New laws could make it more difficult to use English-language versions of trade marks in Quebec, Canada. The National Assembly of Québec recently adopted Bill 96 which will amend the Charter of the French Language. The precise implications for brand owners are still being determined and might depend on how Bill 96 is implemented. However, it could mean that French language versions of marks will have to appear on goods and their packaging unless an English language version is registered and there is no French language equivalent.

We will report more on this and what it means for brand owners in the next edition of Brands Update.

In Lodestar v. Bacardi, the US Court of Appeals for the Ninth Circuit has ruled for the first time on the rights conferred by a Madrid (International) registration designating the USA. The specific issue was whether the owner of such a designation can enforce its rights against a third party who commenced use of a conflicting mark in the USA after the priority date of the USA designation but before the owner of the Madrid registration commenced use in the USA. 

The Court concluded that the owner of the Madrid registration has the prior right in these circumstances. The court applied the same principle that governs priority based on other treaties. Once a registrant begins using the registered mark within the USA, it is entitled to assert an infringement claim based on constructive use extending back to the priority date of the registration.

In Lackmann Fleisch- und Feinkostfabrik GmbH v EUIPO, the ECJ reiterated that a request for proof of use of an earlier trade mark will not be deemed admissible unless an unconditional request is filed in a separate document (as required by Article 19(2) of delegated regulation 2018/635). In this instance, the applicant did not submit a request for proof of use of the earlier mark. Its claim relating to lack of genuine use was therefore rejected. 

Germany has terminated the "Agreement between Switzerland and Germany Concerning the Reciprocal Protection of Patents, Designs and Trademarks" (13 April, 1892) as of 1 June, 2022. Articles 5 (trade marks) and 7 (patents) were still in force. 

Article 5(1) concerns an exception to the territoriality principle for showing genuine use of a trade mark: use of a trade mark in the "home" state could preserve the trade mark right in the other contracting state. As a result, the relevant area for showing genuine use of a trade mark was extended. With the termination of this agreement, this rule ceases to apply. 

The termination follows the ECJ's judgment in joined cases C-720/18 and C-721/18 which held that the rule was incompatible with the EU Trade Mark Directive. (In an earlier decision, the ECJ had already restricted the application of the rule where EUTMs were impacted.) 

The government has announced delays to the implementation of some of its restrictions surrounding food and drinks high in fat, salt or sugar (HFSS). 

The restrictions on volume price promotions for HFSS products (multibuy deals and free refills for soft drinks) set out in the Food Promotion and Placement Regulations will be delayed for a year. This reflects the current global economic situation. A new statutory instrument will be introduced to allow the delay. However, restrictions on the placement of HFSS products will still come into force in October 2022 as planned.

The banning of HFSS adverts on television before 9pm and paid-for HFSS adverts online in the Health and Care Bill will also be paused for a year, meaning they come into force in January 2024. This is due to delays in the legislative process and the need for business to have more time to prepare for the changes. A consultation on TV and paid-for online adverts involving HFSS products will be launched in the coming weeks. 

The DCMS Committee has published a report on influencer culture following its March 2021 inquiry. It makes various recommendations to the government, some of which are already being acted upon. These include:

• Helping to protect influencers from online harassment by amending the Online Safety Bill to tailor complaints mechanisms to specific types of harm.
• Carrying out a market review into the influencer system to look at issues including whether diversity issues affect pay, and whether direct payments to influencers from platforms are fair and proportionate.  
• Creating an influencer marketing code of conduct.
• Giving the CMA greater enforcement powers so that it can enforce directly (as already announced in May's Queen's Speech).
• Giving the ASA statutory enforcement powers – to be considered as part of the Online Advertising Program.
• Requiring the ASA to monitor and report on influencer compliance on an annual basis.
• Protecting children from working as influencers.
• Amending the CAP Code.