The UK leads in Global IP index

  According to the US Chamber of Commerce’s 2021 Global IP Index, the UK ranked highest for trademark protection, with the UK coming second to the US for all IP, giving recognition to the UK’s strong national IP environment. The first place for trademarks was the 4th such annual showing year in a row.

UK government launches consultation on exhaustion of IP rights and parallel trade

  The UKIPO has taken Brexit in its stride, cloning several million EU trademark rights into UK rights. But more remains to be done. Since 1st January 2021 , the UK has been unilaterally participating in the EEA’s regional exhaustion regime. So  IP rights in goods first placed on the market in the European Economic Area (EEA) are considered exhausted in the UK. Allowing the goods to be imported into the UK without the right holders permission. Though the reverse does not apply due to the EES’s exhaustion regime. There are a number of possible models, each offering advantages and disadvantages. But UK trademark rights, whether through a direct filing or inherited from EU rights, will continue to underpin the chosen system.

Colin the Caterpillar trademark dispute

  It’s gloves off between M&S and Aldi. With the venerable UK retailer claiming infriongement of their “Colin the Caterpillar” trademark by the discounter’s Cuthbert the Caterpillar cake. Leading them to file an intellectual property claim with the High Court this week. M&S claims that the similarity in name and Goods – both are cakes – leads consumers to believe they are of the same standard and “rides on the coat-tails” of M&S’s reputation. And can claim 30 years use of “Colin the Caterpillar” as well as three registered trademarks. M&S may have been the first retailer to sell a caterpillar cake, but many supermarkets now have similar products. These include Waitrose’s Cecil, Sainsbury’s Wiggles, Tesco’s Curly, and Asda’s Clyde the Caterpillar.

EU trademark – 25 years old!

  The first EU trademark was registered on 1st April 1996 so 25 years ago this month. Up until then only national registrations (Beneluxe aside) gave registered rights in EU countries.22,000 trademarks were applied for in that first month to the newly formed EUIPO in Alicante, then known as OHIM. During 2020 there were 175.000 new EU trademark applications. And even though the UK has now left the UK, firms in the Uk can still take advantage and obtain trademark rights in all the 27 remaining EU countries through this single trademark registration. Though to obtain rights in the UK now needs a separate UK application. We at Trade Mark Direct can advise on UK, EU, US, WIPO and trademark rights, as well as in any and all countries.

Megan and Harry embroiled in right royal dispute

  Yes, not that dispute with the Royal family over differing recollections of what was said by whom to whom. But with Trademark and small business owner Victor Martin Soriano of the Philipines. Who’s application for the trademark ARCHEWELL HARVATERA filed by Soriano in July 2020 for cosmetics and fragrances has been opposed by Cobblestone Lane LLC (who they?) on behalf the Duke and Duchess of Sussex. The opposition is based on Harry and Meghan’s brand Archewell, for which they filed applications in the EU, US amd UK ealier in 2020 Mr Soriano is reported as promising ‘a fight to the death’ against the former HRHs, but out of deep respect for the Queen says he’d drop his claim if the crown so requested. Plenty of popcorn sales being generated by Harry and Meghan this month.

UKIPO introduces new process for bulk change of trademark representative

  So many trademark owners are wanting to change representative at the UK that the UKIPO has brought in a new bulk process. In place of the normal TM33 form a spreadsheet template is used listing the application numbers of the trademarks. This greatly reduces the time and work required.  However this batch process can only be used for more than 50 trademarks and all must share the same existing representative and be transferred to to a single new firm. With 1.5 million new UK trademarks having been created overnight on 31st December 2020 from EU trademarks (as the UK transition from teh EU ended), many EU trademark owners are choosing to have UK firms take over representation. Trade Mark Direct has already taken over representation of more than a thousand trademarks on behalf of EU trademark owners. If you’re an EU trademark owner, or EU representative seeking a UK firm to partner with please contact us. There are no fees for having Trade Mark Direct listed as your UK representative.

App store woes for Scandi CLUBHOUSE with EU TM

  You have to feel for Alexander Frederiksen who launched his Clubhouse app on the Apple iOS store and Google Play store in mid-2020. His business has been stopped dead with no distribution for his app. How come ? Alexander applied to trademark CLUBHOUSE at the EUIPO in class 9 (‘application software for social networking services via internet’) which was duly registered in October 2020. But this has been no protection from his app being removed from both the Apple and Google stores which he presumes follows intervention by the Silicon Valley based Clubhouse app being called the next Twitter, and popular with the gilded denizens of the US West Coast. And its reported they have no trademark applications of their own, and neither they nor Google and Apple have replied to poor Alexander. Our advice: if you\re building an app and want maximimum rights to keep it in the app store, register a US trademark, as the highest priority. And assume those running these stores have little awareness o

Maintaining UK TM rights derived from EU registrations

  So as explained in an earlier post, when the UK left the EU cloned new trademarks were created at the UKIPO for owners of registered, active EU trademarks. These new trademarks have the same registration date as the EU trademark and are identical in every respect, other than the tacit assumption they were created under UK trademark law. As with any trademark, the new UK trademarks need to be maintained. Renewal of UK trademarks is required every 10 years from date of regsitration, starting from 6 months before the renewal date. If you miss the renewal date there is a 6 month grace period. Renewal in this period is essentially the same with no loss of rights though there is a penalty fee to pay. £1 for ‘late renewal’. The official fees payable to the UKIPO for renwewing a UK trademark are £200 for the first class of goods or services, and £50 for each extra class. Renewals for non UK resident owners requires a UK representative. If you would like cost effective trademark representatio

EU trademarks and new UK rights

  Owners of EU trademarks now have freshly minted equivalent rights in the UK. More than 1.5m new trademark records were created and became active as the clock struck 11pm on 31st December 2020 marking the end of the UK’s transiton period and its time in the EU. To qualify an EU trademark needed to have been registered and active at this time. The new comparable trade marks are UK rights, that exist independently from the EU equivalents. They have the same filing date as the original EU rights, but must be maintained separately. As they will be treated as if applied for under UK trade mark law. Recognising which UK trademarks stemmed from EU seniority is straightforward, as their registration number will begin UK009 followed by the EU registration number. Those EU rights that were obtained through WIPO and the Internal Registration under the Madrid protocol use the prefix UK008 followed by the last the last 8 digits of the International Registration number. The representative (trademar

Legal Tech’s Predictions for E-Discovery in 2021

  No in-person review? No problem. Lawyers and legal technologists make their predictions on how the move to remote work, the proliferation of collaboration platforms, and more will affect e-discovery in 2021.  Read the complete article.