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Showing posts from November, 2017

Scomadi v R A Engineering and Others - A Licence Agreement that went wrong

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Jane Lambert

IPEC (Mr Recorder Campbell), Scomadi Ltd and Another v RA Engineering Co. Ltd and Others [2017] EWHC 2658 (IPEC) (27 Oct 2017)

On 19 Sept 2017, I chaired seminars in the studios of Northern Ballet in Leeds and at the Barnsley Business and Innovation Centre in South Yorkshire at which Tom Duke, our intellectual property attaché in Beijing, spoke on “Succeeding in China – How to mitigate IP risk” as part of a China IP Roadshow (see Jane Lambert Meet our IP Attaché to China21 July 2017 IP Yorkshire). One of the reasons why Tom made that tour is that an increasing number of British IP owners contract with manufacturers in China and other countries where production costs are lower than in the UK to make goods for them under licence. Often such arrangements work very well but sometimes they can go very badly wrong.  
An Example of an Agreement that did go wrong One instance where such an arrangement did go wrong is this litigation before Mr Recorder Campbell. It resulted in &quo…

"Is the shape of a London taxi a valid registered trade mark?" The London Taxi Corporation v Frazer Nash Research

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Jane Lambert

Court of Appeal (Lord Justices Kitchin and Floyd) The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd and Another  [2017] EWCA Civ 1729 (1 Nov 2017)

In The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd and Another [2016] EWHC 52 (Ch) (20 Jan 2016) Mr Justice Arnold had to decide whether the shape of a London taxi could be registered as a British or European Union trade mark and, if it could, whether such a mark could be infringed by the manufacture and sale of a taxi that looks like the vehicle in the picture above. It should be remembered that art 3 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks provides that a trade mark may consist of any signs including the shape of goods providing that such signs are capable of distinguishing the goods of one undertaking from those of other unde…