Good news / BAD news – March 2025

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Welcome to the eleventh 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…

• SkyKick v Sky: landmark Supreme Court decision rules on bad faith invalidity in trade mark law and interpretation of Brexit legislation 
• Thatchers v Aldi: Thatchers enjoys significant win against Aldi’s lookalike product in the Court of Appeal 
• WaterRower v Liking: High Court issues key judgment on protection of products using copyright
• New changes to EU design laws in force as of December 2024
• Thurgood v Laight: Doggy dealings amount to liability for paw-ssing off
• UK Government launches consultation on copyright and AI
• EUIPO & EUROPOL publish report on links between fake goods and organised crime
• Events
• Recognition
• Who’s in the news

SkyKick v Sky: landmark Supreme Court decision rules on bad faith invalidity in trade mark law and on interpretation of Brexit legislation

In a landmark judgment, the UK Supreme Court in SkyKick v Sky has ruled on the bad faith ground of invalidity in trade mark law; the impact of ‘clarity and precision’ in the assessment of trade mark infringement; and that remedies and procedures under the Withdrawal Agreement, and which are to be given legal effect or used in the UK without further enactment, must be recognised and available in domestic law.  

Our recent article dives into the details, as well as our key takeaways for trade mark filing and enforcement strategies.

Thatchers v Aldi: Thatchers enjoys significant win against Aldi’s lookalike product in the Court of Appeal 

Thatchers have successfully overturned a High Court judgment in the Court of Appeal, the latter of which found that Aldi’s Taurus Cloudy Lemon Cider product, a lookalike version of Thatchers’ Cloudy Lemon Cider product, infringed Thatchers’ figurative Cloudy Lemon Cider trade mark.

Our team have published an article on what the decision means for brand owners, including:

• whether the decision means it will be easier to stop lookalikes,
• what brand owners can do to improve their chances of success against such products,
• how retailers can better defend themselves against lookalike claims, and
• how to decide whether to bring a claim against a lookalike product.

Take a look at our article.

WaterRower v Liking: High Court issues key judgment on protection of products using copyright

3D objects usually enjoy design right protection, lasting up to 25 years (in the case of registered designs) or 10-15 years (in the case of unregistered designs). However, if someone is able to reach the holy grail of their design constituting a “work of artistic craftsmanship”, then that 3D object will benefit from copyright protection for the life of the creator + 70 years.

In WaterRower v Liking, WaterRower’s prototype rowing machine was found not to qualify as a work of artistic craftsmanship, meaning it was not protected by copyright.

The judgment sets out key principles as to what can (or, more particularly, what cannot) constitute a “work of artistic craftsmanship” under UK law. We summarised these, the Judge’s approach to assessing whether WaterRower’s product qualified for protection, and our views on what the judgment means for designers, in our recent article.

New changes to EU design laws in force as of December 2024

The new EU design directive and EU design regulation, for which the European Commission first issued proposals in 2022, have come into force as of December 2024. The directive must be implemented by EU Member States by 9 December 2027, while the majority of the regulation will apply from 1 May 2024.

Changes include a broader definition of ‘Product’, for example to include “spatial arrangements of items intended to form an interior or exterior environment” (such as shop layouts); a broader definition of ‘Design’ to add “the movement, transition or any sort of animation” of the features of the whole or part of a product (e.g. encompassing digital designs and visual effects); the introduction of new acts of infringement (“creating, downloading, copying and sharing or distributing to others any software or medium which records the design“); EU Member States’ ability to refuse design registrations on the grounds of misappropriation of elements of cultural heritage that are of national interest; as well as procedural changes – applicants will be able to file up to 50 designs in one application covering different Locarno classes, in comparison to the previous ‘unity of class’ requirement, which is a more economical approach.

We have published an article detailing all the key changes and our views on the potential softening of the EU position towards simultaneous disclosure – have a read.

Thurgood v Laight – Doggy dealings amount to liability for paw-ssing off

In a recent judgment of David Stone, the hijacking of a dog grooming business resulted in liability for passing off.

Ms. Thurgood founded a dog grooming business trading as Wash Wiggle & Wag, acquired a van displaying the name, and hired Ms. Laight as an employee groomer. After 18 months the relationship deteriorated resulting in Ms. Laight’s resignation.

Ms. Laight not only declined to return the business van (saying it could be collected from outside her address) and refused to relinquish control of the social media accounts for Ms. Thurgood’s business, but escalated matters by: incorporating Wash Wiggle & Wag Limited; registering the domain name www.washwigglewag.co.uk; posting on the associated website that she had been running the mobile grooming service for over four years; and misusing Ms. Thurgood’s former Facebook page to announce her ownership – a move later brushed off as a “mistake”, and having taken the contact details of approximately 250 of Ms. Thurgood’s clients, contacting those clients, a number of whom used Ms. Laight’s services. 

