Tricky trade mark issues - toy shapes and trading names

In the Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Others case, the English Court of Appeal has provided guidance on what is required for a business located elsewhere to have goodwill in England which is sufficient enough to base a passing off action on.

It also clarified that an "own name" defence can be successful in a trade mark infringement action where the own name relied upon is the trading name for a company, even if it is not its actual registered company name. This is subject however to the strict proviso that the trading name has been adopted in accordance with honest commercial practices. Our expert has produced a useful analysis of this decision.

In Lego Juris A/S v OHIM and MEGA Brands, Inc (C 48/09 P), advocate General Mengozzi has confirmed that in his opinion, the community trade mark which Lego obtained for the shape of its standard brick is invalid. However, he has also attempted to provide some guidance as to the registerability of a shape mark, the shape of which serves a technical function to some extent but which also has "essential features" which are non-functional.

The advocate general's aim was to clarify the legal uncertainty left behind by the European Court of Justice following the famous Philips v Remington case. Our expert has considered whether this aim has been achieved in an in-depth analysis of this complex opinion.