One of the most famous football clubs in the world the UK Manchester United initiated lawsuits against SI and SEGA which are producers of the video game Football Manager.
The reason for this action was the fact that this video game includes the name of the club and a logo in red and white which although not similar to the original club’s emblem associate with it.
According to Manchester United, when consumers see the name of the football club they will recall about the original emblem. In addition, the video game providers allow using of patches through which gamers can use even the original club’s signs.
For the UK club, all of that ruin the opportunity for licensing revenues from the use of its intellectual property.
The lawyers of the SI and SEGA stated that the potential ban for using the club’s name will restrict the right to freedom of expression. What’s more, the club had no right to claim infringement because it had been aware for this use for years without doing anything. This means that Manchester United had acquiesced in the use of its name by the video game producers.
The court decision is expecting.
Source: UDL Intellectual Property – Christopher Banister, за Lexology.
The well-known author JK Rowling announced her decision to allow all teachers around the world to use her books for Harry Potter for making video lessons for free.
The reason for this exception from the licensing rules for her books is the current COVID-19 pandemic situation which led to many schools being closed.
According to the announcement, the teacher can do that without a license, however, the videos must not be uploaded on YouTube or any other social media or used for commercial purposes.
The Final Fantasy’s producer, the Japanese video game company Square Enix, won two invalidation disputes against trademarks Parasite Eve и Parasite.
Both marks have been registered in the UK by Michael Gleissner, a person notoriously known for cases of bad faith registered trademarks in the EU.
According to the Square Enix, its unregistered trademark Parasite Eve has been in use for video games in the UK since 1998. Because of that, it has built a strong reputation amongst the consumers in the country. In light of this, the above mentioned two trademarks are confusingly similar and can damage the reputation of the earlier mark.
The UKIPO agreed with the Japanese company considering the later two trademarks as confusingly similar and registered in bad faith with the purpose to take advantage of the earlier trademark established reputation.
The Swiss watchmaker Audemars Piguet lost an opposition in the UK against an application for trademark Oakky in class 14.
The Swiss company filed its opposition based on an earlier registered trademark Royal Oak in class 14.
The UKIPO dismissed the opposition considering both signs similar only to a low extent which wasn’t enough to cause consumer confusion. According to the Office, there was only some conceptual similarity on the ground of the meaning of Oak and Oakky. However, this wasn’t enough in the case at hand.
With regard to the claimed reputation of the earlier mark, the Office considered it as not proved. Although it was clear that watches with the brand Royal Oak had been sold in the UK, there is no evidence about their volume and turnover. Apart from that, it wasn’t clear to what extent the mark was popular among the consumers.
This case shows clearly that in such situations only one piece of evidence is not enough to prove a reputation or a well-know status. In most of cases numerous examples about the trademark use and popularity have to be submitted.
Launching a new brand in the market is always a challenge. It requires lots of effort and good business and marketing strategies as a ground.
Before launching the brand, however, you need to have an appropriate brand name which in most the cases is a product of a brand-building process.
You have two main options in that regard, to try to create the brand name on your own, in case that you don’t have a big marketing budget, or to hire an agency that will do that for you.
In both of the cases, however, there is one specific moment that you need to pay attention to. It is related to the question to what extent you can use and protect your brand.
It can sound not so an important issue at first glance but it is. The reason for this is that if you start using a brand for which there are already registered trademarks by someone else, you risk becoming a trademark infringer. This can create a myriad of problems for you including the need to re-brand and pay compensations.
And what is the chance for this?
It is not negligible at least because there are millions of registered trademarks in the world which in turn require a lot of attention when a new brand is introduced in the market.
One of the ways to escape such negative scenarios is a trademark clearance search to be implemented before the launch. This can save you not only time but money but will protect you from legal pitfalls.
If you want to learn how to do such trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand, you can check this new and useful Udemy course on this topic here.
The Chilean vineyard Sociedad Anónima Viña Santa Rita won a dispute before the UK patent office regarding its following trademark for class 33 that contains the word PISCO:
The Peruvian IP office objected to this registration claiming that only producers from Peru can use the term PISCO to label their products in particular wine.
According to the Chilean vineyard, this wasn’t the case due to the fact that wine under the same name had been producing in Chily for centuries.
The UKIPO ruled that in the case at hand there was no risk for consumer confusion because it was highly unlikely for them to connect the term PISCO only with Pery. In addition, taking into account the whole mark the likelihood of confusion was even smaller.
Similar disputes between Chile and Pery exist in India and Australia too.
The European Intellectual Property Office (EUIPO) issued a press release in which clarifies the situation with the approved Withdrawal Agreement for Brexit by the European Parliament.
EUIPO stated that there will be no change regarding the EU trademarks and designs and their validity on the territory of the UK by the end of 2020. This includes the possibility of citing the national marks in procedures before the Office as well as the work of British Industrial property representatives.
For more information here.