The court decisively ruled in favour of Ms. Thurgood, finding that her claim of passing off was clearly made out. The judge unequivocally recognised that Ms. Thurgood had established goodwill in the name Wash Wiggle & Wag within the territory (an approximately 30 mile radius of Redditch). This goodwill arose from her continuous trading under the name and her association with the business. Ms. Laight used an identical business name (Wash Wiggle & Wag); for identical services (dog grooming); and targeted the same customer base in the same territory.

The judge held that customers would inevitably believe there was a connection between the two businesses, leading to misrepresentation. Further, he was satisfied that the misrepresentation had caused damage to Ms. Thurgood’s business, having diverted customers to Ms. Laight’s business, such that the tort of passing off was made out.

The judgment, refreshingly concise, reflects the clear-cut nature of the case and the inevitability of the outcome. The judge’s reasoning, which drew heavily on trademark law concepts, underscored the defendants’ blatant attempts to hijack Ms. Thurgood’s business.

UK Government launches consultation on copyright and AI

The UK Government has launched an open consultation on copyright and AI, seeking views on how it can ensure the UK’s legal framework supports both the UK’s creative industries as well as the AI sector.

This is in the context of the Government’s objectives in this area, which are:

• To improve copyright holders’ control over, and ability to monetise, the use of their works to train AI models;
• To boost trust and transparency between the sectors (by ensuring copyright holders are given clarity about how AI developers use their material); and
• To ensure AI developers are able to access high-quality materials for the training of AI models.

New proposals include:

• Copyright holders being able to reserve their rights and prevent their materials from being used for the training of AI models without licences in place;
• Requiring more transparency from AI developers about the materials they use;
• Introducing a new system to enable copyright holders to assert their rights (in order to facilitate their control over their rights); and
• Expressly excluding data mining of lawfully accessible works from copyright laws.

The Government is seeking input on standardised systems for reservation of rights and complaints, on whether copyright creators and AI developers’ interests are sufficiently addressed, the proportionality and feasibility of transparency-related proposals, whether collective licensing systems are applicable and on dispute resolution mechanisms. 

The consultation will also address other emerging issues such as digital replicas and copyright protection for computer-generated works.

Anyone with an interest in these issues can share their views and provide evidence on the economic impact of the proposals. The consultation will end on 25 February 2025.

EUIPO & EUROPOL publish report on links between fake goods and organised crime

A recent report by the EUIPO and EUROPOL has revealed the dangers of IP crime across Europe. It exposes the alarming extent of counterfeit goods infiltrating the European market, the increasing sophistication of IP criminals, and highlights the risks they pose to consumers, businesses and the environment.

Several factors have contributed to the rising prevalence of IP crime. Platforms such as Instagram, TikTok, and online marketplaces have changed consumer behaviour, increasing demand for cheap or imitation products and facilitating the sale of counterfeit products while lowering awareness of the associated risks. The growth of AI-driven marketing and 3D printing has made it easier for counterfeiters to replicate authentic products and distribute them worldwide. Criminal networks are therefore exploiting global demand for low-cost goods and deceiving consumers into purchasing counterfeit items that often pose serious risks.

The report presents staggering data that underscores the severity of IP crime in Europe:

• Around 86 million fake goods were seized in the EU in 2022, with an estimated total value of over €2 billion.
• Games (including electronic game consoles, video games, puzzles and others), toys, recorded CDs/DVDs, cigarettes and packaging materials were most commonly seized.
• Counterfeit goods account for an estimated 5.8% of total EU imports.
• In 2023 alone, over 1,400 investigations into IP crime were launched through the European Multidisciplinary Platform Against Criminal Threats (EMPACT).

Some impacts of counterfeit goods are as follows:

Health risks: Many counterfeit products, especially pharmaceuticals, are manufactured in unregulated environments, often using harmful substances. Consumers risk exposure to dangerous chemicals which can have severe health consequences.

Economic consequences: The sale of counterfeit goods not only undercuts legitimate businesses but also results in significant financial losses for industries and governments. The widespread availability of fake products erodes consumer trust in brands and disrupts fair market competition.

Environmental damage: The environmental impact of counterfeit goods is often overlooked but is just as alarming. Key concerns include unregulated chemicals causing contamination, hazardous substances, increased emissions and waste disposal issues.

