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Released 30 January 2008

In a recent case the question arose as to the extent to which a manufacturer can claim a monopoly over a particular design by registration as a trade mark.

The Claimant's claims was that the Defendant wrongly infringed the UK Mark and the CTM because the Globe Side Design on its Finale, Wedge and Motto trainers is similar to the Gola Trade Marks, and is likely to cause confusion on the part of the public as to an association between the Gola Trade Marks and the Globe Side Design.

The Claimant Jacobson would rely, on the Trade Marks Act 1994 (TMA 1994) s.10, Article 5 of the First Council Directive 89/104/EEC of 21 December 1988 (to approximate the laws of member state relating to trade marks) and Article 9 of Council Regulation (EEC) No. 40/94 of 20 December 1993 on the Community trade mark.

The Defendant Globe claims that the UK Mark is invalid because its registration was and is contrary to the provisions of TMA 1994 s.3(1)(a), (b) and (d).

Globe claims that the CTM is, and has been at all material times, invalid because it is registered contrary to Article 7 (1)(a), (b) and (d) of the Regulation.

Specifically, Globe's case is that the Gola Trade Marks are and were invalid because (a) the Wing Flash logo is not a sign capable of distinguishing the goods of Jacobson from those of other undertakings (contrary to TMA 1994 s.3(1)(a) and Article 7(1)(a) of the Regulation); (b) the Wing Flash logo is devoid of any distinctive character (contrary to TMA 1994 s.3(1)(b) and Article 7(1)(b) of the Regulation); and (c) the Wing Flash logo is a sign or indication which has become customary in the bona fide and established practices of the trade (contrary to TMA 1994 s.3(1)(d) and Article 7(1)(d) of the Regulation).

The Claimant's case was successfully argued and it was held the marks were distinctive and confusion had occurred

Michael Coyle is a solicitor advocate who specialises in information technology law and intellectual property law.

About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.

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Article Published/Sorted/Amended on Scopulus 2008-02-17 17:20:28 in Legal Articles

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