In Nov 2015 a British private limited company registered the words YORUBA and Yoruba as UK trade marks for a wide range of goods and services. Nobody seems to have objected to the registration at the time. On 23 May 2021, another UK incorporated company called The Culture Tree protested vociferously. Many others around the world joined in. It appears that the registered proprietor has agreed to assign the registrations to The Culture Tree which has removed one objection. But should it have been possible to register the name of a nation of 70 million at all? What should be done to prevent issues of this kind in future?
These are the slides for my introduction to brands which I presented on the 25 September 2013 to an audience of 20 at 4-5 Gray's Inn Square.
This talk follows on from my Introduction to IP in June 2013 and if you have not seen those slides or read the manual it is worth doing so.
Brands are the handle by which businesses, goods and services are recognized by the market place. They include trade marks and trade names but are so much more.
Investment in branding is protected in the UK by a set of legal rules:
- the action for passing off;
- trade mark registration;
- geographical indications; and
- domain names.
The action for passing off is a judge-made doctrine that has evolved over centuries. Essentially it is a prohibition against misrepresenting one trader's goods, services or business as those of another by adopting the same or a similar sign. Essentially there are three probanda:
- reputation or goodwill;
- misrepresentation, and
- damage.
There are however two special types of passing off:
- extended passing off where the goodwill is in the product rather than the producer; and
- inverse passing off where the defendant claims the goods or services of the claimant as his or her own.
Trade marks are signs that can distinguish one trader's goods or services from those of all others. They are registered for specified goods or services which are organized into classes in accordance with the Nice Agreement. The registration of a trade mark confers the exclusive right to use the mark in relation to the specified goods or services.
A registered trade mark can be infringed by using:
- a sign that is identical to the registered mark in respect of the specified goods or services;
- a sign that is the same or similar to the registered mark in relation to the same or similar goods where because of such similarity there is a likelihood of confusion including a likelihood of association with the registered mark; and
- a sign in relation to any goods or services that is similar to a mark with a reputation where the use without due cause takes unfair advantage of or is detrimental to the registered mark.
There are a number of exceptions to the exclusive rights conferred by registration and a defendant to an infringement action will often counterclaim for the revocation or invalidation of the registered mark.
There are two special types of trade mark:
- collective marks; and
- certification marks.
Trade marks may not be registered if such registration is contrary to the public interest (absolute grounds) or conflicts with an earlier trade mark or other IP right.
WTO member states have an obligation under TRIPS to protect the i
These are the slides for my introduction to brands which I presented on the 25 September 2013 to an audience of 20 at 4-5 Gray's Inn Square.
This talk follows on from my Introduction to IP in June 2013 and if you have not seen those slides or read the manual it is worth doing so.
Brands are the handle by which businesses, goods and services are recognized by the market place. They include trade marks and trade names but are so much more.
Investment in branding is protected in the UK by a set of legal rules:
- the action for passing off;
- trade mark registration;
- geographical indications; and
- domain names.
The action for passing off is a judge-made doctrine that has evolved over centuries. Essentially it is a prohibition against misrepresenting one trader's goods, services or business as those of another by adopting the same or a similar sign. Essentially there are three probanda:
- reputation or goodwill;
- misrepresentation, and
- damage.
There are however two special types of passing off:
- extended passing off where the goodwill is in the product rather than the producer; and
- inverse passing off where the defendant claims the goods or services of the claimant as his or her own.
Trade marks are signs that can distinguish one trader's goods or services from those of all others. They are registered for specified goods or services which are organized into classes in accordance with the Nice Agreement. The registration of a trade mark confers the exclusive right to use the mark in relation to the specified goods or services.
A registered trade mark can be infringed by using:
- a sign that is identical to the registered mark in respect of the specified goods or services;
- a sign that is the same or similar to the registered mark in relation to the same or similar goods where because of such similarity there is a likelihood of confusion including a likelihood of association with the registered mark; and
- a sign in relation to any goods or services that is similar to a mark with a reputation where the use without due cause takes unfair advantage of or is detrimental to the registered mark.
There are a number of exceptions to the exclusive rights conferred by registration and a defendant to an infringement action will often counterclaim for the revocation or invalidation of the registered mark.
