We win top intellectual property award

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Our IP team was last night awarded IPEC Firm of the Year at the 17th annual Managing IP awards. The awards were held at the Royal Lancaster Hotel, London.

One of eight firms shortlisted in the hotly contested Intellectual Property Enterprise Court (“IPEC”) firm of the year category, the win is another milestone in the team’s ambition to be recognised as one of the top IP teams in the marketplace.

The IPEC is a specialist IP court within the High Court, which aims to provide a procedure for intellectual property litigation which is speedier and less costly than is the case in the rest of the High Court. The IP team is well placed and highly experienced in representing clients in this forum, having issued proceedings in a substantial number of cases in the last couple of years, including success at trial in the Claydon Yield O Meter v Mzuri patent dispute in 2021, and the Marflow v Cassellie patent dispute in 2019. This award recognises the team’s successes and experience.

Managing IP awards showcase the best providers and suppliers of IP services across the globe and recognise the firms, individuals and companies behind the most innovative and challenging IP work of the past year, as well as those driving the international IP market.

Commenting on the win, national head of IP Nick Briggs said, “We are absolutely delighted to have won this competitive category at these prestigious industry awards, especially amongst such high calibre competition. It is a great honour and testament to the hard work and standard of work the team has been undertaking over the past 12 months and beyond. Every member of the team has played a part in this fabulous award which moves us closer to our goal of being one of the leading national IP teams. Finally, and above all else, we look for success for our clients who trust us with their work, and to whom we extend our thanks”.

The team has recently expanded its regional footprint with the further development of our Sheffield office and the firm’s move into Bristol provides an opportunity to extend westwards our strong reputation in the Midlands market.

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Nick helps UK and international clients enforce and protect their Intellectual Property rights, and defends those accused of infringing IPRs.

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Lovely jubbly - English Courts provide guidance on when an intended parody becomes copyright infringement

Intellectual Property | Judgment update

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SHAZAM PRODUCTIONS LTD -v- ONLY FOOLS THE DINING EXPERIENCE LTD & ORS [2022] EWHC 1379 (IPEC)

A recent decision by the IPEC should act as a warning to anyone who is intending to base their own productions or works on existing works, particularly where they intend to do so for their own commercial gain.

The Case

The Intellectual Property Enterprise Court (“IPEC”) has provided (perhaps overdue) guidance on some key copyright issues, including whether fictional characters themselves are eligible for copyright protection, and when a parody or pastiche defence to copyright infringement may be raised.

The case concerns whether an interactive dining experience based on the BBC comedy series Only Fools and Horses constituted copyright infringement and/or passing off.

The claimant alleged copyright subsisted in particular scripts, the body of scripts as a whole, and the character Del Boy.  The claimant first needed to show that each of these was a copyright work under the Copyright, Designs and Patents Act 1988 (“CDPA”).

In relation to the scripts, the Judge concluded that they were dramatic works under Section 3 (1) of the CDPA, rather than literary works, as they were intended to be performed.

The “world of Only Fools and Horses” contained in the body of scripts however was not found to be a dramatic work (as it would never be performed in one go), or a literary work (as there was no intellectual creation in the arrangement of the scripts together).  Each script was simply a separate dramatic work.

In relation to the Del Boy Character, the claimant was ordered to identify five features of the character in which they allege copyright subsists from a particular script, and came up with the following:

Copyright

The claimant alleged copyright subsisted in particular scripts, the body of scripts as a whole, and the character Del Boy.  The claimant first needed to show that each of these was a copyright work under the Copyright, Designs and Patents Act 1988 (“CDPA”).

In relation to the scripts, the Judge concluded that they were dramatic works under Section 3 (1) of the CDPA, rather than literary works, as they were intended to be performed.

The “world of Only Fools and Horses” contained in the body of scripts however was not found to be a dramatic work (as it would never be performed in one go), or a literary work (as there was no intellectual creation in the arrangement of the scripts together).  Each script was simply a separate dramatic work.

In relation to the Del Boy Character, the claimant was ordered to identify five features of the character in which they allege copyright subsists from a particular script, and came up with the following:

  • His use of sales patter with replicated phrases

  • His use of French to try to convey an air of sophistication

  • His eternal optimism

  • His involvement in dodgy schemes

  • His making sacrifices for Rodney

There was no English case law authority that provided that copyright subsisted in the concept of a character. However, the Judge proceeded to apply the standard two part copyright test for whether copyright subsists from the EU Cofemel decision (C-683/17 Cofemel v G-Star Raw [2020] ECDR 9):

  1. that there exists an original subject matter, in the sense of being the author’s own intellectual creation” - the subject matter must reflect the personality of its author, as an expression of his/her free and creative choices.
    The Judge found that Del Boy as a character is an original creation of John Sullivan (the writer) which is the expression of his own free and creative choices. In deciding this, the Judge described the unique characteristics of Del Boy, including that he was “a fully rounded character with complex motivations and a full backstory”.

  2. classification as a work is reserved to the elements that are the expression of such creation” - the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
    The Judge found that the character of Del Boy is clearly and precisely identifiable to third parties in the scripts, and in particular the five characteristics identified by the claimant.

The Judge therefore concluded that the character Del Boy constituted a literary work for the purposes of section 3(1) of the CDPA.

Once this had been decided, the question of infringement was much easier, as the Judge found that “the evidence of infringement by the defendants is overwhelming and obvious” and that the level of copying was far more than the substantial copying required for infringement.

Fair Dealing Defences - Parody/ Pastiche

Section 30A of the CDPA provides: “Fair dealing with a work for the purposes of caricature, parody or pastiche does not infringe copyright in the work”.  The defendant sought to rely on this.

However this defence only applies where it does not conflict with a normal exploitation of the work or other subject matter and does not unreasonably prejudice the legitimate interests of the right holder (found in EU Directive: 2001/29/EC – the Info Soc Directive, in which section 30A has its origins.)

In order to qualify as a parody, the Judge noted that there should be an expression of some kind of opinion by means of imitation, but noticeable difference, from the work parodied.  This is more difficult, and far less common, where the parodied work itself is a comedy - mere imitation of a work of comedy (as in this case) is not enough to constitute parody.

In order to qualify as a pastiche, the use must either imitate the style of another work, or be an assemblage/medley of a number of pre-existing works, but must be noticeably different from the original work.  In theory this may therefore apply to a broad spectrum of ‘mash-ups’, fan fiction, music sampling, collage, appropriation art, medleys, and many other forms of homage and compilation – with each to be assessed on their own facts and merits.  The defence did not apply to these facts however, as the dining experience merely took the characters, back stories, jokes and catch phrases, and presented them in a live dining format, and so was more akin to reproduction by adaptation than pastiche.

Even if the use was found to properly fall within the definition or either a parody or pastiche, the Judge concluded that the use was not fair either, because:

  • the taking from the scripts was very extensive both in terms of the quantity of material and its quality;

  • the use made of the scripts was not a type of expression which attracts particular protection or engages fundamental rights e.g. political views, artistic dialogue or aesthetic criticism;

  • the aim was of putting on the show was simply to entertain the audience by bringing them into contact with the copied characters;

  • the use competes with the claimant’s own exploitation of the works, through promotional items and its own musical production, and conflicts with its legitimate interests in such.  The claimant would ordinarily look and expect to be able to control use of the works e.g. by licencing to third parties.

Passing Off

The Judge also found that the dining experience “passed off” the claimant’s rights in the Only Fools and Horses show, with the facts meeting the three part test in Reckitt & Colman Products Ltd v Borden Inc (No.3) [1990] 1 WLR 491:

  1. The claimant had significant goodwill in the name and characters, from for example the broadcast and merchandising since 1981;

  2. The name “Only Fools The (cushty) Dining Experience” was liable to confuse and mislead (misrepresentation); and

  3. There was a real likelihood of damage in the form of diversion of trade from the official musical production to the defendants’ (cheaper) dining experience.

Comment

This decision shows that copyright in the UK may be used to protect more abstract concepts such as characters within a script, mirroring similar protection granted in Germany for the character of Pippi Longstocking, and the US for the characters Sherlock Holmes and Dr Watson.  There was previously some concern that the UK courts had to stick rigidly to the specific types of ‘work’ listed in the CDPA, but following Cofemel this decision shows that the UK courts may be more flexible in finding that something is protectable by copyright.  Here they found that a character in a script, with five key characteristics, was classed as a “literary work”.

However, it also shows that not everything will be protectable, as the body of scripts, or the “world of Only Fools and Horses”, was not separately protectable outside of the individual scripts constituting such.

The decision should also be a warning to anyone who is intending to base their own productions or works on existing works, particularly where they intend to do so for their own commercial gain.  This may constitute copyright infringement and passing off.  Where the pre-existing work is as well-known as Only Fools and Horses, it may be both more likely that the owners of the relevant rights will take action and also that they will succeed.

Just because the derivative work is a comedy does not mean that it will fall within the parody or pastiche defences, particularly where the original work was also a comedy itself.

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Danny is an associate in our Intellectual Property team, with a specific focus on contentious intellectual property matters.

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'Invisible’ trade marks. Is it possible to protect or infringe something you can’t see or touch? Yes it is

Blog | Intellectual Property

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The complex and constantly evolving art of SEO (search engine optimisation) has kept marketers and content writers busy in recent years but now lawyers are getting involved too.  A recent trade mark infringement case between US dating site group Match Group, owner of Tinder and OkCupid, and smaller UK dating site Muzmatch, a Muslim dating app, has centered on the use of trade marked words and phrases that appear in a company’s SEO strategy and metadata. The judgment was handed down on 20 April 2022.

It is not uncommon for businesses in a similar marketplace to employ various tactics to take advantage of a competitors brand presence but there has been an increase in companies using competitors’ trade marks in metadata and SEO strategies, in an attempt to compete directly with each other online.

Incorporated into copy or buried deep in code, these are often referred to as ‘invisible’ trade marks, creating a grey area when it comes to infringement.  As a relatively new ‘marketing’ tactic, the impact of using this approach for both parties involved is only now being fully understood and as it is still comparatively new, lawyers are now taking a closer look.

The background

Search engines use algorithms and will crawl and trawl web pages to find keywords to help with page rankings.  Incorporating invisible trademarks into page content can drive traffic to a site and in this case, Muzmatch had created individual landing pages for approximately 5,000 keywords relating to Muslim marriage or Muslim matchmaking, which then directed browsers to the organisation’s main page.

This approach proved an incredibly effective marketing tool for the business, with an estimated 32,770 searches of three specific URLs leading to 11,725 click-throughs to the landing pages on the Muzmatch website.

Other companies have also hidden trade marked keywords on their websites by adding them in the same colour text as the website background so they cannot be seen, or by making the font size so small that it looks like a simple black line until the user zooms in. While the end user is unlikely to see them, search engines will.

Another way for companies to use trade marks ‘invisibly’ is by incorporating them into metadata and metatags, which is information used by search engines to identify the content of a website.

Both of these strategies are employed by many businesses very successfully but it can also open opportunities up for legal action too.  Match.com’s central argument was that Muzmatch used the word ‘match’ in its SEO and metatags to boost web traffic and therefore piggyback off the Match.com name. The word ‘match’ unsurprisingly appears in multiple registered trade marks owned by Match.com.

What is the current law?

Current law does not explicitly cover specific use in a digital setting – so law makers are applying existing trade mark law to new situations.    As the law is not distinct to a digital setting, the facts of each potential case of possible infringement are absolutely key and, as businesses are finding out, there are a vast number of variables involved – such as the wording of the trade mark itself, the goods or services on offer, the consumer demographics, similarity of the mark which is actually registered to the one used, how it is used, and even the trading history and size of the parties involved. Muzmatch’s response argument was primarily based on the trade mark itself, claiming that they had used the word ‘match’ in a purely descriptive sense, yet they were still found to have infringed Match Group’s trade marks incorporating the word ‘match’.

While it is entirely possible (and common) to trade mark an everyday phrase or word, it is highly unlikely that any company could prevent it ever being used elsewhere – that would provide too wide a scope for protection. However, as Muzmatch had included the word ‘match’ in its SEO strategy it was decided that it was using it in such a way as to potentially confuse a customer into thinking Muzmatch was affiliated with match.com - and therefore infringed its trade mark.  Such a finding is more likely in circumstances such as this where the goods/services offered by the potential infringer are identical to those for which the trade mark is registered.

Muzmatch’s second argument revolved around concurrent trading history. As the business had been trading since 2011, it felt that there had been sufficient time for Match Group to bring a case during this period, if it truly believed infringement had taken place. There is precedent for the ‘honest concurrent use’ defence, which briefly provides that if two companies use the same or similar words or phrases concurrently for a sufficiently long period, that mark may have come to indicate the goods or services of either of those parties.  Either company may then be entitled to register the mark notwithstanding that the other company had also used the mark, and may be able to defend an infringement claim brought by the company. It was however ruled in this case that this defence did not apply to Muzmatch as Match Group had filed the trade mark in 1996, 15 years before Muzmatch was formed and started trading.  It was found that they were therefore technically infringing from the beginning of their trading.

How can companies mitigate the risk of this happening?

