NIPC Law

Jane Lambert Patents Court (Mr Recorder Campbell) Bayerische Motoren Werke AG v Premier Alloy Wheels (UK) Ltd and others [2020] EWHC 2094 (Pat) (30 July 2020) This was an action by the motor manufacturer. Bayerische Motoren Werke AG  ("BMW)  for trade mark and registered Community design ("RCD") infringement, passing off and, in the case of one the defendants, Devon Thompson ("Devon"), breach of contract.  There was also a counterclaim for revocation of the RCD.  The main defendant was a company called DGT Wheels and Tyres Ltd ("DGT") the ordinary shares of which were owned by  Jerome Layzell ("JL") who was also its only director.   DGT had a warehouse on an industrial estate in Basildon as well as retail premises elsewhere in that town.   The warehouse was operated by another company called Premier Alloy Wheels (UK) Ltd ("Premier") which was owned and run by JL's stepfather, Devon. Devon was in prison when the trial took...

The IPO in Newport - where the hearing officers are to be found Crown Copyright Licensed by the IPO Jane Lambert An exception to the rule that a trade mark registration cannot be challenged for non-use in the first 5 years after registration is where the application to register the trade mark was made in "bad faith". The legislative mechanism is provided by s.47 (1) of the Trade Marks Act 1994: "The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)." Subsection (6) of s.3 provides: "A trade mark shall not be registered if or to the extent that the application is made in bad faith." But what does "bad faith" mean exactly? In  Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and others   [2009] Bus LR D81, [2008] EWHC 3032 (Ch), [2...

Handsam Ltd . describes itself as "a leading provider of online management systems, consultancy services and advice to both the business and education sectors." Its specialisms include health and safety management, policy writing and advice in all areas, security, fire, training and data protection. It has recently extended its online services to include a school trip planning system . Its systems claim to offer its clients guaranteed compliance, audit trails or chain of evidence collection and peace of mind for leaders, directors and managers. By an application dated the 15 July 2014 Handsam applied to register the following sign as a trade mark for the following goods and services. The specified goods and services were: Class 16: Magazines; Books; Leaflets; Printed guides; Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes. Class 35: Business advice; Business management advisory s...

Partial View of the Internet Author The Opte Project  Source Wikipedia   Creative Commons Licence I have been a member of the World Intellectual Property Organization's domain name dispute resolution panel  since 2003 and I have seen a fair number of complaints  in domain name disputes in that time. I have also settled a few of my own as counsel to trade mark proprietors or business owners who object to the registration of a domain name that is the same as, or similar to, their trade mark or business name. The complaint is an important document as it is usually the only source of evidence and argument that a panellist can rely upon It is rarely prepared well. More often and not I receive screeds of irrelevant matter, bad points, repetition of the same point and disjointed argument all presented in a tone of exaggerated indignation backed up by lengthy annexes all of which have to be read and most of which are next to useless. This short...

On 12 Oct 2009 I attended the 10th anniversary conference of the UDRP at WIPO in Geneva. I did not post anything about it at the time because I was expected that there would be a good summary of the proceedings on the WIPO website. That has happened. If anybody wants to read it he or she will find it here. A conference usually takes place at that time of the year for domain name panellists, but the papers read there are never published. This conference was an exception because it was open to the public. The full programme and all the presentations together with a video address from Francis Gurry, WIPO's Director-General, can be downloaded from "WIPO Conference: 10 Years of the UDRP - What Next?" There were some really lively debates to which I contributed. My main point was on what seems to me to be a dilution of the notion of "bad faith" for the purposes of para. 4 (a) (iii) of the Policy and paragraph 15 (e) of the Rules on reverse domain name hijacking. ...