider whether a statement made in the course of negotiations constituted a “threat of legal proceedings” under section 21 of the Trade Marks Act 1994 (UK) (“the Act”).  This section provides that, in certain circumstances, a party may seek relief from the court where a person “threatens another with proceedings for infringement of a registered trade mark”.  There are similar such provisions in Australia.   

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Subjects: Trade marks

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‘Whiskas is purple…’

After the parties had settled, it was necessary for Justice Bennett to determine whether Whiskas purple should be registered as a trade mark.   The issue was whether the Registrar of Trade Marks had initially accepted the trade mark application (prior to the objection) on the basis of false evidence.  Her Honour also made observations regarding whether the mark was capable of distinguishing Whiskas cat read more...

Subjects: Trade marks

Something to chew on: the Food Channel trade mark cases

In the latest Federal Court judgment dealing with issues in the ongoing trade mark dispute between Food Channel Network Pty Ltd and Television Food Network GP, the Full Federal Court has confirmed that the party opposing the registration of a trade mark bears the onus of proving a successful ground of opposition on appeal to the Court. 

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Something smells funny in Europe

Does trade mark law prevent traders from telling the truth? Absolutely. That's the take away message from the UK Court of Appeal after having its hand forced by the European Court of Justice ("ECJ"). But forget about the ruling for a moment. The highlight of this case is Lord Justice Jacob delivering the dissenting judgment to his own ruling (Lord Justices Wall and Rimer agreeing). And it's not subtle. Despite upholding the ECJ ruling, LJ Jacob dedicates pages and pages to why the ECJ got it wrong, before ending with "I do not agree with or welcome this conclusion... read more...

Subjects: Trade marks

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