There are a number of ways that companies can minimise the chance of legal action when planning their SEO and metadata marketing strategies. If there is any possible chance of brand confusion, putting a disclaimer on the website clearly stating there is no affiliation can help to sway a judge in the business’ favour should a competitor accuse them of infringement. Beware – it must be used in good faith and if found to be buried in the small print or is difficult to find then this may be viewed by a court as deliberately obscuring it, allowing for confusion.

Companies should also consider consulting a legal specialist before deciding and embarking on a SEO marketing strategy. As mentioned there are many variables and seeking legal advice ensures the correct due diligence has been carried out from the beginning, for example checking or clearing the metatags and keywords to be used, ensuring they will not be infringing another company’s trade marks.

This case could be viewed as a David v Goliath style situation - larger companies, such as Match Group with more time and deeper pockets bringing action against possible smaller infringers, who may not have the resources to engage in a costly legal battle.

The term ‘ invisible’ trade marks is also slightly misleading as while they are hidden from a user, any analytics software can find them and any code can be found using an internet browser. Therefore ‘invisible’ is not be confused with invincible and businesses should proceed with caution.

We wait to see how the law surrounding trade marks evolves to fit the digital world of today. With current decisions in this area primarily based on case law, they are subject to change and are always fact specific, creating a distinct lack of certainty. Many past decisions have also been influenced by EU laws, which now of course become less relevant in the years following Brexit.

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Mauro has over 25 years’ experience in advising clients on contentious and non-contentious intellectual property related issues.

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Ed Sheeran wins Shape of You copyright case - a ‘note’ of caution

Blog | Intellectual Property

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Ed Sheeran has had his day in the High Court and the judge has decided that his 2017 chart topper has not plagiarised the work of Sami Chokri.

Sheeran’s hit ‘Shape of You’ is one of the most played and downloaded songs of all time. It has been streamed more than three billion times on Spotify, and reputably generates over five million pounds per year from that platform alone. When a song is as successful as this, it becomes a tempting target for those who thinks they can rightfully claim a share of that success for themselves. If you have a legitimate case for copyright infringement, for the right song, pursuing a claim can be a very shrewd investment of time and legal fees. However, as we’ve seen here in the ruling, that investment is not without risk.

This High Court ruling may embolden artists to be more brazen in ‘taking inspiration’ from each other, without fearing the consequences of copyright infringement. While this makes the process of creating (and publishing) music easier, in some cases it might deprive smaller artists of income that should have gone to them.

It is rare for a copyright infringement case to get this far in court and it is a scenario that has plagued Sheeran before.  Often these cases reach an out of court settlement, as it’s usually a less expensive result for both parties. Clearly, in this instance, Chokri believed he had a strong case but unfortunately it wasn’t strong enough and he now faces a considerable legal bill.

This ruling indicates that the UK IP courts aren’t going to support US-style speculative litigation. It will take more than a short section of ‘basic minor pentatonic pattern’ which is ‘entirely commonplace’, to establish a successful claim of copyright infringement. All music is derivative to a certain extent. This ruling shows that clear similarities throughout two songs are needed to form a substantial case.

Copyright is designed to encourage creativity by rewarding original creators, and this case shows how the law attempts to balance the rights of creators at every stage in a song’s development.

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Isaac is a trainee solicitor working within the Intellectual Property team.

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Protecting your back catalogue

Guides & Advice

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With the first commercial arcade video game being released over 50 years ago, the ageing games industry is sitting on a potential wealth of dormant intellectual property (IP) waiting to be revitalised for new and nostalgic audiences. So, what rights may still exist in older games, and how can their owners prevent others from exploiting their IP without permission?

The industry appears to be riding on a wave of remakes, remasters and sequels of old classics, with Diablo 2’s resurrection and the remasters of Zelda: Link’s Awakening and Final Fantasy VII just a few successful examples. With many games remaining only in players’ memories, their successful revitalisation requires an understanding of the IP attached to them.

Relying on IP in the video games sector can be controversial though. There’s a difficult balance between using it to genuinely protect creations and using it to stifle the market. However, when used appropriately, IP is a vital business asset enabling developers and publishers to prevent competitors from taking advantage of a game’s reputation and popularity.

How might classic games still be protected?

Registered trade marks are a valuable right to hold in the gaming industry. As long as they are renewed and used, they survive indefinitely, protecting anything from titles, names and music, to sounds, images and colours. By registering for specific goods and services, companies can also protect their mark for alternative income streams, including merchandise.

However, if the mark is unused for a period of five years, it becomes susceptible to being revoked from the register. Even if the mark remains on the register after this time, it will likely be challenged should the owner come to enforce it. If a game is shelved, it is possible that registered marks have been allowed to expire, ending protection.

That said, if a trade mark has expired, there may still be unregistered rights in the UK that can be enforced under the common law of ‘passing off’. Passing off protects a business’ goodwill from damage by third parties seeking to benefit themselves commercially, for example through a similar name or packaging design. Protection can extend to names and logos (brands) as well as aspects of a game such as its look and feel or ‘get-up’.

In some circumstances, goodwill can survive longer than an unused trade mark. Unless the owner has deliberately abandoned its goodwill, if consumers still recognise certain elements of a game, then residual goodwill may still exist even if a trade mark has expired or is susceptible to challenge. For historically popular games, such as Metroid, this would be easier to establish than for a more obscure title with a niche fanbase.

There is also an abundance of copyright within video games, protecting not only the software itself, but other aspects including graphics, sounds and character designs. Usually in the UK, the employer owns the copyright, but where works are commissioned, as is common in the gaming industry, the first owner is the commissioned party. As a result, it’s essential to take assignments from suppliers, whether they be artists, composers, animators or programmers.

If a company is relying on a licence, the terms may not extend to the use of the copyrighted work in reissues, remakes or sequels. Should certain aspects be unusable because of this, it means rights have to be reacquired or risk taking away the nostalgia of a game. For example, imagine a new Sonic the Hedgehog game without the iconic ‘ding’ sound when he collects a ring.

It’s important that companies remember this when buying a business for its back catalogue. By carrying out a full IP due diligence check beforehand, purchasers can ensure they are buying all the rights they need to do what they plan to with the title. For those selling their back catalogue, failing to have IP assignment records could affect the value of the business or even prevent a sale, so it’s vital to document IP ownership.

Copyright is therefore a key tool for companies wishing to protect their historic games. However, using it as a weapon, or being perceived to be doing so, can also be reputationally damaging. In one case, a retrogaming entrepreneur who had purchased the rights to the classic ‘Horace’ game, shut down a super-fan of the largely forgotten title on YouTube, which went down poorly with fans and the media.

While trade marks and copyright are the main forms of IP protection seen in the video game industry, registered designs and patents are also relevant. Registered designs are often used for protecting video game hardware, but can also protect the look of a game, such as its gaming user interfaces and heads up displays. Registrations last for 25 years, if they are renewed every five years, and are simple and cheap to obtain. Proving particularly popular with mobile app developers and publishers, it’s possible that registered designs will be used more commonly to protect vintage games in the future.

In the UK, patents for computer programs are specifically excluded from protection, making them difficult to obtain for video games. However, this is not the case in all territories, such as the United States, where software patents are prevalent. Examples include the ‘ping’ system in Apex Legends, and the split-screen dual reality mode in The Medium. Providing 20 years of protection, they are a powerful IP right to hold, so are worth considering early on in development, despite them being less common within the UK gaming industry.

Best IP Practice

For companies that own a back catalogue of games, it isn’t too late to consider registering new trade marks. It’s also important to secure trade mark protection for all relevant goods and services, such as clothing and merchandise, to provide better protection for these alternative income streams.

For existing trade marks, diversifying the way in which they are used reduces the risk of losing them. For example, Nintendo offers back catalogue NES, SNES, and N64 games via Switch Online. By using the marks, the company is not only reducing the risk of a challenge, but also keeping their goodwill alive.

Registered designs can be useful for filling gaps left by other IP rights. Although unfortunately not an option for protecting old games whose designs have been public for a long time, they are an ideal way to protect aspects of new games long into the future.

Cult games now will one day be vintage, so considering IP protection from the outset is essential. Most importantly, healthy IP rights help to ensure other companies don’t swoop in and take advantage of nostalgic audiences.

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Dan is recognised in the 2021 edition of The Legal 500 as a “Key Lawyer” within Shakespeare Martineau’s Tier 2 ranked Intellectual Property team, and in particular for “[standing] out for his varied caseload, which encompasses IP creation, protection and enforcement mandates.

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Parallel imports in the UK post-Brexit

Blog | Intellectual Property

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The rules on parallel imports into the UK following Brexit are currently under government consultation, and therefore may be subject to change in the future.

Parallel imports are based on the principle of exhaustion of IP rights. Exhaustion of IP rights is essentially a limitation of the rights of an IP holder. In Europe, it is based on the EEA’s principle of the free movement of goods (although, there are various different exhaustion regimes in territories throughout the world).

How does exhaustion work?

Goods are placed on a specific market with the IP right holder’s consent, and after that point the right holder can no longer object to the re-sale of such goods within such market. We say that the IP rights subsisting in that specific product are exhausted.

It’s worth noting that, when we talk about placing goods on the market with the IP right holder’s consent, this could be placing goods on a market either by the IP right holder or by an authorised licensee.

Parallel trade is the commercial consequence of the principle of exhaustion. Once IP rights in a product are exhausted within a specific territory, a trader may sell and re-sell those products within that territory which creates a market of secondary sales. Parallel trade usually happens to take advantage of price differentials between markets. For example, a trader may purchase products in at a cheaper price in Spain, and then, prior to Brexit, import those products for sale in the UK where they may be sold at a higher price.

One important point to note here is that exhaustion of IP rights only applies to genuine goods placed on the market with the IP right holder’s consent. It does not apply to counterfeit goods.

Prior to Brexit, when the UK was part of the EEA, goods placed on the market in any territory within the EEA could be exported and imported between other EEA territories (including the UK) without further permission from the right holder. That is because the IP rights in those specific goods are exhausted within the whole of the EEA at the point the goods are placed on the market.

As the UK is no longer part of the EU or the EEA, the UK has a different system. Following Brexit, the EEA no longer considers IP rights subsisting in goods placed on the market in the UK to be exhausted in the EEA. Whereas, conversely the UK does still consider IP rights in goods placed on the market in the EEA to be exhausted in the UK. So we now have a kind of a-symmetrical system of exhaustion.

What are the implications of this?

This means that, for exports from the UK to the EEA, the IP right holder’s consent is still required to place goods on the market in the EEA. Whereas for goods imported to the UK from the EEA, the IP right holder’s consent is not required.

In June 2021, the UK Government launched a consultation on the future of parallel trade in the UK, and it sought views and evidence from stakeholders as to the most appropriate regime for the UK going forward. Importantly, this consultation relates only to parallel imports into the UK, as without any formal agreement with the EEA, the UK Government cannot enforce any regime on exports from the UK to the EEA.

The government noted in its consultation that parallel imports impact a wide range of people and businesses in the UK. It has identified various sectors which it says are “IP right intensive”, such as automotive, pharmaceuticals and fast moving consumer goods. The government estimates that these sectors contribute towards over 40% of the GDP, as well as accounting for almost 30% of jobs.

At present, there are four options on the table.

  1. To stay with the current regime, which the government is calling UK+.

  2. Go to a national regime, where rights in goods are exhausted only when legitimately placed on the market in the UK.

  3. At the other end of the spectrum, go to an international regime, where rights are exhausted in the UK as soon as a product is placed on the market with the right holder’s consent anywhere in the world.

  4. Or finally a mixed approached, meaning that some IP rights for some products in some sectors may be exhausted outside of the UK, and others not.

The government has not indicated which option it prefers, although any outcome must comply with the Northern Ireland Protocol.

The outcome of the consultation

The consultation closed at the end of August 2021, and a summary of the responses was published in January 2022. The summary confirmed that a majority of respondents favoured the current UK+ regime, while over a third favoured a national regime. The broad view is that businesses have accepted UK+ and to move away from that so soon after the recent change would be detrimental. Although interestingly, some respondents qualified their choice of UK+ on the basis that the consultation document stated at the time that the government did not believe a national regime complied with the Northern Ireland Protocol, a point which remains unclear.

Only a few respondents preferred either an international or mixed regime. In particular, the mixed regime was considered to be too complex as many goods are protected by various different IP rights and the rules for each of those rights may differ.

What is clear is that any change in the regime must take place over a lengthy transition period, possibly 1-5 years, with other transition provisions in place to protect stakeholders.

To find out more about the progress of the consultation, you can visit the gov.uk website.

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Obligations of confidence – updated guidance from the Court of Appeal

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Following a recent series of cases, the Court of Appeal has provided further guidance on equitable obligations of confidence.

What are equitable obligations of confidence?

Obligations of confidence can arise in a number of different ways.  They can be imposed expressly by contract, for example through NDAs and contracts of employment, or they can be implied, either because of the circumstances of the disclosure or because of a special relationship between the parties, for example an employee’s duty of fidelity and good faith.

