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Banksy: The Flower Thrower

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Banksy: The Flower Thrower

 

“Does art matter?”. On 17 October 2019 , graffiti artist Banksy launched an online shop called Gross Domestic Product to sell his branded merchandise for two weeks, the launch being advertised by a pop-up shop in Croydon, UK. To have chance at purchasing an item, would-be Banksy merchandise owners had to register their interest and answer the above tie-breaker question. The sale of trademarked merchandise, an unprecedented move by Banksy, is better understood in the wider context of a dispute surrounding one of Banksy’s trade marks.

 

Banksy is the owner of several European trade marks, registered under the name of Pest Control Office Limited, a handling service acting on behalf of Banksy. The particular European trade mark at the centre of the dispute is European Trade Mark 012575155  which protects an image reminiscent of Banksy’s Rage, the Flower Thrower mural in Jerusalem, also known as Love Is In The Air, Flower Thrower or Flower Bomber. The Flower Thrower trade mark was filed in February 2014 and registered by August 2014.

 

In a statement posted on the pop-up store in Croydon, Banksy has explained the motivation behind the shop as follows:

 

“A greetings card company is contesting the trademark I hold to my art and attempting to take custody of my name so they can sell their fake Banksy merchandise legally”.

 

Full Colour Black, the greetings card producer in question, deny that they are trying to take custody of Banksy’s name, and have stated that the company previously approached Banksy’s representatives to pay them royalties, which Banksy refused

 

Subsequently, in March 2019, Full Colour Black filed an action for invalidity to cancel the Flower Thrower European trade mark. If the trade mark were successfully cancelled, Banksy would not be able to rely on his European trade mark to prevent use of the Flower thrower image commercially and Full Colour Black would be free to sell cards featuring the Flower Thrower without any risk of infringing the mark.

 

Of course, Banksy could rely on copyright to stop Full Colour Black or any other entities who are copying his art work. However, so far, Banksy has not enforced his copyright, the likely reasons for this being that to do so would require giving up his anonymity, and the requirement to file statements of use to enforce his copyright in the USA.

 

The essential function of a trade mark is to enable consumers to distinguish the goods or services of one undertaking from those of other undertakings. As the Flower Thrower image is reproduced widely on goods sold by different entities, Full Colour Black have argued that the image is not capable of being a trade mark. This is because it does not allow consumers to distinguish the goods originating from an undertaking under Banksy’s control and those originating from other companies. This is particularly true, as, prior to the launch of the shop in October 2019, no official Banksy merchandise existed. Furthermore, Full Colour Black argue that Banksy has registered the mark with no intention to genuinely use it, which amounts to bad faith, a further ground for invalidity.

 

It is unclear how selling trademarked merchandise is supposed to help Banksy’s case, as evidence of use has no effect in an invalidation action. The sale would be much more understandable if the action filed by Full Colour Black had been for revocation, as a trade mark can be revoked for non-use.

 

According to European trade mark law, a trade mark can be revoked, upon application to the European Union Intellectual Property Office,

 

“a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; […]”

 

(Article 58 of the EU Regulation No 2017/1001 of 14 June 2017)

 

In other words, as Banksy had not sold any goods to which the Flower Thrower trade mark was applied, and for which the trade mark was registered between August 2014 and August 2019, and there were no reasons preventing him from doing so, his Flower Thrower European trade mark became subject to revocation in August 2019 such that Full Colour Black could have applied for revocation from then on.

 

However, the law does also state that:

 

“no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;[…]”.

 

In short, the shop launch in October 2019 may have been an attempt by Banksy to pre-emptively invalidate any revocation action filed by Full Colour Black.

 

Such a revocation action would nevertheless remain admissible if Banksy only launched the shop after becoming aware of the possibility of a revocation action being filed against his trade mark and if such an action were filed within three months. Whether the sale of a few items for a limited period of time constituted genuine use of the mark is also an important question.

 

The current status on the European Union Intellectual Property Office register of Flower Thrower European trade mark 012575155 is “registration cancellation pending”, as the court determines the matter.

