NIPC Law

Author  Loadmaster (David R. Tribble) Licence  CC BY-SA 4.0 , Source Wikimedia Jane Lambert Chancery Division (Mr Justice Fanccourt) Sazerac Brands, LLC and others v Liverpool Gin Distillery Ltd and others [2020] EWHC 2424 (Ch) (10 Sept 2020) This was an action for the trade mark infringement and invalidation of the defendants registered mark and a counterclaim by the defendant for revocation of the claimant's marks for non-use. The action and counterclaim came on for trial before Mr Justice Fancourt on 14, 15 and 17 July 3020. The counterclaim was compromised in the course of the trial by the claimant's agreeing to the revocation of both their trade marks except for whiskey and bourbon whiskey.  There was also a claim for passing off but that was abandoned before the end of the trial.  In his judgment in  Sazerac Brands, LLC and others v Liverpool Gin Distillery Ltd and other s [2020] EWHC 2424 (Ch) which he delivered on 10 Sept 2020, Mr Justice Fancourt h...

The Rival Logos: Enterprise's to the left and Europcar's to the right In Enterprise Holdings, Inc v Europcar Group UK Ltd and another [2015] EWHC 17 (Ch) (13 Jan 2015) Enterprise Holdings Inc . ( "Enterprise" ) sued Europcar UK Ltd  and its French holding company ( "Europcar" ) for trade mark infringement and passing off.  Enterprise trades under the logo to the left while Europcar had begun to use the sign on the right. The litigation in England iwa part of a global struggle between the two car hire giants over those logos.  According to Mr Justice Arnold there are some 98 trade mark disputes between those parties over Europcar's new logo around the world.  The Registration Enterprise alleged infringement of 3 of its UK registered trade Marks and 7 of its Community ones. At trial Enterprise focused its case on CTM  937,4497 ( "the CTM" ) which was registered as of 14 Sept 2010 in respect of  "vehicle rental and leasing ...

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...

Specsavers  (Specsavers International Healthcare Ltd., Specsavers BV, Specsavers Optical Group Ltd and Specsavers Optical Superstores Ltd) are a group of companies which offer glasses, contact lenses and the like at competitive prices. Specsavers' Trade Marks Specsavers have registered the following Community trade marks: (1) 1321298 and 3418928 The word mark SPECSAVERS ( "the word mark" ); (2) 449256 and 1321348 ( "the shaded logo mark" ); (3) 5608385 ( "the unshaded logo mark" ); and (4) 1358589 ( "the wordless logo mark" ) The Claim Specsavers brought an action for trade mark infringement and passing off against the supermarket chain ASDA  (Asda Stores Ltd.) for the use of the following marketing materials: (1) the ASDA Opticians' logo as used in posters: (2) the following bill board: and (3) this leaflet: ASDA's Counterclaims ...

In 32Red Plc v WHG (International) Ltd and Others [2012] EWCA Civ 19 (24 Jan 2012) the Court of Appeal allowed a cross appeal by the claimant, 32Red Ltd. ("Red") against Mr. Justice Henderson's finding at first instance [2011] EWHC 62 (Ch) (21 Jan 2011) [2011] ETMR 21that Red's number mark had not been infringed but dismissed the appeal by the defendants, the William Hill group of companies ("WHG"), against his finding that all of Red's marks were valid and all but one of them had been infringed. The facts of this case are complex but I set out the background and summarized the legal issues in my post Trade Marks: 32Red v WHG of 23 Jan 2011. The Grounds of Appeal Lord Justice Etherton described WHG's attack on the trial judge's judgment as "a full-scale, wide-ranging attack on the Judge's analysis and conclusions on virtually every aspect of his judgment" alleging not just errors of principle but also failure by the judge to a...

This was Mr Justice Henderson's judgment in the trial of an action between two Gibraltar based online gambling concerns. The claimant in 32Red Plc v WHG (International) Ltd and others [2011] EWHC 62 (Ch) (21 Jan 2011) had sued for infringement of Community trade mark 2814424 and British trade mark 2509861 . The defendants had counterclaimed for invalidation of those registrations. The signs to which the claimants objected were the words "32vegas.com", "32vegas" and "32v" and three devices incorporating the numeral 32. In a rather long judgment, His Lordship identified the following issues and considered them in the following order: whether the CTM been infringed under art 9 (1) (b) of the CTM regulation? whether it had been infringed under art 9 (1) (c); whether the CTM registration was invalid; whether the British trade mark registration was invalid; and whether the British mark had been infringed. Mr. Justice Henderson found that the ...