The UKIPO recently upheld an opposition by Cambridge University to a trademark application by Chadlington Brewery Limited, for the mark ‘Cambridge Blue’, claiming beers in Class 32. The decision offers a useful summary of the UK’s common law tort of ‘passing off’, says Luke Portnow.
Cambridge University, beer and the UK law of ‘passing off’
It is good practice to monitor trademark registries for potentially infringing trademark applications. The challenge is in developing the right watching strategy to avoid being swamped with results. Trademark Attorney Vanessa Harrow offers some advice.
The how and why of trademark watching
Brand name and trademark selection are often associated with navigating potential infringement and opposition risks. Nevertheless, the consideration of local linguistic and cultural sensitivities is also part of the process, and a recent social media spat reminds us that cultural appropriation is a strong element of this, explains UK Trademark Attorney Luke Portnow.
Trademarks and cultural associations
At the end of 2020, the UK government announced a change to the rules of representation before the UKIPO. New trademark, design and patent applications and contentious actions at the UKIPO now require a 'UK address for service' to be appointed.
Brexit and IP: Understanding the UKIPO address for service rules change
Download our factsheet for an overview of registered and unregistered design rights in the UK and EU following Brexit, and our top tips for brand owners on building an effective design right strategy.
Brexit and design rights: A practical guide
In many jurisdictions, such as the EU and UK, brand owners can file trademark applications without any requirements to file evidence of use of their chosen mark. That is not to say that the ability to provide proof of use is not important.
Use it or lose it: The importance of using your trademarks
In 2018 kitchen cookware company Tefal applied to register its signature 'red dot' as a trademark in the UK. After appealing refusal, the application was recently rejected due to a lack of the fundamental element of distinctiveness, as Trainee Paralegal Megan Taylor explains.
Trademark trouble for Tefal’s red dot
Since the UK left the EU on 31 December 2020, UK-based businesses and citizens are no longer eligible to own or renew .eu domain name registrations, as UK Trademark Attorney Laura Morrish explains.
Brexit and domain names: Leave.EU's EU move
Read answers to some of the most frequently asked questions about Brexit and IP, from cloning of EU trademark and design rights to conversions, renewals, representation, customs applications, geographical indications, SPCs and much more.
Brexit and IP: Your FAQs answered
Counterfeit purchases spike before holidays such as Christmas and during designated sales periods, such as Black Friday, Cyber Monday and the January sales.
Counterfeit spikes and the holiday season
The UK’s departure from the EU at the end of this year will change the territorial requirements for genuine use of EU and UK trademarks, as Vanessa Harrow explains.
Brexit and IP: Preparing for new in-use requirements
On 31 December, the Brexit transition period will come to an end and the UK will officially leave the EU. Vanessa Harrow looks in detail at the implications for trademark and design rights, including ongoing contentious proceedings.
Brexit and IP: Preparing for the end of the transition period