NIPC Law

Two interesting points arose in  British Shorinji Kempo Federation v Shorinji Kempo Unity   [2014] EWHC 285 (Ch) (17 Feb 2014) in which my colleague Thomas Dillon  appeared for the  British Shorinji Kempo Foundation ("BSKF")  on a pro bono basis. The first was what constitutes genuine use for the purpose of s.6A of the Trade Marks Act 1994 . The second was the methodology by which the judge determined whether the mark that had BSKF sought to register was similar to one that had previously been registered by Shorinji Kempo Unity ("SKU") and if so whether there was any likelihood of confusion for the purposes of s.5 (2) of the Act. The Parties SKU is an entity whose function is to hold the intellectual property rights of the World Shorinji Kempo Organisation ("WSKO") . WKSO had many branches or affiliated organizations around the world. According to WSKO's website, Shorinji Kempo is a Japanese martial art founded in the town of Tadotsu in 1947. The B...

Amsterdam   Source Wikipedia According to Wikipedia  Red Bull is the most popular energy drink in the world, with 5.2 billion cans sold in 2012. Its manufacturer, Red Bull GmbH , has registered the RED BULL mark has registered those words and their accompanying logo as word and device marks in trade mark registries around the world including the Benelux Office for Intellectual Property ( "BOIP" ) . The company registered that sign with BOIP for non-alcoholic drinks in class 32 with effect from 11 July 1983. After decades of massive sales and extensive advertising nobody could argue that that mark has a reputation within the meaning of art 5 (2) of the Trade Marks Directive (Directive 2008/95/EC of the European Parliament and the Council of 22 October 2008   to approximate the laws of the Member States relating to trade marks OJ 8.11.2008 p 299/25).  S.10 (3) of our Trade Marks Act 1994   implements that provision. There is in the Net...

in "Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection"   27 July 2013 I mentioned a possible claim by the US company Eli Lilly & Co. against the Canadian government under Chapter II of the agreement between the US, Canadian and Mexican governments establishing the North America Free Trade Area ( "NAFTA" ) for compensation for the invalidation of its Canadian patents by the courts of Canada. Eli Lilly claims that the invalidation of those patents is tantamount to expropriation which is contrary to art 1110 (1) of NAFTA. Lawyers acting for Eli Lilly have now filed a notice of arbitration  demanding that their claim be referred to arbitration under art 3 of the UNCITRAL  Arbitration Rules  before a tribunal consisting of three arbitrators, one appointed by each of the parties and the third presiding member to be appointed by agreement of the appoint...

The "Denver" claimed as a work of artistic craftsmanship  in Hensher v Restawhile   [1976] AC 64 Source  Centre for Intellectual Property and Information Law, Virtual Museum Despite the submissions of Sir Robin Jacob , leading academic lawyers, the IP Federation , the IP Bar Association  and the other intellectual property professions HM government seems determined to force through criminal sanctions for registered design and registered Community design infringement. Why HMG has set and indeed held to this course in the face of almost unanimous opposition from those who know most about intellectual property is a mystery but there it is. Governments do silly things sometimes of which the Dangerous Dogs Act is but one example. What happens next I have done all that I can as a citizen to persuade HMG to think again by   explaining in this blog why this proposal is a very bad idea ,  lobbying my MP  and even  remons...

As everyone knows, copyright restricts the acts listed in s.16 (1) of the Copyright, Designs and Patents Act 1988  ( "CDPA" ) in relation to a work in which copyright subsists ( "a copyright work" ). Those acts include copying, issuing copies, renting, lending or communicating the work to the public etc. Anyone who does any of those acts without the owner's licence  infringes that copyright. He or she may be sued or in an extreme case prosecuted. Clearly, if you want to broadcast, perform or otherwise make use of a copyright work it is a good idea to get a licence. As all those lovely artists, choreographers, composers. dramatists, novelists, poets, song writers and other authors need to live it is only right that they get paid a reasonable fee for their trouble. But therein lies the rub because what may seem reasonable to you and me as consumers may not feel reasonable to an artist in his garret or, more importantly, his agent in his BMW. As I argued...

Every year at the end of October the World Intellectual Property Organization ( "WIPO" ) , the UN agency for intellectual property holds a one day conference at its head office in Geneva for its domain name dispute resolution panellists . I have been a member of that panel for the last 10 years and I have attended every panellists' meeting since 2005. I have got to know quite a few of my fellow panellists over the years and several of them have become good friends. This year the conference took place on the 28 Oct. In previous years the focus had been on practical issues arising under the Uniform Domain Name Dispute Resolution Policy ( "UDRP" )  such as how to deal with privacy services and what constitutes evidence of registration and use in bad faith. There was some of that this year.   Andrew Lothian  of Demys Ltd  presented an analysis of the decisions where the domain name comprised the trade marks of more than one entity such as Dr. Ing. h...

S.1 (1) of the Trade Marks Act 1994 , which implements art 2 of Directive 2008/95/EC of the European Parliament and the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, defines a trade mark as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."  If you are new to trade mark law or wish to be refreshed on the basics take a decko at "Introduction to Trade Marks"  in our IP South East blog of 9 Oct 2013. As I mentioned in "The Colour Purple - Société Des Produits Nestlé S.A. v Cadbury UK Ltd ."  4 Oct 2013 the above words have been considered by the Court of Justice of the European Union in  Case C-104/01, Libertel Groep BV and Benelux-Merkenbureau [2004] Ch 83, [2004] 2 WLR 1081, [2003] EUECJ C-104/01, Case C-273/00 Sieckmann v. Deutsche Patent –und Markenamnt [2002] E...

"The Color Purple" is a novel by Alice Walker  which won its author the Pulitzer Prize for Fiction  in 1983. if you have not read the book here is Wikipedia's summary of the plot .  It is a great book with a great story. The colour purple (or rather pantone 2685C) is only slightly less gripping. It is the subject of a tussle between two of the world's largest confectionery companies the latest stage of which has just ended in the Court of Appeal (   Société Des Produits Nestlé S.A. v Cadbury UK Ltd .  [2013] EWCA Civ 1174 (4 Oct 2013)). It started on 15 Oct 2004 when Cadbury Limited ( “Cadbury” ) applied to register "the colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods" as a trade mark for the following goods: " Class 30 : Chocolate in bar and tablet form, chocolate confect...