Welcome to the eighth 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…
- Saturn: launch
- Acquiescence trade mark law in the Court of Appeal
- Registered designs success at the Court of Appeal
- Copyright law to be tested in AI High Court case
- Back to basics – our series of IP podcasts
- Advertising Standards Authority (ASA) rulings
- Events
- Who’s in the news
- Recognition
Saturn: launch day
You may have already heard about our new artificial intelligence-powered brand protection service Saturn, which has launched globally last month.
In an increasingly online world, counterfeit and copycat products, and online misuse of brands, pose a material risk to any business. Timely interventions are crucial for protecting the brand, but some businesses do not know where to start in tackling the abuse. That is where Saturn comes in!
Saturn combines clever tech and integrated advice from our award-winning global IP team to help brands identify, monitor, review and take action against possible infringements of their rights online.
What’s included?
- A bespoke package tailored to your needs.
- Searches being carried out across online marketplaces. The service includes fee earner time to ensure an effective strategy whilst being mindful of risk.
- Unlimited e-commerce take downs and technical analyst time.
- Expert support and advice from our specialist Brands team.
- Monthly reporting and annual audit.
It’s available now and you can find out more information on how it can help you protect your brand at the website here or by emailing SaturnLaunchPad@gowlingwlg.com. We have also released a complimentary guide on how best to protect your brand online.
Acquiescence trade mark law in the Court of Appeal
The Court of Appeal of England and Wales has delivered a landmark judgment (Industrial Cleaning Equipment v Intelligent Cleaning Equipment & Another [2023] EWCA Civ 1451) diverging from the case law of the Court of Justice of the EU (CJEU) on an aspect of trademark law, specifically the ‘acquiescence’ defence to trademark infringement. The point goes to the heart of the balance sought to be struck by the registered trademark system, between the interests of trademark owners and the interests of other economic operators.
In our Court of Appeal Diverges From CJEU On Trademark Acquiescence Law article, we explore the key issues considered by the Court of Appeal and their groundbreaking departure from CJEU jurisprudence on a provision of retained / EU-derived legislation in respect of intellectual property.
M&S wins first registered designs case at the Court of Appeal for years
Registered designs are extremely effective, not least in online brand protection, and in our experience the majority of cases involving a registered design settle very quickly and effectively. The cases that go to court are, therefore, often the trickier ones. Although cases have seen some success at High Court level, the few that have made it to the Court of Appeal in recent years have been unsuccessful.
The tide is beginning to turn, however, with the judgment handed down on 27 February 2024 about festive light up gin bottles. Marks & Spencer took on Aldi over lookalike products, and succeeded at the High Court. See our article on the main judgment here. The Court of Appeal has just rejected Aldi’s appeal, confirming the infringement ruling.
This emphasises a point that we have been making for many years, not least at our annual London Designs Festival event, that companies should reconsider how they seek to combat lookalikes; designs law is very versatile and can be effective in this area, as this judgment has confirmed.
In our ‘Definitely Under The Influence: Aldi Left In Low Spirits As Court Of Appeal Confirms Gin Bottles Infringe M&S’s Registered Designs’ article, we review the Court of Appeal’s decision making and consider the impact this might have in the world of IP enforcement.
Copyright law to be tested in AI High Court case
The High Court of England and Wales in December permitted a case brought by Getty Images for infringement of intellectual property rights through the training and operation of a generative artificial intelligence (AI) model, in Getty Images (US) Inc & Ors v Stability AI Ltd [2023] EWHC 3090 (Ch).
The case presents an opportunity for the court to demonstrate how intellectual property law will be enforced against people and legal entities behind AI that learns by processing information, and uses that learning, irrespective of any underlying intellectual property (IP) rights protecting the source information.
In our Copyright law to be tested in AI High Court case article, we explored the key issues that might be considered within this case and the adequacy of intellectual property laws in the UK when dealing with AI present and future.
Back to basics – our series of IP podcasts
We have released the latest podcast in our “IP Basics” series which (as you may have guessed) addresses 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.
This podcast adds 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.
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: advertising law
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.
Our ASA Doubles Down on Downsizing Claims article explores ASA’s latest position concerning energy savings claims in the context of the cost of living crisis. Within the article, we summarised some of the key takeaways and practical tips arising from the ASA decision:
- Savings claims must be accurate, supported by robust evidence and appropriately qualified so the basis for your savings claim is clear.
- Make sure you are not exaggerating the benefits of your product or service.
- Prepare ads with a sense of responsibility to the target audience – think about whether your messaging is appropriate for those consumers (the ASA may adopt a higher standard where elderly people are the target audience).
- Be sensitive to vulnerable people’s fears around the costs of living and the risk of causing them distress.
- Seek advice – the ASA is more proactive than ever and won’t hesitate to take action itself to ensure consumers are protected.
Events
In January 2024 we proudly hosted our Advertising Seminar, where our advertising team (the lesser known Ad:Vice Squad!) ran through some key developments in the world of advertising, focusing on the regulators’ position on “green” claims, #Ad, online choice and pressure selling techniques, generative AI, key ASA rulings and what’s expected for 2024.
Many in the audience fed back that they would love to hear more about the area and were inspired by the discussion.
If you weren’t able to make the seminar, then fear not – the Ad:Vice Squad has recorded brief webinars highlighting the key takeaways from the session. These will be available online soon.
Until then, 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.
In the news
Finally, find out what our team have got to say about some recent news stories …
- John Coldham spoke to Law360 (subscription required) to discuss the launch of our new AI-powered brand protection tool, Saturn.
- John Coldham spoke to The Grocer about M&S’s win against Aldi at the Court of Appeal.
- John Coldham spoke to The Grocer about Oatly’s success in its appeal to the High Court regarding its ‘Post Milk Generation’ trade mark.
- Kate Swaine spoke to InHouseLawyer to provide her thoughts on fluid branding and connecting consumers in the world of social media.
- John Coldham spoke to CityAM to give his thoughts on MusicMagpie’s soaring share prices after strong Black Friday results.
- John Coldham spoke to The Grocer about Thatcher’s failed case against Aldi in relation to copycat lemon cider.
- John Coldham spoke to This Is Money about W H Smith’s recent financial performance.
Recognition
We are proud to have been nominated again for the Trade Mark Disputes Firm of the Year and the Design Firm of the Year at the MIP Awards 2024, and our colleagues from across our IP team in EMEA have also been nominated in other categories. Stay tuned to hear how the team does!
We are also delighted with our recent rankings (both as a team and many of our individual team members) in the recent publication of the Legal500, Chambers and WIPR1000 directories. Thank you to all those who provided feedback – we are very grateful. Our favourite quotes from this year include:
‘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.’ Legal500 2024
“Gowling WLG is “an excellent firm that dispenses quality advice, presented concisely, and provided swiftly”. Its seamless cross-border collaboration and close-knit team means multi-jurisdictional disputes and global branding strategies are handled with consistency and poise. The outfit is going from strength to strength” WTR1000 2024
About the author(s)
Lucy advises clients on how to best protect, enforce and exploit their intellectual property (IP) rights. She works across a full range of intellectual property rights, but has a particular interest in brands and designs.
John Coldham is UK Head of Brands and Designs, and co-heads the global practice. The Team is MIP Designs Firm of the Year 2024, having also won the award every year since 2019. It is the first firm ever to win the award six years in a row.