The law will also impose an equitable obligation of confidence where a person receives information which they know or ought to know should be regarded as confidential ¹

A case in question – the background

In October 2020, in The Racing Partnership Limited (TRP) (1) Arena Leisure Limited & others v Sports Information Services Limited (SIS), the Court of Appeal considered whether an equitable obligation of confidence was owed by SIS to TRP in relation to the distribution of horse racing data.

SIS had previously held the rights to collect and distribute live horse racing data collated at various race courses to off-course bookmakers for fixed odds betting services.  Those rights had expired at the end of 2016 and had been acquired by TRP, while the rights to supply similar data for pool betting services continued to be held by The Tote.

The data in question included factual information relating to the courses and the relevant races, for example, the weather conditions, the state of the course, non-runners, changes of jockeys, the “off” and any stewards enquiries.

TRP alleged that, in breach of an equitable obligation of confidence, SIS had distributed horse racing data which it had received from The Tote under an agreement between SIS and the Tote.

At trial, it became clear that when SIS was negotiating the agreement with The Tote, SIS had expressed some concerns and it had made inquiries and had received assurances from The Tote regarding use of the data which it collected.  In addition to those assurances, SIS also insisted on including a warranty in the agreement under which The Tote warranted that it could provide the data in issue.

The outcome

At trial, SIS was found to have misused confidential information and it appealed the decision.

On appeal, the majority of the Court of Appeal found that individually the horse racing data was not confidential, since much of it could be accessed through live television.  Conversely, the Court of Appeal found that when viewed as a compilation of racing data, it could be confidential, however the compilation had been made by The Tote and so any value or control belonged to The Tote.

The Court of Appeal also considered whether the data had nevertheless been provided to SIS in circumstances which carried with it an obligation of confidence.

Lord Justice Lewison concluded that the judge at the original trial shouldn’t have focussed on what the correct legal analysis may be but should have instead focussed on what a reasonable person would be expected to understand.

The starting point for considering what a reasonable person would have understood should have been the warranty and the assurances that had been given.  Only then should it have been considered whether SIS should have second guessed the truth of such a warranty.

Lewison L.J. concluded that the correct question to be answered was …should SIS have realised that The Tote was bound by an obligation of confidence even though there was no contractual restriction on its ability to disseminate information which it had collected and compiled itself.

Further guidance was provided by Lord Justice Philips who concluded that when a reasonable person receives information from a reputable counterparty under warranty, that person is not put on notice that the information is supplied in breach of a duty of confidence unless there are sufficient indications to the contrary.

Contrary to the decisions of Lewison L.J. and Philips L.J., in the dissenting judgment given by Lord Justice Arnold, he concluded that secrecy was a necessary criterion for confidentiality and what was relevant was the data’s inaccessibility during a transmission delay (typically seven seconds) before the data was available on television.

Arnold L.J. also agreed with the trial judge who at trial had concluded that an obligation of confidentiality had been imparted because a reasonable person in The Tote’s position would have:

  1. known the steps taken by the race courses to preserve the confidentiality of the data for fixed odds betting purposes;

  2. appreciated that it had acquired the data for pool betting purposes; and

  3. appreciated that the information was acquired in circumstances importing an obligation of confidence and couldn’t be used for fixed betting purposes.

Key points to takeaway

The area of confidential information and sport is clearly a valuable one particularly where bookmakers offer live or ‘in-play’ betting (e.g. which team or player will score next).

There was no doubt that the compilation of horse racing data could constitute confidential information despite it arising in the full view of members of the public and despite it only having commercial value for a very short time.

Perhaps what was most surprising were the views of Phillips L.J. which suggest that in the context of equitable obligations of confidence, it may now be reasonable for a third party recipient to rely on contractual assurances, which are given by a discloser as to the legality of a data source, unless it can be shown it was not reasonable to rely on them.   This is despite the fact that the third party recipient would be able to rely on the warranty in the event that the assurances were misplaced.

What does seem likely is that because the Court of Appeal was split, it is unlikely to be the last word on the issue.

Case 2 – the background

In 2021, the Court of Appeal was again asked to consider equitable obligations of confidence in the case of Travel Counsellors v Trailfinders Limited.

Trailfinders is a national travel agent with 37 branches in the UK and Ireland employing over 700 sales consultants.

Travel Counsellors (TCL) is a competitor of Trailfinders and uses a franchise model with franchisee travel consultants.

In 2016, four sales consultants employed by Trailfinders left to join TCL.  Trailfinders alleged that when the individuals left, they took names, contact details and other information about their clients which was stored in Trailfinders’ computer system and that after they had left, they had accessed another Trailfinders computer system to obtain further client information.

A successful claim was brought against the four individuals for breach of implied terms in their contracts of employment and breach of equitable obligations of confidence owed to Trailfinders.

Additionally, Trailfinders successfully brought a claim against TCL for breach of an equitable obligation of confidence.

At the trial, the judge had found that:

  1. TCL didn’t supply new franchisees with potential customers.   Instead, travel consultants were expected to and positively encouraged to bring their customer contact list with them.  There was no warning that doing so may amount to a misuse of confidential information.

  2. TCL had added the Trailfinders client information to their own computer system.  This was quite extensive and for one of the individuals, it amounted to over 300 contacts.

  3. A reasonable person in the position of TCL’s CEO and other persons of significance within TCL would have been aware that at least part of the contact information brought by the individuals was likely to have been copied from Trailfinders’ customer data.  Furthermore, those persons at TCL knew or ought to have known that Trailfinders reasonably regarded the information as confidential.

  4. TCL consequently received the information subject to an equitable obligation of confidence and it was in breach of that obligation because it used the information for the benefit of its business.

TCL appealed the first instance decision, principally on the ground that the judge applied the wrong legal test in holding that TCL owed an equitable obligation of confidence to Trailfinders in connection with the information received from the individual defendants.

TCL relied on the fact that the judge hadn’t found that the individuals had given any indication to TCL that they’d copied the data and TCL asserted that (i) an equitable obligation of confidence would only arise if the recipient knew or had notice that the information was confidential, and (ii) whether the recipient had notice should be objectively assessed by reference to a reasonable person standing in the position of the recipient.

Lord Justice Arnold, who gave the main judgment, did not agree with this approach.  He concluded that where the circumstances were such that it is brought to the attention of a recipient that that the information, or some of it, maybe confidential to another, then the reasonable person’s response may be to make enquiries.  Whether they would make enquiries and if so what enquiries, would inevitably depend on the context and the facts.

Arnold L.J. did also not agree with TCL’s submission that nothing less than blind-eye knowledge that the information was confidential was enough because blind-eye knowledge is to be equated with actual knowledge, and is subjective.

Arnold L.J. explained that if a recipient was aware that some of the information was likely to be confidential, a reasonable person in TCL’s position would make enquiries.  In accordance with The Racing Partnership decision it is also relevant to consider what, if any, enquiries a reasonable person would make.

Applying this to the facts, Arnold L.J. concluded that the individuals could not have carried all of the data in their heads.  This therefore made it probable that they had copied at least some if it from Trailfinders.  Consequently, TCL should have been on notice that at least some of the information was likely to be confidential.

Furthermore, TCL should have warned the individuals not to bring any of Trailfinders’ confidential information and had not asked whether they had done so.  Had TCL made those enquiries and had the individuals told the truth, TCL would have discovered that some of the information came from Trailfinders.

Key points to takeaway

This case is a clear warning to businesses who receive information from a competitor that on receipt of the information, the business should take a step back and consider its status.

In a scenario where there is potential for a business to receive confidential information, it should:

  1. discourage employees from using information where that information has been taken from a competitor’s business without consent; and

  2. if any information is disclosed to the business, it’s incumbent on the business to make reasonable enquires as to whether any of the information is confidential and if it is, not to use it.

As a consequence of these decisions in combination with previous case law, there are a number of issues which should be considered when assessing whether an equitable obligation of confidence may arise:

  • Whether confidential information is disclosed in breach of an obligation of confidence and the recipient knows, or has notice, that that is the case;

  • Whether confidential information is acquired or received without having been disclosed in breach of confidence and the recipient knows or has notice that the information is confidential;

  • Notice is to be objectively assessed by reference to a reasonable person in the recipient's position;

  • Notice is to be objectively assessed by reference to a reasonable person in the recipient's position;

  • If a reasonable person has notice that the information, or some of it, may be confidential to another, their response may be to make enquiries. Whether they would actually make enquiries, and if so what enquiries, inevitably depends on the context and the facts; and

  • If the reasonable person would make enquiries, but the recipient of the information doesn’t do so, then an obligation of confidentiality will arise.

¹ Campbell v NGN Ltd 2004 

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Plugging the injunction gap - Expediting patent trials in the UK courts

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The second half of 2021 saw a number of applications for patent trials to be expedited – in other words, to get a trial heard sooner than would normally be the case. This, and more particularly securing the injunctions that typically follow a successful outcome, are normally matters that a patent owner is keen to know about at the outset. Particularly with patent litigation, there can be an interplay between proceedings in other jurisdictions, including the European Patent Office (EPO), which can mean a party may wish to speed up (or slow down) litigation in one forum pending the outcome in another.

In the UK, the goal has been to have a period of not more than 12 months to trial from the time proceedings are issued. Even if the average is in fact a little longer, it remains the case that resolution in the UK still is relatively quick when compared to many other jurisdictions. So given this, the answer to the question as to why there has been a spate of applications for expedition is not obvious. No doubt it is a combination of various factors, including the fairly full state of the court lists of cases waiting to be heard, and possible COVID backlog, although as to the latter many cases have been heard satisfactorily through the pandemic, which reflects well on our court system.

The injunction ‘gap’

One reason for such applications to the UK courts which is clear is parties reacting to the so called “injunction gap” that can arise in German patent litigation. This ‘gap’ in time arises between the granting of an injunction by a German regional court, and the hearing as to the validity of the patent in question by the German federal court and arises because of the split nature of patent litigation in Germany. This position can be compounded further by the fact that under German law, a revocation action may not be commenced until opposition at the EPO, including any appeal to the Technical Board of Appeal (TBA), has been determined. It is quite possible that a lot of commercial damage could be inflicted during this ‘gap’, even if the patent is subsequently revoked.

Typically, once an alleged infringer realises he is about to be served with infringement proceedings in a regional court, he might seek to revoke the equivalent EP(UK) before the conclusion of said infringement proceedings with a view to influencing the German court in the event of a UK finding of revocation, or at least hope to put sufficient doubt in the mind of the judge of the regional court, such that an injunction might be avoided.

Three recent decisions

Three recent decisions have been given by one of the recently appointed patents judges, Mellor J, when this issue has been to the fore;

  • Neurim & anr v Mylan ¹   -   expedition granted

  • Abbott v Dexcom ²  -   expedition granted

  • Advanced Bionics v Med-El ³ -   expedition granted

What are the principles the court will apply, given that granting expedition will inevitably mean other litigants will have to wait longer to have their case heard?

  • • The leading case on such principles is Gore & Associates v Geox⁴. Neuberger LJ set out four factors to consider;

    • Is there a good reason for expedition?
    • Does allowing expedition interfere with the good administration of justice?
    • Does expedition cause prejudice to the other party?
    • Are there any other “special factors”?

It can be seen that the 2nd to 4th factors are typically balanced against the 1st.

  • In Nicoventures v Philip Morris⁵ Birss J (as he then was) said the injunction gap was not enough on its own for expedition, and nor is a mere wish for the often cited “commercial certainty”. The “good reason” to justify an order for expedition must be established in evidence, which in practical terms means a well drafted witness statement with supporting exhibits.

How were these factors applied in the three recent Mellor J decisions and what can be learned from them?

  • In Neurim, the urgency arose because the (divisional) patent in suit had a very short time until expiry. In an earlier action, the parent patent to the divisional was revoked by the TBA, after it had been found valid and infringed in the High Court. Neurim argued Mylan was estopped from arguing infringement and validity issues, they having already been decided in the earlier action. This estoppel argument was the only realistic way in which injunctive relief could have been granted before expiry of the divisional. Expedition was ordered, albeit without any comment on the strength of such estoppel arguments.⁶

  • In Abbott, Mellor said this about the injunction gap “In spite of the available procedures in Germany… in theory the injunction gap problem in Germany is capable of producing some very unfair results.  If a patent is pretty clearly invalid, there is no problem because the infringement court grants a stay.  If a patent is weak but no stay is granted (because invalidity is not clear enough) and ultimately is declared invalid, it may suit a competitor to put up the required security.  As I understand matters, the security does not amount to a cross-undertaking in damages.  The competitor may calculate that he can inflict far more damage on his rival through an injunction than the value of the security he will lose.  Whether such unfairness can occur in practice lies in the hands of the German courts, who I am sure are aware of the scourge of weak patents which turn out to be invalid when scrutinised.”

The above mentioned “available procedures” following a regional court finding of infringement include requesting a stay of the injunction pending Opposition or Federal Court decision and asking the Patentee to put up security, in a manner similar to the cross undertaking in damages required in the UK. However, it is important to note that this security is not as wide ranging and comprehensive as the cross undertaking, so it may well suit a claimant to put up such security as the commercial advantage may be greater. Reform of German law in this respect is pending. However, notwithstanding these observations, the judge went on to say “This brings me back to the point made consistently in the caselaw - a desire to schedule a UK action in such a way that the outcome relating to validity is likely to be available and public before the German infringement court decides the matter is a factor to be taken into account but is not a strong factor and cannot justify expedition on its own… The UK court is not here to police European patents across Europe which may be perceived to be weak and may ultimately be proved to be invalid.”  [highlighting added].  Applying the principles, expedition was not granted. Nevertheless, it remains the case that it is entirely legitimate to bring a revocation action in the UK, and it is part of the role of the UK courts to hear such actions – the issue is rather whether such actions should be accelerated in the particular circumstances of each case.

