Last month we noted that Harry and Meghan were bringing trade marks to the attention of the general public, with their SUSSEX ROYAL trade mark making headlines in the mainstream press. We’re pleased to see that trade marks continue to be big news at the moment. So far this month, it’s a comedian who has captured the public imagination in a surprising way in connection with a trade mark dispute. While filming an episode of the Channel 4 show “Joe Lycett’s Got Your Back”, the eponymous comedian became aware that Welsh craft brewery Boss Brewing had been sent a cease and desist letter by the German fashion house Hugo Boss.
Insights: Trade Marks
A recent decision of the General Court demonstrates that the distinctiveness of a trade mark must be assessed in relation to the specific goods or services for which registration is sought. Hästens Sängar AB (which does business simply as “Hastens”) is a Swedish manufacturer specialising in beds, bedlinen, pillows and accessories. Hasten’s products have long featured a blue and white check pattern, which was apparently created in 1978 by the father of the current owner and executive chairman of the company. This check pattern is used on Hastens’ beds, mattresses and bed linen, as well as on clothing and other accessories. Hastens has registered the check pattern in Sweden and has sought to protect it by various means in many other territories. On 21 December 2016 Hastens applied to register a copyright claim in the US in a repeating “two-dimensional graphic pattern consisting of white, dark blue, medium blue and light blue rectangles arranged in a check pattern”.
CJEU answers UK reference arising from the UK High Court litigation between Sky and SkyKick on issues relating to bad faith and validity
In February 2018 we reported on the decision of Mr Justice Arnold in the UK High Court trade mark litigation involving various Sky companies (Sky plc, Sky International AG and Sky UK Limited – ‘Sky’) and SkyKick (SkyKick UK Limited and SkyKick Inc). On 29 January 2020 the Court of Justice of the EU (CJEU) delivered its judgement on the questions referred by the UK court. Details of the CJEU’s judgement and what it means in practice are set out below.
Harry and Meghan have had the spotlight of the world’s media on them in the last few weeks. But for us, it is great to see the level of interest that has been paid to their trade mark applications. It’s not just the IP blogs and trade journals that have been commenting on their efforts to secure legal protection for their brand – the SUSSEX ROYAL trade mark has been making headlines across the mainstream press as well, which is not surprising given the challenges ahead for the Sussexes’ applications.
A recent decision of the General Court demonstrates that a trade mark may be refused if it is considered to be contrary to public policy in one or more of the EU Member States, even though the grounds of refusal might not apply throughout the EU.
“Possibly the least poetic reason to ever make some art” – Banksy and the Gross Domestic Product Store
October 2019 saw the opening (and closing) of graffiti artist Banksy’s pop–up shop, Gross Domestic Product, in Croydon. According to the artist, the main motivation behind the opening of the store was, “possibly the least poetic reason to ever make some art” – a trade mark dispute.
A recent decision of the General Court provides a useful review of the requirements for proving genuine use of a mark, and also shows that use of a mark in a single Member State of the EU may be sufficient to prove genuine use of an EUTM. This has been the subject of some controversy over the years, with many cases demonstrating that even quite substantial use in a single Member State will not necessarily be sufficient where an EUTM is concerned.
A recent decision of the UK IPO in opposition proceedings illustrates the need to be able to supply appropriate and adequate evidence of use if an Opponent relies on an earlier right which has been registered for more than 5 years. It also serves as a reminder that you will not be awarded costs even if you are the winning party, unless you actually ask for them!