 

In a parallel move, Banksy’s legal team appear to have filed another representation of the Flower Thrower as a new European trade mark application in August 2019, European trade mark application 018118853. This new trade mark application is currently undergoing examination. If registered in due course, the sale of branded merchandise in October 2019 may well have been a move to demonstrate use of the image submitted in the newly-filed European trade mark application, rather than in response to the invalidation action. Of course, if the first Flower Thrower trade mark is invalidated (and therefore was never a valid registered trade mark), this may not bode well for the registration of the second Flower Thrower trade mark application, or indeed the registration of many other of Banksy’s image trade marks.

 

It will be interesting to see how this case develops further.

 

An important, practical conclusion for trade mark owners to draw from this case is to not wait five years before putting your trade mark to use. Otherwise, your trademark will become open to being revoked for non-use.

 

If you have not been using your mark in the last five years or more, the most advisable course of action in many cases would be to resume or start as soon as possible.

 

If in doubt, please do not hesitate to contact Albright IP for advice about your trade mark.

 

Bentley v Bentley – The Peril of New Markets

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On 1 November 2019, Judge Richard Hacon in the High Court finally settled a 20-year long dispute between one of the world’s most prestigious and recognizable car brands, and a small Manchester based UK clothing company.

 

The background of this case is as follows. Since circa 1987, the Defendant, Bentley Motors Limited (“Bentley Motors”), has been extending use of their famous ‘B-in-Wings’ Trade Mark to clothing and clothing accessories. The Claimant, Bentley 1962 Ltd (“Bentley Clothing”), a UK based manufacturer and retailer of clothing, began selling clothing under the BENTLEY Trade Mark in 1962. The two sellers coexisted without apparent contact until 1998, when Bentley Clothing approached Bentley Motors to offer a licence for the use of their Trade Mark. The terms of the licence were not agreed, and talks broke down.

 

The situation escalated in the early 2000’s when Bentley Motors began using their ‘B-in-Wings’ Trade Mark in conjunction with the word ‘Bentley’ (“the Combination Mark”) on clothing and clothing accessories.  Further contact was made between the parties but to no satisfactory conclusion. Over the course of the next few years, Bentley Motors increased their use of the Combination Mark on clothing, despite being on notice of Bentley Clothing’s rights in, and use of, their BENTLEY Trade Mark in the same marketplace. Between 2005 and 2017 the two parties faced off numerous times before the EU and UK Intellectual Property Offices. Despite the length and cost of the proceedings, Bentley Clothing could not reach an agreement with their heavyweight opponent, and as a consequence, Bentley Clothing were left with no other option but to issue High Court proceedings against Bentley Motors for Trade Mark infringement. The result being a success for Bentley Clothing in its allegation of infringement (with damages and costs to be established at a later date).

 

This case highlights the potential dangers of brand extension from one marketplace; where the proprietor’s Trade Mark is incredibly distinctive and well-known, into a new marketplace, where the average consumer may not recognize that the relevant goods are associated with that particular proprietor. The effect being potential confusion in the market, as shown in this present case. Bentley Motors could be forgiven for thinking that their brand was too powerful to ever be challenged, even in a commercially distant market from the one that they are currently associated with. The long and slow encroachment by Bentley Motors into the clothing sector, despite being on notice of the existence of Bentley Clothing’s prior rights, seems to demonstrate a reckless arrogance. This loss for Bentley Motors shows that even large, reputable Trade Mark proprietors must approach brand extension with caution. Stepping out of an established market sector into a new area comes with risks.

 

The risks associated with brand extension can be mitigated with careful and considered research into the landscape of the relevant new market (Trade Mark registries and simple online searches are a good place to start), and being open to a meaningful discussion with competitors at a business to business level when a potential for conflict is spotted, is paramount in avoiding lengthy battles. In this case, if the discussions between the parties had not been allowed to break down, and if Bentley Motors had taken seriously the protection afforded by Bentley Clothing’s Trade Marks, it seems very likely that this dispute could have been settled long before it reached the High Court.

 

The High Court’s Decision can be appealed, and it will be interesting the see if Bentley Motors will continue the fight. Whether it’s sports or Intellectual Property, the press and the public love a good underdog story, and this one appears to be no different.

