The firm's highly regarded dispute resolution team often represents clients before local courts
in trade mark infringement disputes.
At Gorodissky & Partners, notable work included representing Russian confectioner Chocolate Toy in a copyright infringement dispute; defending Decor Rus against an infringement action brought by a competitor; and representing Perfetti Van Melle
in a trade mark infringement case filed by New Technologies regarding its «FOOTBALL» mark.
Sergey Lovtsov heads the department, which recently represented International Masis Tabak
in a trade mark infringement case filed by Philip Morris Brands.
Not exact matches
It offers an oppor - tunity to study systematically the interaction of several copyright issues: including the rights (or lack thereof) of exclusive licensees as plaintiffs
in parallel import situations, the distinction between exclusive licensees and assignees, the nature of works of authorship, the characteristics of copy - right
infringement, the status of copyrightable works when used as
trade -
marked logos, the limits (if any) of concurrent copyright and
trade -
mark protection, and even the distinction between
trade -
mark, copyright, and patent as autonomous yet related legal regimes.
Treasury Wine has launched legal action against Rush Rich for
trade mark infringements exploiting the company's Penfolds brand, including the unauthorised use of Treasury's BEN FU trademark, which is the lettering and characters used
in China for Penfolds.
25.6.3
in any matter that involves any of the foregoing claims, for resolution or decision of any question of fact or law required to resolve such claim, including, but not limited to, questions required to decide or rule with respect to the
infringement, misappropriation, validity, enforceability or ownership of any copyright, patent,
trade secret, trademark, service
mark or
trade dress or with respect to any remedy or relief at law or
in equity for any such
infringement or misappropriation or for any violation of such Sections 1201 and / or 1202.
«We have seen a surge
in high profile
trade mark infringement cases involving UK brewers, notably the estate of Elvis Presley's successful claim against BrewDog over the Scottish brewer's «Elvis Juice» beer and
in turn BrewDog's successful claim against the owner of the «Draft Punk» pub
in Leeds for breaching the
trade mark of BrewDog's flagship beer «Punk IPA».
Assisting a global distributor of chemicals and raw materials
in respect of allegations of
trade mark infringement as a result of Google AdWord advertising.
An action
in trademark
infringement can be brought pursuant to sections 19 and 20 of the
Trade -
marks Act.
A failure to do so can result
in claims for
trade mark infringement and / or passing off
in the UK.
More recently, Under Armour successfully sued sportswear manufacturer, Uncle Martian, for
trade mark infringement and New Balance won a damages award of US$ 1.5 million
in an
infringement action
in which the defendants were selling trainers which infringed its»N' logo.
Bainbridge has also brought a
trade mark infringement and passing off claim against Navigate Travel on behalf of Sail Week Croatia, which alleges that the defendant used the brand Sail Week
in a sector that competed with its brand.
At first instance, the High Court held -LRB-[2006] EWCA Civ 1656, [2006] All ER (D) 49 (Dec)-RRB- that the use of the O2 bubble
marks by 3 was a breach of O2's rights under Art 5 of the Trade Marks Directive 89/104 / EEC (TMD), but said that the advertisement complied with the terms of the Comparative Advertising Directive 97 / 55 / EC (CAD) and so Art 6 (1) of the TMD, which provides a defence for «indications concerning the kind, quality and quantity, intended purpose, value, geographical origin, the time of production of goods of rendering of the service or other characteristics of the goods or services... provided [they are used] in accordance with honest practices in industrial or commercial matters» which meant there was no infringe
marks by 3 was a breach of O2's rights under Art 5 of the
Trade Marks Directive 89/104 / EEC (TMD), but said that the advertisement complied with the terms of the Comparative Advertising Directive 97 / 55 / EC (CAD) and so Art 6 (1) of the TMD, which provides a defence for «indications concerning the kind, quality and quantity, intended purpose, value, geographical origin, the time of production of goods of rendering of the service or other characteristics of the goods or services... provided [they are used] in accordance with honest practices in industrial or commercial matters» which meant there was no infringe
Marks Directive 89/104 / EEC (TMD), but said that the advertisement complied with the terms of the Comparative Advertising Directive 97 / 55 / EC (CAD) and so Art 6 (1) of the TMD, which provides a defence for «indications concerning the kind, quality and quantity, intended purpose, value, geographical origin, the time of production of goods of rendering of the service or other characteristics of the goods or services... provided [they are used]
in accordance with honest practices
in industrial or commercial matters» which meant there was no
infringement.