There are two special types of trade mark:
- collective marks; and
- certification marks.
Trade marks may not be registered if such registration is contrary to the public interest (absolute grounds) or conflicts with an earlier trade mark or other IP right.
WTO member states have an obligation under TRIPS to protect the i
Knobbe Martens Partners Catherine Holland, Lynda Zadra-Symes, Jeff Van Hoosear and Jonathan Hyman give insight into the major trademark law issues across multiple jurisdictions, covering: ownership and scope of trademarks, application for registration, appeal of failed applications, third-party opposition to registration, duration and maintenance of marks, assignment, markings, types of trademark enforcement proceedings, procedural format and timing, discovery, litigation costs, defenses and remedies and appeals.
Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through: Trademarks 2016, (published in September 2015) For further information please visit www.gettingthedealthrough.com.
International Relations - World Trade OrganizationDr. Anita Rathod
History of the multilateral trading system, The General Agreement on Trade in Services (GATS), Trade-Related Aspects of Intellectual Property Rights (TRIPs), Trade-Related Investment Measures (TRIMs), Principles of WTO, WTO, Functions of WTO, General Council and their functions.
Aji Kadhasnah, Protection of Well Known Trademark and Cancellation of Tradema...Aji Kadhasnah Putera
Definition of trademark
Article 1 point 1 of Law No. 20 of 2016 on Trademark and Geographical Indication:
A trademark is a sign that can be graphically displayed in the form of images, logos, names, words, letters, numbers, color arrangements, in the form of 2 (two) dimensions and/or 3 (three) dimensions, sounds, holograms, or a combination of 2 (two) or more such elements to distinguish goods and/or services produced by people or legal entities in the trading activities of goods and/or services.
Legal Basis on Trademark
1. Law No. 20 of 2016 on Trademark and Geographical Indication as amended by Law No. 11 of 2020 on Job Creation Law (“Trademark Law”);
2. Ministry of Law and Human Rights Regulations No. 67 of 2016 on Trademark Registration (“MOLHR No. 67/2016”);
3. Ministry of Law and Human Rights Regulations No. 12 of 2021 on Amendment of MOLHR No. 67/2016 (“MOLHR No. 42/2016”);
4. Ministry of Law and Human Rights Regulation No. 42 of 2016 on Electronic Intellectual Property Application Service (“MOLHR No. 42/2016”);
5. Government Regulation No. 60 of 2021 on Types and Rates on Types of Non-Tax State Revenues Applicable to State Administrative Institutions (“GR 60/2021”);
6. Trade-Related Aspects of Intellectual Property Rights (“TRIPS”);
7. The Madrid Protocol
A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights
Introduction - CRM- Definition, Emergence of CRM Practice, Factors responsible for CRM growth, CRM process, framework of CRM, Benefits of CRM, Types of CRM, Scope of CRM, Customer Profitability, Features Trends in CRM
, CRM and Cost-Benefit Analysis, CRM and Relationship Marketing.
A checklist for litigants bringing or defending IP actions in the Small Claims Track of the Intellectual Property Enterprise Court.
This article covers the court's jurisdiction, its rules and practice, pleadings, disclosure and remedies
This article supplements IPEC Small claims Track Guide, CPR Parts 27 and 63 and the Part 27A and Part 63 Practice Directions.
Some background information for a dialogue with Carwyn Edwards on copyright and ICT organized by North Wales Tech and North Wales Creative on 21 April 2021,
Knobbe Martens Partners Catherine Holland, Lynda Zadra-Symes, Jeff Van Hoosear and Jonathan Hyman give insight into the major trademark law issues across multiple jurisdictions, covering: ownership and scope of trademarks, application for registration, appeal of failed applications, third-party opposition to registration, duration and maintenance of marks, assignment, markings, types of trademark enforcement proceedings, procedural format and timing, discovery, litigation costs, defenses and remedies and appeals.
Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through: Trademarks 2016, (published in September 2015) For further information please visit www.gettingthedealthrough.com.
International Relations - World Trade OrganizationDr. Anita Rathod
History of the multilateral trading system, The General Agreement on Trade in Services (GATS), Trade-Related Aspects of Intellectual Property Rights (TRIPs), Trade-Related Investment Measures (TRIMs), Principles of WTO, WTO, Functions of WTO, General Council and their functions.
