Last month we reported on the Retained EU Law (Revocation and Reform) Bill 2022-23, the UK government's plan to "sunset" (revoke) huge swathes of retained EU legislation and make it easier for UK courts and tribunals to depart from retained EU case law. 

Whilst the Bill recently passed its second reading in the House of Commons, reports suggest that the new Prime Minister might amend the Bill, at least the sunset provisions. This follows statements (including from the Chartered Trading Standards Institute) of how much resource would be needed to review and potentially replace or amend all retained EU law by the end of the 2023 deadline. The Bill has now moved to committee stage, which is expected to report by 22 November. We will report more on the implications of the Bill for brands when the form of the Bill is more certain.  Meanwhile, the government has published a preliminary list of IP-related legislation that will be impacted by the Bill.

A significant question engendered by Brexit is whether UK prior rights (and UK reputation/enhanced distinctiveness for an EU trade mark) should still be considered in decisions issued after the end of the Brexit transition period. 

A number of decisions have been issued on these points, most (but not all) finding that such rights and use should be taken into account as long as the priority/filing date of the mark under attack pre-dates the end of the Brexit transition period. 

It was a surprise recently then that the General Court held in Shopify v EUIPO that evidence that an EUTM had acquired distinctiveness through use in the UK should be ignored since the Board of Appeal decision was taken after the end of the Brexit transition period. This was despite the fact that the UK was still part of the EU at the time the mark under attack was filed. 

We will report more on this and related decisions in December's Brands Update. However, it seems that only a decision of the ECJ will ultimately clarify the position. Fortunately, an appeal to the ECJ has been filed in the Nowhere v EUIPO case. 

The Court of Appeal has ruled that Tesco can proceed with its counterclaim for bad faith against Lidl. This over-turns an interim decision of the High Court in June which struck out Tesco’s bad faith counterclaim on the basis that it had no prospect of success. 

The two supermarkets are in dispute about Tesco's use of a yellow circle on a blue background for Tesco’s club card, which Lidl says infringes its logo. Tesco has counter claimed that Lidl has filed successive applications for its logo in bad faith since it does not have an intention to use the logo alone (without words). 

There are two permissible ways to bring an invalidation action against an EUTM: at the EUIPO or by way of counterclaim where the party is being sued for infringement of the EUTM before a national court acting as an EU trade mark court. It is not possible to bring an invalidation action as a claim before an EU trade mark court; only as a counterclaim to infringement.

In Gemeinde Bodman-Ludwigshafen, a court claim for EUTM infringement was commenced in Germany and a counterclaim in the same case was brought by the defendant for invalidity of the EUTM asserted against it. During the course of the case, the claimant withdrew its infringement action. The German court therefore referred the question to the ECJ of whether, in such a situation, the defendant was still able to continue with its invalidity counterclaim or instead would need to commence a fresh action at the EUIPO. The ECJ ruled that, in such a situation, the court still has jurisdiction to rule on the invalidity of the trade mark. 

The decision means that a claimant facing an invalidity counterclaim at court does not have the option of terminating the invalidity action by tactically withdrawing its infringement claim. It would need to agree the withdrawal of the counterclaim with the defendant before withdrawing its infringement claim. 

The Trade Marks (Amendment) Regulations 2022, which will give greater protection to well-known trade marks in the UK, were debated in the House of Commons on 26 November 2022. Well-known trade marks are effectively famous marks. The UK government agreed to strengthen the protection for well-known marks (implementing WIPO's Joint Recommendation on the topic) in Article 24 of its Trade and Co-operation Agreement with the EU on Brexit. 

The changes are two-fold:

• The owners of well-known trade marks will be able to prohibit the use of conflicting marks which (without due cause) take unfair advantage of, or cause detriment to, the reputation of their marks. At present, only confusion-based claims are permitted. Since confusion-based claims only apply where the goods/services in question are identical or similar, this has meant that it has not been possible for the owners of well-known marks to prevent the use of conflicting marks on dissimilar goods/services. It has also meant that the owners of well-known marks must prove a likelihood of confusion.
• The owners of well-known marks in the UK will now be able to take the benefit of the provisions. Currently, the provisions only apply to the nationals of, or those domiciled in, or having a real and effective industrial or commercial establishment in, a Convention country other than the UK. These provisions will be broadened to cover those based in the UK.

The Law Commission of England and Wales recently published a consultation paper containing provisional proposals to reform the law to ensure that digital assets (including crypto-tokens and cryptoassets) are recognised and protected. The consultation examined how existing personal property law can apply to digital assets and whether the law should go further to acknowledge features which are unique to such assets. The consultation paper proposed a "third" category of personal property distinct from things in possession and things in action, which it said would allow for a more nuanced consideration of new, emergent, and idiosyncratic objects of property rights. It labelled this category "data objects" and suggested it included most crypto-tokens but not certain other categories of digital property such as domain names.

Meanwhile, The Law Commission has also launched a government-commissioned review to ensure the rules of applicable law and jurisdiction can accommodate an increasingly digitalised world. It aims to publish a consultation paper in the second half of 2023. 

WIPO has introduced a number of changes to international trade mark registrations with effect from 1 November 2022. A signed letter can no longer be used to appoint a representative; rather, this must be done using WIPO’s eMadrid service or the downloadable Madrid System forms. Other changes include the fact that registrants can now renew international registrations up to six months before expiry (without any change to subsequent renewal dates).