  • In Advanced Bionics, the injunction gap was again present, but this time expedition was granted. So what was different? The answer lies in the detailed evidence. In Abbott, the judge found Abbott’s primary reasons for expedition were protecting the German market and preventing interference with distribution networks across Europe, whereas Advanced Bionics’ concern was with disruption to the UK market, i.e. a market within the Court’s jurisdiction. Further, in Abbott, expedition would have created an asymmetrical position between the parties, whereas such concern did not arise with Advanced Bionics.

In summary

  • A desire for expedition can often arise in actions where patents are being litigated across multiple jurisdictions – e.g. a finding in one court can prompt an application in another.

  • The test for whether expedition should be granted is multifactorial, and the quality of evidence submitted is crucial.

  • A 12 month lead in to trial is already relatively quick, and one needs a (really) good reason to be quicker and jump ahead of other litigants.

  • The “injunction gap” can lend itself to unfair results, but that is not of itself enough for a successful application.

¹ [2021] EWHC 2198
² [2021] EWHC 2246
³ [2021] EWHC 2415
⁴ [2008] EWCA Civ 622
⁵ [2020] EWHC 1594
⁶ In a decision given very recently on the 24 January 2022, the High Court rejected said estoppel arguments.

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China Tang Trade Mark Dispute – Key points to Takeaway from the Decision

Intellectual Property | Judgment update

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GNAT and Company Limited and China Tang London Limited -vs- West Lake East Limited and Honglu Gu [2022] EWHC 319 (IPEC)

A judgment has been handed down in relation to a trade mark dispute between the up-market “China Tang” restaurant (located at the 5-star Dorchester Hotel) and a Chinese takeaway, also called “China Tang”, in Barrow-in-Furness.  According to the evidence in the case, the former provides high-end Cantonese meals to celebrities like Kate Moss, Tony Blair and Naomi Campbell, whereas the Defendant’s business provides Chinese fast food “more tailored to the British taste”.

The decision is of interest as it provides food for thought on various trade mark issues including comparison of logo trade marks, assessing reputation, and the ability to rely on honest concurrent use as a defence.

The Trade Mark

The restaurant’s trade mark consists of a logo containing the words CHINA TANG in a stylized font.

After an agreed deletion of self-service restaurants following a non-use challenge, the Trade Mark is registered for the following services in Class 43:

Restaurant services; cocktail lounge services; bars; cafes; catering services; snack bars; mobile catering services; cafeterias; tea houses.

This does not therefore include takeaways but does include other types of food and restaurant related services.

A likelihood of confusion with the Defendant?

In order for there to be infringement under section 10(2) of the Trade Marks Act 1994, there must be a likelihood of confusion between the Trade Mark and the Defendant’s own “China Tang” sign.

When comparing the services covered by the trade mark and the use made by the Defendant, the Judge concluded that while there was not an exact overlap, takeaway services are very similar to those in the Trade Mark’s specification, particularly “restaurant services”.

When comparing the marks, the Judge found that the dominant and distinctive element of the Trade Mark consists of the words “China Tang”, despite the stylization of the words and the border design within the logo, and that this wording element is identical aurally to the Defendant’s sign, and is visually similar.

As a result of these similarities, the Judge found that there was a likelihood of confusion, and so infringement under s.10(2).

Unfair advantage or detriment to the distinctive character or the repute of the trade mark?

The trade mark proprietor also argued that there was infringement under section 10(3) of the TMA, which requires the proprietor to show that the trade mark has a reputation, and that the Defendant’s use either takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

The overall test for showing a reputation here was whether the Trade Mark was known by a significant part of the UK public concerned with restaurant services.  The Judge found that the Trade Mark did not meet this requirement when assessed on an economic basis, as the market share of that one restaurant was “tiny”, and that the sums spent in marketing the restaurant were “very small”, both when assessed in the context of the restaurant market of the UK as a whole.  This is despite significant turnover for one restaurant of between 5 and 6 million pounds per year, and the business being recipient of multiple awards and press coverage.

Similarly, the Judge found nothing in support of the suggestion that the reputation of the trade mark is clearly being exploited, or that there was a change (or likelihood of change) in the economic behaviour of the average consumer consequent on the use of Defendant’s sign to establish detriment.  The claim therefore failed on this ground.

Honest Concurrent Use

The Defendant sought to rely on the defence of honest concurrent use, arguing that it had started trading in 2009 and was not aware of the Claimant, and that there had been co-existence in the 12 years since then.

The Judge however concluded that the Defendant ought to have been aware of the Claimant’s existence, for example as a result of undertaking a trade mark or internet search prior to opening in 2009.  He saw no reason to distinguish between the sizes of businesses in terms of who should be expected to undertake such a search, noting that “a public register of other parties’ rights is there to be consulted, in part so that those rights may be respected.

While expressing some sympathy for the Defendant, the Judge added that had the owner conducted even a basic internet search for “China Tang”, he would likely have found the Claimants’ website and/or reviews and commentary about it.  Honest practices would then have required him to obtain legal advice about the intended trading name for his business.

Points to Takeaway
  • The power of a trade mark – here a registered trade mark for a logo incorporating the trading name was successfully used against a company trading using a different logo (albeit containing the same words). That other company here may not even be seen as direct competition to the trade mark proprietor, as there was unlikely to be an overlap between the customers of a high-end restaurant and a local takeaway.  Nevertheless, the Judge found a likelihood of confusion on the part of the public.

  • Difficulties establishing “reputation” - If relying on infringement under section 10(3), a trade mark proprietor will need to show reputation across the UK, not just locally (e.g. in London). This may require significant revenue in the relevant goods/services market concerned, and expenditure on marketing comparative to other operators within that market.  This may restrict the potential use of section 10(3) to only the largest brands in any relevant market.  The proprietor will also need to have real reasons/evidence to suggest an unfair advantage or detriment, rather than “mere suppositions” as put forward by the Claimant in this case.

  • A very narrow honest concurrent use defence? The Judge indicated that even where the Defendant is a small, single location business, it is expected to have undertaken trade mark and/or internet searches for competitors using the same or similar brand names prior to deciding on its own brand name.  The benefits of instructing an IP professional to undertake such a clearance search are therefore clear for any sized business. Indeed the Judge commented that: “setting up even the smallest business is likely to require competent legal advice on a variety of matters and that should include the trading name.” Instances where this defence may successfully be raised are arguably now going to be rare, particularly now it may be said that all new businesses will have access to the internet to undertake searches themselves as a minimum starting point.

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Danny is a solicitor in our Intellectual Property team, with a specific focus on contentious intellectual property matters.
He advises clients on the full spectrum of intellectual property rights, including patents, trade marks, designs, and copyright. Danny has particular experience advising clients in the retail, brewing, education, technology, online and social media, and IT sectors.

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A quick guide to the different types of intellectual property and a few more besides…

Blog | Intellectual Property

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As a time poor entrepreneur wearing multiple hats and getting on with running your business, you may not have considered one of your most valuable assets – your intellectual property. For many, these intangible ‘properties’ are actually worth more than their tangible assets, including cash, buildings, equipment and land.

Although much of the time invisible, IP protection is absolutely key to the future and value of your business. Our quick guide gives a brief overview of the most common types of IP, but for more assistance in practical protection, call our IP team.

What are the different types of IP?

Patents

Patents protect against unauthorised use and/or exploitation of an invention.  To qualify for patent protection, the invention must be:

  • New (never having been disclosed or publicly used before);

  • Must not be an obvious development of existing or known technology; and

  • Must be capable of industrial application. 

Discoveries, scientific theories, mathematical methods, computer programs and schemes, rules or methods of performing a mental act, playing a game or doing business are not patentable per se (although the law is developing flexibly in the case of computer programs that produce a novel technical effect).

As with most IP rights, patents are territorial in nature. Applications are made to either the UK or the European Patent Office and undergo an examination and possible opposition process before grant or rejection. It is also possible to file an international patent application, under the Patent Cooperation Treaty. UK and other European patents last 20 years from the filing date, provided that renewal fees are paid and it is not invalidated. A patent provides a monopoly defined by the “claims”. Independent creation is no defence to any infringement: the monopoly is total.

Copyright

Copyright protects against unauthorised copying of the whole or substantial part of an original artistic, dramatic, literary and musical works (computer software being a type of literary work) or sound recordings, films, broadcasts and cable programmes.

  • No registration is required as the right arises automatically.

  • It lasts for the life of the author plus 70 years or, in the case of sound recordings, broadcasts and cable programmes, 50 years from the end of the calendar year in which they are made.

Copyright does not however provide a monopoly right: if a similar or identical work to the copyright is produced independently and without copying, it will not infringe the copyright work.

Database right

Database right exists independently of the copyright (if any) in a database and protects the compilation of information comprising the database and its unauthorised extraction or re-utilisation.

The right arises automatically, provided that there has been “.....a substantial investment in obtaining, verifying or presenting the contents of the database”. There have been some changes to the nature and extent of database rights in the UK following Brexit, so speak to a specialist to get the latest advice.

UK registered designs

This is a national monopoly right over designs of the whole or part of a product (including its packaging) relating to its shape, colour or texture, amongst other features.  To be registerable, the design must be new and have “individual character” (leaving a different overall impression on an informed user).

  • It can last for up to 25 years from application.

  • Independent creation is not a defence to infringement.

UK design right

This is a right to prevent reproduction of designs. It covers the design of any aspect of the shape or configuration of the whole or any part of an article.

  • It does not cover surface decoration. 

  • No registration is necessary. 

  • It lasts for up to 15 years from creation. 

  • There are strict qualification criteria for foreign nationals who wish to claim ownership of UK design rights.

Moral rights

These are related to copyright and there are three principal moral rights:

  • The right to be identified as author or director of the whole or substantial part of a work (“paternity right”). This right needs to be asserted within the work in order to be enforceable.

  • The right to object to derogatory treatment of the whole or any part of a work (“integrity right”).

  • The right not to have the whole or any part of a work falsely attributed to you (“false attribution”).

With the exception of the false attribution right, which lasts for 20 years after a person’s death, moral rights last for 70 years after the author or director’s death.

Trade marks

Trade marks include signs or “brands”, used by traders to differentiate their goods or services from those of others, serving as a badge of origin. The right can be registered or unregistered (protected in the UK under the common law action for passing off). The former gives a monopoly right to use the sign in relation to the goods or services for which it is registered. Depending on the likelihood of confusion or the repute of the mark, it also protects against use of similar signs in respect of similar, or even dissimilar, goods or services. Registrability is subject to the sign’s inherent distinctiveness, non-descriptiveness and any pre-existing rights of third parties. Registered trade marks can last indefinitely if properly maintained.

Domain Names

Although not a true IP right, it can arise from a contractual arrangement with an internet service provider. Domain names are generally registered in respect of names or brands or denote an internet “address”. This is merely a contractual arrangement with the relevant generic top level domain (gTLD) of Country-code top-level domain (ccTLD) registrar. It is not a right capable of ownership but can last indefinitely if renewed.

Know how

Again, this is not an intellectual property right as such.  Know-how can be protected on the basis that it is confidential information or a trade secret (and such confidentiality needs to be preserved if such know-how is to become the subject of a successful patent application – see the first of the qualification requirements for patents above). Protection is usually established by contractually imposed obligations to prevent unauthorised misuse or disclosure by others. Rights can also be implied inequity in certain circumstances, but contracts make the position clearer.

Our team of IP experts can guide you through the whole protection process having indepth knowledge of a wide range of sectors including fintech, MedTech, scientific and healthcare, working with companies and entrepreneurs across the UK and globally.

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Ed works with clients from all sectors (particularly healthcare/life sciences, sport, technology, media and communications) on wide-ranging non-contentious contractual, IP, data protection and competition law issues.

Intellectual Property

We have a proud history of success in acting for clients across a diverse range of goods and services.

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Trade mark disputes in the spirits industry

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Breweries have made the news in recent months with some top brand drinks involved in trade mark disputes. However, it is not just breweries in the food and drink sector that encounter these issues when looking to apply for trade marks for new brands and product names - other alcoholic drinks manufacturers have too.

What should drinks manufacturers do?

All drink manufacturers (and their respective brands teams) should generally follow the same steps as breweries when deciding on a new brand or trade mark:

  • Decide what they would like to register (a word or phrase, a logo, or a combination), ensuring that it is not overly descriptive of the goods or services and not a generic phrase.

  • Decide which goods or services are to be covered by the registration. For distilleries, the obvious choices are in Class 33 which includes alcoholic beverages other than beer, such as gin, vodka and whisky.

  • Decide which territories to be covered by the registration(s). Ultimately this depends on where the brand intends to trade.

