Welcome to the tenth edition of the “Good News / BAD News” Blog!
Our BAD Team (our Brands, Advertising and Designs Team, that is), 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…
- AGA v UK Innovations considers whether refurbishment of a product can infringe the original rights in it
- CMA issues greenwashing guidance for fashion brands
- Libel claim based on clickbait headline fails in Vince v Associated Newspapers
- HALLOUMI collective mark fails in its opposition to GRILLOUMI
- Events
- Recognition
- Who’s in the news
AGA v UK Innovations considers whether refurbishment of a product can infringe the original rights in it
How far can one upcycle a product before it is considered a new item and infringing on the rights subsisting in the original product? This question is what led AGA Rangemaster Group Ltd (“AGA“) to bring a claim against UK Innovations Group Ltd (“Innovations“). Innovations sell electric control systems (“eControl System“) which, when fitted to cookers, converts them from operating on fossil fuels to electricity. The issue arose when Innovations started refurbishing AGA cookers, replacing the fossil fuel barrel and oil burner with their eControl System. The claim brought against Innovations was based on both trade mark and copyright infringement. The claim succeeded on the former and is an example of a design being protected by a registered trade mark.
The Judge noted that the upcycling of the cookers itself did not constitute an infringement of AGA’s rights, however the marketing of the upcycled cookers did leave Innovations liable. The Judge noted that the defendant’s website and marketing materials gave the average customer the impression that there was a commercial connection between the claimant and the defendant, when in fact there was no connection between the two. Further, it was found that AGA’s 2D and 3D trade marks, which depict images of the cookers, were infringed by both the refurbished versions and the photographs of them as used by the defendant.
As for the copyright claim, a design document for the control panel was relied upon by the claimant. However it was found that, while copyright subsisted in the drawing as an artistic work, it was a design document for the control panel which was not itself an artistic work and no part of the design acted as purely surface decoration. Therefore, the Judge dismissed the claim on the basis of s. 51 CDPA (which states that making an article to a design recorded in a design document does not constitute copyright infringement, nor is making the resulting article available to the public). The document and the design were not treated as an artistic work for copyright purposes, and there was no liability for copyright infringement.
CMA issues greenwashing guidance for fashion brands
The Competition and Markets Authority (“CMA“) has issued helpful guidance to help fashion brands comply with the Green Claims Code and underlying consumer protection law when making environmental claims (whether about individual products and services, processes, businesses or brands). This follows a recent investigation by the CMA into three fashion brands, resulting in those businesses providing undertakings to only use clear and accurate green claims. The guidance emphasises the importance of consumers being able to make informed decisions. It is relevant not only to fashion retailers, but to other businesses in the supply chain e.g. packaging and delivery service providers, manufacturers, suppliers, wholesalers and distributors.
The majority of the guidance focuses on the need to make environmental claims clear and accurate, including explaining that, in making such claims, businesses should:
- Think carefully about how and where important product information, which is needed to substantiate any environmental claim being made, is presented and communicated. Such information should not be hidden, should be written clearly and displayed close to the relevant environmental claim.
- Avoid using broad, general and/or absolute environmental claims which can be unclear and likely to mislead (e.g. “green”), unless evidence can be shown to prove the product has a positive environmental impact overall.
- Not use imagery, logos or other visual signs in such a way as to give a misleading impression about the environmental impact of a product, e.g. a leaf symbol without any explanation.
- Ensure any comparisons (e.g. against similar competing products) made in environmental claims are clear and include a summary of the basis for the comparison.
- Give clear explanations of any action required of a consumer, including any applicable circumstances, in order for an environmental claim to be true.
- If using navigational tools (such as filters, drop-down menus etc.) to enable consumers to find products based on environmental characteristics, ensure these do not mislead consumers by checking products have been accurately filtered and meet the relevant criteria.
- Make the criteria for product ranges clear, i.e. where items are grouped according to certain criteria relating to environmental impact (such as limited releases, capsule collections etc.), and ensure that neither the name of the range nor marketing of the range are misleading.
