Trade mark transactions and management

What is a trade mark?

A trade mark’s essential function is to be a badge of origin. It distinguishes the goods and services of one undertaking from those of other undertakings. Trade marks are often in the form of words, slogans or logos, but may also comprise items including sounds, three-dimensional symbols, smells, colours, multimedia clips, patterns and holograms. However, in order to fulfil their function, they need to fulfil a range of criteria as set out below.

It is possible to rely on both registered and unregistered trade mark protection in the UK.

Trade mark legislation in the UK

The law relating to UK trade mark registrations is set out in the Trade Marks Act 1994 (TMA 1994).

TMA 1994 implemented Directive (EU) 2015/2436 into UK law (and previously, its predecessors, Directive 89/104/EEC and Directive 2008/95/EC).

The amendments to TMA 1994 to implement Directive (EU) 2015/2436 into UK law were introduced via the Trade Marks Regulations 2018, SI 2018/825, from 14 January 2019.

The Trade Marks (Amendment etc) (EU Exit) Regulations 2019, SI 2019/269 and the Designs and

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Latest IP News

Does YouTube Shorts infringe registrations of SHORTS marks and are those registrations valid? (Shorts International Ltd v Google Llc)

IP analysis: The proceedings relate to Google’s YouTube Shorts service. Shorts International Ltd (SIL) claimed that Google’s use of certain signs in relation to its YouTube Shorts service amounted to infringement of SIL’s registered trade marks and passing off. Google claimed that there was no infringement or passing off and that SIL’s registered trade marks were invalid or should be revoked for non-use. It was held that, at the various relevant dates, most of SIL’s trade marks were valid, though the word mark ‘SHORTSTV’ was invalid for most goods and services, and that the other marks should be revoked for non-use for some goods and services. However, all SIL’s trade marks had low inherent distinctive character, and SIL’s use of its trade marks in the UK had not been extensive enough to claim enhanced distinctiveness. None of Google’s uses of signs including the word ‘shorts’ would give rise to a likelihood of confusion as to origin. There were significant similarities between the signs used by Google which included the word ‘shorts’ and SIL’s trade marks, but the similarities were for the descriptive elements rather than the elements of SIL’s trade marks which had some (but low) distinctive character. While SIL had protectable goodwill associated with its trade marks among a limited group of UK consumers, Google’s signs did not misrepresent its service as being provided by SIL or in some way authorised by SIL. Therefore, there was no passing off. Written by Milena Velikova, trade mark attorney and Helene Whelbourn, legal director at Lee & Thompson LLP.

IP weekly highlights—28 November 2024

This week's edition of IP weekly highlights includes: a hand-picked summary of news analysis, updates and new content from the world of IP. These highlights focus on the key rights of copyright and associated rights, database rights, trade marks and passing off, designs, and patents as well as covering issues relating to confidential information, know-how R&D and IP disputes all mainly from a UK and European perspective.

The meaning of multiple damages and the unenforceability of foreign judgments (Motorola v Hytera)

Dispute Resolution analysis: The High Court has refused to enforce part of a multi-million dollar US judgment because it fell within the definition of ‘multiple damages’ under section 5 of the Protection of Trading Interests Act 1980 (PTIA 1980). This decision clarifies the meaning of multiple damages and the scope of the prohibition under the legislation, which up until now has been subject to only a ‘sprinkling’ of authority. It also provides useful guidance on the approach the court will take to enforcing foreign judgments containing elements of both compensatory and punitive damages. Finally, the judgment clarifies the impact of any underlying unenforceability on claims to enforce awards for interest and legal costs. Written by Harriet Campbell, senior knowledge lawyer at Penningtons Manches Cooper LLP.

Supreme Court slices Sky’s trade marks (Sky v Skykick)

IP analysis: The Supreme Court has restored the judgment of Mr Justice Arnold (as he then was)—Sky acted in bad faith when applying for overly-broad trade marks. Those trade marks were therefore partially invalid (to the extent that Sky did not intend to use them). The Supreme Court has also approved the High Court’s narrowing of Sky’s specification. However, Skykick’s appeal against the finding that it infringed was dismissed. This decision, of the highest authority, has clarified that a lack of intention to use a trade mark for goods or services included in the application can provide the basis of a bad faith invalidity challenge. The judgment provides guidance on the circumstances in which this type of bad faith will be established. Written by Giles Parsons (partner), Bonita Trimmer (consultant) and Alice Elliott-Foster (associate) at Browne Jacobson LLP.