  • It would then always be advisable to search for existing similar or identical brands and trade marks. If budget allows, a proper clearance search by a suitably qualified professional will be a sound investment.

There have been a number of recent decisions at the UK Intellectual Property Office relating to trade mark applications for other alcoholic drinks, such as spirits, where the applications were opposed by proprietors of earlier registered, similar trade marks.

Brewdog’s ‘Tiger Strike’ v ‘Tiger Vodka’ - A Tiger in the (Distilling) Tank?

Throughout Brewdog’s rapid expansion in the alcoholic drinks market, they have regularly encountered issues with their branding and trade mark strategy – both when enforcing their trade marks and when their applications have been opposed by a competitor with an earlier brand.

A recent decision illustrates that Brewdog’s trade mark difficulties are not limited to their beer brands and trade marks.  In June 2020 Brewdog applied for a trade mark for ‘Tiger Strike’ for the following goods in class 33:

Alcoholic beverages (except beer); spirits; distilled spirits; whisky; blended whisky; liqueurs; gin; vodka; rum.

There was however an existing ‘Tiger’ brand used by a separate company for various spirits, which was protected by way of six UK trade marks registered for what were found to be identical goods.  These were registrations for the following marks: ‘Tiger Gin’, ‘Tiger Rum’, ‘Tiger Spirits’, ‘Tiger Tequila’, ‘Tiger Vodka’, and ‘Tiger Whisky’.

The decision focused on comparing Brewdog’s ‘Tiger Strike’ with ‘Tiger Vodka’, as the officer noted that the other marks would not put the opponent in a better position (as they each consist of the word ‘Tiger’ followed by the name of an alcoholic drink).

The opponent relied on section 5(2)(b) of the Trade Marks Act 1994, which provides that:

a trade mark shall not be registered if because—

(A) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, OR

(B) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

The opposition to Brewdog’s trade mark application succeeded in this case, after the hearing officer made a global assessment of all relevant factors, with the decision noting in particular that:

  • The first words are identical, the marks have medium visual, aural and conceptual similarity, and the second word in the earlier mark is descriptive;

  • The use of ‘Tiger’ in the earlier mark was inherently distinctive of the goods covered by that trade mark to a medium degree - it neither alludes to nor describes the goods;

  • The identity of the goods covered by the marks may be used to offset a lesser degree of similarity between the marks; and

  • The goods will be purchased with no more than a medium level of attention, a significant proportion of average consumers will note the differences between the respective marks but conclude that the marks relate to economically-linked undertakings, e.g. ‘Tiger Strike’ might be perceived as a range or line of drinks under an overarching earlier brand ‘Tiger’.

This decision shows again that choosing a distinctive and unique name for a new sub-brand of goods is important – it may be difficult to obtain trade mark protection for your new brand, and it may also leave you open to a trade mark infringement claim and a costly rebrand exercise.  As mentioned, a clearance search prior to deciding on a new brand may of course help to avoid such situations, or at least provide a better picture of the potential risk. Filing an application itself can also flush out existing rights.

The decision also shows that what may be seen as a smaller competitor can succeed against a larger competitor, provided they have the relevant, earlier registered rights (as the opponent did here).  The protection afforded by an earlier registered trade mark can have real value to businesses of all sizes, particularly in crowded industries where brand recognition and reputation are key.

Thirsty Jack v Jack Daniel’s – Jack of all trade marks?

Another recent UKIPO Tribunal decision concerned an applicant’s attempt to register a trade mark for ‘THIRSTY JACK’ in relation to various alcoholic beverages in Class 33, including Alcoholic beverages, except beer and Alcoholic beverages with fruit carbonated.

This application was, perhaps predictably, opposed by Jack Daniel’s Properties Inc, who owns various trade marks incorporating “Jack Daniels” and even just the word “Jack” (including for “Gentleman Jack” and “Winter Jack”).

The opposition was again brought under section 5(2)(b) of the Trade Marks Act 1994.

The opposition succeeded based on each earlier trade mark raised after the hearing officer considered the following in relation to the trade marks relied upon by Jack Daniel’s:

Comparing “THIRSTY JACK” vs “JACK DANIEL’S
  • The goods covered by the two trade marks are either identical or share between a medium and high level of similarity;

  • The average consumer is again an adult member of the general public who pays a medium level of attention during the purchasing process;

  • Both marks form a unit with no one word dominating;

  • Low level of visual and aural similarity and a very low level of conceptual similarity;

  • The Jack Daniel’s mark has a reasonable level of inherent distinctive character but that this is enhanced to a high level because of the use made of the mark.

Comparing “THIRSTY JACK” vs “WINTER JACK” / “GENTLEMAN JACK
  • The same as above in relation to similarity of goods, average consumer, and domination (or lack of) of words within the marks;

  • The marks have a medium level of visual similarity and a low to medium level of aural and conceptual similarity;

  • The Jack Daniel’s marks have a reasonable level of inherent distinctive character but enjoy a moderate level of enhanced distinctive character.

This decision shows how larger brands that have established themselves in a marketplace will look to enforce their trade marks against similar new entries into the market, and how they can succeed where there is an overlap between the brand names (e.g. even in just the word ‘Jack’ in this example) and the goods covered, which persuades the tribunal that there exists a likelihood of confusion on the part of the public.

The decision also shows how the distinctiveness of an earlier mark can be enhanced as a result of the use made of the mark over time by the trade mark owner. This is particularly something to consider when a new brand is considering applying for a trade mark similar to one of its more well-known competitors.

Get In Contact

Danny is a solicitor in our Intellectual Property team, with a specific focus on contentious intellectual property matters.
He advises clients on the full spectrum of intellectual property rights, including patents, trade marks, designs, and copyright. Danny has particular experience advising clients in the retail, brewing, education, technology, online and social media, and IT sectors.

Intellectual Property

We have a proud history of success in acting for clients across a diverse range of goods and services.

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Are the lights on for UK-registered designs?

Registered designs are not expensive or difficult to obtain for businesses and can provide strong protection over and above unregistered design protection in the UK.

That said, registered designs have had somewhat of a difficult recent history in the courts of England and Wales.  A selection of recent decisions has perhaps given the impression that registered designs can be difficult to enforce against infringers and led to some uncertainty around filing practices.

However, a recent decision in the Intellectual Property Enterprise Court (IPEC) suggests that the tide could be about to change in favour of registered design owners.

We take a look in more detail at the case.

The Case

In the relatively short judgment of Lutec (UK) Limited & Ors v Cascade Holdings Limited & Or [2021] EWHC 1936 (IPEC), the court found that the claimant’s registered designs were infringed by the defendants’ outdoor light fittings.

The judge determined that the defendants’ “Helios” fittings (pictured right) did not create a different overall impression on the informed user than that of the registered designs (pictured left), which is a part of the test for infringement:

You can find the full decision and the source of the above images at bailii.org.

Interestingly, there was no challenge to the validity of the registered designs based on the existence of earlier designs in the marketplace, which is a common method of trying to avoid a finding of infringement.

If the registration is invalidated, there can be no infringement, so an early search by defendants for pre-existing designs is an important exercise.  Whilst it appears that there was a late attempt by the defendants to put in evidence of earlier designs (which was denied), ultimately they were left exposed with just the question of whether their products infringed.

Whether or not you agree with the outcome, there are a number of important take-home points from this decision which will be of interest to owners and would-be owners of UK registered designs.

Further thoughts

The decision of IPEC Deputy Judge Stone reads very much like a statement of intent for UK registered design infringement cases.

Where the parties and their legal advisers take a sensible approach to the proceedings, registered design proceedings can be streamlined to be dealt with quickly and at a proportionately lower cost.

Since the proper interpretation of the registered designs is a matter for the court, there is no need for expert evidence to address the point, so the added complexity of expert evidence will rarely be required in registered design cases.

This particular claim was issued in August 2020 with the liability hearing in June 2021, and the trial took place by a remote hearing using MS Teams in just over one hour.

Whilst a fully argued validity challenge would have increased the duration of the trial, the point stands that the courts, and in particular the IPEC with its more focused procedural rules, can dispose of registered design cases relatively quickly.

This case should be of interest to a wide range of businesses, including owners of Community (EU) registered designs who will now own equivalent UK “re-registered” designs protecting their UK interests.

If the UK had been previously overlooked in terms of any perceived difficulties with enforcement, it may be time to re-evaluate your design protection strategies in the UK.

Get in touch

At Shakespeare Martineau we have experience of guiding clients through registered design cases in the Intellectual Property Enterprise Court.  If this case is relevant to your business and you require assistance protecting your business’ own interests please do get in touch with Daniel Goodall or a member of our Intellectual Property Team.

 

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Six months on: how has Brexit impacted IP?

It’s been six months since the UK left the EU, triggering a number of changes in the business landscape, including around intellectual property (IP) such as designs and trademarks. So, what is the new reality for IP in the UK?

What has changed?

Since 1 January 2021, EU trademarks and Community registered designs no longer cover the UK. The UK therefore created “comparable” UK trade marks and registered designs for all registered EU equivalent registrations at no cost to ensure that rights owners’ UK interests remain protected.

Whilst the parallel importation of IP-protected goods, lawfully placed on the EEA market, from the EEA to the UK will continue to be permitted, it may not be possible for businesses to freely export IP-protected goods from the UK to the EEA without the consent of the IP rights holder.

The UK also now has its own geographical indications scheme to protect food, drink and agricultural products with a geographical connection or that are made using traditional methods.

Do I need to do anything?

If you had made an application for an EU trade mark or an international application designating the EU, or an application for a Community registered design, and your application was still pending at the end of the transition period, you will not have received a comparable mark as of right.  Applicants who were eligible to apply for a UK mark on the basis of a pending EU application now only have up to and including 30 September 2021 to do so, so act fast!

You should also ensure that your representative contact details at the UK and EU Intellectual Property Offices are up-to-date.

To the extent that you had not used your EU trade mark in the UK prior to Brexit, you will have until 31 December 2025 to do so before your UK comparable right could be revoked for non-use.

If your business exports goods, check whether rights clearances will be necessary. Alternatively, make sure your customers have ensured clearance before the goods are imported into the EEA.

If you rely on unregistered design protection you will now need to think carefully about how and where you first market products to the design in order to gain the most appropriate territorial protection.

How has cross-border IP been affected?

Brexit has brought significant change to the way businesses will protect their IP rights across the UK and EU.

As of 1 January 2021, IP rights holders with multi-jurisdictional infringement problems involving the UK and at least one other EU Member State may now have to litigate twice, in both the UK and the EU.

New proceedings in the UK won’t stop ongoing infringement in the EU or result in the recovery of damages for infringements in the EU, and vice versa.

With many cross-border agreements already in place we expect to see more instances of the jurisdiction of a particular territory’s courts being questioned, and multiple territories accepting jurisdiction which can add complexity and cost to a dispute and make early settlement of a matter across multiple jurisdictions more attractive.

To the extent that the UK and EU markets are valuable to businesses, IP portfolios should cover both of these territories which will result in increased administration and cost.

Service of UK claims on defendants based in the EU has also changed, as for now claimants will need the court’s permission to serve on EU defendants and will have to do so through a considerably slower mechanism.  Rights owners should take this into account when seeking to issue proceedings against EU-based infringers.

What about current proceedings?

Any ongoing and new proceedings relating to infringement, validity or revocation of registered trade marks and designs in the UK will be limited to the UK comparable rights alone.

To the extent that parties to existing litigation in the UK wish to address any of these matters in relation to the equivalent EU trade marks or Community designs, they will need to consider commencing parallel proceedings in the appropriate EU forum, whether that may be the EUIPO and/or the courts of an EU member state.

Something to think about when engaging in settlement discussions is that if a claimant in ongoing UK proceedings or even a prospective claimant is able to persuade the defendant to agree to an undertaking not to infringe not just in the UK but also in the EU, without issuing parallel proceedings in the EU, it is arguably doing considerably better than it would if it were to win an infringement claim in the UK.

The same applies regarding damages in respect of sales of infringing product in the EU.

Future relations

With the UK able to create its own system, there is likely to be some divergence from EU processes in the future. However, so far many of the rules from the EU have been translated directly to the UK’s own system.

The one area where there could be a clear difference is in copyright law. With some unpopular decisions by the EU Court in this area, and the UK confirming that it will not adopt the EU copyright directive, there is an open door for change. Another sector where the UK may diverge is on parallel imports and exhaustive rights, although there’s currently a consultation to determine next steps.

As a result of Brexit, there are a number of IP processes that have changed, meaning more care and due diligence may be needed when handling IP in the future. IP law is global by nature and to a large extent harmonized across many countries.  However, businesses should also look out for any developments that may arise following further consultation, now that the UK can determine its own path forward.

Get in touch to find out how our intellectual property team can help.   

We have launchedourguide to recovery and resilience, helping to support businesses and individuals unlock their potential, navigate their way out of lockdown and make way for a brighter future. Further advice in relation to COVID-19 can be found onourdedicated coronavirus resource hub.

From inspirational SHMA Talks to informative webinars, we also have lots of educational and entertaining content for life and business. VisitSHMA® ON DEMAND.

