“Trade Mark Law Update: Grey Market Goods”

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Source: Waterfront Solicitors LLP via 31 August 2017

“In good news for brand owners, the UK Supreme Court has decided that the distribution of grey market goods without the consent of the brand owner is a criminal offence.

So called grey market goods, also referred to as parallel imports, are goods which have been manufactured by or with the consent of the brand owner but sold without the brand owner’s consent – in other words, they are authentic products sold by unlicensed resellers. For example, Gucci might manufacture particular styles of watch for sale only in France. If a third party buys these watches and sells them in the UK without Gucci’s consent, the watches will be “grey” goods. They are distinct from counterfeit goods, which are simply fakes.

Brand owners have long been able to enforce their trade mark rights in the civil courts with respect to counterfeit goods and grey market goods. It is also established law that dealing in counterfeit products is a criminal offence.

In the recent case of R v M & Ors [2017] UKSC 58, the Supreme Court was asked to decide whether dealing in grey market goods is also a criminal offence.”

Source article here



Chinese Court rules that decorative patterns similar to Chivas’s trademarks constitute infringement

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Source: Wanhuida Peksung via International Law Office, 4 September 2017

“The Beijing High People’s Court recently granted protection to the three-dimensional (3D) bottle and device marks covering Chivas Holding (IP) Limited’s Chivas Regal label and packaging and held that the accused product, which featured a decoration similar to Chivas’s trademarks, constituted trademark infringement.”

“Brand owners should strengthen their Chinese trademark portfolio by registering not only their name, but also the label, packaging and shape of their bottles as 3D trademarks.”

Source article here


Specialist Intellectual Property Firm Wynne-Jones Opens London Office

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This launch comes as the firm has achieved double digit growth for the third year running.

The continued popularity of entrepreneurial business trends such as crowd-funding has led to a surge in interest in brand and invention protection generally and increased client opportunities for Wynne-Jones IP.

The new London office will also accommodate the UK Head Office of Aipex BV, the pan-European IP law firm that Wynne-Jones IP owns in conjunction with a small number of other prominent European IP firms.

The office will be headed up by Partner Victor Caddy, who has more than twenty years’ experience as a Trade Mark and Design Attorney and Litigator.

Commenting on the opening of the London office, Caddy said: “A year ago, we set out to launch our first London office within four years and have achieved this in less than twelve months.

“This is thanks to the high quality of the team we have managing our business planning, and the dedication and enthusiasm of all our staff.

“Aipex is a ready-made solution to intellectual property challenges of Brexit, and, for Aipex to open a London Head Office at this time is a no-brainer”.

Wynne-Jones website here

Trademarks – “A BrewDog’s Breakfast”

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Source: ENSafrica via

This article is of local interest to me.

“The recent storm in the UK about Scottish craft brewing company BrewDog’s decision to invoke its trade mark rights against much smaller rivals highlights the difficulties and negative repercussions that can arise when it comes to enforcing trade mark rights.

So, when BrewDog started pursuing much smaller companies on trade mark issues it became a major story, with people seeing their actions as hypocritical.

The allegation that it was acting like ”just another multinational corporate machine” stung, and the company made it known that one of the two founding partners would personally take care of the situation.

It went on to blame its lawyers for the whole debacle, claiming they had been overzealous and stating that: ”Although they wear suits and are mostly sensible folks, lawyers can sometimes go a bit crazy and forget the kind of business we are and how we behave. They are sorry for their actions and we have put them on washing up duty for a week.”

Trade mark rights are, of course, enormously important, and they should be enforced. But a thoughtful and nuanced approach is often required.

In the case of a company that has a very particular image (like BrewDog), that approach should include a consideration of the brand’s DNA.”

Source article here


Comic Enterprises remains gleeful as Court of Appeal upholds series marks

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Source: RPC London via the International Law Office  June 13 2016

This article may be of passing interest to those of us that deal with the transfer pricing of IP as it involves the intricacies of a trademark dispute and the registration of “series marks”, plus it’s a David & Goliath story where David seems to have come out on top again.

The UK Court of Appeal recently ruled on an outstanding aspect of the appeal brought by Twentieth Century Fox in the ‘Glee’ trademark dispute. The issue had the potential to have much wider implications for UK trademarks since it relates to the compatibility of Section 41 of the Trademark Act 1994 – which allows the registration of series marks – with EU law.

The Court of Appeal’s confirmation of the legality of Section 41 of the Trademark Act will come as a relief to owners of series marks. Provided that such marks are sufficiently similar to meet the qualifying conditions set out in Section 41 of the Trademark Act, they are individually entitled to the protection afforded to every trademark under EU law; and being able to register and renew such marks as a series provides administrative cohesion and consolidation.

Read the full RPC article here