Good news / BAD news – November 2023

Welcome to the seventh 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 have summarised some of the things we think you should know about right now…

• Lifestyle Equities v Royal County of Berkshire
• IP in the Metaverse
• Rugby World Cup
• Greenwashing
• Back to basics – Our series of IP podcasts
• Advertising and Standards Authority rulings
• London Design Festival
• Recognitions
• Who’s in the news

Lifestyle Equities v Royal County of Berkshire

In a recent legal battle, Lifestyle Equities, owner of the “BEVERLY HILLS POLO CLUB” marks, took legal action against Royal County of Berkshire Polo Club (RCB) and other defendants in the highly competitive polo clothing market. Lifestyle Equities initiated legal proceedings, alleging trademark infringement, passing off, and conspiracy to injure. However, their claims faced scrutiny and were ultimately dismissed by the court, shedding light on the intricacies of trademark disputes in saturated markets and emphasising the crucial role of context in such cases.

Central to the case were Lifestyle’s registered trademarks in the UK and EU, particularly focusing on Lifestyle Equities’ registered trademarks for the following logo

The legal battle hinged on the alleged similarities between these marks and the claim that RCB’s Sign infringed Lifestyle’s Marks.

When assessing the similarities of the marks, the court said that while there was some visual resemblance, the presence of distinct words (and branding) in each mark differentiated them. The court emphasised the crowded nature of the polo clothing market, where consumers were discerning and capable of distinguishing between similar brands.

An intriguing aspect of the case was the consideration of co-existence agreements. These agreements (which both parties had agreed to with major brands like Ralph Lauren), provided insights into how established entities navigated the overcrowded market. Both parties’ co-existence agreements with Ralph Lauren in particular indicated a clear effort from both parties to continue trading in spite of potential consumer confusion. While not decisive, these agreements provided valuable insights into how renowned brands perceived potential threats. The willingness of established entities to co-exist with similar brands illustrated their confidence in consumer differentiation and their strategies to avoid confusion.

The judgment underscored the significance of evaluating trademark disputes within the context of a crowded market. In such environments, consumers are accustomed to a variety of similar brands, leading to heightened discernment. The court emphasised the need to recognise the complexities of consumer behaviour in saturated markets, where the average buyer is well-versed in distinguishing between similar offerings.

The case serves as a noteworthy example of the challenges posed by crowded markets in trademark disputes. It illuminates the significance of context, urging legal practitioners and litigants to consider the market landscape thoroughly. Co-existence agreements, reflecting the practical decisions of industry giants, offer valuable cues for assessing potential conflicts and market behaviour.

IP in the Metaverse

Despite recent market fluctuations, speculation that the Metaverse is continuing to grow exponentially continues and the evolution of different types of multiverses – the industrial metaverse, a consumer metaverse, and an enterprise metaverse – emphasises both enormous potential and opportunities for businesses and brands-a-like.

As a business, you can’t help but wonder how IP rights will apply in both the real world and the digital ‘Metaverse’ world. IP protection, ownership and enforcement are all key topics which businesses need to consider when contemplating leveraging the Metaverse.

Listen to our ‘IP in the Metaverse – Same, Same but Different? on-demand webinar and find out how to navigate this new and ever-changing environment, make sure your IP rights are protected and take action if they are infringed!

Rugby World Cup

The 2023 Rugby World Cup (RWC23) in France meant businesses and individuals across the world – whether official sponsors and partners, rugby enthusiasts, or those just looking to capitalise on another giant sporting event – were prepared to make the most of the marketing opportunities RWC23 presents! While you may have considered how to make use of the event to raise the profile of your business, you need to be careful not to breach any exclusive rights of organisers and sponsors to associate themselves with RWC23 (and any future Rugby sporting events going forwards!)…

In our The Rugby World Cup 2023: How to Show Your Brand’s Excitement Without Mauling the Rights of the Official Sponsors article, we explained the key issues to consider should you have considered pulling together marketing materials to celebrate the RWC23, and such pointers are useful if you are planning activity around a future major sporting tournament.

Greenwashing

Eco-advertising and green marketing campaigns have become commonplace among businesses of all sizes and in all sectors. Understandably, advertising the environmentally-friendly attributes of a product or service – through slogans, trademarks, performance claims or various other marketing practices – appeals to consumers’ growing concerns for the environment and calls for companies to ‘go green’.