Aji Kadhasnah, Protection of Well Known Trademark and Cancellation of Tradema...Aji Kadhasnah Putera
Definition of trademark
Article 1 point 1 of Law No. 20 of 2016 on Trademark and Geographical Indication:
A trademark is a sign that can be graphically displayed in the form of images, logos, names, words, letters, numbers, color arrangements, in the form of 2 (two) dimensions and/or 3 (three) dimensions, sounds, holograms, or a combination of 2 (two) or more such elements to distinguish goods and/or services produced by people or legal entities in the trading activities of goods and/or services.
Legal Basis on Trademark
1. Law No. 20 of 2016 on Trademark and Geographical Indication as amended by Law No. 11 of 2020 on Job Creation Law (“Trademark Law”);
2. Ministry of Law and Human Rights Regulations No. 67 of 2016 on Trademark Registration (“MOLHR No. 67/2016”);
3. Ministry of Law and Human Rights Regulations No. 12 of 2021 on Amendment of MOLHR No. 67/2016 (“MOLHR No. 42/2016”);
4. Ministry of Law and Human Rights Regulation No. 42 of 2016 on Electronic Intellectual Property Application Service (“MOLHR No. 42/2016”);
5. Government Regulation No. 60 of 2021 on Types and Rates on Types of Non-Tax State Revenues Applicable to State Administrative Institutions (“GR 60/2021”);
6. Trade-Related Aspects of Intellectual Property Rights (“TRIPS”);
7. The Madrid Protocol
A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights
Introduction - CRM- Definition, Emergence of CRM Practice, Factors responsible for CRM growth, CRM process, framework of CRM, Benefits of CRM, Types of CRM, Scope of CRM, Customer Profitability, Features Trends in CRM
, CRM and Cost-Benefit Analysis, CRM and Relationship Marketing.
A checklist for litigants bringing or defending IP actions in the Small Claims Track of the Intellectual Property Enterprise Court.
This article covers the court's jurisdiction, its rules and practice, pleadings, disclosure and remedies
This article supplements IPEC Small claims Track Guide, CPR Parts 27 and 63 and the Part 27A and Part 63 Practice Directions.
Some background information for a dialogue with Carwyn Edwards on copyright and ICT organized by North Wales Tech and North Wales Creative on 21 April 2021,
Here are the slides of a presentation that I gave to the Barnsley Business Village on 19 Feb 2021. Unlike my earlier presentations, this was designed for business owners. I discussed what was meant by IP, why monopolies such as patents and exclusive rights such as copyrights were difficult to reconcile with the concept of a single market, the need for the approximation of laws and unitary IP rights and the arrangements made in the withdrawal agreement to continue to protect in the UK intellectual assets that were protected by EU intellectual property rights.
What every Business in Wales needs to know about Intellectual PropertyJane Lambert
On 9 Feb 2021, I gave a talk to the Menai Science Park Enterprise Hub entitled "What Every Business in Wales needs to know about Intellectual Property." I prepared these slides for the talk although I did not all of them. Instead, I asked them for their interests which seemed to be registering trade marks and registering designs.
What every business in Bradford needs to know about Intellectual PropertyJane Lambert
Yesterday, I was asked by Steve Ding of Webanbywhere to give the first presentation of the BradfordNetwork. I was delighted to accept that invitation because Steve ran a network for the creative sector in Bradford and Barnsley called Bmedi@ about 10 years ago. The network held talks with leading artists, designers, entrepreneurs, inventors and innovators from West Yorkshire and beyond and regular breakfast meetings at the Business and Innovation Centres in Barnsley. Those events were very well attended. Sadly Bmedi@ disbanded several years ago, It has been sorely missed ever since. At present the only events that can take place are online but the BradfordNetwork hopes to hold some live meetings in the Bmedi@ format with the same sort of speakers once the public health emergency is over.
On 26 Jan 2020, I have a talk over Zoom on "IP after Brexit". My slides are already on Slideshare. These are supplemented by this handout which covers:
- Art 50 of the Treaty of European Union
- The European Union (Withdrawal) Act 2019
- The statutory instruments made in anticipation of our exiting with a withdrawal agreement
- The withdrawal agreement
- The European Union (Withdrawal Agreement) Act 2020
- The Trade and Cooperation Agreement
- The European Union (Future Relationship) Act 2020.
