Designs - Logos
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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
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)
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
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
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