Brands Update: Quick read

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. 

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.

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.