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Trade Mark Attorney Luke Portnow has been published in the May 2016 edition of the ITMA Review.
Luke comments on the decision for an appeal up to the Appointed Person of a UK IPO opposition. The Royal Academy of Arts had filed to register the plain word mark RA, claiming goods and services spanning many classes, and was opposed by Erreà Sport SpA (Erreà) based on an earlier stylised European Union Trade Mark comprising the identical word mark RA, which covered many similar and identical specification terms. The Hearing Officer’s surprising decision was, however, that the opposition was to be rejected in its entirety.
Of interest to trade mark applicants are two key take-away points. First, significant stylisation in an earlier mark can lead to a finding of no likelihood of confusion even when the later filed mark comprises an identical word or letter element and claims identical goods and services. Second, any arguments submitted at such IPO proceedings, however worthy, should always be set out in advance under the Appeal’s supporting Statement of Grounds.
Our highly regarded Trade Mark and Domain Names Group can offer further guidance on the application and protection of trade marks. Our trade mark attorneys assist clients in the selection, protection, management, and enforcement of trade marks, in domain name disputes, brand strategy and with the protection and enforcement of designs and advice in connection with copyright and other IP-related areas. The Group is regularly instructed in a number of high value, potentially high-profile and ground breaking cases, in the trade mark infringement and passing-off fields. Our attorneys are experienced in partnering and working as part of a team with solicitors and barristers in connection with such matters before the UK, EU and foreign courts including the UK High Court, the General Court (formerly the Court of First Instance (CFI)) and the European Court of Justice (ECJ).
To read the article in full, please click here.
This article was first published in the May 2016 issue of the ITMA Review, the journal of the Institute of Trade Mark Attorneys (ITMA). For more information on ITMA, please visit itma.org.uk.