Liability Win For Our Client on Use of Competitor’s Trademark on Google Ads

Peter Adediran’s specialist niche area of practice is intellectual property law – both contentious and non-contentious – as it relates to digital works including trademarks; copyright; patents and database rights PAIL® Solicitors. Read more on PAIL’s ® Resource Library

PAIL® recently obtained judgment on liability plus costs for our client in the UK Intellectual Property Enterprise Court. For more information about the court see the IPEC Court Guide.

The case concerned trademark use in Google Ads. Although Google have an ad policy requiring that Google Ads don’t infringe on third-party trademarks businesses still actively infringe other business brands in their Google Ad campaigns trading on the reputation of other business brands and/or diluting the brand of other businesses through overuse.

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Are directors personally liable for copyright infringement?

The author is a UK qualified and fully licensed current practicing solicitor specialising in intellectual property cases and digital technology. He is currently a Judicial Work Shadow Candidate for the Intellectual Property Tribunal

What is corporate veil?

The general legal rule for copyright infringement liability is that a company is a separate legal person from its directors. Generally, an act of the company is not necessarily an act of its directors personally. This is the case no matter how small the company is or how much the directors micro-manage the affairs of the company. As a separate legal entity, the private limited liability company is solely responsible for its liabilities and debts – the so called “corporate veil principle”.

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Life cycle of a digital tech business: how to take your start-up to corporate success?

The author Peter Adediran is a UK qualified and fully licensed current practising solicitor specialising in mobile applications and ecommerce related B2B and B2B2C start-ups and later stage SME growth. His areas of expertise include using intellectual property to add to business value, and drafting growth and exit focused commercial agreements. His breadth of experience over 18 years includes more than a 100 start-ups worth over $100 million

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Investment Fund Trademarks – Fund Firms Struggle to Find a Name to Call Their Own

So, you want to trademark a name for your investment fund. You have taken general legal advice and have been told that in a word phrase like ‘BARON INVESTMENTS’ the secondary words in the phrase are of no consequence in determining infringement and trademark ability. Indeed, so long as you have trademarked ‘BARON’ for financial services including investment management in the UK, EU and US markets then you can get an injunction to stop anyone else using the name ‘BARON’ as part of any word phrase for financial services in the UK, EU and US markets, and force them to recall all their advertising and pay you money damages, or/and trademark any secondary word or words with that name, right?

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Using brand names on websites

Marketing a service or product is a very important part of creating brand awareness and generating sales. Brand names have meaning to people. They are associated with good reputation or in some cases not so good. Businesses spend millions on building brand names and creating brand awareness. Obviously a great way to promote your business is to use these brand names in your website business description, item descriptions, keywords, search tags to try to project the image that you are associated with them. There will be no repercussions if you use brand names, right? Well not quite.

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Do-it-yourself trademark registration

It may appear simple enough. You make an application for trademark registration using form TM3, which you can download or complete on-line. You are required to provide an illustration of the mark and indicate whether it is a series of marks. If it is a series of marks, then you are limited to six marks in the series. The goods and services you may apply for are divided into 45 classes. This is all set out under the Nice Classification. You just say what goods or services you want the mark to cover. In-fact only a very small percentage of trademark registration applications are challenged. It can cost you as little as £170 for the whole process without a lawyer. It makes sense to do it yourself, and then get a lawyer if the trademark is ever challenged. That simple, right? Well, not always.

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The value of trademarks

The value of trademarks like all legal matters is only illustrated when the worst happens. Until then it is difficult for an inexperienced entrepreneur to really appreciate their value. Mr Payan Tabibian is an entrepreneur, originally Iranian but with US nationality, who had an idea for a business, much like millions of other entrepreneurs around the world every day.

Mr Tabibian had an idea for a hamburger restaurant, and one of his initial tasks was to come up with a distinctive name and logo. Like millions of entrepreneurs just starting off their businesses, Mr Tabibian could not have imagined that 10 years after he thought of the Z-burger trademark, his brand name and logo would become embroiled in a legal battle worth millions.

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Trademark smells?

Can I trademark smells? Can a shape be trademarked? This is recurrent question we get asked as our clients are mostly in the creative industries.

A trademark sign must be capable of being represented graphically. This means that it must be in some kind of physical form. But contemporary culture has evolved so that purely physical representation alone cannot always capture the distinction between goods and services. Sounds, and colours have also been accepted as being capable of graphic representation even though sound, for example, lacks physical form. Even tastes and personal names can now be registered as trade marks. In other words, an application for a trademark sign can be supported with evidence to prove that the mark is clearly distinctive of the origin of a good or service therefore making it capable of graphic representation. So an application for a sound can be supported with a verbal description and a musical score.

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Parallel Importer

Parallel importer – the European Pharma Case. It’s been a long time coming, but I’ve finally got round to reviewing this important appeal judgment for parallel importers. I had actually prepared the notes for this article at the beginning of March 2015, however being gratefully inundated with work, I’ve only found the time, on a Saturday in April to finish the job. So here goes! The judgment this article reviews is in the case of – Speciality European Pharma Ltd Claimant/Respondent v. (1) Doncaster Pharmaceutical Comp Ltd (2) Madaus GMBH Defendant/Respondent – Appeal Judgment 06/02/2015. The case concerns the free movement of goods and services within the European Union (EU) and the potential of brand owners to use trade mark law to prohibit imports.

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Making trade mark infringement cases

Making trade mark infringement cases should always start with a letter, then the follow up formal document in the appropriate legal format setting out the causes of action are crucial and should not be attempted lightly. This formal document making trade mark infringement cases is called a pleading.

There are different styles and methods of preparing these pleadings. Once the substance has been covered then differences are mainly down to style. In the recent case of Enterprise v Europcar incidentally addressed the subject of how pleadings are prepared when making trade mark infringement cases.

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