- Clearly and precisely describe fabrics, including the objective properties of each fabric, and be clear about the composition by percentage if multiple fabrics are used in a product or if only part of the product fibres are ‘recycled’ or ‘organic’.
- Not mislead consumers in relation to affiliations and accreditations: any environmental claim based on an affiliation or accreditation scheme should be accompanied by a summary of the relevant environmental benefits, details of any material connection to the third party, a link to the third party or scheme website and a reference to where further information can be found.
- Be clear if a claim is made specifically about part of the life cycle of a product, rather than the whole of it.
- Ensure environmental targets (e.g. “we aim to be XYZ by 2030”) are clearly presented, based on a verifiable strategy that is in place, and do not give a misleading impression about the business’ efforts.
- Consider overall presentation of claims – the overall impact of different claims can have an impact on consumer decisions.
The guidance also explains that relevant businesses should put in place internal processes to ensure all environmental claims are correct and not misleading. This could include relevant policies, internal staff training, and systems to ensure product listings are accurate. Having internal processes set up could help to minimise and rectify any mistakes in product listings. It is also worth maintaining “robust, credible, relevant and up-to-date evidence” supporting the claims made. Suppliers should be able to back up the claims made by retailers, including via the provision of relevant certificates.
Remember that, where a retailer sells third party products, that retailer is also responsible for any claims made in relation to those products and must ensure those claims are not misleading (e.g. by ensuring the third party suppliers can substantiate the claims made). Every business in the supply chain is responsible for the claims they make.
The guidance warns of the consequences of non-compliance with consumer protection law in relation to environmental claims. Enforcement action could result in a business being ordered to change its practices, to pay money back to customers and, under the new Digital Markets, Competition and Consumers Act 2024, a potential fine of up to 10% of worldwide turnover.
We recommend that relevant businesses read the guidance in its entirety, which gives helpful examples and further details. As ever, should you have any questions about the contents of the guidance or how it applies to your business activities, feel free to reach out to us.
Libel claim based on clickbait headline fails in Vince v Associated Newspapers
Can news publications be held liable for libel in relation to clickbait articles, where the headline, or headline plus images and captions, do not accurately represent the rest of the article? The relevant principle was previously established in Charleston v News Group Newspapers Ltd, where the House of Lords found that readers cannot be separated into separate groups, e.g. those who read articles in full and those who only read titles and any attached images (the latter being ‘limited readers’). This means that when the headlines and/or images depict a false representation of the article in isolation, there is no defamation so long as the full article conveys an accurate representation of the facts.
This was challenged in Vince v Associated Newspapers, where libel founded in asserted innuendo had to be considered. The article in question had reported that the Labour Party had returned a £100,000 donation made by an individual (described as ‘a high-flying City financier accused of sex harassment’); and that the claimant had donated £1.5 million to the Party but had then caused it embarrassment by joining an ‘eco-protest’ in London (which had blocked traffic around Parliament Square). The claimant, Dale Vince, argued that a limited reader would be led by way of innuendo to take him as the individual accused of sex harassment. This, in his opinion, would leave the defendant liable for libel by asserted innuendo.
The Judge noted that Charleston is settled law and libel by asserted inuendo would not constitute extenuating circumstances such that the House of Lord’s decision required reconsideration. Further, the Judge was not convinced the claim would constitute an innuendo case, as the extrinsic ‘facts’ are not concrete facts. Considering both points the case was struck out on the basis that there were no reasonable grounds for bringing or defending the claim.
HALLOUMI collective mark fails in its opposition to GRILLOUMI & GRILLOUMAKI
The Foundation for the Protection of Traditional Cheese of Cyprus Named Halloumi (“Foundation“) appealed against the Registrar of Trade Marks’ decision allowing the trade marks “GRILLOUMI” and “GRILLOUMAKI” to be registered by Fontana Food AB (“Fontana“), including for “services for providing food and drink”. The appeal was based on the Foundation’s ownership of the collective UK trade mark “HALLOUMI” for cheese (a collective trade mark being one which indicates that goods or services originate from members of an association rather than just one trader) and a likelihood of confusion amongst consumers between the trade marks “HALLOUMI” and “GRILLOUMI”. Since the opposition was based on a collective mark, this impacted what needed to be shown in order to establish a likelihood of confusion.
