26. September 2023
– 5 von 5 Insights
A recent ruling illustrates that misleading key word advertising can sometimes be tackled via an ASA complaint as opposed to claims for trade mark infringement.
The ruling by the ASA concerned a paid-for search ad for online travel agency eSky.co.uk, which appeared on the search engine Qwant when users searched for “Ryanair”. The resulting ad featured the heading “ryanair.esky.co.uk Ryanair – Cheap Flights Book airline tickets with …”. A complainant (not Ryanair) challenged whether the ad misleadingly implied that the advertiser was Ryanair.
According to the ASA, the overall impression created by the prominence of the references to Ryanair in the advert compared to references to eSky meant consumers would understand the ad was for Ryanair and that it would take them to Ryanair's official website. The ASA ruled that the advert was misleading. Key factors included:
The use of the "ryanair" search would mean consumers served the ad would expect the Ryanair website to feature amongst the top-listed search results.
The ruling serves as a good reminder that advertising claims can sometimes be a useful enforcement tool for brands (instead of or as well as claims for trade mark infringement). Although Ryanair did not complain about this ad, it could have done.
A reminder that a UK address for service will be required for all comparable UK marks (deriving from EUTMs) and re-registered designs (deriving from RCDs) from 1 January 2024 onwards if inter partes proceedings are commenced against them.
Given this change, we recommend that a UK address for service should be preferably recorded now against all marks with effect in the UK. This includes comparable UK marks, re-registered designs and UK designations of International trade marks and designs.
While a UK address is not mandatory (unless and until inter partes proceeding are commenced) there is a real risk of an important communication not being seen or acted on where there is a non-UK address for service. This is particularly so given a recent change of practice at the UKIPO, which we reported on earlier this year.
Given the significant potential downsides of a defence not being filed in time at the UKIPO (where the right in question is often deemed abandoned) it is prudent to appoint a UK address for service against all rights with UK effect now.
The UK government has launched a second consultation on possible changes to legislation to support the UKIPO's digital transformation programme.
The consultation sets out changes which the government considers might be needed in a number of areas including document inspection, mediation and the law on series trade marks.
Series marks allow an applicant to file for up to six marks in one application provided that the marks all "resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark."
The consultation notes that series marks are a relatively unique feature of the UK trade mark system, with relatively few other jurisdictions offering them.
While demand for series marks follows broader trade mark filing trends, 65% of series marks filed by unrepresented applicants are rejected. There has been concern that series marks are being filed (where separate applications should be filed) in order to reduce filing costs and that unrepresented applicants might believe that they are obtaining broader protection than they are.
The consultation addresses three options: maintain the current legal framework for series marks, reduce the number of allowed marks in a series (eg to four or two marks) or abolish series marks.
The consultation will run until 31 October 2023.
The UKIPO is undertaking a digital transformation project to modernise its services. By 2025, it intends to replace its existing processes with a single, integrated system for all registered IP rights.
In November 2022, the government published its first consultation on proposed legislative developments to support the project. The government has now published its response to that consultation.
Key commitments of the government include:
The IPEC guide to small claims track cases has been updated. Small claims are generally those worth £10,000 or less (not including costs). The main changes are to the procedure for hearing IPEC small claims in Manchester following the announcement of this by Hacon J earlier this year.
From 3 July 2023, all claims filed either on CE File or in person in London (at the Rolls Building) are being automatically transferred to Manchester. They will be case managed by District Judges in the Manchester Civil Justice Centre.
Parties will have the right to apply to have a claim transferred from Manchester to any other court centre which hears IPEC small claims track cases, including London. Claims will only be transferred if there are good reasons to do so, in particular where there is a need for a trial in person and potential difficulty in having a trial in Manchester.
The European Parliament has formally adopted the Regulation on geographical indication protection for craft and industrial products. The EU Council is expected to formally adopt the Regulation at an upcoming meeting, after which it will be published and enter into force. It will commence two years after that date.
The new regulation, inspired by the existing rules for agricultural products, will extend GI protection to locally renowned non-food products such as lace, glass, natural stones, jewellery and porcelain across the EU and globally. Since a number of member states already offer GI protection for these products, the new Regulation will harmonise rules as well as protect producers.
26. September 2023
26. September 2023