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Trade Mark, Passing Off and Related Areas


Cases relating to trade marks and passing off have been a major aspect of the work of 8 New Square for over 50 years. The internationally cited leading textbook Kerly on the Law of Trade Marks has been written and updated by members of Chambers for even longer.  In addition to having the expertise relating to the many aspects of trade marks and passing off, we have experience of trade libel and consumer protection law as well as contracts and brand licensing.

Registered Trade Marks

The year 2004 saw the advent of European harmonisation which not only ushered in new trade mark legislation for the UK but also introduced Community registered trade marks. Trade mark disputes have since then ceased to be localised in the UK and legal rulings frequently have to be obtained from the European Court of Justice. At 8 New Square, London, we have extensive experience of handling trade mark cases at all levels – from disputes in the Trade Marks Registry, before The Appointed Person and the High Court (both original and appellate jurisdiction), to appearing in the Court of Appeal, the Supreme Court and the European Court of Justice. For many years one or more of our senior junior barristers has acted as Treasury Counsel in trade mark matters.

In recent years, the amount of trade mark litigation has been enormous and varied with disputes involving the registrability and validity of trade marks, infringement and the proper approach to issues such as confusing similarity or “free-riding” on well known marks as well as the vexed question of parallel imports. See also Advertising and Marketing for more details of our work on counterfeit goods and unauthorised parallel imports.

High-profile cases have included: L’Oreal v Bellure (“smell-alike” perfumes/infringement, ECJ), Budejovicky Budvar v Anheuser-Busch (invalidation, CA and reference to ECJ), Intel Corp v CPM United Kingdom (“free-riding” issues, ECJ), Hotel Cipriani v Cipriani (Grosvenor Street) (infringement/validity/own name defence), Whirlpool v Kenwood (“shape” mark infringement, CA), Esure v Direct Line (“shape” mark opposition, CA), Honda Motors v Neesam (parallel imports), RX Works v Hunter (use of trade mark as domain name), Dyson v Registrar of Trade Marks (registrability/distinctiveness, ECJ) and Special Effects v L’Oreal (validity/issue estoppel, CA). 

Passing off

Members of Chambers have frequently acted in cases involving the common law action for passing off and are experienced in advising on matters such as survey evidence in connection with such cases. Recent cases include: Asprey and Garrard v WRA Guns (own name defence, CA), Neutrogena v Golden (amount of confusion needed for passing off, CA), Scandecor Development v Scandecor Marketing (ownership of goodwill and own name defence, HL), Barnsley Brewery v RBNB (time goodwill had to be established) and Bristol Conservatories v Conservatories Custom Built (reverse passing off, CA). 

Merchandising, Celebrity Endorsements and Sports Rights

Many trade mark and passing off cases concern the media and the use of sports and other celebrity figures in advertising and other forms of endorsement and may involve other rights such as copyright. Examples of our cases include: Irvine v Talksport (celebrity endorsement, CA), Elvis Presley Trade Marks (scope of rights of personality, CA), Football Association v Panini (football stickers); Football Association v Jules Rimet (rights to logo) and Football Association v Trebor Bassett (football cards). 

Comparative Advertising and Trade Libel

Since 2004 it has become permissible under certain circumstances to use a competitor’s trade mark in comparative advertising. Crossing the boundary may involve not only trade mark infringement but also actionable falsehoods about his goods or services. We have experience of such cases and of the requirements of compliance with the Comparative Advertising Directive. Recent cases include: Electrolux v Dyson (vacuum cleaners), British Airways v Ryanair (airlines) and Vodafone v Orange (telecoms).

Trade Mark Licensing and Delimitation Agreements

We have been regularly instructed in cases involving trade mark licensing or delimitation agreements and have acted in the largest such dispute in the UK courts – that between the Beatles’ Apple Corp and the Apple Computer group – as well as disputes relating to forfeiture of marks for breach of a licensing agreement (Kangol). Many of these types of dispute are resolved by arbitration rather than by recourse to the courts and we have had substantial involvement in ICC and similar arbitrations.

Online Advertising and Trade Libel

 See Advertising and Marketing for further details.

Counterfeiting and Unauthorised Parallel Imports

See Advertising and Marketing for further details