 

Should you be interested in seeking advice on expanding the use of your Trade Mark, please contact us, and our highly experienced team of Trade Mark Attorneys at Albright IP will be pleased to advise you further.

 

Can I register this shape as a Trade Mark?

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Trade Mark Registration grants the owner a monopoly right over their Mark for an unlimited amount of time, so long as registration is renewed at each (10 year) anniversary.

 

When it comes to the registration of a 3D shape, arguably, the criteria for registrability is much more stringent, to avoid the same monopoly right being granted for a right that should more correctly be protected by a Design registration, with a limited life.

 

Aside from the usual requirements for registrability of a Trade Mark, a number of key hurdles are in place to limit the registrability of 3D shape Marks; these are listed below:

 

A 3D shape cannot be registered as a Trade Mark, if the shape:

 

  1. Arises from the inherent nature of the object/goods;
  2. Provides a technical function;
  3. Adds substantial value to the product.

 

Providing these objections can be overcome, a 3D shape can be an extremely valuable asset for an individual or company.

 

Case Study – The recent Jaguar Land Rover Case

 

Register a shape

 

Recently, the UKIPO rejected Jaguar Land Rover’s Trade Mark Applications for six 3D shapes, depicting their cars (pictured below), in a range of Classes of goods.

 

The grounds of the Oppositions were explored in detail in the UKIPO decision, which can be viewed here.

 

For the purposes of this article, we have focused upon two of the grounds pleaded:

  • the lack of inherent distinctiveness and
  • that the shape conferred substantial value to the goods

 

 (1) Lack of inherent distinctiveness

 

According to case law, for a shape Mark to be registrable, the shape must depart significantly from the norm or customs of the sector of products of that kind. This assessment is made through the eyes of average consumers, whose level of attention will vary, according to the nature of the goods in question.

 

The UKIPO identified that the shapes in question had some unusual aspects, namely “‘arrow shot’ rear windows and alpine side windows”. However, the configuration of the shape, as a whole, was important. Even with some unusual elements, the shape, as a whole, did not necessary depart from the norms or customs of the sector, and consequently, the Marks were found to be devoid of distinctive character in relation to passenger cars.

 

(2) Substantial value

Jaguar Land Rover pleaded that the boxy ‘slab-sided’ shapes were counter-functional, not necessary to achieve a technical result, and also, not features that consumers would be  looking for in competitors’ products.

 

The UKIPO expressed their uncertainty when deliberating whether the boxy ‘slab-sided’ shapes provided the ‘aesthetic appeal’, and it was merely noted that this was a ‘difficult and developing area of the law’, and the ground was ultimately left undecided.

 

Key Points from the UKIPO decision

 

  • When it comes to 3D Trade Mark Applications, Applicants will fare better the greater the degree that a shape constitutes a ‘significant departure from the norms or customs of the sector’. In this regard, mere elements and/or aspects of uniqueness or originality might not suffice, since it is the overall shape of the Mark which will be considered pertinent.

 

  • Unfortunately, the concept of substantial value still remains somewhat obscure. It is unclear whether this assessment should take into account or ignore the fact that consumers will recognise the shape. This raises doubt as to whether established brands, who have spent significant time and investment in creating brand recognition, will be jeopardising their ability to seek Trade Mark protection for a recognised product, if its appeal is only due to its ‘iconic’ shape/status in the mind of consumers. Hopefully, it will not take long for the ground of substantial value to be brought to the courts’ attention again, and perhaps the next time round, this will be properly addressed.

 

Summary

 

Overall, the UKIPO decision was not surprising. Given the potentially perpetual power of a Trade Mark registration, it remains in the interest of public policy to refuse registration of a 3D shape, where this would effectively grant a person or company, an endless monopoly over a shape that should be or become available for others to use in commerce.

 

If you would like further information or advice on registering 3D Trade Marks, or for any other Trade Mark advice, please contact the highly experienced team of Trade Mark Attorneys at Albright IP, who will be pleased to advise you further.

 

Carry On…Using Your Trade Mark!

