Good news / BAD news

Welcome to the first edition of the “Good News / BAD News” Blog!

Our BAD Team (that is, our Brands, Advertising and Designs Team) serves as trusted advisers to some of the most valuable brands in the world and we wanted to share our recent experiences in the hope of helping brand owners navigate the ever-changing landscape.  We thought it would be helpful to highlight some key areas that we have seen recently and believe brand owners should be aware of. 

So keep on reading for some of the things we think you should know about right now…

1.“All publicity is good publicity“?

Recently there have been a number of public disputes, which brand owners have been following…   For example, earlier this month an independent bakery in London, Bread a Manger, went public when they received a cease and desist letter from lawyers acting on behalf of Pret A Manger. 

This serves as an important reminder for brand owners that your dispute (and in some instances copies of the correspondence you exchange with a third party) may be posted on social media.  The PR impact this may have on your brand should not be underestimated – particularly where you are the much bigger organisation or brand. 

This does not mean you should not enforce your rights: you are perfectly entitled to do so!  But it is worth bearing in mind that your enforcement strategy and the language chosen in communications can affect your brand’s image, so just ensure your strategy is clear and you choose language that reflects the image you wish to convey as well as conveying the legal message.  It is also worth considering the commercial impact of picking a fight through a formal legal process; there is more than one way to resolve an IP concern, and it is important to consider carefully which one is appropriate for a particular situation.

2. Exhausted by exhaustion of rights?

As explained by Ailsa Carter and Gordon Harris in their excellent article, in the most simple terms, the law of ‘exhaustion’ governs whether a brand owner who has placed their goods on the market can subsequently enforce their intellectual property rights to prevent onward sale in or import into the UK.

Brand owners should continue to be aware that if they put their goods on the market in the UK or the EU/EEA, their registered trade mark rights in the UK will be considered ‘exhausted’: the trade mark registration(s) cannot usually be enforced to interfere with subsequent dealings in the goods in the UK. Following a consultation in 2021, the UK Government has made no proposal to update the UK’s exhaustion regime, therefore clarification and development of the area rests with the courts.  (Note, however, that from the perspective of the EU/EEA countries, as the UK is now outside the single market, putting goods on the market in the UK generally will not exhaust the brand owner’s trade mark rights in EU/EEA countries).

To find out more about exhaustion and the position in different jurisdictions, view our interactive map.

3. The UK IPO needs your help

The UK Intellectual Property Office has taken Brexit as an opportunity to launch a consultation on UK designs law.

This is being seen by many as a real chance to overhaul and shape the designs framework in the UK.  This is not about trimming around the edges, but could potentially lead to major change to the system for design protection in the UK. 

For brand owners, this is a key opportunity to influence legislation that will directly affect you (remember that design law is often used to protect logos and brand identities as well as products).  There are still some time left to submit your responses on the UKIPO’s simple online form (due by 25 March 2022 at 11:45pm), and we encourage you to do so. 

Thanks to those of you who filled in our questionnaire last week – the comments were really thorough and we are feeding them into our firm’s submission, as well as those of various stakeholder groups that we participate in (for example, John is the Chair of the Designs and Copyright Working Group of CITMA, which will be making a submission).

4. Shades of green

It is clear from recent guidance and decisions of the Advertising Standards Authority and the Competition Markets Authority’s ‘Green Claims Code’ that so-called “greenwashing” is high on their agenda.

Coined in the 1980s, the term “greenwashing” certainly isn’t new but you may have only become more aware of it in recent years as the importance of environment, social and corporate governance (“ESG”) has gained momentum.  In simple terms, “greenwashing” is when a company inflates its (or its products) green credentials or claims it is “environmentally friendly” or “sustainable”.  

As it is high on the regulators’ agenda and consumers themselves are becoming increasingly more aware of the environmental impact of the goods they purchase and if a product is sustainable, there is a risk of complaints and fines, along with backlashes on social media.  Brand owners, therefore, need to be careful that any green claims they are making are legitimate and not misleading to avoid the consequences of being investigated or disciplined by the regulators.  

To find out more, our recent webinar on greenwashing with Dan Smith and Kate Hawkins in our advertising team both introduces the topic, and provides guidance on the dos and don’ts.

5. Pretty bad shape

Shape marks (and non-conventional trade marks generally) have been notoriously tricky to register and enforce.  The UK and EU courts have left a trail of invalid shape trade marks in their wake – Kit Kat, Jaguar Land Rover‘s Defender, etc.

The recent decision[1] of the Court of Justice of the European Union (CJEU) concerns EOS’ egg-shaped lip balm and found EOS unsuccessful in their application to register the 3D shape they use as a trade mark.  This case highlights, again, that shape marks remain difficult to obtain – largely due to the requirement for distinctive character. 

However, shape marks should be considered as part of brand strategy.  That said, it is clear that brand owners need to establish that consumers rely on the shape itself to recognise the product rather than a brand name, and this should be kept in mind when advertising and promoting new products.

6. A whole new world of infringement: NFTs

Firstly, what is a NFT?  “NFT” is an acronym for non-fungible tokens.  Non-fungible tokens are digital tokens that are transferable between two persons while remaining non-interchangeable, unlike other digital assets (think: a crypto Picasso rather than a crypto pound – a crypto pound is the same as any other crypto pound and is interchangeable, whereas a crypto Picasso is more unique and not necessarily comparable to another crypto Picasso).

We have seen brands are increasingly venturing into the world of NFTs and launching their own.  For example, Dolce & Gabbana launched a nine-piece collection of NFTs called “Collezione Genesi“.  However, NFTs also give rise to a number of possibilities for infringement: in the case of trade marks, we have seen NFTs reproducing trade mark(s) and/or creating exact reproductions of trade marked products such as virtual clothing or accessories.

The question then arises as to whether a brand owner can rely on its existing trade marks to challenge infringing NFTs – a legal question will surely arise as to whether virtual goods will be deemed to be identical or similar to goods for which original trade mark is registered.  Brand owners may wish to consider whether to seek additional protection to cover NFTs/virtual exploitation of their mark (class 9). 

We have seen that brand owners are starting to flex their muscles in this area – an example in the public domain being against the sale of MetaBirkins i.e. NFTs representing Hermès Birkin bags customised by the artist Mason Rothschild and marketed without the agreement of Hermès. In January 2022, Hermès commenced proceedings against the MetaBirkins for infringement of both its word trade mark “BIRKIN” and its three-dimensional trade mark protecting the Birkin bag. These proceedings are still ongoing…

Finally, a number of our team will be attending the International Trademark Association 2022 Annual Meeting in Washington DC at the end of April.  If you are planning to be there, we’d love to see you.  Please do drop us a line.

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[1] Please note the default language for this judgment is French but this can be changed in the top right corner of your browser