These notes track every legislative change to the requirement in the withdrawal agreement. I also discuss changes to the law not effected by the withdrawal agreement and consider future development of our IP law.
At 23:00 on 31 Dec 2020 EU law ceased to apply to the UK including the Regulations establishing the EU Trade Mark, the Community Design and many other rights. A priority in the negotiations for the UK's withdrawal from the EU was the continued protection of the brands, designs and other intellectual assets that been protected by such rights. The withdrawal agreement entered in Jan 2020 provided for EU trade marks, Community designs, Community plant vaieties, database rights and supplementary protection certificates. This presentation considers the relevant provisions of the withdrawal agreementn and the statutes and secondary legislation which implemnted it. Such legislation is now bearing a great part of the UK's IP infrastructure.
These are the slides for a presentation that I shall deliver over Zoom on 2 Sept 2020 at 14:00. It discusses the judgment of the UK Supreme Court in Unwired Planet International Ltd r v Huawei Technologies (UK) Co Ltd [2020] UKSC 37 which was delivered on 26 Aug 2020.
These are the slides for my presentation to the Menai Science Park Enterprise Hub on 30 June 2020.
This presentation explains what is meant by intellectual property and why it is important to business.
It considers different types of IP:
- patents
- trade marks
- registered designs
- copyrights and related rights,
I talked about related rights and how they can be obtained and rights that arise automatically,
I discussed enforcement and sources of further information including the Business and IP Centres at the British Library and Liverpool.
Finally, I mentioned the network of IP experts to assist M-SParc tenants and others in North Wales.
The handout for the first module of my an introduction to English patent law. A patent is defined as "a monopoly of an invention". That proposition is unpacked to consider what is meant by "monopoly" and what is meant by "invention". These notes discuss the inventor's bargain with the public and its reflection in the specification, They explore what is meant by the teaching of the patent in the description and the monopoly in the claims,
This is the handout for the final module of my introduction to English patent law. It analyses s.60 (1) of the Patents Act 1977 in the light of s.125 (1). It considers para 4 of the Part 63 Practice Direction. It discusses Lord Diplock's judgment in Catnic It mentions s.125 (3) of the Patents Act, art 69 (1) EPC and the Protocol on Interpretation. It analyses Improver, Kirin Amgen, Eli Lilly v Actavis and Icescape. It discusses possible defences and threats actions.
This is the final module of my introduction to English patent law. It analyses s.60 (1) of the Patents Act 1977 in the light of s.125 (1). It considers para 4 of the Part 63 Practice Direction. It discusses Lord Diplock's judgment in Catnic It mentions s.125 (3) of the Patents Act, art 69 (1) EPC and the Protocol on Interpretation. It analyses Improver, Kirin Amgen, Eli Lilly v Actavis and Icescape. It discusses possible defences and threats actions.
Patents 101 Part 4 - Applying for a PatentJane Lambert
The handout to the fourth module of my introduction to English patent law. The procedure for applying for a UK patent and European patent (UK) and making PCT applications. Appeals to the Comptroller in the UK and the Boards of Appeal in the EPO. Entitlement and inventorship disputes,
Patents101 Part 4 - Applying for a PatentJane Lambert
The fourth module of my introduction to English patent law. The procedure for applying for a UK patent and European patent (UK) and making PCT applications. Appeals to the Comptroller in the UK and the Boards of Appeal in the EPO. Entitlement and inventorship disputes,
The handout for the third of my modules on English patent law. This one deals with patentability or the conditions for the grant of a patent, namely novelty, an inventive step, utility and no exclusion from patentability. On novelty, readers are introduced to the concept of the "state of the art" and the test of novelty in General Tire and Rubber v Firestone. As to inventiveness, they are introduced to the concepts of the skilled addressee and common general knowledge and the Supreme Court's decision in Actavis v ICOS. Finally, on excluded matter there is a very close look at the Aerotel and Macrpssan tests.