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Branding Trade Mark

 

The “use it or lose it” principle with regards to trade mark registrations applies in numerous jurisdictions around the world. However, as highlighted in a recent decision of the UKIPO involving three Trade Marks relating to the British “Carry On” film series, it may not be as straightforward as one might think. For instance, how easy is it to prove valid use of a Trade Mark where that Mark is used under a licence, and in conjunction with another Mark?

 

This most recent “Carry On” caper begins in April 2018, whereby Brian Baker applied for revocation of three UK Trade Marks for “Carry On”, on the basis of non-use. ITV Studios Limited, proprietor of the “Carry On” Marks, was tasked with proving use of their Marks. The “Carry On” Marks were the subject of numerous internal and external licence agreements. After evaluating the evidence of use submitted by the proprietor, the Hearing Officer found in favour of Mr Baker. Two of the three Marks in question were invalidated in-part, with the remaining Mark being invalidated entirely.

 

On the face of it, you could be forgiven for thinking that proving actual use of a Trade Mark associated with such a widely known and popular film series would be easy to demonstrate. However, throughout the decision, reference is made to the inadequacy and insufficiency of the evidence put forward by the proprietor, with questions being raised as to the function of the “Carry On” Marks. For example, were they merely titular in nature? Or did they indeed indicate the origin of the goods and services in question? Further to this, the Hearing Officer was not satisfied with the proprietor’s evidence in displaying that their Mark indicated a single trade source. That is, on the end products, the Marks were used alongside a second mark, namely another Mark belonging to the proprietor, the ‘ITV Studios Logo’. This is despite the advertisements mentioning the licence arrangements (albeit in small print). The proprietor’s use of their Marks alongside other marks would not, in itself, have precluded the “Carry On” Marks from demonstrating valid use; however, by using their Mark alongside another Mark, the burden of proof in displaying valid use was increased. In this case, DVD sales of £6 million spanning 11 years, was not enough to show valid use of the “Carry On” Mark, whilst it was being used alongside the ITV Studios logo.

 

The difficulties encountered in this case appear to be more related to the proprietor’s poor accumulation and organisation of their evidence, rather than to the issue of multiple Marks appearing on the final product. It goes without saying that each case is decided on its own facts, but this decision does offer food for thought on the levels of use required, when a Mark is used alongside a second, or possibly multiple, Marks. This should serve as a wake-up call for rights holders, in-particular to those that own, and use, multiple Marks that are licensed to third parties or licensed within their own organisation. What can be taken away in this regard is that particular attention should be paid to the look of the packaging, for example: where on the packaging the Mark is located, and the size of the Mark in relation to any other Marks featured.

 

The decision of the Hearing Officer is now open to appeal, whether the proprietor will be able to sway the UKIPO during a second round of arguments remains to be seen. Regardless, the importance of documenting thorough, and concise, evidence of valid use throughout the lifecycle of the Trade Mark should not be underestimated.

 

Should you be interested in seeking advice on the use of your Trade Mark, please contact us, and our highly experienced team of Trade Mark Attorneys here at Albright IP, will be pleased to advise you further.

 

Eviction Day for China’s Trade Mark Squatting

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China’s Trade Mark Squatters

 

Adjust your Yuletide calendars to 1st November because Christmas is coming early this year.

 

On the 23rd April 2019, China’s legislators passed significant amendments to their Trade Mark legislation to combat the scourge of bad-faith Applications, more commonly known as ‘Trade Mark squatting’.

 

Many brand owners will be familiar with the term, ‘Trade Mark Squatting’ and understand it to be the act of pre-emptively registering a Trade Mark in an available territory, before the ‘rightful’ owner secures registration. In the most extreme circumstances, Trade Mark squatting can undermine a brand to the extent that territorial expansion is impossible, and the only option is to migrate to an alternative brand, with all the costs and loss of reputation that would be associated with that.

 

Most infamously associated with this problem is, China. Unfortunately, it is common for brand owners entering the Chinese market to find their Trade Marks have already been filed or registered by an unrelated third party. Sometimes the illegitimate filing will be lodged within hours of the genuine owner publicising their impending launch, or at the stage when commercial discussions are being held with local distributors. As the official fees are low, squatters are not deterred from filing hundreds of Trade Mark applications, in the hope of receiving a ransom from at least some of the aggrieved brand owners.

