Intellectual Property Lawyers l Digital Media Solicitors
Specialist Intellectual Property and Digital Media Legal Advice

Blog For Empowering Creatives: IP and Digital Media Lawyers Insights

PAIL Solicitors IP and Digital Media Blog

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When I think of Frank Sinatra's "My Way," I see a connection to the main ideas behind intellectual property law. "My Way" embodies personal expression and an individual's journey through life, which parallels the concept of the ideas-expressions dichotomy in copyright law. It echoes the principle that music, literature, or art can be copyrighted while allowing others to explore the same ideas without infringing upon that particular expression. Sinatra's anthem also celebrates uniqueness, which is reflected in the definitions of all of the varying types of intellectual property.

The Purpose of This Blog

The articles on this blog are all written, reviewed, and edited by me, Mr Peter Adediran, the Digital Media and Intellectual Property Solicitor at PAIL Solicitors. They are intended to empower the new generation of business executives, professionals, business owners and creatives who want to keep up with intellectual property, digital media and entertainment law in the digital age. Most importantly, empower the community of creatives who want to create works "their way". In today's rapidly evolving digital landscape, staying informed and increasing knowledge in specialised legal services is crucial for e-commerce and digital technology businesses. At PAIL® Solicitors, we understand the unique challenges start-ups, business owners, professionals, business executives, creatives, writers and talent face in protecting their intellectual property and navigating legal complexities. By reading this blog and engaging us as your legal representatives you can safeguard yours and your company's reputations, make informed financial decisions, and confidently expand into new markets by focusing on continuous learning and expertise in these areas.

This blog contains articles on the following themes:

  • Advice on Protecting Digital Content

Encouragement to Stay Informed and Protected

For creatives and businesses alike, staying informed about legal issues surrounding intellectual property is critical. Knowledge is a powerful tool for safeguarding one’s work from infringement or misuse. We encourage individuals to engage with our resources, participate in discussions, and keep abreast of developments in IP law. 

Google Ads Trademark Liability Win

 

Google Ads Trademark Lawyer Wins Google Ads Liability Case

Peter Adediran Google ads trademark lawyer at PAIL® Solicitors obtained a 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.

Businesses that try to profit off the names of their competitors should think again.

On the 18 September 2018, PAIL Solicitors got default judgment on behalf of the Claimant – in its case for passing off and trademark infringement against two defendants. PAIL® obtained an order for costs on the 06 November 2018 on behalf of the claimant for £18,865.00.

 The claimant is a designer, producer, supplier and installer of fine quality plaster cornices covings and plaster mouldings and has carried on business under the name CORNICES CENTRE since December 2003. Our client, the claimant, is also the owner of European Union Trade Mark Registration Number 017451436 and 017865420 for CORNICES CENTRE registered in classes 16, 19, 25, 35, 37, 35 covering, among other things, building and repair services; advisory services relating to the renovation of property services; advertising, marketing and promotional services; decorative mouldings (non-metallic) Cornices and Covings (non-metallic) goods (the ‘Trade Mark’).
 
The defendants are providers of bespoke plasterworks including cornices and covings in London. They are competitors to our clients’ business also located in South East London within close commercial geographical proximity of our client.
 
The claimants alleged:
 
That the defendants infringed the claimant’s registered trademark by the use in the course of trade of a sign: CORNICE CENTRE.
 
That such sign is identical to the registered trade-mark CORNICES CENTRE in its AdWords text ads on the Google Search Network as part of its Headline text concerning goods and services which are identical to those for which our client’s trademark is registered.
 
The case is interesting to the building community, and the wider business world, because it involved the following hot issues:

  • Previous cases particularly the well-known cases of Office Cleaning Services v Westminster Window and General Cleaning: HL 1946 and A&E Television Network v Channel 4 Television Corporation 2011 held that where a trader adopts words in common use for his trade name some risk of confusion is inevitable – so adopting CORNICES CENTRE as trademark is risky as it could be perceived as trying to unfairly monopolise the words. The consequence of this is that where a mark is largely descriptive small differences may suffice to avoid confusion. Was the small difference of CORNICE not CORNICES enough to avoid confusion?

  • What is enough to constitute trademark infringement in a Google Ad Word campaign? What constitutes trademark infringement in Google Ads is a hot issue in the intellectual property and Internet business world.

  • Is there a material difference in the trademark sense between the singular and plural form of the word CORNICES in the mark CORNICES CENTRE and – CORNICE CENTRE – so that they are either separate marks or are regarded as the same mark?

 
We were ready to deal with all these issues with regards to liability for a result in favour of our client had this case gone to trial. Businesses that try to profit off the names of their competitors should think again.
 
21. 11. 2018

This article details the facts regarding the claim as to the liability of a trademark infringement case relating to Google Ads in which Mr Peter Adediran represented the Claimant. If you are seeking advice on bringing or defending a trademark infringement claim and have read this article, you must take the opportunity to go and seek professional legal advice from a solicitor or barrister. The information and any commentary on the law contained on this web site are provided free of charge for information purposes only. Every reasonable effort is made to make the information and commentary accurate and up to date, but no responsibility for its accuracy and correctness, or for any consequences of relying on it, is assumed by PAIL® Solicitors. The information and commentary do not, and are not intended to, amount to legal advice to any person on a specific case or matter. You are strongly advised to obtain specific, personal advice from a lawyer about your case or matter and not to rely on the information or comments on this site. No responsibility is accepted for the content or accuracy of linked sites.

To obtain a quotation, please contact us at (020) 7305-7491 or at peter@pailsolicitors.co.uk. We would be delighted to assist you. Mr Peter Adediran is the owner and principal solicitor at PAIL® Solicitors. Subscribe to our newsletter to get blog post updates and other information about the firm straight to your inbox.

Meet The Team: Peter Adediran; Maya El Husseini; Gabrielle Felix; Poppy Harston