The third of my modules on English patent law. This one deals with patentability or the conditions for the grant of a patent, namely novelty, an inventive step, utility and no exclusion from patentability. On novelty, readers are introduced to the concept of the "state of the art" and the test of novelty in General Tire and Rubber v Firestone. As to inventiveness, they are introduced to the concepts of the skilled addressee and common general knowledge and the Supreme Court's decision in Actavis v ICOS. Finally, on excluded matter there is a very close look at the Aerotel and Macrossan tests.
The handout for the second module of my introduction to English patent law. This covers the sources of law, both legislation and the case law. The module focuses on the Patents Act 1977 and the European Patent Convention. It also introduces readers to the main sets of law reports for patent law, the Reports of Patent Cases ("RPC") and the Fleet Street Reports ("FSR").
The second module in my introduction to English patent law. Readers are introduced to the legislation and case law. A closer look at the Patents Act 1977, the Patents Rules 2007, the European Patent Convention, the Patents Court and the Intellectual Property Enterprise Court Guides. Readers are also introduced to the Reports of Patent Cases and the Fleet Street Reports.
The first module of my 5 part course on English patent law. This module defines a patent as a monopoly of an invention. it explains the difference between a monopoly and a right to prevent a particular act such as copying. It introduces readers to specifications and claims. It lays the foundation for the rest of the course.
These are the slides for the presentation that I was due to give to the makers at FFPWS on 1 April. FFIWS is a maker space in Porthmadog with laser cutters, 3D printers and all sorts of other impressive kits. As my visit has had to be cancelled I have decided to deliver my presentation online. If there is still enough interest in Porthmadog (or anywhere else in the world for that matter) I will give a fee webinar on 15 April 2020 on IP Law for Makers, The IP law in question will be the law of Wales and England which will not be exactly the same elsewhere but most of the presentation should be relevant more or less anywhere.
Military Commissions details LtCol Thomas Jasper as Detailed Defense CounselThomas (Tom) Jasper
Military Commissions Trial Judiciary, Guantanamo Bay, Cuba. Notice of the Chief Defense Counsel's detailing of LtCol Thomas F. Jasper, Jr. USMC, as Detailed Defense Counsel for Abd Al Hadi Al-Iraqi on 6 August 2014 in the case of United States v. Hadi al Iraqi (10026)
Car Accident Injury Do I Have a Case....Knowyourright
Every year, thousands of Minnesotans are injured in car accidents. These injuries can be severe – even life-changing. Under Minnesota law, you can pursue compensation through a personal injury lawsuit.
NATURE, ORIGIN AND DEVELOPMENT OF INTERNATIONAL LAW.pptxanvithaav
These slides helps the student of international law to understand what is the nature of international law? and how international law was originated and developed?.
The slides was well structured along with the highlighted points for better understanding .
RIGHTS OF VICTIM EDITED PRESENTATION(SAIF JAVED).pptxOmGod1
Victims of crime have a range of rights designed to ensure their protection, support, and participation in the justice system. These rights include the right to be treated with dignity and respect, the right to be informed about the progress of their case, and the right to be heard during legal proceedings. Victims are entitled to protection from intimidation and harm, access to support services such as counseling and medical care, and the right to restitution from the offender. Additionally, many jurisdictions provide victims with the right to participate in parole hearings and the right to privacy to protect their personal information from public disclosure. These rights aim to acknowledge the impact of crime on victims and to provide them with the necessary resources and involvement in the judicial process.
A "File Trademark" is a legal term referring to the registration of a unique symbol, logo, or name used to identify and distinguish products or services. This process provides legal protection, granting exclusive rights to the trademark owner, and helps prevent unauthorized use by competitors.
Visit Now: https://www.tumblr.com/trademark-quick/751620857551634432/ensure-legal-protection-file-your-trademark-with?source=share
WINDING UP of COMPANY, Modes of DissolutionKHURRAMWALI
Winding up, also known as liquidation, refers to the legal and financial process of dissolving a company. It involves ceasing operations, selling assets, settling debts, and ultimately removing the company from the official business registry.
Here's a breakdown of the key aspects of winding up:
Reasons for Winding Up:
Insolvency: This is the most common reason, where the company cannot pay its debts. Creditors may initiate a compulsory winding up to recover their dues.
Voluntary Closure: The owners may decide to close the company due to reasons like reaching business goals, facing losses, or merging with another company.