 

Moreover, nor are they deterred by the deep pockets or celebrity of their victims. For example, the following are brand names that have been filed/registered by parties unrelated to the genuine owners: Bentley, Bosch, Hugo Boss, Macy’s, Michael Jordan and Viagra. To name but a few!

 

Whilst there are options available for brand owners to wrestle their Marks free from squatters, they are often onerous and costly. So much so, that it is sometimes easier to give in to the squatter’s demands, or rebrand entirely.

 

HOWEVER, all is not lost. As a welcome first step in combatting this unfair practice, and to restore confidence in their system, China intends to implement new legislation that will bring about the rejection of any new Trade Mark applications filed without a bona fide intention to use. Essentially, new applications can be refused during examination, if the Applicant does not demonstrate sufficient proof that they intend to exploit their Mark in commerce. The expected result is a decrease in the amount of Trade Marks being ‘stolen’ in China.

 

How this will work in practice remains to be seen. At present, it is unclear what body of evidence will be required to prove an intention to use, and whether this will be adequately evaluated. However, combined with other proposed amendments to the Chinese practice, victims of Trade Mark squatters will have further opportunities to oppose or invalidate these bad-faith Registrations. For example, if a malicious Trade Mark application is not stopped during the examination phase, there is still hope it can be terminated during Opposition or post-Registration. Moreover, coupled with new penalties against bad-faith registrations, and very hefty fines for those found to have relied upon a bad-faith registration in litigation; the system underlying Trade Mark registration in China could soon be a much friendlier environment for foreign Applicants.

 

What this Means for Your Brand

 

Whether these new legislative changes are effective or not, companies interested in expanding their brand portfolio to China should always endeavour to obtain a Trade Mark registration as soon as possible. It will remain a ‘first come, first served’ country, i.e., securing the earliest possible filing date will continue to matter.

 

Whilst we remain cautiously optimistic that the new practice will provide recourse against Trade Mark squatters, it has been reported that Chinese Trade Mark examiners have on average only 10 minutes of inspection time per Application, and in 2018 over 7 million Applications were filed in China. With such a small window to reject bad-faith Applications, registering your brand in China as soon as possible is, and will likely always be, the best practice for protecting your brand. Get there first, and deny others the opportunity of beating you to it!

 

Albright IP Brexit Update: May 2019

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Brexit

 

At the time of writing, the UK Parliament is continuing to debate the terms upon which the United Kingdom and Northern Ireland will leave the European Union. In light of this, the deadline for the draft withdrawal Agreement to be signed, has been extended to 31 October 2019. Beyond this, providing ‘a deal’ is signed, a transition period will run up until end 2020.

 

Regardless of whether a modified version of the Withdrawal Agreement is negotiated, it is unlikely that the current draft proposals/terms relating to IP rights will change.

 

Trade Marks & Designs

 

Here are some key points to consider in anticipation of the post-Brexit proposals: 

 

Filing

  • All granted EUTM/RCD Registrations will be cloned at the effective date of Brexit; with the original filing/priority dates being preserved.
  • Any EUTM/RCD Applications pending at the effective date of Brexit will not be cloned; these will retain the original filing date/priority date, provided they are re-filed at the UKIPO within nine months of the effective date of Brexit. Thereafter, they will undergo fresh examination.
  • To ensure you will have rights in the EU and the UK after Brexit, file any new Applications in the EU and the UK going forwards from this point.
  • When filing IRs designating the EU; a separate UK designation should be added.

 

Renewals

  • Any EU renewals falling due prior to Brexit will encompass the UK.
  • Any EU renewals falling due after Brexit will not avoid payment of the renewal fee for a UK clone; this will require a separate renewal.

 

Use

  • For the future, use in the UK will not validate an EU Registration and vice versa. This will become relevant five years after grant, if vulnerability to cancellation for non-use is to be avoided.

