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, Supreme Court and up to the Court of Justice of the European Union.

Members of chambers appeared on both sides in the recent Supreme Court case of Cartier v British Telecoms et al, where the Court determined the question of whether the internet service provider or rights holder should pay for the cost of a blocking injunction.

Members of chambers are well equipped to deal with online use of trade marks, and frequently act on cases involving the targeting of specific websites.

In the High Court, members have recently appeared in Walton v Verweij (trade mark infringement, honest concurrent use, first user principle) and Fil Limited v Fidelis (descriptive marks, non-use). Members of Chambers have recently been involved in several cases in the Court of Appeal, including Argos Ltd v Argos Systems (use of ‘Argos’ in a domain name) and London Taxi v Frazer Nash (shape marks). Other high-profile cases which members of chambers have been involved with in the European Court of Justice include L’Oreal v Bellure (“smell-alike” perfumes/infringement), Budejovicky Budvar v Anheuser-Busch (invalidation) and Intel Corp v CPM United Kingdom (“free-riding” issues).

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, and are currently acting on both sides of a dispute between football academies.

Members of chambers have acted 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.

Recent cases include: Juul v Quick Juul (passing off in e-cigarettes), Frank Industries v Nike (passing off in Nike’s LDN advertising campaign), W3 Limited v Easygroup (passing off and cyber-squatting), Argos Limited v Argos Systems (passing off in relation to domain names), and The London Taxi Company v Frazer-Nash Research Limited  (get up in London taxi cab models).