Deadlock: If shareholders or directors cannot agree on how to run the company, a court may order a winding up.
Types of Winding Up:
Voluntary Winding Up: This is initiated by the company's shareholders through a resolution passed by a majority vote. There are two main types:
Members' Voluntary Winding Up: The company is solvent (has enough assets to pay off its debts) and shareholders will receive any remaining assets after debts are settled.
Creditors' Voluntary Winding Up: The company is insolvent and creditors will be prioritized in receiving payment from the sale of assets.
Compulsory Winding Up: This is initiated by a court order, typically at the request of creditors, government agencies, or even by the company itself if it's insolvent.
Process of Winding Up:
Appointment of Liquidator: A qualified professional is appointed to oversee the winding-up process. They are responsible for selling assets, paying off debts, and distributing any remaining funds.
Cease Trading: The company stops its regular business operations.
Notification of Creditors: Creditors are informed about the winding up and invited to submit their claims.
Sale of Assets: The company's assets are sold to generate cash to pay off creditors.
Payment of Debts: Creditors are paid according to a set order of priority, with secured creditors receiving payment before unsecured creditors.
Distribution to Shareholders: If there are any remaining funds after all debts are settled, they are distributed to shareholders according to their ownership stake.
Dissolution: Once all claims are settled and distributions made, the company is officially dissolved and removed from the business register.
Impact of Winding Up:
Employees: Employees will likely lose their jobs during the winding-up process.
Creditors: Creditors may not recover their debts in full, especially if the company is insolvent.
Shareholders: Shareholders may not receive any payout if the company's debts exceed its assets.
Winding up is a complex legal and financial process that can have significant consequences for all parties involved. It's important to seek professional legal and financial advice when considering winding up a company.
ALL EYES ON RAFAH BUT WHY Explain more.pdf46adnanshahzad
All eyes on Rafah: But why?. The Rafah border crossing, a crucial point between Egypt and the Gaza Strip, often finds itself at the center of global attention. As we explore the significance of Rafah, we’ll uncover why all eyes are on Rafah and the complexities surrounding this pivotal region.
INTRODUCTION
What makes Rafah so significant that it captures global attention? The phrase ‘All eyes are on Rafah’ resonates not just with those in the region but with people worldwide who recognize its strategic, humanitarian, and political importance. In this guide, we will delve into the factors that make Rafah a focal point for international interest, examining its historical context, humanitarian challenges, and political dimensions.
Introducing New Government Regulation on Toll Road.pdfAHRP Law Firm
For nearly two decades, Government Regulation Number 15 of 2005 on Toll Roads ("GR No. 15/2005") has served as the cornerstone of toll road legislation. However, with the emergence of various new developments and legal requirements, the Government has enacted Government Regulation Number 23 of 2024 on Toll Roads to replace GR No. 15/2005. This new regulation introduces several provisions impacting toll business entities and toll road users. Find out more out insights about this topic in our Legal Brief publication.
In 2020, the Ministry of Home Affairs established a committee led by Prof. (Dr.) Ranbir Singh, former Vice Chancellor of National Law University (NLU), Delhi. This committee was tasked with reviewing the three codes of criminal law. The primary objective of the committee was to propose comprehensive reforms to the country’s criminal laws in a manner that is both principled and effective.
The committee’s focus was on ensuring the safety and security of individuals, communities, and the nation as a whole. Throughout its deliberations, the committee aimed to uphold constitutional values such as justice, dignity, and the intrinsic value of each individual. Their goal was to recommend amendments to the criminal laws that align with these values and priorities.
Subsequently, in February, the committee successfully submitted its recommendations regarding amendments to the criminal law. These recommendations are intended to serve as a foundation for enhancing the current legal framework, promoting safety and security, and upholding the constitutional principles of justice, dignity, and the inherent worth of every individual.
1. The UK YORUBA Trade
Mark Registration
Jane Lambert
Barrister
2. The Registrations
In November 2015 an English private limited company formerly called Timbuktu
Ltd registered the following trade marks:
● UK3136476: YORUBA and Yoruba for clothing, footwear, headgear, belts in
class 25
● UK3138448: YORUBA and Yoruba for a much wider range of goods and
services in classes 9, 14, 18, 21, 28, 35, 41
According to information supplied to the UK registrar of companies, Timbuktu Ltd
carried on business as a wholesaler of clothing and footwear, a retailer of clothing
in specialised stores and a mail order and internet retailer. On 27 May 2021
Timbuktu Ltd. changed its name to Kesmere Ltd.