 

Pending Proceedings

  • Closure of pending proceedings prior to the effective date of Brexit is to be recommended. As such, Cooling Off periods in pending EUIPO Oppositions should be brought to an end, and ongoing proceedings expediated.
  • Any ongoing EU Opposition and Invalidation proceedings based solely on a UK right, may be thrown out following Brexit.

 

Licenses and Security Interests

  • Licences or security interests recorded against an EUTM/RCD should also be recorded against its clone when this is created.

 

Contracts and Agreements

  • The terms of any pre-Brexit agreements should be reviewed, to ensure compliance following Brexit – opting-out or surrendering a clone might be necessary, as the existence of a UK Registration might be contravening earlier agreements.
  • Any clauses related to jurisdiction, governing law, and territory in existing contracts should be reviewed and amended to include the UK, as well as the EU, where appropriate.
  • Distribution agreements should also be reviewed in anticipation of changes to the exhaustion regime.

 

Patents

 

There will be no fundamental changes insofar as patents are concerned. Since the European Patent Office is not an EU Institution, and since the European Patent Convention is unrelated to EU law, practice will continue as usual.

 

Summary

 

As Brexit approaches, IP owners should be taking pro-active steps to ensure that their rights are well-managed and adequately protected. Whilst Patent owners and Applicants remain largely unaffected by the unfolding Brexit scenario, owners and Applicants of Trade Marks and Registered Designs should actively safeguard their interests, by paying attention to the action points outlined above.

 

Whatever happens in the lead-up to and indeed after Brexit, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most appropriate, most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.

Cadbury’s Purple Trade Marks

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Cadbury Trade Marks

Cadbury has faced yet another blow in their long-term battle in winning Trade Mark rights to their signature purple colour, used on its chocolate bars since the 1900s.

 

Last week (12 April 2019), the UK Intellectual Property Office delivered a mixed judgement following the Oppositions brought by Nestlé against three of Cadbury’s Trade Marks. The three Trade Marks in question were all for the colour purple, in shade Pantone 2685C, and the Marks all designated goods such as chocolate and drinking chocolate in Class 30.

 

The Marks in issue were the following:

  • UKTM No. 3019361 – Rejected
  • UKTM No. 3025822 – Rejected
  • UKTM No. 3019362 – Accepted

 

Pantone 2685C, as filed in the three Applications.

 

 1.) UKTM No. 3019361

 

This Application was accompanied with the following description:

 

[perfectpullquote align=”full” bordertop=”false” cite=”“the colour purple (Pantone 2685C), as shown on the form of the application, applied to the packaging of the goods”” link=”” color=”#550f9d” class=”” size=””][/perfectpullquote]

 

In its judgement, the IPO agreed with Nestlé’s arguments that the above description created substantial ambiguity, stating that it was potentially wide enough to cover the colour purple applied to packaging, ‘where other colours could also be present’, and that such colours had not been described or at all displayed in the Application. For this reason, the Mark was rejected.

 

2.) UKTM No. 3025822

 

This Application had the following description:

 

[perfectpullquote align=”full” bordertop=”false” cite=”the colour purple (Pantone 2685C), shown on the form of application” link=”” color=”#550f9d” class=”” size=””][/perfectpullquote]

 

The IPO considered this representation of this Mark to be arguably even more imprecise, as Cadbury did not explain how the colour sign was to be used at all. Whether the Mark was to be used on packaging, advertisement materials, or the products themselves, was undefined and indeterminate. The ambiguity was also said to have the ‘potential for the mark to cover at least two different signs’, i.e. purple chocolate, as well as purple packaging for the chocolate products. This Mark was therefore also rejected.

 

3.) UKTM No. 3019362

 

This Application was filed with the following description:

 

[perfectpullquote align=”full” bordertop=”false” cite=”The colour purple (Pantone 2685C), as shown on the form of the application, applied to the whole visible surface of the packaging of the goods” link=”” color=”#550f9d” class=”” size=””][/perfectpullquote]

 

This description was thought to be comparatively more precise, and sufficient in defining the scope of Application. Nestlé had argued that the purple colour would appear darker, depending on the medium of display, and also, that the description was ambiguous because the Mark would look different, depending on the shape of the packaging of the goods. This was rejected by the IPO. Instead, the IPO confirmed that the use of an internationally recognised colour code, which is both precise and durable, is wholly sufficient in satisfying the Trade Mark criteria of being ‘clear and precise’, by identifying a specific colour. The description filed was also held to be equally ‘clear and precise’.