However, positioning products and services as having environmental benefits that don’t actually exist or, more commonly, exaggerating your green credentials, can raise serious legal and reputational concerns… False, misleading, overstated or unsubstantiated environmental advertising or ‘greenwashing’ is strictly prohibited under consumer protection laws and advertising code rules.  It is a hot topic for regulators, with both the Competition and Markets Authority (CMA) and the Advertising Standards Authority (ASA) taking firm action in this space!  Marketing a product as ‘sustainable’, ‘eco-friendly’, ‘safe for the environment’, ‘better for the planet’ or using other descriptors that highlight environmental attributes or benefits that are vague, exaggerated, cherry-picked or cannot be substantiated across the whole lifecycle of a product or service can lead to legal consequences. Regulators are taking a much tougher stance on greenwashing than ever before and it’s important to make sure your claims are compliant.

In the UK, the CMA published its Green Claims Code setting out six principles to be mindful of in respect of any environmental claims.  Claims must:

1. Be truthful and accurate;
2. Be clear and unambiguous;
3. Not omit or hide material information;
4. Only make fair and meaningful comparisons;
5. Consider the full lifecycle of the product or their service; and
6. Be substantiated.

The Code does not prevent businesses from making truthful environmental claims, but is aimed at letting brands who can tell genuine, substantiated green stories do so without being drowned out by others who are making claims without a basis.

The ASA has published a number of decisions against advertisers who are making “green” claims and has made it clear it will continue to take a firm but proportionate approach in the coming months and years.

Advertisers should make use of the regulators’ guidance and seek advice so they can “greenspeak” with confidence.

Our Greenwashing: Exploring the Risks of Misleading Environmental Marketing in China, Canada, France, Singapore and the UK article explores the regulation of greenwashing in China, Canada, France, Singapore and the UK as well as regulators’ approach to greenwashing within these jurisdictions.

Back to basics – Our series of IP podcasts

We have released some more podcasts as part of our “IP Basics” series which (as you may have guessed) address the basics of IP law.  The podcasts are intended to deliver the key basic details about various IP rights in an interesting and engaging way.

These add to the existing library of podcasts we have released, including introductions to the law of passing off, online brand infringement, and what you need to know about trademarks. More new releases are scheduled over the next few months.

If you are trying to get to grips with IP rights for the first time or want to refresh your knowledge on issues you aren’t regularly faced with, these podcasts are for you! 

• IP basics: copyright law
• IP basis: completing brand and design clearance

Advertising Standards Authority (ASA) rulings

When it comes to advertising and marketing, we know that businesses want to get creative and run ad campaigns that will catch the attention of their customers.  But – what might seem like a great creative concept, does not always translate to compliant advertising.  Here are some recent decisions from the ASA that highlight some key learnings.

In the summer, the ASA upheld complaints that Domino’s “free pizza” promotion was unfair.   Domino’s withdrew the promotion for a free medium pizza because it believed the large redemption rate was brought about by abuse of the promotion (i.e. the same customers were redeeming it multiple times, rather than only once).  The code rules make it clear that promoters must avoid causing unnecessary disappointment and phrases such as “subject to availability” will not relieve promoters of this obligation.  This ruling serves as a reminder:

• to make sure your T&Cs (both long form and short form in the ad itself) clearly state if the promotion can only be redeemed once per person / household;
• to avoid imposing minimum spends in order to qualify for the free item;
• to seek legal advice before relying on T&Cs that state you can update, amend or withdraw the offer at any time; and
• if you do need to withdraw a promotion, then in order to mitigate customer disappointment (and the risk of a complaint being made to the ASA), you should consider honouring the original giveaway for customers who approach you, rather than providing an alternative.

The ASA also upheld a complaint about the Booksy app’s “Booksy Recommended” listings.  The complainant felt the listings were misleading, as they were not obviously identifiable as advertising.  The Booksy app, an appointment booking service for hair and beauty businesses, listed several barbershop venues as “Booksy Recommended”.  To be listed as “Booksy Recommended” the businesses had paid for the “Booksy Boost” service.  The ASA concluded that the venue entries that appeared with the “Booksy Recommended” label were paid-for search listings and, therefore, ads for the purposes of the advertising code rules.  As such, the listings needed to be obviously identifiable as marketing communications and the commercial intent made clear.  In the absence of such identification that the entries or “Booksy Recommended” labels were paid-for media, they were considered misleading.

The ASA has previously issued guidance that when businesses or brands post about their own products or services on social media / websites and they are identifiable as the publisher, consumers are likely to recognise that the post is an ad for the brand (and in such cases a label, such as ‘#Ad’ is unlikely to be necessary).  However, this ruling serves as a warning:

• that the ASA is applying this guidance restrictively;
• where the context is less clear (and in particular, where advertising is paid-for by third party brands and not differentiated from other promotional content), it is highly likely the ASA will expect the brand to label the content appropriately; and
• where you host third party ads on your website or platform, it will be your responsibility to make those obviously identifiable as third party marketing communications and to label appropriately.

