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Trade Marks - The KitKat Appeal: How does a Shape Mark acquire Distinctiveness?

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Jane Lambert

Société Des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 (17 May 2017)

Unregistered design right subsists for no more than 15 years. A design registration for only 25. But a trade mark registration can last forever. That no doubt explains why La Société des Produits Nestlé S.A ("Nestlé") has persevered with this case despite losing to Cadbury UK Ltd ("Cadbury") in the Trade Marks Registry and on appeal.

The Issue

S.1 (1) of the Trade Marks Act 1994 provides that any sign can be a trade mark so long as it is "capable of being represented graphically" and "capable of distinguishing goods or services of one undertaking from those of other undertakings." The section gives some examples one of which is "the shape of goods or their packaging."

On 8 July 2010, Nestlé's trade mark agents applied to the Intellectual Property Office ("the IPO") to register the shape of the KitKat bar shown in the photo above as…

Protecting FinTech Innovation

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Jane Lambert

A lot of money is going into FinTech (financial services technology) in this country and overseas nowadays including accelerator programmes promoted by our central bank and one of our major clearers (see the Bank of England's FinTech page and the Barclays Accelerator as well as details of the other accelerator programmes in the table below). But how is all that investment in FinTech to be protected if indeed it is to be protected at all?  In an extract from a longer article in Gluon. Steve Findley and Vanni Torelli ask whether IP is so important to FinTech (see Fintech Startups – is IP important?The FinTech Times).

In view of the amounts of money involved, I should be very surprised if it were not. Findley and Torelli argued that of the top 35 FinTec h unicorns than 25% have filed for patents. I am not in the least surprised by that statistic. Most FinTech innovation will be software implemented. Software is difficult to patent in England and indeed the rest of Europe…

Intellectual Property (Unjustified Threats) Bill

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Jane Lambert

The action arising from groundless threats has been one of the most perplexing features of our intellectual property law both for foreign owners of IPR in this country and their legal advisors (see Prince Plc v Prince Sports Group Inc[1998] FSR 21) and even non-specialist lawyers in the United Kingdom (see Brain v Ingeledew Brown Benson and Garrett and another [1996] FSR 341). Under s.70 of the Patents Act 1977 and similar provisions in other IP legislation, a letter threatening proceedings that would be quite acceptable in most countries and even in the UK in respect of most other causes of action can land the lawyer or attorney who wrote it, and the client on whose behalf the letter was written, in a whole heap of trouble that sometimes results in an infringer getting away with his or her wrongdoing.

S.70 (1) provides:

"Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens anoth…

General Civil Restraint Orders in IPEC - Perry v Brundle

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Jane Lambert

Perry v F H Brundle and Others [2017] EWHC 678 (IPEC) (30 March 2017)

Para 1 of the Part 3C Practice Direction, which is made pursuant to CPR 3.11, enables the court to make a range of orders known as "civil restraint orders" against a party which has issued claims or made applications that are totally without merit. Each of those orders restricts access to the courts. They are known respectively as:
a limited civil restraint order;an extended civil restraint order; anda general civil restraint order. I discussed the jurisdiction to make those orders in Civil Restraint Orders in IPEC - Perry v Brundle12 Oct 2015.

Readers will see that the most restrictive of those orders is the general civil restraint order which restrains the person against whom it is made from issuing any claim or making any application in the High Court or the County Court without permission if the order is made by a judge of the High Court. Such an order may be made only where an extended civi…