INTELLECTUAL PROPERTY • SCIENCE AND TECHNOLOGY
MEDIA AND ENTERTAINMENT • COMPETITION
ADVERTISING AND MARKETING
8 New Square regularly advises clients on all aspects of the law relating to advertising, marketing and branding.
Chambers has always been at the forefront of litigation in this area, having acted in the leading passing off cases in the House of Lords (Jif Lemon) and the Court of Appeal (Parma Ham) as well as the majority of the recent references to the European Court of Justice on the Trade Marks Directive and Regulation.
Cases concerning branding and marketing in the last two years have involved a wide range of industries: perfumes (L'Oreal v. Belllure, Incos v. L'Oreal), TV programmes ("Pop Idol", "Intervention"), newspapers ("Evening Mail"), magazines ("Bargain Pages"), CDs (Reading Festival, Universal v. Sony BMG, Guardian Media Groupv. Tokyo Project), gaming products (Electrocoin), mobile networks (Orange), calling cards (Alma Communications), mobile phone supplies (Phones4U), drinks (Budweiser/BUD litigation and Red Bull), construction (McAlpine), financial services (Citigroup) and funeral services (Adlem) as well as a wide range of consumer and industrial products.
Endorsement and merchandising
Chambers regularly handles work concerning merchandising (e.g. Elvis Presley) and about the termination of trade mark licensing agreements including, recently, Kangol and Lonsdale. Chambers also undertakes work concerning character merchandising and has also been involved in the leading modern celebrity endorsement case, Irvine v. Talksport.
On-line marketing and e-commerce
Members of 8 New Square acted in Euromarket v. Peters and appeared in the recent Sony case on goods sold into the EEA from overseas. Chambers was also involved in the BT v. One in a Million case concerning rights in domain names and regularly acts in this kind of work in the UK courts and in the WIPO system.
Comparative advertising and malicious falsehood
8 New Square has also been involved in some of the leading comparative advertising disputes including, BA v. Ryanair, O2 v. Hutchinson ("bubbles") and IPC v. MGN. Work also includes cases concerning disputes between those producing marketing materials and their clients over intellectual property rights in the campaign materials such as Griggs in the Court of Appeal. Members of chambers regularly act in related malicious falsehood and defamation cases involving rivals making claims about each others' products.
Counterfeiting and unauthorised parallel imports
8 New Square has acted in a wide range of cases concerning counterfeiting, often involving creative litigation tactics to track copyright and trade mark infringing products. Clients instructing members of chambers are among the world's largest brands and include Microsoft, Coca-Cola and Taylor Made Golf.
As to parallel imports, chambers was involved in the leading Levis/Davidoff case in the European Court of Justice and many of the cases applying the principles since then. Members of chambers have acted for some of the largest brand owners and vendors in this area including Microsoft, Honda, Roche, Sony and Tesco.
See also trade marks and passing off for further details.