Welcome to the ninth 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…
- Guidance on ‘targeting’ for online marketplaces following recent Supreme Court decision
- ‘Finfluencers’ facing criminal prosecution
- Lidl v Tesco:Court of Appeal confirms trade mark infringement and passing off by Tesco
- Prospective changes to EU designs law – simultaneous disclosure
- Revision of Advertising Standards Authority’s ruling following backlash
- Our podcast on Brand Protection in Sport
- Libel Bible – our series of defamation articles
- Events
- Who’s in the news
- Recognition
Guidance on ‘targeting’ for online marketplaces following recent Supreme Court decision
A recent ruling by the United Kingdom Supreme Court determined that a major online retailer infringed UK and EU trade marks by advertising and selling goods on their US website in a way that targeted consumers in the UK and EU. We’ve put together the following practical guide for websites covering multiple jurisdictions.
- Targeting Consumers
- Be mindful of how your website’s content may target consumers in specific regions. Indicators such as “Deliver to United Kingdom” messages, shipping availability pop-ups, and localised pricing can demonstrate intent to target those markets.
- Consider how your landing pages, order review pages, and other website elements might be interpreted by consumers in different regions. Avoid assuming that listings on a US website will only be seen by US consumers.
- Compliance with Local Laws
- If you operate internationally, ensure that your advertising and sales practices comply with the local laws where your consumers are based. This includes understanding local trade mark laws in each market you serve and how they apply to your listings and advertisements.
- In the recent case before the Supreme Court, trade marks registered in the UK and EU were infringed because the listings on the US website were found to have targeted UK and EU consumers without the trade mark owner’s consent. Ensure that your regional websites, like UK or EU-specific sites, also comply with local regulations.
- Website Configuration
- Configure your website to respect regional boundaries. This could mean using geo-blocking for certain products or adjusting content based on the user’s IP address.
- The Supreme Court noted that targeted messages and options available to UK consumers on the US website indicated an intent to target those consumers.
- Legal Considerations
- Be prepared for legal scrutiny if your website is accessed by consumers in multiple jurisdictions. Courts may look at the overall context and presentation of your website to determine if there is an intent to target specific consumers.
- As mentioned above, factors like shipping options, payment currencies, and delivery information are critical in this assessment.
- Injunctions and Penalties
- Understand the potential consequences of infringement. In this case, the court granted an injunction to prevent further infringement, which can impact your business operations.
- Proactively adjusting your practices to avoid such issues is crucial.
- Continuous Monitoring
- Regularly review your website content and marketing strategies to ensure compliance with local laws in all jurisdictions you serve.
- Stay updated on legal precedents and rulings that may affect your operations, such as the recent UK Supreme Court decision.
‘Finfluencers’ facing criminal prosecution
Many will have noticed the increasing number of social media influencers promoting financial products and services and will be well aware of the importance of social media in businesses’ marketing strategies. In March 2024, the Financial Conduct Authority (FCA) published guidance on its expectations of both businesses and influencers, particularly the need for financial promotions to be standalone compliant and for businesses to take responsibility for how their affiliates communicate financial promotions. The FCA also warned that ‘finfluencers’ may be in breach of the Financial Promotion Restriction (preventing unauthorised persons from communicating financial promotions other than in certain circumstances), potentially punishable by up to 2 years’ imprisonment and/or an unlimited fine. Not long after publishing its guidance, the FCA announced on 16 May 2024 that charges of had been brough against 9 ‘finfluencers’ (including individuals known for having appeared on reality TV shows Love Island and The Only Way is Essex).
Lidl v Tesco:Court of Appeal confirms trade mark infringement and passing off by Tesco
The Court of Appeal has recently confirmed the infringement of one of Lidl’s registered trade marks by Tesco’s Clubcard Price logo, as well as passing off, but overturned the High Court’s finding of copyright infringement. The Court of Appeal also confirmed another of Lidl’s trade mark registrations was invalid.
Prospective changes to EU designs law – simultaneous disclosure
On 14 March 2024, the European Parliament formally adopted the new EU design directive and EU design regulation, proposals for which were first issued by the European Commission in 2022. These drafts now await formal adoption by the Council of the European Union (although the Council provisionally agreed the texts on 5 December 2023).
