Good news / BAD news – May 2023

Welcome to the fifth 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…

• Lidl v Tesco
• The “MetaBirkin” – a landmark ruling
• The King’s Coronation – top tips for brand owners
• Toblerone is getting a new look
• Sustainable fashion – key trends
• AI copyright infringement in the US
• BAD insights podcasts
• Team news:
  • INTA
    • The Metaverse
    • Trade secrets
    • IP in Asia
• Recognitions
  • Our team has been nominated for 11 awards at the forthcoming MIP EMEA Awards, including Global IP Firm of the Year, European Firm of the Year for patent disputes, and various UK Firm of the Year awards, for designs, for trademarks and for patent disputes.
  • Gowling WLG’s global IP practice recognised in MIP “IP Stars” 2023
  • Chambers Global 2023 recognizes Gowling WLG lawyers
  • 2023 Canadian Legal Lexpert Directory recognizes 211 Gowling WLG lawyers
  • Birmingham Legal Awards ‘National Law Firm of the Year’

Lidl vs Tesco

Lidl and Tesco have been at war with one another since Lidl issued proceedings against Tesco, alleging trademark infringement, passing off and copyright infringement. Lidl’s focus was on its registered trademark for a yellow circle against a blue rectangular background, which contains the word “Lidl” in the centre (the “Mark with Text”), and Tesco’s similar yellow circle and blue rectangular background but with different text (e.g. price reductions) used in its “Clubcard Prices” promotion launched in September 2020.

In response to Lidl’s claims, Tesco filed a counterclaim seeking a declaration of invalidity in relation to Lidl’s trademark registrations for its logo but without the ‘LiDL’ wording (the “Wordless Marks”). Tesco alleged that the Wordless Marks should be declared invalid on the grounds they had not been put into genuine use and were registered in bad faith.

In the eagerly anticipated judgment, the High Court ruled predominantly in Lidl’s favour. Lidl succeeded on its claim of trademark infringement in respect of the Mark with Text, and in its claims of passing off and copyright infringement. It was held that “Tesco has taken unfair advantage of the distinctive reputation which resides in the Lidl [logo] for low price (discounted) value.” Tesco succeeded in invalidating some of Lidl’s Wordless Marks for bad faith, but it is clear that Lidl won the day.

You can find full details of the decision, and its implications in our article – “Supermarket wars – why your brand protection strategy is crucial“.

The “MetaBirkin” – a landmark ruling

On 8 February 2023 a nine-person jury in a New York Federal District Court ruled in favour of Hermès International in the trial against Mason Rothschild, the digital artist behind the “MetaBirkin” non-fungible token (“NFT”) collection.

As explained by Monique M. Couture, Justine Simoneau, and Kasia Donovan in their article “A landmark ruling on trademarks in the virtual world: Hermès wins in “Metabirkin” NFTs trial“, this was the first example of a brand taking action against the unauthorised use of its trademarks in the virtual world. Its ruling brought about an interesting discussion around whether or not NFTs are creations, works of art or simply transactional assets.

In light of the ever-expanding digital market and the increasing importance of NFTs, it is likely we will see more judgments in this area.  Watch this space!

The King’s Coronation – top tips for brand owners

As His Majesty the King and The Queen Consort celebrate their Coronation as Heads of State this Spring, many brands (particularly British brands) will want to celebrate this landmark moment in history. As explained by Lucy Singer in this insightful article, “Key considerations for brands celebrating the King’s coronation“, brands will need to consider how they can celebrate the Coronation without giving rise to liability or falling foul of advertising regulations.

This article considers the use of the Official Emblem (that has been created especially for the Coronation) what legal rights brands should be aware of when celebrating the Coronation, and the practical points for brands to consider.

Toblerone is getting a new look

For the first time in over 50 years, Mondelez is changing the design of the cardboard wrapper of its product, Toblerone – with these changes arising in response to the “Swissness Act”.

Previously, the brand’s packaging has included a silhouette of the Matterhorn, one of the highest summits in the Alps and a silhouette of a bear (Bern’s mascot), along with the slogan “of Switzerland” – with the chocolate bar having been invented and produced near Bern. With a recent move of part of Toblerone’s production to Slovakia, Mondelez has since announced that it is planning to remove the Matterhorn and replace it with a more generic mountain and, crucially, the packaging will now read “established in Switzerland,” rather than “of Switzerland.”

This article by Kate Swaine,  Jasmine Lalli and Lucinda Wilton-Woodhouse entitled “Mondelez modernises its iconic Toblerone packaging: what does this mean for brand owners?” considers the “Swissness Act” and what this could mean for brand owners.

Sustainable fashion

There has been a real shift in public consciousness in recent years for brands to be more environmentally conscious, yet the fashion industry has been slower than others to make progress in this arena. However, with Gen Z consumers in particular pushing for brands to do more to help the planet, we are gradually seeing the retail sector taking on and addressing environmental challenges.