The study emphasises that while consumers are drawn to low-priced goods, their decisions inadvertently support a range of other serious crimes, including cybercrime, money laundering and even environmental crime.

Just a reminder that we offer an effective subscription service that targets online infringement using a combination of technology and our team of experienced brand protection lawyers, Saturn.

Events

ThinkHouse Advertising Law: A Year in Review

Our ‘AD:Vice Squad’ hosted the ThinkHouse Advertising Law: A Year in Review seminar at the fascinating Museum of Brands on 30 January 2025.

Dan Smith (our Head of Advertising Law), Loretta Pugh (Partner), Zoe Pearman and Sushil Kuner (both Principal Associates) spoke about the biggest developments in advertising law in 2024 and what lies ahead, the world of financial promotions and an update on data protection for advertisers. Topics included drip pricing, pressure selling, discount pricing, dynamic pricing, AI influencers, deepfakes, AI chatbots, cookies and more.

We hope all who attended had an enjoyable evening. If you missed out, fear not, as this is one of our key annual events and will be returning in 2026. In the meantime, if you would like to discuss any of the issues covered by this event, please get in touch with the team.

CITMA Conferences

Members of our team enjoyed attending the CITMA Autumn Conference in October 2024 which included a variety of talks covering case law updates, copyright and designs, online infringement, company name tribunals, non-traditional trade marks and Q&A sessions with members of the UKIPO.

The upcoming Spring Conference on 20-21 March will feature more insightful seminars, discussions and industry insights, as well as networking with those in the trade mark community. We’re looking forward to attending and hope to see you there!

Recognition

We are very proud to have been nominated by Managing IP’s EMEA Awards 2025 for numerous awards across our team, including:

• Global IP Firm of the Year
• UK Firm of the Year for Trade Mark Litigation
• UK Firm of the Year for Designs
• UK Firm of the Year for IP Transactions
• UAE Firm of the Year for Designs and Copyright

This is in addition to some individual awards. Congratulations to all nominees – we look forward to the awards ceremony on 10 April 2025!

We are also delighted that World Trademark Review, in the WTR1000 2025, has promoted Gowling WLG to its ‘Gold’ tier (its highest ranking) for enforcement and litigation. We can’t help but quote WTR, which said the following:

“Gowling is a trusted adviser in intellectual property, known for delivering positive outcomes in complex cases both in and out of court. Their excellent professionals provide real value-for-money advice and a down-to-earth approach. Their skill, hard work, commercial strategy and flexible fee structures make them a top choice for reliable legal support“.

WTR particularly mentioned Kate Swaine (“a superb lawyer whose deep understanding of her clients’ businesses and exceptional legal acumen make her an invaluable asset… an overall dream to work with“), John Coldham (who is “highly trusted for his judgment“, whose “counsel is consistently commercial, pragmatic and cost-effective, reflecting his extensive and impressive experience“, and who “offers exceptional advice on litigation prospects and strategies to achieve his clients’ desired outcomes“), as well as Dan Smith (“a creative practitioner who recognises his clients’ goals and the best way to achieve them, effectively maximising their potential returns while mitigating risks“). Alexandra “excellent and hard-working” Brodie and Huw Evans were also hailed as being solid all-round IP litigators.

Chambers & Partners also recently recognised Gowling WLG as a ‘Leading Firm’ in its UK 2025 rankings, with our IP teams around the world achieving Band 1 and Band 2 rankings, and a number of our IP team members being individually ranked, including in Band 1.

In Canada, Gowling WLG has been named 2025 ‘Law Firm of the Year’ for Advertising and Marketing Law by the inaugural edition of Best Law Firms™ – Canada.

Meanwhile, Gowling WLG has been shortlisted at the Chambers Middle East Awards 2025 for UAE Intellectual Property Law Firm of the Year. Huge congratulations to our colleagues in the UAE and best of luck to all of the finalists.

In the news

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

• John Coldham spoke to Retail Week about combatting online brand infringement and counterfeiting in the context of major shopping events such as Black Friday.
• John Coldham and Ailsa Carter were featured in The Patent Lawyer newsletter, speaking about the recent designs judgment of Hacon HHJ in Barber v Wakefield. The judgment dismissed a claim for infringement of a registered design in relation to a tool for inserting a key through a letterbox and up to a lock on the inside of a door, since the Defendant’s acts had been done privately and for non-commercial purposes and therefore benefitted from the relevant defence, and yet an injunction was nevertheless awarded to the Claimant so as to ensure that any letterbox tool marketed in the future looks conspicuously different from the Claimant’s registered design.