Under Article 11(1) of the Regulation, Unregistered Community Designs gain protection for three years “as from the date on which the design was first made available to the public within the Community“.This occurs when disclosure is done in such a way that “in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community“. It was unclear whether designs first disclosed outside of the EU, e.g. at an international trade fair or exhibition elsewhere, which those working in the relevant sector in the EU would see, would qualify for Unregistered Community Design protection. While guidance from the CJEU was never obtained on this topic, the German Supreme Court had interpreted wording in Article 110a(5) (“[p]ursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design“), to mean that if a design is not physically disclosed first in an EU country, then an Unregistered Community Design right wasn’t created.
The issue has been particularly problematic for UK designers post-Brexit since first disclosure in the UK no longer gives rise to Unregistered Community Design right protection in the EU, while first disclosure in the EU would mean that designers cannot obtain the equivalent Supplementary Unregistered Design Right protection in the UK (for which first disclosure in the UK is required). As a result, a difficult decision has had to be made about when and where businesses and designers disclose new designs. Whilst many have taken the cautious approach of simultaneous disclosure in both territories (e.g. online), it is unclear (and untested) whether that is accepted in order to qualify for both sets of rights, or whether ‘first disclosure’ is required in one territory to the exclusion of all others in order to qualify for the associated unregistered design protection in that territory. The uncertainty has meant a risk that designers aren’t getting the protection they need.
However, one interesting change now made by the new EU design regulation is the deletion of the wording in art. 110a(5). Although the Explanatory Memorandum does not give context to the change, the intention may be to clarify the acceptance of disclosure physically made outside of the territory of the EU (provided the relevant design was still made available to the public in the EU in accordance with the provisions of Article 11) or, at least, could signal the acceptance of simultaneous disclosure in the EU and elsewhere in order to qualify for Unregistered Community Design protection.
Meanwhile, the UK Intellectual Property Office is in the process of reviewing the UK designs law regime and we expect a consultation to be launched in the Autumn (it was delayed by the recent General Election). We are keen for there to be clarity on the issue of qualification for protection where simultaneous disclosure is made in the UK and elsewhere.
Revision of Advertising Standards Authority’s ruling following backlash
You will recall that in January 2024 the Advertising Standards Authority (ASA) ruled against a Calvin Klein advert featuring FKA Twigs, finding that the advert presented her as a “stereotypical sexual object” in a way likely to cause serious or widespread offence. The ruling caused significant backlash, including from FKA Twigs herself, as a result of which the ASA amended the ruling to reverse its decision and finding, now describing the singer-songwriter as “a woman who appeared to be confident and in control” (though maintaining that the image was “overtly sexual”).
Our podcast on Brand Protection in Sport
It’s the season of sport, with the Euros and Wimbledon Championships currently in progress and soon the Paris Olympics! To get in the sporty spirit (and stay relevant) we have just launched a podcast on Brand Protection in Sport, providing hints and tips for in-house sporting legal teams (and other IP/sport enthusiasts) on implementing brand protection strategies, understanding sponsorship relationships, marketing and enforcement of IP rights.
Don’t forget that we also have a library of existing podcasts making up our “IP basics” series, including on copyright, trademarks, passing off, brand and design clearance, online brand infringement, design protection, and advertising law – all excellent material whether for your commute or while (at last) enjoying the sunshine.
Libel Bible – our series of defamation articles
We have released a six-part series of articles on all things defamation law, giving a comprehensive overview of the fundamental principles, commentary on recent cases and the legal landscape surrounding defamation in the UK.
Defamation occurs when something is published to a third party about someone, which would make an ordinary person think worse of that person as a result, causing (or being likely to cause) serious harm to the person that is the subject of the published matter. That publication can be in writing (libel) or made verbally (slander).
If you want to learn more about the key elements giving rise to defamation, or gain an insight into the balance sought to be achieved between freedom of expression and reputation protection, have a read of these articles.
- The basics of defamation law – including how libel and slander are treated differently in the law, possible defences, remedies and offers of amends;
- A deeper look at publication and meaning – including how the meaning of ‘publication’ is taken into account when assessing impact on reputation and seriousness of the defamation;
- What’s the (serious) harm? – we take a look at the ‘serious harm’ (including how it is perceived in the digital age) that must be caused, or be likely to be caused, in order for a statement to be deemed defamatory;
- No need to be defenceless to defamation – focusing on the defences available to someone accused of defamation including truth, honest opinion, public interest, privilege, peer-reviewed statements in scientific and academic journals, innocent dissemination and an offer of amends;
- An overview of strategic lawsuits against public participation (SLAPPS) – including how they are perceived in the UK and how they have impacted legislative change;
- A comparison of defamation law in Canada and the UK – the elements of a defamation action in the two jurisdictions.
