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Sony files trade mark for PS5

Earlier this week Sony Interactive Entertainment Inc. (Sony) filed a trade mark application for “PS5” in Switzerland signalling the forthcoming launch of the fifth version of the world famous PlayStation games console. The trade mark application covers the console hardware, gaming software and other goods and services and claims priority from an earlier trade mark application filed in Jamaica in October 2019. It is common practice for companies to first file their trade mark applications…
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Harry and Meghan

Trade mark oppositions – advice for Harry & Meghan

You may have noticed a passing mention on the news recently that Harry (AKA Prince Harry) and Meghan (AKA that actress from Suits) have recently resigned from royal duties in favour of a life of financial independence. Like all sensible start-ups they have decided to register their brand SUSSEX ROYAL as a trade mark. However this has attracted a bit of attention and, with it, a few trade mark oppositions. So, what to do, well…
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Tiffany & Co shop front

Tiffany wins an opposition against UK beautician

Back in 2018 Tiffany Parmar applied to register a UK trade mark for ‘Cotswold Lashes by Tiffany’, covering class 3 (cosmetics), class 41 (beauty school services) and class 44 (beauty care). The jewellery retailer Tiffany & Co opposed this application later that year based on a number of their ‘Tiffany’ UK and EU trade marks. On 8 January 2020 the UKIPO decided that the marks were visually and phonetically similar to a low degree, but…
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Proof of use, proof of what

Owners of registered trade marks in the UK and EU have to use their trade mark if they want to be able to enforce it. That being said, there is a five year “grace period” from filing in which it is not necessary to demonstrate use of the trade mark to enforce it. After the five-year grace period, if a trade mark owner wants to file an opposition or look to enforce the trade mark…
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Kylie cosmetics

Kylie Minogue v Kylie Jenner

I think it is safe to say we all know who Kylie Minogue is. She is responsible for such undisputed bangers as Love At First Sight and Can’t Get You Out of My Head (and I am not ashamed to admit that). We have also all heard of Kylie Jenner, who is famous for… being famous. What you may not know is that Jenner had been trying to trade mark the name Kylie in the…
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Outdoor signage written on multiple languages

Foreign Language Words as Trade Marks in the UK and EU

Over the last decade a growing number of overseas businesses have been expanding into the UK and EU, and a lot of them are targeting the nationals of their countries that currently reside here. A question therefore arises – can an overseas business register a UK/EU trade mark in their own language using non-Roman alphabet? According to the UKIPO and EUIPO guidelines, the words in foreign non-Roman languages can indeed be registered as a trade…
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Brand protection… the big questions answered

Have you spent months developing the prefect brand name? Have you bought a domain name or registered a company name featuring the brand? Maybe you’re really far down the road, you’re selling your goods or services, advertising and looking for investment? If any of this applies to you then you need to register a trade mark. How to do it Unfortunately, there’s no such thing as a single worldwide trade mark and so brand owners…
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China on a globe

New ammunition against trade mark squatters in China?

Due to the “first to file” system that operates in relation to the registration of trade marks in China, there are copious instances of trade mark squatting. This presents a major problem for those trying to protect their brands in China. However, there has been a recent development in this area. A trade mark in China, can be invalided on one of two grounds. Either on relative grounds, which means that the trade mark in…
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tic tac mint

It’s all Tic for Tac in trade mark disputes

Ferrero is the manufacturer of the well-known comfits marketed and sold under the ‘Tic Tac’ brand. If you don’t know what a ‘comfit’ is (I didn’t), it’s “a sweet consisting of a nut, seed, or other centre coated in sugar” (thanks, Google). ‘Tic Tac’ is obviously a very well-known brand name and is protected by various trade mark registrations for the words ‘Tic Tac’ and various versions of the Tic Tac logo in numerous territories…
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Costly opposition proceedings

The UK Intellectual Property Office’s (UKIPO) decision on costs O-694-19 between Retina International Ltd (Retina International) (the trade mark applicant) and Apple, Inc (Apple) (the opposing party) gives a good warning as to costs in trade mark opposition proceedings. Hearing Officer, Mark King, ordered Retina International pay Apple the sum of £24,550 being Apple’s reasonable costs – I bet Retina International wish they saw that one coming! Well in fact perhaps it did see it…
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