Trade marks & Brands
Chambers has been at the cutting edge of trade mark law for well over half a century. Members of chambers have written and updated Kerly on the Law of Trade Marks for over 50 years.
We appear at all stages of the life of a trade mark, from the Trade Mark Registry where members of chambers act in registration and opposition hearings, through to the Intellectual Property Enterprise Court, High Court, Court of Appeal and Supreme Court.
Members of chambers are well equipped to deal with the online use of trade marks, and frequently act on cases involving the targeting and blocking of specific websites.
In the High Court, members have appeared in 2024in the matters of Thom Browne Inc v Adidas AG – a case relating to the “Three Stripe mark and easyGroup v Beauty Perfectionists – concerning the sign “easyCOSMETIC”.
8 New Square counsel have also successfully represented clients in both the Court of Appeal and Supreme Court including – SkyKick UK Ltd v Sky Limited – a Supreme Court appeal concerning several “SKY” marks; easyGroup v Nuclei and Thatchers Cider Company v Aldi Stores – a trade mark and passing off action against Aldi’s own cloudy lemon cider product.
Chambers also acts in a variety of other related areas, including comparative advertising, merchandising, celebrity endorsements and sport rights, trade mark licensing, counterfeiting and parallel imports. A member of chambers acted for the singer Rihanna in her dispute with Topshop over their use of her image on a t-shirt.
Counterfeiting and Parallel Imports
8 New Square hasacted in a wide range of cases concerning counterfeit goods and parallel imports. For example, members of chambers were involved in the leading case in the European Court of Justice concerning unauthorised parallel imports (Levi Strauss v Tesco Stores) and involved in the first case about the ‘Specific Mechanism’ on parallel imports of pharmaceuticals from the EU Accession States (Merck v Sigma [2013] EWCA Civ 326).
We were instrumental in the creation of powerful litigation tactics such as the Anton Piller Order (now known as a search order) to track down and seize counterfeit products. We frequently appear in without notice hearings to prevent counterfeiters from destroying evidence or removing it from the jurisdiction.
Passing off
Members of chambers frequently act in cases involving the common law action for passing off, whether independently or in conjunction with a trade mark action.
Important cases include: SkyKick UK Ltd v Sky Limited; Thatchers Cider Company v Aldi Stores; Thom Browne Inc v Adidas AG; Combe International v Dr August Wolff; Shazam v Only Fools The Dining Experience and Glaxo Wellcome UK Ltd v Sandoz Ltd – a passing off action concerning the colour and get-up of the Claimants’ Seretide combination inhaler.