Our free legal helpline offers bespoke guidance on a range of subjects, from employment and general business matters through to director's responsibilities, insolvency, restructuring, funding and disputes. We also have a team of experts on hand for any queries on family and private matters too. Available from 10am-12pm Monday to Friday, call 0800 689 4064

 

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Our expert lawyers are ready to help you with a wide range of legal services, use the search below or call us on: 0330 024 0333

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IP: Considerations for breweries when applying for trademarks

A company’s brand and reputation is often one of its most important assets and can often make or break a business.  With any business it is therefore crucial that trade marks and branding are chosen carefully, registered where appropriate, and enforced against competitors where necessary. 

The UK brewing industry, which includes over 2,000 independent breweries, has seen some high profile trade mark disputes in recent years.  Previous blog posts have covered the importance of intellectual property to breweries and looked at some of the most public IP disputes involving breweries.    

Despite the pandemic, trade mark disputes have continued, with there having been some interesting cases where breweries have applied for trade marks, only to be opposed by what may be seen as non-direct competition; specifically a distillery and a non-alcoholic drinks manufacturer. 

While it hasn’t been the easiest year for the industry due to the various lockdowns and Covid restrictions in place, it does show that brands are still keen to apply for trade marks to protect their brands, and that other companies are willing to oppose them where they consider the applications are a threat to their own brands. 

Brewdog v Doghouse Distillery – Scottish Brewery in the Doghouse again? 

One beer brand that seems to show up quite often in relation to intellectual property disputes is Brewdog. 

In 2019, Brewdog applied for a trade mark for a logo consisting of “the word DOGHOUSE presented in a straight line and in the form of bold block letters below a picture of a fourlegged animal as a solid white shape on a black shield, the picture as a whole giving the impression of having been spray painted”. 

The Doghouse name is used for Brewdog’s craft beer hotel chain, but the services applied for in the trade mark specification were wider, and included brewing, food and drink, and entertainment related services, as well as hotel accommodation related services. 

This application was opposed by Doghouse Distillery, who owned an existing trade mark for a logo consisting of “the word DOGHOUSE presented on a curve, and as if stencilled, in block capitals beneath a relatively detailed picture of a bulldog-type dog’s head”. 

This earlier trade mark was registered for goods including alcoholic drinks and services for providing food and drink. 

Visual representations of the trade marks can be seen at paragraph 46 of the decision- Trade Mark Inter Partes Decision O/581/20 (ipo.gov.uk) . 

The opposition was also based on section 5(2)b of the Trade Marks Act 1994 (“TMA”) – and the opponent argued that the marks and goods/services covered were similar, and so there would be a likelihood of confusion on the part of the public if Brewdog’s application was registered.   

In relation to the goods and services, the tribunal found that some of the services applied for were identical to the earlier mark (with both covering “food and drink” services) and others highly similar, for example when comparing services for brewing and “alcoholic drinks” and “pubs” covered by the earlier mark. 

Importantly, when considering the intended use of the Doghouse brand by Brewdog, the tribunal also found similarity between the hotel and accommodations related services and “services for providing food and drink” and “pubs and bars” covered by the earlier mark – as the trade channels will frequently overlap in that hotels will provide food and drink, and will normally have a bar, while pubs often offer rooms. 

There was however also no similarity found between some of the other services covered by the application, including the applicant’s canning and bottling related services,  

In relation to the trade marks, similarity to a medium degree was found as a result of: 

  • The word DOGHOUSE appearing in both, with only differences of minor significance in their appearances e.g. typefaces; 
  • While both feature images of animals, one was a detailed picture of a dog’s head, and the other was of a four-legged animal with little detail (although the average consumer would likely see it as a stylised representation of a dog); 
  • The logo in the application featured a shield outline, but the earlier trade mark had no corresponding element. 

After this comparison, the tribunal found no likelihood of direct confusion due to there being sufficient visual differences between the marks (mainly the differences in the representations of the dogs) to avoid them being mistakenly recalled as each other. 

The tribunal however found that there was a likelihood of indirect confusion, where the average consumer realises the marks are not the same, but puts the similarity that exists between the marks and the goods and services down to the responsible undertakings being the same or related. This was found in respect of goods and services found to be identical or similar to at least a medium degree.  

The Result 

The opposition therefore succeeded in relation to those goods, which crucially included brewing services, services for providing food and drink and hotel/accommodation services applied for by Brewdog. 

Case Comment 

This decision shows that even where figurative marks are visually different (here to a significant degree), likelihood of confusion may still be found as a result of the comparison as a whole, such as where the word element is reproduced entirely and similarity is found between the goods/services applied for.   

The opposition also succeeded here even where the goods/services were found to be only of medium similarity e.g. hotel services vs pubs/bars.  A careful review of existing brands and trade marks that are outside of direct competition in the same goods/services is therefore advisable before deciding on a new brand name or a sub-brand in relation to an arm of the business e.g. Brewdog’s hotel chain here.  

Coast Beer Co vs Coast Drinks – It’s always better to check that the Coast is clear… 

Another recent UKIPO Tribunal decision concerned an application to register the words “COAST Beer Co” as a trade mark for the following goods in Class 32: Craft beer; Beer; Alcohol-free beers; Craft beer; Craft beers; De-alcoholised beer; De-alcoholized beer; Low alcohol beer; Low-alcohol beer; Non-alcoholic beer; Non-alcoholic beers. 

The opponent here held an earlier trade mark for “COAST”, for various non-alcoholic goods including tonic water and other mixers, in Class 32.   

The opposition was also based on section 5(2)b of the TMA – and the opponent argued that the marks and goods covered were similar, and that there was a likelihood of confusion. 

When comparing the goods, the tribunal found identity or high similarity between “Alcohol-free beers; De-alcoholised beer; De-alcoholized beer; Non-alcoholic beer; Non-alcoholic beers” applied for and the opponent’s goods “Non-alcoholic beverages” and “Non-alcoholic drinks”; with the latter goods covering a wide range of non-alcoholic beverages including all the non-alcoholic versions of beer. 

The tribunal also found a medium degree of similarity between “Craft beer; Beer; Craft beers; Low alcohol beer; Low-alcohol beer” and “Non-alcoholic beverages” and “Non-alcoholic drinks” (which include non-alcoholic beer, as above).  This similarity was found as a result of: 

 

  • An overlap in purpose; in that the goods offer pleasurable drinking experiences or quench thirst; 
  • A sharing of the same method of use (drinking) and similar receptacles (bottles, cans etc); 
  • The goods may be sold in reasonably close proximity e.g. on the same aisle in a supermarket;
  • The goods may frequently be made by the same producers; 
  • The goods are marketed or consumed at similar places, such as bars, public houses and restaurants, so there will be an element of competition between these goods. 

When comparing the words forming the trade marks, the tribunal found that the words “Beer Co” in the mark applied for are likely to be seen as descriptive by the average consumer, with “COAST” being the dominant element.  The tribunal therefore found a medium degree of visual and aural similarity between the marks, and a high degree of conceptual similarity.  

The Result 

Following the finding of high or medium similarity between the marks and the goods, the Tribunal concluded that the average consumer is likely to mistake the applicant’s and the opponent’s marks for one another, and so found a likelihood of confusion and the Opposition succeeded. 

Case Comment 

Even where there is not an exact crossover in goods covered by the marks (e.g. here the application covered alcoholic beer vs the earlier mark covering non-alcoholic drinks), companies should consider carefully all of the existing brands out there, particularly in areas where the goods may be in competition or sold through similar trade channels.   

This decision also shows how adding extra words that are merely descriptive or less distinctive e.g. ‘Beer co’ here, will not necessarily avoid a finding of similarity and likelihood of confusion with a word mark that is otherwise identical. 

Get in touch

Filing a trade mark is not always a straightforward process and the two recent cases above demonstrate how key it is to get the detail right to minimise the chance of a successful challenge or opposition.  For further information on trade mark law or indeed challenging a mark that you feel could be damaging your business contact Daniel Kelly or another member of the IP team in your local office. 

 

 

 

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Things to consider before entering an IP collaboration

Collaborations to develop new intellectual property (IP) are becoming more widespread across many sectors but how can you be sure you are protecting your best interests?

As businesses become increasingly specialized, new opportunities for growth may require working with another entity to test ideas and create new solutions. However, before entering into a collaboration agreement, there are a number of things to consider.

The benefits of collaborating

Not only is a collaboration useful for creating new products and processes, it also has a range of other benefits, including:

 

  • Driving forward company growth and brand awareness
  • Entering into new markets
  • Creating new IP
  • Research and development (R&D)
  • Keeping up with competitors
Core considerations

When drawing up a collaboration agreement, it is vital that key elements of the agreement, such as IP and confidential information, are defined clearly. There are a number of aspects to consider, to protect both the collaboration and each party. These can include:

 

  • Background IP: This refers to the existing IP each party already has and should be kept separate so that there is no ambiguity between existing IP and IP created as part of the collaboration. Background IP must be defined clearly, particularly unregistered IP and know-how. This is a technical skill and best done with the advice of a lawyer.

 

  • Foreground IP: This refers to the new IP that is born out of the collaboration. Again, this should be carefully considered and defined. Clauses relating to Foreground IP should cover, for example, the disclosure of IP to the other party, ownership and licensing, as well as the responsibility of protection and registration. When negotiating how Foreground IP may be commercialised, the parties should consider whether there are any legal restrictions, such as competition law.

 

  • Confidentiality: Both the agreement itself and know-how / trade secrets should be considered. While the agreement itself is usually confidential, it should be agreed how each party’s confidential and technical information can be used. This should also cover consequences of termination of the agreement for any reason and the duration of obligations.

 

  • Practicalities & responsibilities: This should encompass all the basics, from how the parties will communicate, to the project schedule and change control. While this part of the agreement does not refer to the IP, it is still very important to define each element carefully.

 

  • Corporate structure: Sharing IP can be tricky, so the parties in collaboration should decide the corporate structure in the early stages. For example, if both parties have their own limited companies, they may wish to create a separate holding company to protect the IP and another trading company that will upfront the commercialisation of the project.

In summary, collaboration agreements are extensive documents that must cover all aspects of an arrangement in order to protect both parties.

While the benefits of a collaboration can be great, it can also be a difficult balancing act between achieving a lucrative partnership and ending up with an investment flop.

Get in touch to find out how our intellectual property team can help.

We have launched our guide to recovery and resilience, helping to support businesses and individuals unlock their potential, navigate their way out of lockdown and make way for a brighter future. Further advice in relation to COVID-19 can be found on our dedicated coronavirus resource hub.

From inspirational SHMA Talks to informative webinars, we also have lots of educational and entertaining content for life and business. VisitSHMA® ON DEMAND.

Our free legal helpline offers bespoke guidance on a range of subjects, from employment and general business matters through to director's responsibilities, insolvency, restructuring, funding and disputes. We also have a team of experts on hand for any queries on family and private matters too. Available from 10am-12pm Monday to Friday, call  0800 689 4064.

 

 

 

 

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Guides & Advice

No one likes a copycat: how can brands protect their products?

From the Lidl ‘Hampstead’ gin to Aldi’s Cuthbert the Caterpillar cake, ‘copycat’ products have recently taken the spotlight, with brands looking to remove them from supermarket shelves. However, copycat stores having successfully used this business model for many years, and the attack of the clones is likely to continue. So, how can brands protect themselves from these lookalikes?

What is a ‘copycat’ product?

Essentially, these products are imitations made to look like the original, but with a few key differences. By copying aspects such font or colour rather than brand name, these products tiptoe carefully around the realm of trade mark infringement, making it harder for brands to take action.

Proving consumer confusion

Usually, a trade mark infringement case will centre on a name or a logo and the potential to cause confusion for consumers. The problem comes when proving this confusion, as it can be difficult to establish, especially if the name or logo isn’t identical to the registered mark.

As such, copycat cases often revolve around ‘passing off’, meaning that another brand is using the positive associations of the original to sell their own lookalike product (such as colour, shape, designs – known as “get up”). However, this can be just as hard to prove as trade mark infringement.

For example, when entering Aldi or Lidl, customers are fully aware that they won’t be buying the real thing. As a result, it could be said that some copycat products are merely legitimate competition.

Brand dilution

As well as a reduction in sales being a cause of concern for brands, copycats can also dilute well-established names. If a number of products are using the same colour scheme or font, a ‘family’ of similar products is created, increasing the chance that shoppers will buy an imitation.

Should the copycat be of poor quality, this can then damage the reputation of the original brand through association.

Protecting your product

The more comprehensive a brand’s IP portfolio, the more likely a copycat court battle will fall in favour of the original product. Although registering trade marks for fonts and colours is more challenging, this should still be considered. – along with design right protection and copyright.

Another way to protect a product’s market position is to boost its visibility through effective marketing, showing consumers why it is better than its competitors.

Unless there is a substantial legislation change to include a concept such as “unfair competition”, brands will have to continue to battle against the onslaught of copycat products. However, by creating a strong IP portfolio, businesses can give themselves a fighting chance in court.

Contact us

Learn more about our intellectual property team and find out how they can help you.

We have launchedourguide to recovery and resilience, helping to support businesses and individuals unlock their potential, navigate their way out of lockdown and make way for a brighter future. Further advice in relation to COVID-19 can be found onourdedicated coronavirus resource hub.