The next ruling relates to Au Vodka Ltd and their series of Instagram posts named “The Vodfather”. Au Vodka posted three ads featuring characters called “the Vodfather”, “the Enforcers” and “the Distributor”. The aim of the campaign was to advertise their new Pink Lemonade product and to entertain and engage their target audience through light-hearted and comedic sketches. However, the ASA has held that this series of ads showed and referred to aggressive behaviour and linked alcohol with tough and daring people…so the ads were found to be socially irresponsible, in contravention of the advertising code rules. The ads also referred to their products as “the Pink” and “the gear”, which the ASA thought consumers would interpret as references to illicit drugs.

Rebel Wine, a CBD infused wine producer, posted an Instagram video of a drink being made in January 2023.  The overlaying copy stated: “Take a glass of ice. A good shot of Lemon Cello [sic]. Pour it over the ice and then add in Skinny Rebel White Wine Spritzer.” The ASA challenged whether the claim “Skinny Rebel” complied with the advertising code rules. Marketing communications for alcohol must not make any health, fitness or weight-control claims. The only nutrition claims that can be made in relation to alcohol are: “low-alcohol”, “reduced alcohol” and “reduced energy”. Rebel Wine did not think  ‘skinny’ would be understood as a claim that their product could help consumers lose weight.  Rather it was intended as a reference to the fact Rebel Wine’s products contained half the alcohol compared to full-strength wines. The ASA did not agree with this defence.  It considered the claim to be a health claim that was not permitted to be made about alcoholic products.  Accordingly, the ASA concluded that the claim should not appear again.  It’s also important to note that Rebel Wine had registered “Skinny Rebel” as a trade mark.  The ASA has made it clear that trademarked names still need to comply with the advertising code rules and, in this case, the trade mark breached the rules.

For more information on any of the ASA’s recent rulings, or if you want guidance on your own advertising campaigns, please contact Dan Smith, Kate Hawkins or Zoe Pearman.  Also note our advertising event coming in the new year!

Events

In October 2023 we proudly hosted our 11th annual event as a partner of the London Design Festival, where our head of Brands & Designs, John Coldham, chaired a discussion on collaboration opportunities in design with an incredible panel of speakers from the design world: Sara McNeill – Head of Licensing, Merchandising, Partnerships at Aston Martin Lagonda, Gareth McNeil – Director of Industrial Design & Innovation at Joseph Joseph and Martin Darbyshire – Founder and Chairman of tangerine.

Many in the audience fed back that they would love to hear more about the area, and were inspired by the discussion. To supplement the event, we recorded the ‘Collaborating in Design: Making the Most of Working with Others‘ podcast with the panel, providing brilliant insights into collaboration from very different perspectives, and how to create a successful design.

Recognitions

We are absolutely thrilled to announce that nine Gowling WLG professionals from five jurisdictions have been named as “Rising Stars” in Managing IP’s 2023 “Rising Stars” list. The list includes Michael Carter, Mathilda Davidson and Christopher Freeth in the UK.

Gowling WLG has been praised for its market-topping commercial and legal expertise in The Legal 500 UK 2024 rankings. The firm secures top tier rankings in London and the West Midlands, including in the Technology sector line, as well as marked success in a wide range of the firm’s specialist services including Intellectual Property.  Quotes from the directory included;

“‘The team are experts across all types of IP issues: trademarks, copyrights, designs. They have a very commercial approach, are conscious of costs, and they are very approachable.’”  Thanks to everyone who spoke to them!

Eight members of Gowling WLG’s global intellectual property team, including Huw Evans and Matt Hervey in the UK, have been recognised in the 2023 edition of IAM Strategy 300: The World’s Leading IP Strategists by Intellectual Asset Management (IAM) magazine.

Gowling WLG’s intellectual property teams in Canada, China, France, the UAE and the UK have been recognised in Managing IP’s “IP Stars” 2023 Trademark, Patent, Copyright and IP Transactions firm rankings! Managing IP is one of the world’s foremost IP rankings publications, and its ongoing recognition of Gowling WLG is a testament to the significant trust clients around the world continue to place in our services.

In the news

Finally, find out what our team have got to say about some recent news stories …

• John Coldham spoke to Retail Week (subscribers) to provide his overview on why lawsuits are not always bad news for retailers when it comes to speculation and reputation.
• John Coldham spoke to The Grocer about how discounters are getting away with copycatting.
• John Coldham spoke to the Drapers about Boohoo’s focus on discounting in order to attract younger buyers and the sales figures being affected by shoppers returning to the high street at the highest rate since the pandemic ended.
• John Coldham spoke to CityAM about the National Express owner Mobico’s recovery post-Covid.