In recent years, Jill has increasingly worked on copyright and
trade mark matters relating to new media products and Internet services, including the drafting of website agreements and other Internet related contracts, the selection and protection of domain names, advising on the
infringement of copyrights and
trade marks on the internet and privacy law concerns.
If the opinion of Advocate General Mengozzi is adopted by the ECJ it will be a step backward for brand protection as
trade mark owners will, effectively, be unable to instigate legal proceedings for
trade mark infringement in relation to comparative advertisements regardless of whether the rival advertiser uses the same or similar image (no matter how distorted) of the registered
trade mark.
Using a
trade mark to describe the product («Written
in JavaScript», «Seeking JavaScript developer») is not an
infringement and the
trade mark owner is under no obligation to, indeed, can not stop this.
38 It follows from the foregoing that an action relating to alleged
infringement of a
trade mark registered
in a Member State through the use, by an advertiser, of a keyword identical to that
trade mark on a search engine website operating under a country - specific top - level domain of another Member State may also be brought before the courts of the Member State of the place of establishment of the advertiser.
In the US, use of the ® symbol is required to recover damages for registered
trade -
mark infringement unless the defendant was duly notified of the
infringement, and continued after the notice.
34
In the case of an alleged infringement of a national trade mark registered in a Member State because of the display, on the search engine website, of an advertisement using a keyword identical to that trade mark, it is the activation by the advertiser of the technical process displaying, according to pre-defined parameters, the advertisement which it created for its own commercial communications which should be considered to be the event giving rise to an alleged infringement, and not the display of the advertisement itsel
In the case of an alleged
infringement of a national
trade mark registered
in a Member State because of the display, on the search engine website, of an advertisement using a keyword identical to that trade mark, it is the activation by the advertiser of the technical process displaying, according to pre-defined parameters, the advertisement which it created for its own commercial communications which should be considered to be the event giving rise to an alleged infringement, and not the display of the advertisement itsel
in a Member State because of the display, on the search engine website, of an advertisement using a keyword identical to that
trade mark, it is the activation by the advertiser of the technical process displaying, according to pre-defined parameters, the advertisement which it created for its own commercial communications which should be considered to be the event giving rise to an alleged
infringement, and not the display of the advertisement itself.
Policing the Harrods brand around the globe, both
in terms of internet and high street
infringements, including copyright, counterfeiting issues and
trade mark infringement.
Acting for Discovery Communications
in its successful defence of UK High Court proceedings for
trade mark infringement and passing off brought by broadcasters of the History channel, following Discovery's launch of a television channel called «Discovery History».
In the event of a challenge or dispute relating to IP, we also advise on IP
infringement (including registered
trade marks, passing off, copyright, patents, design rights, database rights, data protection and confidential information); domain name disputes; IP ownership disputes; opposition, invalidity and revocation proceedings.
Providing clearance advice to Starbucks
in relation to proposed new brands as well as advising on
trade mark infringement, passing off and copyright issues.
Mr. Whitney's representative work includes a series of successful outcomes pursuing false advertising claims against product review websites, a landmark victory clarifying copyright fair use and parody on behalf of several well - known musicians; a defense win dismissing copyright
infringement claims brought by a putative class of attorneys against the leading legal research websites; a favorable outcome for a high - end beauty products company
in a trademark and
trade dress action against a manufacturer of knock - off products; a district and appellate court decision dismissing all claims by a proposed class against an international bank for alleged violations of, among other things, the Federal False
Marking Act, RICO and the CAN - SPAM Act; and counseling prominent art museums and galleries on domestic and international copyright issues.
If there is a risk that the use of «Pan Galactic Gargle Blaster» can cause confusion
in the consumer that the product is
in some way related to, produced by or endorsed by the owners of the IP (the owners)
in The Hitchhiker's Guide to the Galaxy when it isn't then this is a
trade mark infringement.
Peter has worked on a number of complex contentious matters including actions for
trade mark infringement and passing off
in the Intellectual Property Enterprise Court including against supermarkets, sellers on online auction sites and against parallel importers of vehicle accessories.
I specialise
in reputation management claims (including defamation, harassment and privacy claims) and intellectual property disputes (including
trade mark, copyright and design right
infringement claims, breach of confidence claims and domain name disputes).
Proceedings
in Spain for alleged
infringement of the same EU
trade mark have been stayed as the
mark is the subject of cancellation proceedings at the EUIPO.
