The IP Enterprise Court has decided that certain sales of clothing branded with the registered trade mark “VEUVE CLICQUOT” were not covered by the scope of consents from the trade mark owners to the use of the marks.
The sales by the defendants therefore amounted to trade mark infringement and passing off. There were a number of defendants and the court said they were all liable.
The court awarded the trade mark owners £125,000 in damages and granted an injunction to prevent further infringement and passing off.
This case demonstrates the importance of ensuring that your licences to use intellectual property are wide enough for the needs of your business, and the necessity to stay within the remits of those licences.
If you need any advice on such issues, please email Karen.Mason@Novalex.co.uk
The Intellectual Property Enterprise Court has declared invalid the Community trade mark THE UKULELE ORCHESTRA OF GREAT BRITAIN registered in relation to various goods and services including CDs, DVDs and concerts, on the grounds that is descriptive and non-distinctive.
However, the court ruled that the use of the name “The United Kingdom Ukulele Orchestra” by a group of ukulele players would have infringed the trade mark had it been valid (on the grounds of likelihood of confusion and dilution), and that the principal defendant was, in any event, liable in passing off.
This decision may be useful to brand-owners in that it highlights certain types of trade mark that will be vulnerable to attacks on validity where protection is sought across the EU.
The High Court has granted a declaration that Fresh Trading Ltd, which ran the INNOCENT smoothie business, was the owner of copyright in its main brand logo. The facts of the case are particularly interesting.
The design agency from whom Fresh Trading commissioned the logo under a consultancy agreement had gone into liquidation. Its purported interest in rights in the logo and other works produced under the agreement had been purchased by a third party which had, in turn, assigned that interest to a holding company. The holding company subsequently obtained a declaration of invalidity of Fresh Trading’s Community trade mark registration of the logo, based on its own purported ownership of copyright in it.
As neither party to the proceedings had been able to produce a copy of the signed agreement, and there was no mention of any such copy in contemporaneous emails, the judge decided that there had been no effective legal assignment of the copyright.
However, as the agreement provided that copyright ownership would pass on approval of any designs by Fresh Trading and such approval had undoubtedly occurred, he found that there had been an equitable assignment.
The fact that the design agency had not received the remuneration (in the form of shares) provided for in the agreement did not negate the assignment. The judge added that, even if he had not found an express assignment on the facts, he would have found that there was an implied assignment of the copyright, as this was the only arrangement that made commercial sense. Furthermore, even if Fresh Trading had not owned the copyright, the holding company would have been estopped from enforcing its copyright at such a late stage after Fresh Trading had built up a substantial business based on the logo.
The Court of Appeal has upheld the High Court decision that Topshop’s sale of t-shirts bearing a photograph of well-known pop-star Rihanna, without her approval, amounted to passing off.
The Court of Appeal’s judgement shows that it is possible for a celebrity to bring a passing off action to prevent the unauthorised use of their image.
However, the outcome of this case was very much dependent on its facts.**
The court confirmed that the use of an image of a person on a garment was not, of itself, passing off and that under English law a celebrity does not have a right to control the use of their image generally.
**If you need more information in connection with your own business please contact IPR specialist lawyer, Karen Mason