Areas of work

Trade Marks

In addition to the common law right to prevent 'passing off', it is possible by registering a trade mark under the Trade Marks Act 1994 to obtain a statutory right to prevent the use of that mark or a mark confusingly similar to it by others. The 1994 Act was enacted to implement EC Council Directive 89/104 to approximate the laws of the Member States relating to trade marks and the ECJ has given considerable guidance on its terms. The 1994 Act effected significant changes in the law relating to registered trade marks but it does not affect the law relating to passing off. Infringement of registered trade mark is actionable by the proprietor (or a licensee)  and all such relief by way of damages, injunctions, accounts or otherwiseis available to him is available in respect of the infringement of any other proprietary right. Members of 5RB appear in all matters relating to trade marks in the Trade Marks Registry, the High Court and at OHIM in Alicante

5 recent Trade Marks cases

Patel v Allos Therapeutics Inc

Claim no. HC07C01730

O2 Holdings Ltd & Anor v Hutchison 3G UK Ltd (ECJ)

Case C-533/06; [2008] WLR (D) 193

Jules Rimet Cup Ltd v The Football Association Ltd

[2007] EWHC 2376 (Ch); [2008] FSR 10; (2008) 31(1) IPD 31002

L'Oreal S.A. v Bellure N.V. and others

[2007] EWCA Civ 968

Boehringer Ingelheim Ltd & Others v Vetplus Ltd (CA)

[2007] EWCA Civ 583; [2007] FSR 29; (2007) HRLR 33; (2007) BusLR 1456; (2007) 97 BMLR 1; (2007) 30(8) IPD 30052; The Times, 27 June 2007

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