INTELLECTUAL PROPERTY • SCIENCE AND TECHNOLOGY
MEDIA AND ENTERTAINMENT • COMPETITION
TRADE MARKS AND PASSING OFF
Chambers has a long standing expertise in trade marks, branding, marketing and advertising cases. Members of chambers have been involved in a large proportion of the most significant developments in this area of law. A selection is below. They give an indication of the breadth of chambers activity in this area. A number of the cases also involve related rights such as trade libel, contracts or consumer protection law.
All of the barrister editors of Kerly's on the Law of Trade Marks are members or former members of chambers.
ECJ and CFI cases
Infringement
Canon - approach to infringement (ECJ)
BMW - conditions for infringement (ECJ)
Arthur & Felice - comparison of marks (ECJ)
Celine - infringement by use of business names (ECJ)
Philips v. Remington - shape mark defences (ECJ)
Holterhoff - descriptive use defences (ECJ)
Gerolsteiner - scope of descriptiveness defence (ECJ)
Travelex - liability of EU institutions for infringement (CFI)
Gillette - spare parts defence (ECJ)
Davidoff/Levis - parallel imports (ECJ)
Upjohn v. Paranova - parallel imports with altered marks (ECJ)
Registration and Validity
Doublemint - registrability of descriptive term (ECJ)
Celltech - distinctiveness of composite marks (CFI and ECJ)
Nichols - personal names (ECJ)
Linde - shape marks (ECJ)
Dyson - shape marks (ECJ)
Sieckmann - smell marks (ECJ)
Libertel - colour marks (ECJ)
Merz & Krell and Have a Break- slogans (ECJ)
La Mer - use of a mark (ECJ)
Elizabeth Emanuel - acquired deceptiveness (ECJ)
Praktiker - retail services registration (ECJ)
Adidas v. Fitness World - scope of article 5(2) (ECJ)
Significant UK cases
Passing Off
Jif Lemon - the leading case on passing off (HL)
Prosciotto di Parma - restatement of the principles of passing off (CA)
Bristol Conservatories - reverse passing off (CA)
Irvine v Talksport - celebrity endorsement (CA)
James Joyce works - passing off and copyright in new edition (HC)
Penguin/Puffin - look-alike supermarket goods (HC)
One in a Million - passing off/cybersquatting (HC)
BSkyB - passing off/mis-selling/damages (HC)
Barnsley Brewery - passing off time for establishing goodwill (HC)
Neutrogena - amount of confusion needed for passing off (CA)
Liberty X - passing off/pop group name (HC)
Evening Mail - passing off newspapers (HC)
Trade Mark Infringement
Reed/Reed - use of trade marks on the internet (CA)
Samann - infringement of shape marks (HC)
Whirlpool - shape mark (HC)
Wagamama - approach to confusion (HC)
Gola - infringement of footwear logo (HC)
"The Belfry" - infringement in hotel business (HC)
Orange/Easymobile - infringement by colour marks (HC)
L'Oreal v. Bellure - smell-alikes (CA)
Honda - parallel imports and alleged consent (HC)
Roche marks - pharmaceutical parallel imports (CA)
Citigroup - infringement of financial services mark (HC)
HSBC marks - financial services passing off (HC).
FCUK - registration, public policy and infringement (HC and TM Reg)
Scandecor - ownership of goodwill and own name defence (HL)
Asprey - own name defence (HC)
RX Works - use of buried marks (HC)
Comparative advertising and trade libel
Electrolux v. Dyson - comparative advertising and trade libel (HC)
BA v. Ryanair - comparative advertising of airlines (HC)
Vodafone v. Orange - comparative advertising of telecoms (HC)
A wide range of passing off cases involving media undertakings: "Intervention",
"Mythbusters", magazine, newspaper, TV and film titles.
Registration
Wild Child - approach to section 5(4) (App Pers.)
Proctor & Gamble - registrability of container marks (CA)
Bongrain - registrability of shape marks (CA)
e-sure v. Direct Line - approach to assessing confusing similarity (CA)
Elvis Presley TMs - scope of rights of personality (CA)
In addition, chambers has a long experience of acting in cases before the Registrar including significant cases on application procedure. Among them are: Special Effects - whether opposition prevents subsequent claim for invalidation (CA), Altecnic v Reliance (CA) - role of identification of class, Howden and Target Brands (HC).
Trade Marks and Branding Agreements
Members of chambers are regularly instructed in cases involving trade mark licensing or delimitation agreements and have acted in the largest such dispute to reach the UK courts relating to Apple marks as well as disputes relating to forfeiture of marks for breach of a licensing agreement (Kangol). Chambers are also regularly involved in substantial ICC and other confidential arbitrations relating to licensing and similar disputes.
Sports and other merchandising
Chambers has significant experience in dealing with merchandising cases involving rights other than trade marks and members have been engaged in several disputes involving sporting bodies and their rights. Examples include: FA v. Panini (football stickers), FA v. Jules Rimet (rights to logo), FA v. Trebor Bassett (football cards).