NIPC Law

Just before the Scottish referendum I wrote a couple of articles on the SNP's proposals for intellectual property in a separate Scotland ( What would an independent Scottish government do about Intellectual Property?   10 Sept 2014 and  More on Scotland and Intellectual Property   13 Sept 2014). Today I shall attempt a similar exercise in respect of Brexit. What would not change Were we to withdraw from the European Union we would probably remain a member of the World Trade Organization  and bound by TRIPS ( Agreement on Trade-Related Aspects of Intellectual Property Rights) . Art 2 (1) of TRIPS requires WTO members to comply with Articles 1 through 12, and Article 19, of the Paris Convention . There is no reason why we should not remain party to the Berne , Rome  and other multilateral agreements to which we are party including the European Patent Convention . But what would However, we would miss out on the unitary patent and the Unifie...

Supreme Court of the United Kingdom P hoto Pam Fray Licensed under Creative Commons Attribution-Share Alike 2.0 Generic licence. Source Wikipedia In  Reckitt & Colman Products Ltd v Borden Inc   [1990] 1 WLR 491, [1990] RPC 341, [1990] WLR 491, [1990] 1 All ER 873, [1990] UKHL 12, Lord Oliver said: "The law of passing off can be summarised in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are...

In  Community Trade Marks: Specsavers v ASDA   7 Feb 2012  NIPC Law I analysed the litigation that had taken place between two well known retailers in which the Court of Appeal considered how far an aggressive marketing campaign can go without infringing trade mark law. As I said in my case note Specsavers International Healthcare Ltd  and others ( " Specsavers" ) had brought an action for trade mark infringement and passing off against the supermarket chain Asda Stores Ltd. ( "ASDA" ) for using the marketing materials that I identified in my note and Asda counterclaimed for revocation of Community trade mark 1358589 depicted above ( "the wordless mark" ) for non-use. History of the Litigation The action and counterclaim came on for trial before Mr Justice Mann who found that the strapline "Be a real spec saver at ASDA" infringed the word mark under art 9 (1) (c) of the Community Trade Mark Regulation (Council Regulation (EC) No 207/2009 ...

In Thomas Pink Limited v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch) (31 July 2014) Mr Justice Birss had to resolve a dispute between two well known retailers. The claimant was Thomas Pink  which had started life as a specialist shirt maker in Jeremyn Street. It is now part of the LVMH Group  the interests of which range from champagne to fashion. The defendant was  Victoria's Secret UK  which is best known for its bras and knickers  particularly in the US where it began. Both retailers are diversifying their businesses.  Thomas Pink's website has a section for "Women" after "New Collection", "Men", "Shirts", "Ties" and "Accessories" while Victoria's Secret is moving into women's clothing generally. The Dispute The battle arose over the right to use the word "Pink" as a brand. According to Wikipedia  the claimant was named after Thomas Pink, an 18th-century tailor, who made the h...