Good news / BAD news – June 2022

Welcome to the second 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 note that the Courts have been pretty busy this quarter, so we thought it would be helpful to highlight some key cases and some other matters 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…

Oh why

We couldn’t not mention Ed Sheeran’s highly publicised High Court battle over his 2017 hit “Shape of You” – especially as our very own Kate Swaine was on the BBC News discussing the case!

In summary, lawyers for Sam Chokri (who performs as Sami Switch) and his “Oh Why” co-writer Ross O’Donoghue argued that Sheeran’s “Oh I” hook was strikingly similar to their “Oh Why” hook. The High Court, however, found in favour of Sheeran and found that any similarities in it were not enough. The decision highlights, again, that copyright infringement involves taking a “substantial part” of the original work; there are often notes or phrases that find their way from one piece of music to another, and often there is little to complain about when it happens. 

An important lesson for brand owners, in relation to copyright generally, is to ensure you document your creative process – that way, if you ever need to assert copyright or ever face allegations of copyright and need to prove you didn’t copy: you have a design story and can prove how your idea originated.

Our comments on this case have been published in the mainstream media, including BBC News and City AM.

Swipe right

We mentioned in last quarter’s blog that recently there have been a number of public disputes, which brand owners have been following. For example, Vogue were forced to publicly apologise to “The Star Inn at Vogue” pub in Cornwall after they asked the pub to change its name and later said after “further research” it “did not need to send such a letter on this occasion“.

Another dispute that made its way into the mainstream press was the recent decision of the Intellectual Property Enterprise Court concerning a battle of dating sites and apps: Match Group (the dating giant behind Tinder, Hinge and Match.com) v. Muzmatch (the world’s largest Muslim dating and marriage app). 

As Jasmine Lalli explains in her article, Match was successful in its allegation that Muzmatch had infringed its “MATCH.COM” trade mark and found Muzmatch was taking unfair advantage of the “MATCH.COM” mark.  Muzzmatch has now rebranded to “Muzz”

The decision was picked up by The Daily Mail, The Guardian, The Metro, etc. and serves as a useful reminder that dispute may be posted and reported in the media. The PR impact this may have on your brand should not be underestimated.

We are frequently advising clients on the importance of considering the PR and social media impact of taking legal steps.  These are just one consideration – and can often be a positive one – that should be factored into a brand enforcement strategy.

“More tailored to the British taste“

The recent decision of the Intellectual Property Enterprise Court concerns a dispute between the “China Tang” restaurant in the Dorchester frequented by the likes of Kate Moss, Tony Blair and Naomi Campbell and a Chinese takeaway in Barrow-in-Furness of the same name (which the judgment describes as “Chinese fast food tailored to the British taste“).

The judge found in favour of the Dorchester based restaurant. The Barrow-in-Furness takeaway sought to rely on the defence of honest concurrent use, on the basis that when it started trading in 2009 it was not aware of the restaurant in the Dorchester. The judge, however, concluded that they ought to have known and that “in the modern climate of easy trade mark and internet searches… if a party starts to use a trading name without appropriate advice and simple searches, such use will not have been honest concurrent use without some reason.” 

The decision makes it clear that brand owners of any size should undertake trade mark and/or internet clearance searches for competitors using the same or similar brand names.

This case also highlights the high threshold for claimants seeking to rely on the extra protection afforded to a trade mark with reputation. The Dorchester restaurant did not show sufficient knowledge of their business among the relevant public (which, for restaurant services, was found to be “almost every adult and child in the UK”).

“They’re taking the pistachio“

Tesco Mobile have recently fallen foul of the advertising code rules and had a number of their adverts banned. Complaints were made to the Advertising Standards Authority (the “ASA“) that adverts for Tesco Mobile in newspapers, on social media and outdoor posters were offensive. The adverts in question included straplines such as: “What a load of shiitake”, “They’re taking the pistachio” and “For fettucine’s sake“.

The ASA upheld the complaints, finding that the words “shiitake” and “pistachio” in particular alluded to words that were “so likely to offend that they should not generally be used or alluded to in advertising, regardless of whether they were used in a tongue-in-cheek manner.” The reveal of one of the “fettucine” executions (where the phrase “For f sake” was shown, before revealing the word “fettucine”) was also held as offensive. 

Brand owners, therefore, should be aware that the ASA remains quite conservative (especially when it comes to swear words and allusions to them) and should be careful to ensure straplines used in a humorous or tongue-in-cheek manner are not likely to cause offence. This is in contrast to well-known court decisions, such as the infamous case where Ryanair was allowed to call British Airways “Expensive BA****ds”.   

Welcome to the virtual world

Firstly, what is the metaverse? It is a shared, immersive environment that allows people to interact with each other and objects in a virtual world (think: a 3D version of the internet; where rather than simply looking at 2D pages, you will be able to “step in” to the metaverse and immerse yourself in a virtual world). 

We are excited about the opportunities that the metaverse holds for brands! Brand owners can allow consumers to interact with a brand in a way that simply hasn’t been possible before: for example, they can innovate and create digital products without any physical constraints, or they can use the metaverse to showcase and advertise new products. For example, Gucci and adidas bought land in The Sandbox and built virtual showcases for their products.

However, the metaverse also gives rise to a number of possibilities for infringement. We mentioned in our last blog that 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. It is clear that a robust IP strategy would see brand owners consider taking steps to protect their rights in the metaverse.

To find out more, our global IP practice have prepared a couple of excellent articles (see here and here).

Team news

We are absolutely thrilled that we have been shortlisted in eight (yes eight!) categories in the Managing Intellectual Property EMEA awards, including the Global IP Firm of the Year, Trade Mark Contentious Firm of the Year and Designs Firm of the Year (we have won the award the last three years running, so are flattered even to be nominated again for that one!).

In other team news:

• A number of our team recently attended the first in person INTA conference for a few years in Washington DC. It was lovely to catch up with colleagues and friends from around the world. 
• Rob MacDonald, former co-head of the global IP practice, was recently presented with a Lifetime Achievement Award by Managing IP. Congratulations Rob!

• Our team were champions of the CITMA Quiz which took place at Salsa! in April. Thanks to CITMA for another great event.

• Finally, as you may know, we are the official legal advisors for the Birmingham 2022 Commonwealth Games, working with the Games on all legal aspects. In particular our BAD team are entirely responsible for the brand protection at the Games, which take place in July. A day in the office was brightened up by a visit from the B2022 mascot, Perry.