Brands Update: quick read

EU developments

There have been developments on the protection of geographical indications (GIs) at EU level, with the new Regulation extending such protection to craft and industrial products having recently come into force and proposals to strengthen the GI system for wine, spirit drinks and agricultural products progressing. Read our articles on these important developments here and here.

The EUIPO has launched a mediation centre for IP disputes that will provide alternative dispute resolution services (including mediation, conciliation and expert determination) for IP disputes, free of charge. Initially, the service will be available to all parties involved in inter partes proceedings before the EUIPO at second instance and to SMEs involved in such proceedings at first and second instance.

The EUIPO Management Board has adopted the CP13 (bad faith) and CP14 (public policy and morality) common practices and approved the launch of the CP16 (descriptive marks) common practice. The common practices aim to guide EU member states in the application of relevant principles of trade mark law. It is expected that IP offices in the EU will implement the new practices by spring 2024. 

The EUIPO has said that a technical problem recently prevented certain entries from being displayed in the EUIPO eRegister. The problem has been resolved but certified extracts of the EUTM and RCD Register downloaded between 10 September and 17 November 2023 may be missing certain register entries. The EUIPO has also warned about a new spate of counterfeit emails to users.

The Advocate General of the ECJ has issued his opinion in the Indo European Foods v EUIPO case on what happens when a prior right relied on in an action ceases to exist during that action or any appeal. Read our article on this here.

In Quantic Dream v EUIPO, the EU General court has annulled a finding of a likelihood of confusion between the two stylized Q marks depicted below (both covering computer software in Class 9 and various computer-related services in Classes 35 and 42) and remitted the case back to the EUIPO Board of Appeal. The Board had been wrong to hold that the degree of visual similarity between the marks was average and that the earlier mark had a normal degree of distinctiveness: single letters with minimal stylization/added matter are generally of low distinctiveness. There was no evidence that the earlier mark benefited from enhanced distinctiveness through use.

In Jaguar Land Rover v Plein, the EUIPO Board of Appeal has found a link sufficient for an Article 8(5) (reputation-based claim) between land vehicles in Class 12 on the one hand and nearly all goods/services covered by the later mark in Classes 3, 9, 12, 14, 18, 24, 25, 26, 28, 35, 37 and 40 on the other hand. It said that, “It is common knowledge that consumers buying luxury cars are likely to also seek out expensive and exclusive goods, such as cosmetics, perfumery, electronic devices …” as well as "exclusive related services". The ruling will be welcome news to brand owners following the Puma and Bimbo rulings in which no link was found despite the fame of the earlier marks (article here).

Recent case law of the EUIPO Board of Appeal has served as a reminder that when a main appeal at the EUIPO is withdrawn, any cross-appeal also falls away. This can be overcome by both parties filing their own separate appeals rather than cross-appealing.

The EUIPO Board of Appeal has overturned a Cancellation Division decision and found that there is a likelihood of confusion between a Cyrillic mark and a Latin character mark. Read our analysis of this important ruling here.

UK developments

The UK government has published a summary of the results of a consultation (launched in July 2023) on its powers in relation to domain name registries. It follows an announcement that the government will commence sections 19 to 21 of the Digital Economy Act 2010, which set out the government's powers of intervention in relation to internet domain name registries in the event that they fail to address serious, relevant abuses of their domain names. As part of that, the government will specify practices that must be considered to be an ‘unfair use’ or a ‘misuse’ of a domain name as well as requirements for handling domain name complaints.

The UKIPO is inviting businesses to respond to its survey on IP and business growth. Responses will help the IPO better understand how businesses may raise external finance (including leveraging their IP assets to secure funding); explore awareness, perception and use of IP litigation insurance products; and better understand how to support businesses in managing their IP assets. Responses are due by 2 February 2024.

In easyGroup v Nuclei, the Court of Appeal has upheld a decision of the High Court that easyGroup's EASYOFFICE trade mark registrations are not infringed by the use of the sign EASYOFFICES by Nuceli – both registered/used (respectively) for hiring office space. The long period of honest concurrent use, lack of evidence of actual confusion, low level of inherent distinctiveness of the prior marks and above average level of attention of the average consumer all mitigated against a likelihood of confusion. The decision to revoke easyGroup's registrations was also upheld, the Court commenting that easyGroup is an experienced operator which should be well able to prove genuine use of its marks during the relevant period. At first instance, the High Court had also ruled that a party bringing an unsuccessful trade mark invalidity action (including at the UKIPO) cannot later claim/counter-claim that the same registration is invalid on grounds that could have been raised in the earlier invalidity action (see our article here). This aspect of the decision was not subject to the appeal.

The High Court has held that the mark PETSURE is not confusingly similar to the mark VETSURE – both registered and used for pet insurance among other goods/services. A key factor was the low level of inherent distinctiveness of the VETSURE mark – see our article here.

The High Court has ruled that Company Names Tribunal complaints under section 69 of the Companies Act 2006 effectively apply to names that are registered before the section came into force. While the provision does not operate retrospectively, it does provide a mechanism by which the potential future use of a name can be controlled, even if the name was registered prior to the section coming into force.

In Borthwick Group (Energy) Ltd - ASA | CAP, the ASA deemed that a paid-for Facebook ad misleadingly suggested that it was approved or endorsed by the BBC. This is yet another example of an ASA complaint being used as an alternative or additional means of enforcement alongside a traditional trade mark infringement or passing off claim.

It has been reported that the judge is planning to do a blind cider taste test in the Thatchers v Aldi trade mark dispute in connection with the claim of detriment to reputation (tarnishment). If correct, it will be interesting to see how - if at all - the issue impacts the assessment.

The UKIPO has partially invalidated the LARSSON logo mark depicted below registered by James Dear for clothing on the grounds that it conflicts with earlier passing off rights in the name Henrik Larsson. Interestingly, Larsson - a former Celtic, Manchester Utd and Barcelona footballer - was only held to have goodwill in relation to football and football-related goods. His goodwill did not extend more widely (even to non-football related clothing) since he had not produced, licensed or endorsed any such goods. The hearing officer also stayed a claim that Mr Dear had applied for the mark in bad faith (since it had an overly wide specification) pending the Supreme Court's ruling in SkyKick.

International developments

Saudi Arabia has - from 2 November 2023 - adopted the 12^th Edition of the Nice classification (which came into force on 1 Jan 2023). In addition, it no longer accepts specifications consisting of class headings.

WIPO has announced the accession of Portugal to the Geneva Act of the Lisbon Agreement (in force, 18 January 2024) and of Fiji to the Paris Convention (in force, 19 January 2024).

With numerous cases this year, see our round up of key design cases this year as well as our quick guide to… designs.