From inspirational SHMA Talks to informative webinars, we also have lots of educational and entertaining content for life and business. VisitSHMA® ON DEMAND.

Our free legal helpline offers bespoke guidance on a range of subjects, from employment and general business matters through to director’s responsibilities, insolvency, restructuring,fundingand disputes. We also have a team of experts on hand for any queries on family and private matters too. Available from 10am-12pm Monday to Friday, call0800 689 4064.

How can we help?

Our expert lawyers are ready to help you with a wide range of legal services, use the search below or call us on: 0330 024 0333

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Your summer guide to recovery and resilience in COVID-19

Your updated summer guide to recovery and resilience

As the UK takes its first steps to ease the current national restrictions and looks forward to an increase in economic activity and recovery it is vital that businesses are prepared in every aspect.

To support businesses and people navigate their way out of the last year and the current national restrictions, unlock their potential and drive for a brighter future, we have updated our guide to recovery and resilience.

From financial considerations, employees, leadership and premises, to supply chain implications, health and safety and protecting your private wealth, our guide highlights what organisations and individuals should consider when moving from survival to recovery to thrive.

Financial considerations

Whether a large corporate with a highly structured board, an SME or an owner-managed business, the financial viability of a business is key to its future success.   However, as the thoughts turn to the roadmap out of lockdown once again, and what the future may look like, businesses that have got through the last year should consider a range of measures to enable them to cope with what is likely be a recession for some industry sectors of the UK. Prudent business owners will be well aware of the predictions and while there will be a bounce back it may take some time for confidence and stability to return from customers and suppliers.

Your employees

Managing a workforce of any size can have its challenges, let alone one that is recovering from a global crisis. Many businesses will have furloughed employees or made the difficult decision to make a number of their workforce redundant. For those businesses that haven’t, it’s highly likely they will still face having to make difficult choices, albeit further down the line.

The knock-on effects of the COVID-19 outbreak have changed the way employers engage with and effectively manage, their employees. The processes, policies and guidelines that worked previously may no longer be fit for purpose for your business, or for your workforce, in the new working landscape. With the rollout of the COVID vaccine facilitating the gradual return of employees back into the physical workplace, this in itself will bring a host of new opportunities and challenges.

Buildings, workspaces and leases

As the world and economy move forward out of lockdown, owners and investors of real estate as well as occupying tenants will have to consider the adjustments they now need to make whilst the restrictions around social distancing continue.
They will need to find new ways of working and inevitably different ways to use their space over the coming months and, at the same time, consider how to manage the cost of premises in these changed circumstances.

Suppliers and supply chain

Many businesses have struggled to comply with their contractual obligations as a result of the COVID-19 pandemic and may have been forced to rethink their supply chains. A focus in recent years on minimising costs, reducing inventories and maximising asset utilisation has often resulted in a reduced ability to cope with disruption. Whilst the impact of the COVID-19 pandemic is unprecedented in modern times, disruption to the global economy is an increasing risk, whether due to political events such as Brexit, US-China trade tensions, or climate change.

Private wealth, family businesses and family

The effects of COVID-19 will undoubtedly have a huge impact on our economy for years to come, with many businesses collapsing under the strain and the level of unemployment set to rise significantly. However, what is less widely reported on is the effect it is having and will continue to have, on families and personal wealth. We’ve already seen that the pandemic has led to an increase in people looking at how they may pass on their wealth to the next generation –and even more so for those that own family businesses.

Compliance – Health and safety

Employers have clear duties under existing health and safety legislation. Obligations to comply with health and safety at work, and to manage and control workplace risks, includes protecting workers and others from the risk of COVID-19 infection in the workplace. That duty is to do everything “reasonably practicable” to manage these risks. The onus of demonstrating that everything reasonably practicable has been done falls to the employer. The best way to demonstrate compliance with the law is usually to follow government and industry-led guidance wherever possible.

Leadership

Strong leadership is a cocktail of authenticity, collaboration, passion, compassion, and a great deal of bravery. We all know the best results occur when we are pushed out of our comfort zones and the ingredients are shaken up, and COVID-19 has done exactly that. With government guidance signalling the UK’s route out of current national restrictions, the time for positive leadership is now. It’s time to take control of what we can and create an environment with enough certainty where people can feel safe enough to flourish centre stage.

We are here to help

The team here at Shakespeare Martineau remain committed to supporting our clients and our communities throughout these challenging times, with

the depth of experience, collaborative ethos and the creative know-how to lead positively to the future.  We are able to offer advice and solutions on a range of subjects for life and business - from employment and general business matters, through to director’s responsibilities, insolvency, restructuring, funding and disputes to issues affecting family businesses, personal wealth planning and family law. Do contact us on 03300 240 333

 

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Prior use and patent validity | A discussion of Claydon Yield-O-Meter v Mzuri

How far will the courts stretch the Hozelock decision? Here we discuss the Claydon Yield-O-Meter v Mzuri case  – testing the general principle of UK patent law that if an invention is ‘seen’ before its priority date, it cannot be patented.

 

[Disclaimer: Shakespeare Martineau LLP represented the successful Defendants in this case.]

The Claydon Yield-O-Meter v Mzuri case involved the alleged infringement of two patents relating to agricultural machinery, or more precisely, seed drills.

A key issue in relation to one of the patents was whether the patent was invalid as a result of the prior disclosure of the invention before its priority date.

The patent claim in issue essentially related to a seed drill to be attached to a tractor, utilising two rows of tines spaced across the width of the drill, with the front and rear rows of tines being aligned so that a first tine breaks up soil and the second places seed in the broken up soil.  The apparatus therefore leaves strips of undisturbed soil in-between the seeded strips – a method of planting known as “strip-tillage”.

The inventor had tested his seed drill on his farm for ten hours, including travel to and from a workshop, split over two days, prior to the patent’s priority date.  However, the field on which testing was admitted had a public footpath running across its top edge, which at the time of testing was unmarked and unmaintained.

The law

The starting point is that a ground for revocation of a patent is that the invention is not a patentable invention (s.72(1)(a) Patents Act 77 (“PA”)).  A patent may be granted only where “the invention is new” (s1(1)(a) PA), and “an invention shall be taken to be new if it does not form part of the state of the art.” (S2(1) PA).

The question therefore turns to what is in “the state of the art”.  This includes all matter which has been “made available to the public” anywhere in the world before the priority date (S2(2) PA).

The judgment refers to the case of Lux Traffic Controls Ltd v Pike Signals Ltd [1993], to reiterate that the disclosure to the public must also be an “enabling disclosure” – “such as to enable the public to make or obtain the invention”.  This judgment also confirms that for an invention to be enabled, the skilled person need only have been able to discern details of the invention at the level of generality at which they appear in the claim.

The question in the Claydon v Mzuri case was whether the testing on the farm made the invention available to the public, so as to enable the invention claimed in it.

“Available to the public”

The judgment confirms that an invention is “made available to the public” if the information made available is that which would have been either noticed or inferred by a person skilled in the art who, hypothetically, had taken advantage of the access to the invention established on the evidence.  It therefore does not matter whether somebody in fact took advantage of that availability, or not.  The inventor argued that the path was very little used at the time of testing, but the judge found that that assertion still implied that the public had access to it at the time.

So in this case, the question was not whether a person did see the testing on the field from the footpath, but what could they have seen had they been present on the public footpath.

The judge’s decision

By the time of trial, the expert witnesses were in agreement that most of the features of the claim would be visible to an onlooker from the footpath, aside from essentially the alignment of the tines.  As the seed drill tested on the farm was quite a large piece of machinery, and was driven closely to the footpath at one point during testing, the experts agreed that certain claimed elements would be visible, such as attachment to a tractor, and the use of rows of tines, a seed ‘hopper’ (the tank containing the seed), means for feeding seed to the seeding tines, and soil levelling means.

In relation to the alignment of tines, the judge reviewed the expert’s evidence.  The claimant’s expert suggested that precise alignment would not be visible due to the presence of the rear levelling wheels obscuring the view.  The defendants’ expert had no doubt that the skilled person observing from the footpath would have been able to see that the soil had alternate lines of tilled and untilled soil and that therefore the tines in the first and second rows must be aligned.

The judge then concluded that the skilled person, stood on the footpath, “would have believed the tines in the first and second rows were aligned” and would have been able to “see the prototype in action and been able to deduce from its appearance and from the appearance of soil left in its wake, features of construction of the prototype including all the features of [the] claim”.

Discussion of Hozelock

The inventor also sought to rely on arguments similar to those discussed in the recent decision in  E. Mishan & Sons Inc v Hozelock Ltd [2019], in which an inventor testing prototype hoses in his front garden was found not to have made the invention available to the public because the judge accepted the inventor’s evidence that if he had become aware of anyone watching his testing of the prototype, then he would either have packed away the equipment and waited until the visitor had left, or taken it round to back of his house where it would have been out of sight.

However, the subject matter of the invention here was significantly different to that in Hozelock.  The prototype drill tested by the inventor here was around 3m wide, and the judge distinguished the case by commenting that “preventing a member of the public from seeing a prototype seed drill would have been a good deal more difficult than hiding a prototype garden hose”.  The inventor’s evidence as to what he would have done if he saw an observer during testing of his seed drill, to prevent an enabling disclosure, was not clear enough to convince the judge that it was possible to prevent the skilled person from seeing or inferring each of the claimed features, including the alignment of the tines.

Use of drones and other equipment

Another point arose during argument at trial, regarding enablement and whether it is to be contemplated that technical equipment would have been used to enhance the detail of what would/could have been seen.

The judge did not rule out the availability of such arguments to be run, but in the circumstances the defendants did not run a detailed case on this point (e.g. exploring what equipment the observer might reasonably have been expected to carry and use), due to the visibility of the relevant integers of the claim to the naked eye.

The judge compared two contemporary examples, which may be relevant to prior use arguments that arise relating to alleged disclosures in the present day. Firstly, the judge recognised that evidence discernible using a mobile phone with a zoom function on its camera could be admissible to determine a prior disclosure, provided that evidence showed that at the relevant time and place a member of the public could reasonably have been expected to carry such a phone and use the zoom and could have done so lawfully.

In contrast, the judge doubted that evidence could establish that the skilled person would have had “a swarm of drones”, nor that use of the swarm would necessarily be ‘legal’, as it may give rise to issues of privacy and breach of confidence.

Practical tips for testing an invention, to reduce the risk of a prior use invalidating your patent
For inventors:
  • The safest thing to do is to not test your invention anywhere in public prior to the priority date – or even near to somewhere with public access, for example a footpath across private land. Here, had the inventor only tested the prototype on the other side of the field, away from the footpath, it might have not been treated as a public and/or enabling disclosure.
  • When testing an invention, make sure you discuss and document any steps taken (or that you would have taken) to prevent a public disclosure. The more detailed this is, the more likely you would be able to convince a judge that there was no public disclosure.
And for those challengers to the validity of a patent:
  • See if you can find any evidence or indication that an invention has been tested or otherwise disclosed prior to the patent’s priority date, and if so investigate where and how such testing took place.
  • If you are seeking to rely on the observer having equipment to assist with the observation, such as binoculars or a video camera, then evidence may be needed as to why that person could reasonably have been expected to carry that equipment at the time.
We're here to help

For further information on an issues concerning the above case, or any other aspect of patent or intellectual property law, contact Daniel Kelly or another member of the intellectual property team.

Our updated guide to recovery and resilience covers everything you need to navigate your business out of lockdown, unlock your potential and make way for a brighter future. Further advice in relation to COVID-19 can be found on our dedicated coronavirus resource hub.  

From inspirational SHMA Talks to informative webinars, we also have lots of educational and entertaining content for life and business. Visit SHMA® ON DEMAND.

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Client

Coloplast A/S v Salts Healthcare Ltd

Patents Court finds medical device patent obvious over five items of prior art & CGK.

Shakespeare Martineau LLP acted for Salts Healthcare Ltd, the successful defendant in the below proceedings.

On 18 January 2021, Nicholas Caddick Q.C. sitting as Deputy High Court Judge, handed down his judgment in Coloplast A/S v Salts Healthcare Ltd. This judgment follows an eight day trial that took place in hybrid form over late September and the beginning of October 2020. 

Coloplast alleged infringement of its patent EP (UK) 2 854 723. Salts denied infringement and counterclaimed for revocation on the bases of lack of novelty, lack of inventive step/obviousness, insufficiency, AgrEvo obviousness and added matter. 

In parallel proceedings at the European Patent Office “EPO”, the Opposition Division “OD” had found earlier in October 2019 that the patent lacked novelty over one of the items of prior art relied on by Salts in the UK proceedings. This decision is under appeal to the EPO Technical Board of Appeal TBA, expected to be heard later in 2021. The EPO proceedings however are based on different claim sets, and so the Court accepted it needed to consider the case afresh. 

In short, the Court found the patent invalid for lack of inventive step, but that had it been valid, it would have been infringed. 

The case concerns ostomy bags, which are connected to a stoma created surgically, in order to collect human waste from the stoma, usually after surgery to address issues in the digestive tract. As with many medical device cases, the market for them is valuable, and this commercial significance sits alongside important issues around patient sensitivity. 

