Brands Update: quick read

Our quick guide to everything you need to know this month including brief summaries of our feature articles and more. 

In case you missed it

Part 2 of our article summarising key brands related developments from this year is now live. As well as summarising important developments this year on topics such as unconventional trade marks, abuse of process and honest concurrent use, it looks at what's on the horizon for next year. Part 1 is here. 

Bad faith under the UDRP

One of the requirements for a successful UDRP domain name complaint is that the domain name was filed and used in bad faith. Many recent cases have considered what is meant by bad faith and - more particularly - what does not constitute bad faith. They illustrate that bad faith generally requires some sort of wrongful targeting of the legitimate trade mark owner. Therefore, a good faith acquisition of a domain name can often negate any bad faith argument. 

In our feature article, we cut through the cases and summarise what does and does not constitute bad faith. 

The burden of proving bad faith: UKIPO decision in D&M Winchester over-turned 

One of the key issues around bad faith in trade mark law is, under what circumstances the burden of proof will be reversed. Since evidence as to why an application was filed will often not be available (especially if the application was filed years ago), a reversal of the burden of proof will often be determinative. 

In a recent decision in D&M Winchester v Coleburn Distillery, the Scottish Court of Session held that the UKIPO was wrong to reverse the burden of proof and to find bad faith. The decision will be tentative welcome news for brand owners and is considered in more detail in our feature article.

Second hand sales: no genuine use of TESTAROSSA mark

Legacy brands often have difficulty proving genuine use in order to sustain and enforce their trade mark registrations. However, second hand sales of goods by or on behalf of the trade mark proprietor can sometimes constitute genuine use, as can sales of spare parts. In our feature article, we consider the recent Hesse v Ferrari (TESTAROSSA) EUIPO Board of Appeal decision on this issue. 

Certification marks: republic of Cyprus fails to stop GRILLOUMI application

Certification marks are a type of trade mark which distinguish certified goods/services from non-certified goods/services. In Republic of Cyprus v EUIPO, the EU General Court has reiterated that the test for likelihood of confusion for certification marks is the same as for all individual marks. In particular, certification marks that are descriptive or weakly distinctive (often the case since these marks are trying to describe what they certify) will be given a narrower scope of protection. 

Our feature article considers why the Republic of Cyprus failed in its opposition to the registration of a mark for GRILLOUMI on the basis of its earlier HALLOUMI certification mark. 

A quick guide to… trade mark law in the Middle East

Our quick guide article this month covers trade mark law in the Middle East, including clearance, classification, costs, document formalities and bad faith.

When does a logo confer distinctiveness? The SAFEGUARD ruling 

In a recent ruling, the EU General Court has upheld a decision of the EUIPO Board of Appeal that an EUTM application for SAFEGUARD and logo (depicted below) is descriptive and lacks distinctiveness. The application covered various soaps and cosmetics in class 3. 

The meaning of SAFEGUARD was readily identifiable and described the nature of the goods applied for (protection against harm or damage). This message was reinforced by the shield figurative element, which was not sufficient to confer distinctiveness on the mark as a whole. As always, the fact that the applicant had obtained registrations for other similar marks was irrelevant. 

The case is a useful reminder that adding a relatively banal logo to descriptive words will not make the mark as a whole registrable. That's especially so where the logo reinforces the descriptive message behind the words. 

"Put Putin in" EUTM application contrary to accepted principles of morality

An EUTM application for ‘Put Putin In’ for clothing in class 25 has been rejected by the EUIPO on the basis that it is contrary to accepted principles of morality. While the EUIPO considered that the average English-speaking consumer would understand the application as meaning "lock Putin up" (as opposed to put/keep him in power), the application was seen as capitalising on the Russian invasion of Ukraine.

Some commentators have considered the ruling out of step with other applications that have been accepted (such as the various Banksy war related marks which are registered). The CJEU has previously held that freedom of expression is also relevant. Nonetheless, this application was rejected.

No genuine use where mark used to denote deposit scheme: DPG Deutsche

In DPG Deutsche Pfandsystem v EUIPO, the EU General Court held that the mark depicted below had not been put to genuine use in the EU. 

The mark had not been used as an indicator of the commercial origin of the goods/services covered by the registration. Rather, it had been used to by members of a mandatory deposit scheme to indicate goods with disposable packaging. Had the registration been for a certification or collective mark, there might have been genuine use, but it was an ordinary EUTM.

No damages for moral prejudice: Wirex v Cryptocarbon

The High Court of England and Wales (IPEC) has refused to grant a claimant to a successful trade mark infringement claim damages for moral prejudice. Such damages are envisioned by regulation 3 of the IP (Enforcement, etc) Regulations 2006 (which implemented the EU's IP Enforcement Directive). The court noted that - apart from being clear that it is does not cover economic loss – case law on "moral prejudice" is sparse. 

In this case, all the losses claimed were all economic except for the severe frustration the claimant had felt. Frustration (which is common among claimants) does not equate to moral prejudice.

In another recent case, Equisafety Ltd v Battle, Hayward & Bower, IPEC considered an account of profits for trade mark infringement and passing off – a rare and useful example of how an account of profits is calculated.

ECJ rules that minimum five-year custodial sentence for trade mark infringement is disproportionate: G. ST. T.

In a reference for a preliminary ruling from the District Court of Nesebar, Bulgaria, the ECJ has ruled that a national provision providing for a custodial sentence of a minimum of five years for trade mark infringement (where the mark is used repeatedly or with significant harmful effects) is contrary to EU law. The court also ruled that national law is free to categorise trade mark infringement both as an administrative and criminal offence (without any distinction between the two laws). 

High Court considers when UK unregistered design right is new

In KF Global Brands v Lead Wear, the High Court of England and Wales (IPEC) has ruled on subsistence of design right when changes are made to an existing design. The Court said that "…where a new design is produced by making changes to an existing design, it is for the Court to decide whether the changes are relatively minor.  If so, then no new design right will arise in the new design as a whole but merely in those parts which have changed. It might still be open to the creator of the minor design changes to rely on the design right in the existing design, but only if he or she happens to own that design right too." 

The case concerned alleged infringement of design right in cargo trousers. The design right relied on reproduced an earlier third-party design with the exception of a pen pocket. The infringement claim failed because the claimant did not rely on any design right in the pen pocket only and the design right in the whole product (cargo trousers) was not original (since it was copied from the third-party product). The case illustrates the importance of claiming design right in the correct features.