Louise Popple

Senior Counsel – Knowledge

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Louise Popple

Senior Counsel – Knowledge

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6 February 2024

Brands Update - February 2024 – 1 of 6 Insights

Brands Update: Quick read

  • In-depth analysis

EU developments

New EU legislation could limit distinctive packaging

The proposed new EU Packaging & Packaging Waste Regulation could restrict the ability of brand owners to use distinctive and fanciful product packaging. 

If enacted, the Regulations will impose packaging minimisation requirements on all packaging manufactures whose products are placed on the EU market, with (as drafted) few carve outs for packaging elements used to distinguish the product over others in the market. Brand owners should consider lobbying on this issue now to ensure that their ability to use distinctive packaging in the EU is not curtailed. More on this important legislation here.

Record EUTM licences or risk loss of rights

There are good reasons for recording a licence of an EUTM at the EUIPO. Absent recordal, those who acquire rights in an EUTM without knowledge of any licence affecting it are not bound by the licence. 

A recent EU General Court decision adds a further incentive for recordal. The Court held that a EUTM licence can only be recorded if the current registered owner of the EUTM consents. Where an EUTM has been assigned prior to recordal of a licence, this means the new EUTM owner must consent. The decision weighs in favour of recording licences without delay and of including appropriate provisions in licence agreements to mitigate the risks. Read our recommendations here.

ECJ says radiator grille with Audi four-ring element is use of the Audi mark and does not fall within referential use defence

The ECJ has ruled that the marketing of a non-original car radiator grille containing an element (indented shape) designed for the attachment of the Audi four-ring emblem constitutes use of the Audi mark which can be prohibited. It also ruled that such use does not fall within the referential use defence which allows use of third-party marks without consent where such use is necessary to indicate the intended purpose of a product (particularly as an accessory or spare part).

The case illustrates the benefit of trade mark protection for key figurative marks and product shapes compared to design protection. Had this been an allegation of design (as opposed to trade mark) infringement by Audi, the manufacturer of the allegedly infringing grille might have had a defence to infringement based on the repair clause. In other words, while the repair clause might allow third parties to produce components parts of complex products without infringing any registered or unregistered designs, the same is not true of any registered trade marks. The ruling also suggests that the referential use defence will be interpreted relatively narrowly. 

It is now for the national court to determine identity/similarity of the mark/sign and goods/services as well as likelihood of confusion and/or unfair advantage/detriment. 

Audi trade mark

General Court confirms validity of Registered Community Design for Lego brick

In this long running dispute, the General Court has confirmed the validity of a Registered Community Design (RCD) for the Lego brick (depicted below left). 

The design did not fall foul of Article 8(1) (technical function exclusion) of the Design Regulation since not all of the features of the brick perform a technical function. The smooth surface of the brick did not have a technical function. 

Likewise, the design did not foul of Article 8(2) (must fit exclusion) of the Regulation since this provision does not apply to modular designs, provided they are new and have individual character. The Board of Appeal had already held that the design of the Lego brick met the definition of a modular design. Since the applicant for invalidity had failed to supply any evidence that the Lego brick design was not new and/or did not have individual character, it could not show that it was deprived of protection as a modular design. 

This follows two other recent General Court rulings that Lego’s EUTMs for minifigures (depicted below right) were eligible for registration in the light of Article 7(1)(e)(ii) (exclusion of shapes necessary to obtain a technical result) of the EUTM Regulation. The Court said that "although the technical purpose linked to the interlocking nature and modularity is achieved by essential characteristics …, there are also other essential characteristics … which are not necessary to achieve a technical purpose". These included the shape of the head, the short neck, and the flat trapezoidal shape of the body.

The cases all suggest that the CJEU is willing to adopt a more lenient approach than perhaps it has had in the past in determining whether a design or trade mark is purely functional.

Lego brick Lego people

EU Parliament adopts empowering consumers for green transition Directive 

The EU Parliament has adopted a Directive amending Directives 2005/29/EC and 2011/83/EU to empower consumers for the green transition. The new rules aim to improve the accuracy and reliability of green advertising and make producers and consumers focus on the durability of goods. To achieve these aims, the Directive adds to the EU list of prohibited commercial practices. The prohibition includes:

  • the use of general environmental claims such as “environmentally friendly”, “natural”, “biodegradable”, “climate neutral” or “eco” without proof
  • claims that a product has a "neutral", "reduced" or "positive" impact on the environment because of emissions offsetting schemes
  • unfounded durability claims (eg stating that a washing machine will last for 5,000 washing cycles if this is not true under normal conditions)
  • prompts to replace consumables earlier than strictly necessary
  • presenting goods as repairable when they are not.

The Directive also regulates the use of sustainability labels. The new directive will work together with the green claims directive (currently at committee stage in the EU Parliament), which will elaborate the conditions for using environmental claims in greater detail.

Banksy's flower thrower "repeat" registration invalid for bad faith

An EUTM registration consisting of Banksy's flower thrower artwork has been held invalid by the EUIPO Cancellation Division on the grounds that it was filed in bad faith. 

The application had been filed shortly after the five-year use grace period expired for a previous registration covering the same flower thrower image. The marks covered overlapping goods/services. The Cancellation Division noted that, although repeat filings of a mark are not prohibited of themselves, they are when they are designed to avoid the consequences of entailed by non-use of the earlier mark. Since the owner of the EUTM had not provided a rationale for the filing, it was deemed to have been filed in bad faith. 