 

Summary

 

The UKIPO decision adds to the recent defeat of Cadbury in the Court of Appeals in December last year, where the court dismissed Cadbury’s efforts to alter its purple Trade Mark.

 

In that case, Cadbury was seeking to amend the Registration of one of its earliest Trade Marks for their signature colour by shortening/narrowing its description. The amendment was pursued as a response to the outcome of another Opposition action, again, brought against them by their competitor, Nestlé. In that particular Opposition, the court rejected one of the purple Trade Marks owned by Cadbury, on grounds that the description filed was insufficiently precise.

 

Combined, the decision of December and the more recent decision last week has further opened opportunities for rivals to start using the signature colour for their own chocolates, or for knock-off brands to pass off their products as Cadbury’s. Either way, the colour protection wars have now clearly become a reality in the context of Trade Marks, not least applicable in the chocolate manufacturing industry. The fashion industry, for example, has recently seen a battle between Yves Saint Laurent and Christian Louboutin over Louboutin’s Trade Mark red sole, and we have also seen a battle across sectors, for the colour orange, between mobile network operator Orange, and airline company easyJet.

 

Although Cadbury still has existing valid Trade Marks in its signature colour, the message to take away from the recent decisions is clear – insofar as colour Marks are concerned, Applicant’s should always seek to file narrow descriptions, with a precise and defined scope, and irrespective of whether an Application relates to a single colour, or a colour combination.  Broadly speaking, where colour Marks are concerned, it seems wise to steer clear of any language which might leave room for flexibility, interpretation and/or ambiguity, and instead, opt for detailed language, which serves to systematically describe the exact distribution of colour/s, in relation to the medium where it is intended to be used.

Camborne Trevithick Day – 27th April 2019

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We are pleased to be supporting Camborne Trevithick Day on 27th April 2019.  This annual celebration commemorates Camborne’s most famous son, prolific inventor Richard Trevithick.  The first commercially useful steam engine was developed in 1712 by Thomas Newcomen, and improved by James Watt and others throughout the 18th century.  By the time Richard Trevithick began his professional career steam was already powering the industrial revolution – but Trevithick made critical improvements to efficiency and demonstrated the first working steam locomotive.  This laid the groundwork for George Stephenson’s famous locomotives and the development of the railway in the UK and around the world.

Full details of the event, including how to get there and where to park, may be found at the organiser’s website http://trevithickday.org.uk/.  Perhaps you will be inspired – as Cornwall’s newest patent attorney firm, we certainly hope that Richard Trevithick is not the last great inventor from Cambourne!

In the meantime, we thought it would be interesting to look at the legal side of Trevithick’s career.

Trevithick seems to have spent rather a lot of time trying to navigate patent law.  Initially, it was someone else’s patents – those of James Watt – which proved to be a thorn in Trevithick’s side.  As long ago as 1624, the law had set a maximum term for patents, but Watt managed to get an Act of Parliament to extend his protection for “A method of lessening the consumption of steam in steam engines” until 1800.  The nub of Watt’s patent was the separate condenser, something which led to improved fuel economy over the old Newcomen engine.

Towards the end of its extended term, it appears that Watt’s patent was being widely ignored in Cornwall, with various mining engineers adding separate condensers to old Newcomen engines.  Watt sued and, in theory at least, eventually won.

The expiry of the Watt patent in 1800, coinciding with Trevithick’s own pioneering use of high-pressure steam, represented an opportunity, and his experience with Watt had no doubt left an impression. There is a story – probably completely unverifiable – that on being served with an injunction Trevithick held Watt’s lawyer upside-down over a mineshaft.  Trevithick evidently did not gracefully accept defeat but had surely learned the power of the patent.  What’s more, the litigation over Watt’s patent lead to the important legal principle that a valid patent could be granted for an improvement to a known machine. Trevithick could turn this to his advantage.