Events
In January 2024 we hosted our seminar “Advertising Law: A Year in Review”, running through key developments, the regulators’ position on “green” claims, #Ad, online choice and pressure selling techniques, generative AI, key ASA rulings and what’s expected for 2024. As promised in our last blog post, our advertising team (aka the Ad:Vice Squad) recorded their hotly anticipated webinars highlighting key takeaways from the session – enjoy!
- ASA Update
- Developments in the regulation of digital advertising – #AD
- Developments in the regulation of digital advertising – online choice architecture
In April 2024 members of our global Brands, Advertising and Designs team (from across our UK, France, Germany, UAE and Singapore offices) hosted a Lexology webinar on greenwashing, including legal implications, regulatory guidelines, reputational and other risks, how to avoid false information and ambiguity in environmental claims, how to respond to investigations or accusations, and practical examples to effectively navigate claims. If you missed the webinar, fear not! You can still register to watch it on-demand.
IP professionals from across our global team recently enjoyed attending INTA 2024. We highlighted some key topics of interest ahead of the conference, including the impact of AI on trade marks, the use of AI in online brand protection, brand readiness for Quebec’s “French First” legislation and establishment of a global standard for protection of indigenous IP here.
Recognition
We are immensely proud to have won Design Firm of the Year at the MIP EMEA Awards 2024, for the sixth year in a row! Our success didn’t stop there as Michael Carter (our newly promoted IP Partner) was named UK Rising Star of the Year and our UAE team won UAE Trade Mark Firm of the Year. Across the pond at the MIP Americas Awards 2024, we were named the Canadian “Firm of the Year – Trademark Prosecution” and awarded the Canadian “Impact Case of the Year” for dTechs EPM Ltd. v. British Columbia Hydro and Power Authority. Consistently receiving such recognition from one of the world’s most notable IP publications, which selects winners based on a comprehensive firm submission, independent research and, in particular, feedback from clients and peers, is a testament to our unwavering commitment to our clients and exceptional work across the full range of IP rights. Thank you to everyone who provided feedback!
Our teams in Canada, China, France, the UAE and the UK have been recognised in MIP’s “IP Stars” 2024 Trademark firm rankings. Twenty-nine professionals from across those teams Canada, China, France, the UAE and the UK have also been individually named in MIP’s 2024 “IP Stars” list, in the Copyright, Design, Patents, Trademarks and Transactions categories. The list includes John Coldham, Kate Swaine, Alexandra Brodie, Huw Evans, Paul Inman, Luke Kempton and Patrick Duxbury in the UK.
We are also very proud that, for the second year in a row, MIP has named Alexandra Brodie and Shelagh Carnegie among the top female IP lawyers worldwide in its annual list of the Top 250 Women in IP.
In addition, John Coldham has been named amongst Recommended individuals and we have been listed as a ‘Notable’ firm in the WIPR UK Trademarks Rankings 2024.
We are also delighted with the recent successes celebrated by our colleagues around the world, including winning “UAE Intellectual Property Law Firm of the Year” at the 2024 Chambers Middle East Awards, recognition of teams and individuals in our France and UAE offices in The Legal 500 EMEA guide, and the naming of eight Gowling WLG professionals in Canada, China and the UAE as WTR Global Leaders for 2024.
In the news
Finally, find out what our team have got to say about some recent news stories …
- John Coldham spoke to World Intellectual Property Review about the action brought by the Donna Summer estate against Kanye West for ‘stealing’ the ‘I Feel Love’ sample.
- John Coldham spoke to The Guardian and The Grocer about Tesco changing its Clubcard Prices logo after losing an appeal against a High Court ruling that it had infringed Lidl’s trade mark rights.
- John Coldham spoke to The Standard about JD Sports’ improved performance following a profit warning in January.
- John Coldham spoke to The Sunday Times (subscription required) about Aldi and Lidl’s own-brand lookalikes in an in-depth feature in the Sunday Times Magazine.
- John Coldham spoke to World Trademark Review (registration or subscription required) about the EU General Court’s revocation of McDonald’s BIG MAC mark for all but meat sandwiches.
- John Coldham spoke to Business Insider and Nelson Godfrey spoke to Law.com about our new our new Saturn Online Brand Protection Service – do get in touch for a free demo or to find out more!
