The Supreme Court has today announced their judgement in the landmark case of Magmatic (the makers of the Trunki ride-on case) and their rivals PMS (the distributers of the Kiddee Case).

Magmatic, based in Bristol, was founded by the designer of the Trunki suitcase. Magmatic allege that PMS International, based in Hong Kong, have infringed their European Community registered design rights with PMS’s Kiddee Case ride-on suitcases for children.

Magmatic took legal action against PMS in respect of the Kiddee Case, and won a High Court judgment against PMS in July 2013. In March 2014 however, that judgement was overturned by the Court of Appeal. In November 2015 the Supreme Court heard the case, and their judgement was released today.

The decision of the Supreme Court was unanimous in finding that the PMS Kiddee Case does not infringe Magmatic’s European Community registered design for the Trunki case. This confirms the findings of the Court of Appeal.

This marks the end of a long road for Magmatic in their pursuit of PMS for infringing the Trunki design.  However, the effects of the Supreme Court’s judgement will have significant implications for businesses seeking to protect their designs.  In particular, this decision reinforces the need to ensure that drawings used in a registered design do not include unnecessary limitations.  In this particular case, the drawings – which are the sole basis on which infringement is determined – showed the Trunki case with distinct tonal contrasts, which were not present on the Kiddee Case.  Hence, the Kiddee Case did not infringe the design.

Our more detailed analysis of the judgement will follow.  The Supreme Court’s full judgement can be found here.

Emma Reeve examines the relationship between the law and a new breed of business rising from the shadows of online, looking at whether more conversations need to he held in order to update the current legal system to bring it in line with issues faced by 21st century start-ups.

To read the full article click on the link below. 

http://www.the-gma.com/strengthening-the-brandingtrade-mark-relationship

While patents have not yet been central to the debate on the UK referendum, exit of the UK from the European Union is likely at least to delay implementation of the proposed pan-European unified patent system (UPC).

Ultimately, however, it is likely that the system will go ahead across the rest of Europe. While UK patentees would be able to apply for a Unitary Patent, such patents would not cover the UK and UK protection would need to be obtained via a separate patent. As one of the largest markets in Europe, however, exit of the UK from the EU and the UPC system raises the question of how attractive the remaining unitary patent will be for applicants.

Join James Pitchford and the Cambridge Technology Cluster for a fascinating roundtable discussion on how to control your IP in a digital world. 

The meeting will be held at the Crown Plaza Hotel, 20 Downing St, Cambridge CB2 3DT, on 22nd March 2016. 

The agenda is as follows :

For more information please click here. 

On Monday 15th February the Secondary Legislation Scrutiny Committee of the House of Lords scrutinised a draft of ‘The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016”, to take account of the UPC as part of the passage of the SI through parliament. 

Read more about the proposed order here.

A British Comedy business, Comic, has won a case brought against 20th Century Fox. A high court judge has ruled that their trade mark has been infringed by the show ‘Glee’, a global television series. 

A mark is considered to be infringing where the sign is similar to the registered mark and used for identical or similar services, and where there exists a likelihood of confusion on the part of the public. The Court of Appeal has found that there was a reasonable degree of similarity between the two, and that there was likelihood of confusion.

Comic have venues around the UK and have found that their customers confuse their business with the TV show. They argue that this has damaged their brand, business and reputation.

The decision was made on 8th February and more information regarding the consequences of the ruling are to follow.

Emma Reeve discusses the new rules of branding and trade marks in an article published on behindthespin.com.

The article explores changes to branding in a fast moving age of internet and social media, and the new challenges this presents to companies in protecting both their brand and reputation.

To read the article in full please click on the link below.

http://www.behindthespin.com/features/the-new-rules-of-branding-and-trade-marks

Some of you may already be aware of an Article 28 declaration in connection with the scope of protection for goods and services of Community Trade Marks.

The implication for clients with a portfolio of CTM’s, or even just one, filed before 22 June 2012 is that trade mark owners will soon be given a six-month, one-off window to bolster the scope of their pre-June 2012 CTM portfolios by making an “Article 28” declaration to the EU Intellectual Property Office regarding the goods and services covered by their registrations.

If such a declaration is not made, then those registrations may forever thereafter be limited and no longer cover goods and services which owners previously thought they did.

The change in law and practice is to reduce or remove completely one owner having a trade mark monopoly and is going to take away some trade mark rights – probably forever.

It is important for owners of CTM’s filed before 22^nd June 2012 to look at the options available to them.  Please talk to one of our trade mark team for further information about how we can help.

This week has seen the High Court dismissal of Nestlé’s appeal against the decision to reject its trade mark application for the 3D shape of its four finger Kit Kat.

Mr Justice Arnold commented that, “the proposed trademark had not acquired distinctive character and that the Court of Justice of the European Union (CJEU) had not sufficiently answered a question he had asked.”

Both Nestlé and Cadbury had appealed against aspects of the original decision made by the IPO in 2013.  The original examiner, Allan Jones, had said that, “the trade mark could not be registered on the basis that the mark not acquired distinctive character and that it consisted exclusively of a shape which results from the nature of the goods themselves.”

This week’s judgement raises the question of what gives something a distinctive character in terms of its shape and how does this translate into trade mark protection. 

Nestlé plan to appeal the decision.

By Dani Kramer

The UK Government has just opened a consultation on a proposal to reduce significantly the fees for registered design filings.  If adopted, the changes will be hugely beneficial to designers wishing to protect their designs in the UK.     

The current fees, based on the original paper-based system, were last amended in 2006 and designers have stated that they are ‘prohibitively expensive’. In response to a consultation with designers, the UK Government has set up a new digital registration service, and the reduction in cost from a paper-based system to a digital-based system can be passed on to businesses.

The major reductions in the filing fees for multiple-part applications filed via the online system will mean that designers can file applications covering numerous different aspects (or parts) of their designs at a fraction of the current costs. 

In practice the reductions will work out as follows:

Renewal fees will also be significantly reduced, with the first renewal starting at £70 for renewing a design after its initial 5 year term for another 5 year term.

With large reductions for multiple filings, businesses will have greater ability to protect their designs more robustly.  This will be particularly beneficial for businesses that wish to protect UX and GUI designs for Apps and other electronic devices, as multiple-part applications are usually needed to show the various transitions between different screens in a user interface, and the various constituent parts of a user interface.      

The Government is interested to hear from designers and businesses, and the consultation is open until 29 January 2016.  Submissions can be made via the following site:  

https://www.gov.uk/government/consultations/proposal-for-changes-in-registered-design-fees