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What's In A Name? Recent IP Disputes Setting The Legal World Alight

02/11/2016 15:27

Intellectual property lawyer Wayne Beynon rounds up some of the more notable IP cases to appear in the news in 2016.

It's getting cold in here...(Iceland v Iceland)
Have you got Iceland (the frozen food supermarket) confused with Iceland (the country) before? Granted it's not an everyday issue for most of us, but there are occasions when some conversational confusion may take place. If this has happened to you then you might have had a wry smile to yourself when the news recently emerged that Promote Iceland, the Icelandic Ministry of Foreign Affairs, is considering bringing a claim against the frozen food chain over the use of its name.
The Icelandic Government stated that Iceland Foods had stopped Icelandic companies from using the word 'Iceland' to describe themselves. They argue that based on its trade mark registrations, Iceland Foods has pursued and won multiple cases against Icelandic companies seeking to describe themselves using the word 'Iceland', even in cases when the products and services do not compete.
Another issue of contention, which has caused even frostier relations, is the claim that Iceland (the supermarket) benefits from the country's positive media coverage such as that created during Euro 2016, while excluding the country itself from exploiting such coverage.
A representative for the country has said that Iceland is not planning on using the name in relation to supermarkets. However, the issue of contention is the scope of the Iceland Foods' registrations which the country considers too wide. It is not confirmed yet whether the case will be going ahead and what type of proceedings would be brought against Iceland Foods. However, it seems likely that if the Icelandic Government chooses to pursue it, invalidation proceedings in relation to the supermarket's registration in some or all of the registered classes could be one of the options.


The empire strikes back? (Lucas Film v Lightsaber Academies)

Cinema giant Lucas Film plans to strike back against the creator of 'Jedi Schools' over the unauthorised use of a logo that is extremely similar to their own trademarked 'Jedi Order' logo. The creator of these schools, Michael Brown, a sound engineer from Brooklyn, has also created Lightsaberacademy.com to promote his classes and demos.
The lawsuit specifically claims that even though Mr Brown did repeatedly ask for permission to use their trademarked logos and names, he has subsequently ignored their refusals and has proceeded to use them regardless.
The corporation (which is now owned by Disney) has a reputation for diligently enforcing its intellectual property rights and so, true to form, Lucas Films has not taken this infringement lying down.


'Should've gone to Specsavers'!

Specsavers infamous "Should've have gone to Specsavers" catchphrase is clearly a very successful piece of branding, that has over the years become central to the company's image and public perception. It is therefore no surprise that Specsavers should be keen to protect its catchy slogan and in August of this year the company had its plan to trademark the phrase "should've" approved by the UK Intellectual Property Office - a move that took both its optical competitors and the IP community rather by surprise.
It's decidedly unusual for a company to be granted a monopoly right over just one word, especially when it is used by all of us every day as part of the English language. However, when viewed in the light of the IPO's decision to grant Carlsberg a trade mark over the word "probably" in 2009, this decision seems to follow the same precedent and so perhaps shouldn't come as a great shock.


The real clash of the titans (Apple v Samsung)

It's fair to say that Apple and Samsung have a chequered IP history. The two tech giants have been engaging in IP related spats for many years now, kicking off in earnest in 2011 when Apple first sued Samsung for copying iPad designs, with Samsung then counter-suing over the use of 3G technology.
The lawsuits developed to cover design patents for the iPhone and the whole saga has been characterised by failed settlements, trials, retrials and appeals in multiple jurisdictions.
In February Samsung overturned a $120 million jury verdict on appeal relating to the infringement of slide-to-unlock and auto-correct features. In what seems like one of the final showdowns between the two, the US Supreme Court will rule on how much of the final $399 million patent infringement award upheld after appeal Samsung must pay for copying the iPhone look. Up for debate are Apple's numerous design patents that include the rounded corners of its phones, the rim that surrounds the front face and the grid of icons that users view.

It's all about being a good player (Celtic Manor v Celtic Minor)
Celtic Minor Golf Club in Swansea (previously Palleg Club), has seen its profile sky rocket since its rather daring name change when the club was taken over by new owners in February 2015.
Of course, the club's new name bears a remarkable similarity to the rather more famous Celtic Manor Resort in Newport just over an hour down the M4, which boasts three golf courses, three hotels, numerous restaurants and spas and has hosted world class events like the Ryder Cup and global NATO summit.
After initially flying under the radar with its new moniker, the club's name change came to widespread attention after a successful radio advertising campaign aiming to attract more members. However, thanks to Celtic Minor's newfound notoriety Celtic Manor is now threatening legal action and has warned it will challenge any further attempts to exploit its established reputation, or abuse what it describes as its own goodwill.
The smaller club insists that its owner looked into the legal framework of renaming the club and never meant to upset Celtic Manor.

Wayne Beynon is an IP lawyer at Cardiff and London based law firm Capital Law.

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