3. The Twitter Protest
23 May 2021
CultureTree
@Culturetreetv
Did you know that @TimbuktuGlobal a retail company owned by two WHITE-BRITISH
people from Lancashire who have no affiliation with Yoruba language or tribe have
trademarked the word ‘YORUBA’ and are opposing anyone else from using it? A
THREAD
7,244 Retweets 1,950 Quote Tweets 5,928 Likes
4. The Twitter Protest
On 24 May 2021 The IPO replied:
IPO.GOV.UK
@The_IPO
·May 24
When examining trade marks, our role is to interpret existing laws and be as
transparent as possible in our decision making processes while reflecting the society
around us (2)
6. UK Trade Marks Law
● Trade Marks Act 1994
● 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 (Text with EEA relevance) OJ L 336, 23.12.2015, p. 1–26
● TRIPS
● Paris Convention
● WIPO Trade Mark Law Treaty
7. UK Trade Mark Act 1994
1. - (1)1 In this Act “trade mark” means any sign which is capable-
(a) of being represented in the register in a manner which enables the registrar
and other competent authorities and the public to determine the clear and precise
subject matter of the protection afforded to the proprietor,and
(b) of distinguishing goods or services of one undertaking from those of other
undertakings.
A trade mark may, in particular, consist of words (including personal names),
designs, letters, numerals, colours, sounds or the shape of goods or their
packaging.
8. UK Trade Mark Act 1994
Applications to register trade marks may be refused on two grounds:
● Absolute Grounds
● Relative Grounds
Absolute grounds are the inherent unsuitability of the mark for registration
Relative grounds include the existence of an earlier mark for the same or similar
goods or a right to bring an action for passing off,
9. Absolute Grounds of Refusal
● There is no specific prohibition on the registration of the name of a nation,
tribe or language in the Act.
● Nor are there any rules reserving the right to register such a mark to a
member of that nation or tribe or speaker of that language
● But s.3 (a) prohibits a registration that is contrary to public policy or to
accepted principles of morality, and
● S.3 (b) prohibits a registration of such a nature as to deceive the public (for
instance as to the nature, quality or geographical origin of the goods or
service)
10. Absolute Grounds of Refusal
● S.3 (4A) (c) prohibits any registration that is contrary to any international
agreement to which the United Kingdom is a party, providing for the protection
of designations of origin or geographical indications.
● S.3 (5) prohibits registration of specially protected emblems such as the UK
and other flags and the international Olympic symbol.
● S.3 (6) prohibits registration if or to the extent that the application is made in
bad faith.
11. Invalidation of Marks
S.47 (1):
The registration of a trade mark may be declared invalid on the ground that the
trade mark was registered in breach of section 3 or any of the provisions referred
to in that section (absolute grounds for refusal of registration).
12. Oppositions and Invalidity Applications
● Proceedings usually begin in the Trade Marks Registry which is part of the
Intellectual Property Office.
● Disputes are referred to tribunals known as “hearing officers”
● Appeals from hearing officers can be made either to the courts or a tribunal
known as “the Appointed Person”
● The validity of a registration can be challenged in infringement proceedings in
the civil courts
13. Continuing Problems
● Kesmere Ltd’s assignment of the offending registrations to The Culture Tree
removes one objection (namely that the proprietor is a company whose
directors and shareholders have no connection with the Yoruba nation or
language) but it still leaves a monopoly in the hands of another British
company owned by another British national albeit one of Nigerian heritage.
14. Questions for Discussion
● Should it be possible for a Nigerian company to register the name of the Inuit
people (the original inhabitants of Greenland) or the Inuit language as a
Nigerian trade mark?
● Should it make a difference if the Nigerian company was
○ A travel agency specializing in tours from Lagos to Greenland?
○ An importer and distributor of Inuit handicrafts or local delicacies such as
reindeer meat or salmon in Nigeria?
● Do we need an international agreement to require all countries to change their
laws?
● Should such a law make an exception for collective or certification marks?