Tel: 020 7405 1222 or email

Trade Marks & Passing Off

11 South Square offers extensive experience and expertise in all aspects of trade mark prosecution and enforcement and the related tort of passing off. Members of chambers have appeared in a series of ground-breaking trade mark enforcement actions in recent years, playing a key role in the development of the modern law of the protection of brands and trade goodwill.  On trade mark matters, we regularly appear before the English courts, the General Court and the Court of Justice of the European Union, the UK Intellectual Property Office and the Appointed Person.

 

Notable Cases

Hotel Cipriani SRL v Fred 250 Ltd [2013] EWHC 70 (Ch)

Hotel Cipriani SRL v Fred 250 Ltd [2013] EWHC 70 (Ch)

Breach of Injunction, declaratory relief, defences to trade mark infringement, whether reference to the manager of a restaurant was a reference to a characteristic of the services.

Hotel Cipriani SRL v Fred 250 Ltd [2013] EWHC 70 (Ch)

Red Bull GmbH v Sun Mark [2012] EWHC 1929 (Ch)

Red Bull GmbH v Sun Mark [2012] EWHC 1929 (Ch)

Infringement of registered trade marks and application for invalidity based on claim of bad faith, and consequential relief.

Red Bull GmbH v Sun Mark [2012] EWHC 1929 (Ch)

Starbucks v BSkyB [2012] EWHC 3074 (Ch)

Starbucks v BSkyB [2012] EWHC 3074 (Ch)

This is one of a number of cases in which the nature of “special grounds” in the stay provisions in the Trade Marks and Designs Regulations have been considered by the courts.  The Court of Appeal in this case said that special grounds should be interpreted restrictively.  They do not arise when an application is made to OHIM in response to a threat of proceedings but only when provisional measures are unavailable so that the claimant would be deprived relief during the pendency of the stay: see [2012] EWHC 1842 (Ch) and [2012] EWCA (Civ) 1201.

The decision from the October trial can be found here [2012] EWHC 3074 (Ch).