In this article, “Sustainable fashion: 5 key trends“, Jocelyn Paulley and Jasmine Lalli identify five key sustainability trends impacting the fashion industry right now and consider just how seriously sustainability is being treated by the sector.

AI copyright infringement in the US

Our Canadian colleagues, Susan Abramovitch, Madison MacColl and Lamont Abramczyk, have recently considered AI image generators and the contrast between how the US courts have been asked to view these machines as potential copyright infringers, even if they are not themselves entitled to copyright protection.

As of earlier this year, the U.S Copyright Office decided that AI image generators are not entitled to copyright protection, but a lawsuit initiated by three artists in the United States alleges that the images they produce amount to copyright infringement.

This article “AI image generators: drawing infringement claims, not U.S. copyright protection” considers the arguments for AI image generators as copyright infringers and what the future looks like in terms of legal rights for those using AI technology.

BAD insights podcast

In our new BAD podcast series, our team explores critical topics affecting the IP sector and how you can protect your brands, creations and designs. Our team hopes our podcasts will deliver information on important topics in the IP world in a fun and engaging way.

With the podcast series having covered topics so far such as the law of exhaustion, and the IP sanctions regimes in the UK and EU, and with new releases scheduled over the next few months, there are plenty of sessions to add to your podcast hit list!

‘BAD’ insights: the law of exhaustion and design protection post-Brexit in the EU and UK

‘BAD’ insights: navigating the UK and EU sanctions regimes in IP

BAD’ insights: IP rights in the Metaverse

BAD basics podcasts

We are launching a new series of “basics” podcasts, which serve as a useful introduction to those areas that you (or your team) do not necessarily cover day in day out.  Launching monthly, our first one is by Lucy Singer, on passing off.  There are no shortage of lemon puns in her podcast – tune in to find out why!

Team news

INTA

We are heading to INTA! Our team are currently preparing to attend the International Trademark Association (“INTA”)’s annual meeting, which this year will be held in Singapore. The aim of the meeting is to connect trademark professionals, and other wide brand protection professionals, from across the world. We are delighted that the conference is being held in the home city of JurisAsia, with which we have an exclusive association, so many of our colleagues in Singapore will be on hand to meet the visitors to the country.

With an emphasis on collaboration and sharing ideas, our team can’t wait to network with other professionals and discuss this year’s designated key topics such as IP in Asia, the Metaverse, and trade secrets.

In preparation for INTA, our team have been busy preparing materials on this year’s designated hot topics. We recently pulled these together in a virtual fireside chat, where John Coldham was joined by members of our team around the world.  They discussed the current developments and opportunities in Southeast Asia, as well as covering the hot topics trademark lawyers do not traditionally have a lot of time to consider. A recording of this session will soon be available – keep checking back here to ensure you don’t miss out!

• In case you can’t wait for the webinar:
  • The Metaverse
    • Check out our BAD insights podcast hosted by Charlie Bond and Lucy Singer on IP rights in the Metaverse, which considers the Metaverse’s benefits and the opportunities it presents but also considers its potential pitfalls – ‘BAD’ insights: IP rights in the Metaverse
    • Kate Swaine has been part of a committee working on INTA’s Metaverse white paper, which discusses the Metaverse concept and how it can impact various IP rights – White Paper: trademarks in the Metaverse
  • Trade secrets
    • Brand owners typically protect themselves by utilising a portfolio of IP legal rights such as trademarks and copyright, with trade secrets seeming a less common choice for many brands. In this article, Cassie Blackburn, Khemi Salhan and John Coldham discuss if there is still place for trade secrets in a brand’s protection portfolio and what benefits they provide a brand – Should you consider using trade secrets as a means of brand promotion and protection?

Recognitions

We are excited to announce a number of recognitions for our IP team recently, as we continue to act as respected legal advisers to household names across the globe:

• Our global IP practice has been recognised in Managing IP’s “IP Stars” Trademark Firm Rankings for 2023 – MIP IP Stars 2023 | Gowling WLG
• Chambers Global 2023 has recognised our lawyers in both individual rankings and firm rankings across four countries, with our UAE office being recognised across three practice areas – Chambers Global 2023 recognizes Gowling WLG lawyer | Gowling WLG and Chambers Global 2023 recognises Gowling WLG UAE | Gowling WLG
• The Canadian Legal Lexpert Directory has recognised 211 Gowling WLG lawyers across 46 practice areas – Canadian Legal Lexpert Directory 2023 | Gowling WLG
• Our UK office has been named Birmingham Legal Awards ‘National Law Firm of the Year’ for its role as the Official Legal Advisers to, and sponsors of, the Birmingham 2022 Commonwealth Games (“B2022”), as well as for wider legal and business services work in the region over the last 12 months – Gowling WLG named ‘National Law Firm of the Year’ | Gowling WLG
• We have been shortlisted in the forthcoming EMEA MIP Awards in 10 categories across our UAE and UK offices (including Firm of the Year for Trade Marks and Firm of the Year for Designs).  We have also been nominated for Global IP firm of the year.