The case involved many issues typical to patent litigation, and to that extent there was no “new” point of law at stake. What is unusual about the judgment though is that the patent was found invalid over all six cited items of prior art, being three prior publications and two prior uses, as well as the Common General Knowledge. AgrEvo obviousness was relied on also by Salts, but the judge found this added nothing more to the obviousness findings he had already made. This finding underlines the fact that although AgrEvo might be thought to be a sufficiency issue because it concerns lack of technical contribution, the UK courts tend to interpret it as an obviousness argument. As a matter of general interest, the UK approach to AgrEvo was summarised by Floyd LJ in Generics (UK) v Yeda Research & Development 2014 in the Court of Appeal but the judge did not deal with this in any detail, saying that it added nothing to his finding of conventional obviousness. 

The case is also illustrative of the interplay between timings of parallel UK and EPO proceedings. Salts had earlier sought a stay of the UK proceedings pending the OD decision, which the Court had refused. But as things turned out, the OD did find the patent invalid and the appeal to the TBA will likely come on before any appeal to the UK Court of Appeal, should permission be granted. 

From a procedural point of view, this was a substantive patent trial conducted in “hybrid” form, much of it online. Whilst not ideal, with for example some witness cross examination taking place by video link in a different time zone, it was a good example of how successfully the UK Courts have been able to adapt to the current circumstances induced by the COVID-19 pandemic.  

For further information on this case or any patent enquiry please contact Nicholas Briggs or another member of the IP team in your local office. 

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Copyright confusion: three key things online content creators need to know

Online platforms such as TikTok and YouTube have made sharing content easier than ever before.

From music and dance routines to video game streaming, people can now show off their talents to a global audience at the click of a button.

However, this can leave them open to copyright infringement, whether that be the infringement of their own work or someone else’s. So, what do content creators need to know before clicking upload?

1. Sharing is part of the package

Content creators must be aware that the purpose of these online platforms is for people to be able to share material freely. For this to work, the ‘terms of service’ and ‘community guidelines’ generally include provisions granting very wide licences for the platform and other users to share and reuse content posted on the site without further payment.

This runs contrary to the point of copyright, which aims to encourage creators to publish new works by enabling them to charge royalties if they are to be shared or reused.

2. You can’t copyright an idea

Users of these platforms should also bear in mind that copyright protects the expression of an idea and not the idea itself, so it can be hard to stop copycats taking themes from original content and applying them to their own creations. However, music and video material is capable of being protected if it is downloaded and distributed outside of the platform’s terms.

Read more about copyright and how it can be a valuable asset to your business.

3. Keep valuable content protected

Although the basic principles of copyright remain the same regarding online content, creators do not have the same leverage when trying to police their rights through platforms as they might enjoy against more traditional forms of infringement.

Therefore, for content considered valuable by the creator, it may be wise not to upload it to an online platform that encourages sharing, unless the creator is willing to spend money policing it themselves.

Protecting your intellectual property

The pace of change of content creation platforms means copyright law has been playing catch up for some time and will likely continue to do so for a while to come. However, it is not so much that the law has become unsuitable, but that such platforms have become so large that they have almost become untouchable. As such, online content creators must ensure they are aware of the risks they are taking when uploading their creations to sharing platforms.

Contact us

If you have concerns or queries around copyright infringement then our team of intellectual property lawyers can guide you through the process and advise you on the options available – contact Martin Noble for advice and support.

From inspirational SHMA Talks to informative webinars, we also have lots of educational and entertaining content for life and business. Visit SHMA® ON DEMAND.

Our free legal helpline offers bespoke guidance on a range of subjects, from employment and general business matters through to director’s responsibilities, insolvency, restructuring, funding and disputes. We also have a team of experts on hand for any queries on family and private matters too. Available from 10am-12pm Monday to Friday, call 0800 689 4064.

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Intellectual Property | Considerations and difficulties for breweries

Over the last few years, there has been an increase in trade mark applications for UK beer brands - read our previous blog on this topic.

There has since been a number of interesting beer-related trade mark decisions, and very public disputes, which demonstrates the range of difficulties that may be encountered by breweries (big and small) relating to their branding.

Here we provide a round-up of some of those significant trade mark decisions.

Hugo Boss vs Boss Brewing - Show them who’s Boss?

Earlier this year, it was well publicised that Boss Brewing applied for a trade mark for its logo, incorporating its trading name “Boss Brewing”.  They then received a cease and desist letter from Hugo Boss, the fashion giant, requesting that they ceased using the name “Boss”, and their application was opposed.

This was resolved after months of negotiations, with their beers "Boss Black” and “Boss Boss” changing to “Boss Brewing Black” and “Boss Bossy”.  The brewery are also unable to sell any clothing under the Boss Brewing name.

This case demonstrates that larger brands will often strongly defend their brands, even where they do not have trading activity or trade marks relevant to the brewing industry.

This dispute also received widespread media attention as a “David vs Goliath” battle, when comedian Joe Lycett temporarily changed his name by deed poll to Hugo Boss.  Hugo Boss was perceived as a bully in this coverage, which should be a real consideration for larger brands when looking to enforce their rights against a smaller brand or business.

HBO vs Wadworth Brewery - Game On

Another large brand which rigorously defends its marks is HBO, the television network which owns the rights to TV shows such as Game of Thrones.

They have been seen to oppose trade marks for applications for phrases incorporating “Game Of…” (see for example Game of Vapes), but in 2019 they opposed Wadworth brewery’s attempt to register a trade mark for their pump clip of their ‘Game of Stones’ beer, featuring an image of Stonehenge.

In this case, the brewery was successful in arguing that the Game of Stones sign would neither lead to a likelihood of confusion with the Game of Thrones brand, nor would it constitute a misrepresentation.  It was recognised however that the mark may bring the opponent’s sign “fleetingly to mind”, but this was not enough to successfully oppose the registration.

Whilst this is an example of a brewery successfully defending its position, they inevitably had to incur legal costs in doing so. The opposition was brought as a result of the brewery’s decision to name a beer using a play on words based on the show’s name, and to then seek to register this as a trade mark of their own.

Tiny Rebel Brewery vs Tropicana Products – Welcome to the Clwb

A further decision concerns Welsh brewery Tiny Rebel’s attempt to trade mark the name of one of their flagship beers, ‘Clwb Tropicana’.  This prompted PepsiCo (owner of the rights in the Tropicana soft drinks brand) to both oppose the trade mark application, and to write to the brewery to demand that they stop using the beer’s name.

The opposition succeeded both on the basis of “passing off” (PepsiCo owned ‘goodwill’ in the mark Tropicana in the UK, there would be a misrepresentation to consumers, and that PepsiCo would suffer loss as a result), and on the basis of the marks being similar with there being a likelihood of confusion on the part of consumers.

The beer has since been renamed Clwb Tropica IPA.

What do breweries need to consider when naming new beers or applying for trade marks?
  1. Continue to consider applying to protect flagship beer brand names through trade mark applications,

However, note that companies may have “watch services” set up which monitor for applications made that are similar to particular phrases or words. The various intellectual property offices also notify existing trade mark owners of similar applications.  Such notifications may bring the use to the attention of trade mark owners, which may not have otherwise been discovered.

  1. Undertake clearance searches for existing third party rights and/or seeking advice from an IP lawyer before the initial use of a new beer name

This is particularly important if you are concerned that it is similar to either another brewery’s brands or more widely known brands, even if they are not in the brewing industry.  This advice may be sought initially, and/or prior to making a trade mark application.

  1. If you receive a cease and desist letter, remember that it does not necessarily mean that that the other party has a valid claim.

Obtaining early legal advice on a letter received would allow you to make a judgment on the merits of the claim and to see whether any action needs to be taken.

  1. Even if the complainant’s case is not particularly strong, they may nevertheless seek to continue to oppose the application and/or demand that your use of the mark ceases.

Even meritless claims incur costs and time in defending them, and for example in UKIPO proceedings costs are only awarded to a successful party on a contribution basis, rather than the full costs incurred.  Early advice may help to avoid or reduce these costs being incurred unnecessarily.

What should existing trade mark or brand owners need to do if they become aware of a similar name being used or applied for as a trade mark?
  1. Consider opposing a trade mark application

Once the trade mark has been registered it can be more difficult and costly to invalidate it if it becomes a problem.

  1. Consider the status and size of the recipient if you are considering sending a cease and desist letter

You also need to consider the risks of taking action and bringing negative publicity (for example that experienced by Hugo Boss and BrewDog recently), against the threat to your brand/business that they pose.  It may be that a confidential arrangement can be reached, seeking to distance the brands from each other and setting out how they can co-exist effectively.

We understand that your brand is your public face and embodies your reputation

In many cases your brand and reputation will have been built up over many years and is one of your business' most important assets. Your trade mark helps you to differentiate your products and services from those of your competitors, and adds value to the products and services you sell.

If you have concerns around your brand or trade mark rights, or the activities of others, then our intellectual property team can guide you through the process, having acted for clients in the brewing industry previously.

Read more about our trade mark experience.

From inspirational SHMA Talks to informative webinars, we also have lots of educational and entertaining content for life and business. Visit SHMA® ON DEMAND.

Our free legal helpline offers bespoke guidance on a range of subjects, from employment and general business matters through to director’s responsibilities, insolvency, restructuring, funding and disputes. We also have a team of experts on hand for any queries on family and private matters too. Available from 10am-12pm Monday to Friday, call 0800 689 4064.

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COVID-19 temperature checks: Data protection in UK airports

COVID-19 temperature checks: Data protection in UK airports

As air travel begins to resume in the UK, airports are relying on safety measures, such as COVID-19 testing, to encourage people to take to the skies once more.

However, it has been questioned whether the benefits that the collection of sensitive data brings truly outweigh the risks.

Biometric technologies

Airports have been using facial, iris and fingerprint recognition technologies to improve passenger experience and security for years. Body temperature testing, on the other hand, is still uncommon, particularly in the UK.

With a raised temperature being a key symptom of COVID-19, it seems a sensible option for airports to record temperature data. Whether checks are taken using a laser thermometer or thermal imaging, the data collected can help to identify those with COVID-19, but it must be handled appropriately.

Temperature checks and privacy laws

Europe has strict privacy laws, which partly explains why health testing hasn’t been carried out routinely in European airports up to now. Biometric and health data are classified as ‘special category’ data under the General Data Protection Regulation (GDPR), meaning they require additional conditions to be met before its processing is lawful. Read more about data protection and GDPR here.

Particular care must also be taken with its storage, handling, use and disposal. Breaches regarding biometric and health data will likely lead to much more severe consequences than if names or emails are mishandled or hacked.

Data protection impact assessments

Before implementing any form of temperature testing, airports must do a data protection impact assessment (DPIA), as required by the GDPR. This involves documenting any potential privacy risks and exploring mitigations that can be introduced to minimise these.

The goal is to demonstrate whether testing is a necessary and proportionate way to meet the set objectives and to review whether there are any alternatives that are less intrusive.

Temperature data could be misleading regarding COVID-19, as the virus is not the only reason someone may have a raised temperature. Furthermore, many COVID-19 carriers show no symptoms such as a raised temperature. As such, airports should assess whether temperature testing is a necessary and proportionate way of identifying passengers with the virus, and a justifiable intrusion into their privacy.

Obtaining consent for temperature checks

If an airport is able to show that collecting temperature data is proportionate and necessary in the legitimate interests of the airport and its passengers, it then needs to face the issue of trying to satisfy one of the additional conditions the GDRP applies to processing health data, such as obtaining the fully informed - and freely given - consent of the individual involved.

Not only will gaining explicit consent from every passenger be logistically challenging, but it also raises questions about whether it is truly freely given if it’s the only way to continue a journey. Passengers must also be able easily to withdraw their consent at any time if they wish, and managing this will not be easy.

Each passenger must know why the data is being taken, how it will be stored, who it will be shared with, and when it will be disposed of. There are approaches that can be taken to tackle this, including reading a script to passengers that contains all the necessary details and displaying clear messaging throughout the airport, but ensuring that every passenger understands and accepts the privacy risks involved is not straightforward.

Will temperature checks become a normal part of air travel?

The fact that taking temperatures in European airports is still quite rare shows that it is not easy to overcome the legal and logistical challenges it presents. Unless national governments make it compulsory, in turn removing many of the difficulties holding airports back, it is unlikely that testing will become a normal part of the passenger experience.

Contact us

If you have any queries relating to the legal implications of conducting temperature checks, or any other data protection or GDPR issue, contact Kim Walker in our commercial team.

Our webinar on temperature checks in the workplace looks at GDPR and what employers need to do before collecting processing and storing special category data, employer and employee rights, and the importance of health and safety and GDPR policies.

From inspirational SHMA Talks to informative webinars, we also have lots of educational and entertaining content for life and business. Visit SHMA® ON DEMAND.

Our free legal helpline offers bespoke guidance on a range of subjects, from employment and general business matters through to director’s responsibilities, insolvency, restructuring, funding and disputes. We also have a team of experts on hand for any queries on family and private matters too. Available from 10am-12pm Monday to Friday, call 0800 689 4064.

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