The appeal was dismissed with the judge upholding the Hearing Officer’s decision. Although perhaps GRILLOUMI may call to mind halloumi in the descriptive sense, any link between GRILLOUMI and HALLOUMI in the trade mark sense was found to be too weak to conclude that the services offered under GRILLOUMI were provided by a member of the Foundation.
When presented with the word “HALLOUMI” on food packaging, the general public would undoubtedly think about the cheese, and not the Foundation’s collective trademark. This was the fundamental underlying problem for the Foundation; the mark simply had too weak of a distinctive character, holding no reputation among the general public as a collective trade mark.
The Judge came to the same conclusion for the trade mark “GRILLOUMAKI”, and accepted the Hearing Officer’s finding that there was no likelihood of direct or indirect confusion. Fontana’s application for both trade marks will proceed to registration in both the UK and EU (where the marks were subject to a parallel case).
Recognition
Following The Legal 500’s recent release of its 2025 rankings, we are immensely proud to have been ranked Band 1 for Media: Advertising & Marketing and Band 2 for TMT – Intellectual Property: trade marks, copyright and design. In addition, our own Kate Swaine was named to The Legal 500’s 2025 ‘Hall of Fame’ list, and John Coldham was named as a ‘Next Generation Partner’ for Intellectual Property, while Dan Smith was named a ‘Leading Partner’ for Media – Advertising and Marketing. Thank you to all of our clients who provided testimonials as part of the process – some lovely quotes were given which we couldn’t help but repeat here:
‘Gowling WLG is a leading IP practice with some exceptional patent practitioners. Approachable, friendly lawyers with a superb grasp of the law. Client-focused, commercial approach.’
‘Gowlings are a very strong team across the board, from trainees to partners.’
‘What makes Gowling unique is the people. The advertising and marketing team is very knowledgeable, approachable and hear the client and the needs.’
‘They are friendly, approachable and down to earth. They hear what the business has to say and try to work and find alternatives to mitigate risks.’
Our teams in the UK and Canada have also been recognised in MIP’S “IP Stars” 2024 copyright and IP transactions firm rankings, including:
- Tier 1 for IP transactions in the UK; and
- Tier 1 in Canada, as well as recognition as a ‘notable firm’ in the UK, for copyright & related rights.
In addition, our team in Canada recently won ‘Trademark Firm of the Year’ at The Global IP Awards 2024 by IAM & WTR.
Events
We recently hosted our ThinkHouse Foundations Autumn seminars on 17 October (Birmingham) and 24 October (London). ThinkHouse Foundations is a firmwide initiative which aims to provide a network for junior in-house lawyers, through which we deliver training and updates on a variety of topics that we hope are helpful and practical for every day work. Sessions at our most recent seminars included talks on trade secrets, boilerplates in contracts and changes to employment law as a result of the change of government, as well as a chance to connect with other junior lawyers during the breaks. If you are a junior in-house lawyer (from paralegals, trainees and newly qualified lawyers up to around five years’ PQE) and are interested in receiving invitations to future events, feel free to read more about the programme and to sign up here.
We also run separate ThinkHouse programmes for senior in-house lawyers and general counsel, featuring regular events, webinars, content, workshops etc. If interested, please do sign up and we look forward to meeting you at our future events.
In the news
Finally, find out what our team have got to say about some recent news stories …
- John Coldham spoke to The Grocer about Thatchers’ decision to appeal the High Court’s dismissal of its claim against Aldi concerning the latter’s Cloudy Lemon Cider. Thatchers had accused Aldi of ‘passing off’ and of taking unfair advantage of Thatchers’ brand reputation, however the judge had found Aldi’s design was unlikely to cause the average consumer to be confused about the product they were buying, nor detrimental to the repute of Thatchers’ trade mark.
- John Coldham also spoke to The Grocer about B&M’s potential infringement issue in light of it selling a light-up gin liqueur product which is similar to that of M&S. Last year, M&S successfully sued Aldi in connection with the former’s registered designs for its own light-up gin bottle product range.
