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Intellectual Property Newsletter – Autumn 2014

We are pleased to present the Autumn IP update from the Clarke Willmott IP team.

As always, this newsletter will provide a brief overview of some of the key developments in the IP field over the last quarter. We hope that you enjoy it!

If there are any issues you wish to discuss further, please contact Roy Crozier or Susan Hall.

Trade Marks

Further Visibility on “genuine use” of a trade mark

Brand owners often register several component elements of their logo mark as separate registered trade marks in order to strengthen their ability to take action against infringers which use such elements in their own brands. Such component elements may include the word mark in a logo, the background to a logo or other distinctive features of the logo. For instance, Specsavers have separate registered trade marks for: the word Specsavers; the green overlapping ovals; and the word Specsavers together with the green overlapping ovals.

However, brand owners rarely use such component elements individually and so a question arises as to whether or not use of the whole logo (incorporating all other elements which have been registered as separate trade marks) constitutes genuine use of a trade mark for a component element of the whole logo.

The reason this is an important issue for brand owners is that a trade mark can be revoked for non-use if it has not been used in the form registered or in another form that does not alter its distinctive character in any five year period following registration of the trade mark. Therefore, if use of the whole logo (incorporating component elements which have also been registered) does not constitute genuine use of a trade mark for a component element then the trade mark registration for the component elements can be revoked for non-use. In such circumstances, it will not be capable of being enforced against third parties.

The issue arose in the case of Specsavers and others v Asda Stores Ltd.

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Quarterly report on trade mark decisions

Here we provide a brief report on some interesting recent UK IPO and OHIM decisions on whether or not there is a likelihood of confusion between certain trade marks. It highlights the scope of trade mark rights and the importance of taking appropriate advice before filing and using a new trade mark.

One of the grounds which a trade mark proprietor can rely on to oppose a third party’s trade mark application is to show that the third party sign is identical or similar to the trade mark and is applied for in relation to identical or similar goods or services to those covered by the trade mark, such that there is a likelihood of confusion between the trade mark and sign.

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A step too far? Damaging restrictions in a settlement agreement

When entering into a settlement agreement, an alleged infringer may be asked to agree not to challenge the validity of the intellectual property right in question in the future.

Care should be taken when agreeing to such a restriction, as the alleged infringer may need to attack the validity of the right in the future, for example, in a counterclaim to infringement proceedings in relation to another act (not covered by the settlement agreement).

This article highlights the dangers of agreeing to such restrictions.

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Important Changes in UK Design and Patent law

The Intellectual Property Act 2014 (the “Act”) has introduced changes to design and patent law in the UK intended to implement recommendations arising out of the Hargreaves Review of Intellectual Property in 2011. The intention behind the new legislation is to support innovation, to help business, particularly SMEs, understand, exploit and protect IP rights and to reduce costly litigation. To this end, the changes are meant to be of practical use, and should make it easier to identify and enforce design rights.

D day – 1 October 2014

On 1 October 2014 this new legislation relating to designs and patents came into effect. Other changes included in the Act, such as the creation of an impartial, non-binding opinion service and extending the Hague international design registration system, are not expected to come into force until 2015.

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Beware of blanket eBay take-downs

Most rights owners monitor online trading platforms like eBay and, where appropriate, file take-down notices to remove infringing listings. Often it is difficult for right owners to determine if a product is infringing their intellectual property rights without conducting a test purchase (which can take time and incur further expense). In such circumstances, some right owners will issue take-down notices based on other evidence such as the low price, photographs or the description of the goods.

If the rights owner gets it wrong and the goods are not infringing, it may expose itself to a claim for unjustified threats of infringement. This can result in a Court ordering a declaration that the threat was unjustified, an injunction preventing further threats of the same nature, and an order for damages for any losses caused by the threat and costs.

The Court recently considered the implications of sending a take-down notice and whether or not it can constitute a “threat”.

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