Arguments that there was also bad faith on the grounds that the application had been filed to circumvent limitations in enforcing copyright (which would require Banksy to reveal his identity) were – following the Banksy Ape Tee case last year - held to be irrelevant. 

EUIPO Board of Appeal says Prada's triangle pattern not registrable

The EUIPO Board of Appeal also held that an EUTM application by Prada consisting of its triangle shaped repeating pattern is a “basic and commonplace figurative pattern” and therefore not sufficiently distinctive for registration as a trade mark. The Board noted that it had been consistent in rejecting, on the grounds of lack of distinctive character, simple patterns that may be used as mere decorative coverings, or consist of patterned surfaces, of the goods. No evidence of acquired distinctiveness was submitted. 

Prada triangle pattern

Pick your clothes and battles: G-maxx does not infringe Mexx

A recent Ruling of the Court of Appeal of the Hague hows how small changes to a mark can avoid a finding of infirngement even where the goods in question are identical. Read more from our Amsterdam team here

UK developments

Court of Appeal departs from retained CJEU case law for first time and decides important issues on acquiescence: Industrial Cleaning Equipment v Intelligent Cleaning Equipment

The Court of Appeal of England & Wales has departed from retained CJEU case law for the first time in an IP case. However, the Court was careful to point out that there were special circumstances for doing so in this case.

The departure related to a particular provision of the law of acquiescence. It increases the scope for defendants to infringement and passing off claims to argue no infringement due to acquiescence. The case illustrates the importance of brand owners not delaying in taking action for trade mark infringement and passing off where the later (allegedly infringing) right is registered. Read more on this landmark ruling here.

Court of Appeal considers intermediary liability in downloadable watch faces app case: Montres Breguet v Samsung Electronics

The Court of Appeal of England & Wales has upheld a ruling that Samsung is primarily liable for trade mark infringement through the making available of infringing downloadable watch face apps on its Samsung Galaxy app store (SGA). The case is an important one on the liability of app stores and intermediaries, as well as on the type of use necessary for infringement and the relevance of post-sale use. More here. 

Court of Appeal finds likelihood of confusion based on post-sale confusion: the Umbro case

The Court of Appeal of England & Wales has held that the use of a device (depicted in the two images on the left below) infringes the Claimant's well known Umbro logo (depicted on the right below). This overturns the High Court's ruling. 

The Court based its decision on post-sale confusion. When affixed to footwear in the post-sale context, there was a moderately high level of similarity between the mark and the sign given the angles at which the sign would be viewed and imperfect recollection. 

This is the second Court of Appeal ruling since Christmas on post-sale use (see also the Montres case above) and illustrates the importance of considering how a sign will be perceived in practice when considering infringement risks. More here.

Umbro trade marks

Court of Appeal considers damage requirement for passing off: Easygroup v Easy Live Services 

The Court of Appeal of England & Wales has issued an important ruling on passing off, focusing on the damage requirement which must be proved in addition to goodwill and a misrepresentation. The case looks at the extent to which lost licensing income and opportunities can fulfil the damage requirement – especially important where the claimant's and defendant's fields of activity are different (such that damage on the basis of diversion of trade or tarnishment of reputation are more difficult to show). More in our article here.

In a separate decision, PSN Recruitments v Ludley, the High Court of England & Wales (IPEC) recently found damage from passing off due to diverted trade and awarded the claimant damages of £80,000.

Court of Appeal upholds passing off as to equivalence decision: Yours Naturally Naturally Yours v Kate McIver Skin Ltd

In a further ruling on passing off, the Court of Appeal of England & Wales has upheld a decision of the High Court finding passing off in relation to statements made about a beauty serum. The case is a good example of how different types of statements can constitute misrepresentations actionable under the law of passing off. 

The defendant had stated on its business website and social media channel that its founder had created an anti-aging skin serum (originally called the Elixir serum). In fact, the serum had been created by the sole director and shareholder of the predecessor in title of the claimant. The defendant had also stated that its reformulated product was "the same serum as had been sold as the Elixir serum". This was not correct. 

The Court agreed with the High Court that both statements amounted to actionable misrepresentations – the latter being a misrepresentation as to equivalence. While the judge's reasoning on goodwill had been wrong (because the judge's finding had not been pleaded by the claimant), goodwill did attach to the claimant and its product. Damage to that goodwill resulted at least from the misrepresentation as to equivalence. In particular, at least one customer found the reformulation unsatisfactory. 

High Court says that POST MILK GENERATION mark not invalid under the Common Market Organisation Regulation: Oatly v Dairy UK

Under section 3(4) of the Trade Marks Act 1994, a mark can be refused registration (or invalidated, once registered) if or to the extent that its use is prohibited in the UK by any enactment or rule of law. 

It is rare for marks to fall foul of this provision but that is what happened in this case – a registration for POST MILK GENERATION being invalidated by the UK IP office on the basis that the Common Market Organisation Regulation only permits use of "milk" (the "normal mammary secretion") for milk.

The High Court of England & Wales overturned that decision, holding that use of the mark for an oat drink was permissible since the word milk was not being used in the way contemplated by the Regulation. This was no use to identify the product as being milk. It was use in marketing – if anything, to distinguish the product from milk.

In this series

Brands & advertising

Brands Update: Quick read

6 February 2024

by Louise Popple

Brands & advertising

New EU law could limit distinctive packaging

Louise Popple, Elena Glengarry and Roland Mallinson look at the potential impact of the EU's proposed packaging legislation on 3D shape trade mark rights.

1 February 2024

by Multiple authors

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