The Court of Appeal decided that a reference to the CJEU was necessary as, although the decision of the Bundesgerichtshof was persuasive (as it is the highest civil court
in Germany), the meaning of «the Member State where the act of
infringement has been committed»
in Art. 97 (5) / 125 (5) of the EU
Trade Mark Regulation had not been decided by the CJEU, and it considered that the decision not to allocate jurisdiction in circumstances where there was activity in Country A which led to infringement of the EU trade mark in Country B, would give rise to there being no jurisdiction at all for such infringe
Trade Mark Regulation had not been decided by the CJEU, and it considered that the decision not to allocate jurisdiction in circumstances where there was activity in Country A which led to infringement of the EU trade mark in Country B, would give rise to there being no jurisdiction at all for such infringem
Mark Regulation had not been decided by the CJEU, and it considered that the decision not to allocate jurisdiction
in circumstances where there was activity
in Country A which led to
infringement of the EU
trade mark in Country B, would give rise to there being no jurisdiction at all for such infringe
trade mark in Country B, would give rise to there being no jurisdiction at all for such infringem
mark in Country B, would give rise to there being no jurisdiction at all for such
infringement.
Under Art. 125 (5) of the EU
Trade Mark Regulation (formerly Art. 97 (5)-RRB- jurisdiction is restricted to «the Member State
in which the act of
infringement has been committed or threatened».
Management and Enforcement (protecting copyright and
trade -
marks, enforcing intellectual property rights, preparing and drafting applications for copyright and trademark registrations, copyright and trademark searches and legal opinions, litigating, overseeing and managing copyright intellectual property
infringement matters
in Federal Court)
The London Taxi Company lost a case for
trade mark infringement where the defendants succeeded
in their allegations for invalidly registered
trade marks
His work
in the areas of commercial and corporate transactions and disputes, parallel
trade, anti-counterfeiting,
trade mark and patent opinions and IP
infringement particularly spans international borders.
He has had a number of notable successes
in bringing and defending
trade mark, copyright, database and patent
infringements.
Filed under: copyright
infringement, registration of
trade marks in Russia, trademark watch service 2 Comments»
Assisting Virgin's
in house team with their IP needs, including advising on issues of
trade mark infringement, passing off, company name disputes and domain disputes, as well as providing non-contentious advice on matters such as licensing arrangements.
And when our clients need us to, we can provide a full legal service on all cases of IP
infringement, bringing extensive experience not just
in the relevant courts, but also
in arbitrations and
trade mark registry proceedings.
Acted for The Co-operative Group Ltd
in relation to allegations of
trade mark infringement and passing off
in relation to a third party's use of the
mark «coop»
We advise on its IP portfolio and,
in particular,
trade mark branding issues (prosecution, oppositions,
infringements) and parallel imports.
We have also acted
in multiple pre-action litigation issues and
in high profile Court of Appeal
trade mark infringement proceedings.
We file and manage Starbucks» entire UK
trade mark portfolio, provide UK brand clearance advice, and advise on
trade mark opposition,
infringement / passing off and copyright issues arising
in the UK, including unauthorised use of the company name and logo.
Practice leader Michael Soo and Wendy Lee, promoted to partner
in 2017, are advising a Malaysian automotive supplier on its
trade mark infringement suit.
An advantage gained by a «consequential association» with a well - known
mark can be sufficient to amount to
trade mark infringement, according to an advocate general's opinion
in a case involving L'Oreal products.
Even without any economic harm to the
trade mark owner, where the only purpose of the use of the lookalike is to exploit the reputation of the market leader
in order to benefit and promote the sale of the lookalike that will confer an unfair advantage and amount to
trade mark infringement.»
In the field of intellectual property both
trade mark and copyright
infringement, and the common law tort of passing off... may all amount to crimes.
Therefore the ECJ concluded that a
trade mark owner can take
infringement action against a licensee who breaches a condition
in the licence agreement which falls within Art 8 (2).
The leading authority
in respect of passing off and
trade mark infringement in relation to domain names is British Telecommunications plc and another v One
in a Million Ltd and others [1998] 4 All ER 476, [1999] 1 WLR 903.
Dior sued SIL's liquidator and Copad for
trade mark infringement in the French courts.
Key sectors of focus include electronics, media, life sciences and food and beverages; the team recently represented McDonald's
in several
trade mark and copyright
infringement disputes against Russian third parties, and is currently advising Lego on
trade mark and copyright enforcement proceedings across the Commonwealth of Independent States (CIS).
In this edition we discuss trade mark infringement, litigation privilege, warranty claims, fraud in invoice financing, employee fraud and gagging clause
In this edition we discuss
trade mark infringement, litigation privilege, warranty claims, fraud
in invoice financing, employee fraud and gagging clause
in invoice financing, employee fraud and gagging clauses.