After refining his high-pressure engine, Trevithick naturally sought to obtain his own patent.  In January 1802, with his cousin and business partner Andrew Vivian, Trevithick went to London and asked around for someone who knew how to get one.  This does not seem to have been an easy job and required personal attendance at multiple offices.  Trevithick was a busy man, visiting Merthyr Tydfil and Coalbrookdale in the same year, so it was Vivian who took his place in London and in March 1802 wrote to report that he “must call at the Patent Office for the great knob of wax”.  In those days there was no actual examination of a patent application to check that it was for a new invention, but the Patent Office made up for this in impressive bureaucracy.  Nowadays you get the photocopied signature of a middling civil servant in place of that great knob of wax.

Trevithick also took Watt’s lead when it came to charging for the use of his now patented invention.  Like Watt, Trevithick agreed with mine owners that he would be paid a percentage of the money saved on coal by the use of his modern and efficient high-pressure engines.  Unfortunately, after returning from his tour of the Americas, Trevithick found that his customers had simply stopped paying, variously claiming that they thought the patent had expired, or that it did not cover some variation in the boiler design. Trevithick managed to negotiate with a few, but – unlike Watt this time – did not pursue the matter in Court.

Trevithick nevertheless filed for patents throughout his career, ending up with fourteen to his name.  His first patent, of 1802, was numbered GB2599, in a sequence that starts with GB1 of 1617.  By the time Trevithick had obtained his last patent in the year before his death, the number was at GB6308.  More patents had been filed in Trevithick’s career than in the 200 years previous.  The age of technology had certainly arrived.

Illustration from Trevithick’s 1802 patent specification

Victory for ‘Peppa Pig’ – Peppa’s win on Trade Mark Invalidity Claim

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The owners of a hugely popular British animated series, ‘Peppa Pig’, have successfully won their bid to invalidate a Mark, arguably evocative of their well-known ‘Peppa Pig’ character.

 

Peppa Pig first graced our TV screens back in May 2004, and has since become one of the most well-known, and most popular British children’s TV programmes of all time. The rise of ‘Peppa Pig’ has, quite naturally, created a multitude of extremely lucrative commercial opportunities for the owners, Entertainment One and Astley Baker, who are now appearing to be more actively enforcing and policing their Peppa Pig-related IP rights than ever before.

 

One of the most recent cases involving ‘Peppa Pig’ has been the invalidation claim brought against an EU Mark filed for by Xianhao Pan. The invalidity claim perhaps comes as no surprise when one views the Marks in issue side-by-side, as displayed below:

 

Xianhao Pan’s ‘TOBBIA’ Mark The ‘Peppa Pig’ Mark

 

Background

 

In 2013, Xianhao Pan was granted an EUTM for the ‘TOBBIA’ Mark in Class 25, for clothing, footwear and headgear. The Mark is in the colours, pink, red, yellow and blue, and is said to depict a ‘tapir head on a human body’, with the words ‘TOBBIA’ in bold and black text underneath.

 

This was argued to be confusingly similar to the Peppa Pig creators’ earlier black and white mark, registered for the same goods. The earlier Trade Mark depicted the famous cartoon character, Peppa, with the words ‘PEPPA PIG’ underneath, in black and bold text.

 

When the case was first heard by the EUIPO Cancellation Division, rather controversially, they ruled that the two Marks were not confusingly similar, upholding the validity of the ‘TOBBIA’ Mark. On appeal in 2017, a U-Turn decision was made, and the ‘TOBBIA’ Mark was invalidated on the finding that the Marks were visually, phonetically and conceptually similar.

 

The General Court’s Decision

 

Following a round of appeals before the Board of Appeals of the EUIPO, the General Court concluded earlier today, 21 March 2019, the invalidity of the ‘TOBBIA’ Mark. Despite noting the differences in terms of the colours of the Marks in issue, it ruled that these differences, considered overall, did not outweigh the similarities.

 

In the appeal to the General Court, the owner of the ‘TOBBIA’ Mark argued that the Board of Appeals had failed to state the reasons for going against the first decision by the Cancellation division, but the General Court was quick to confirm that it was sufficient for the Board of Appeals to only state the reasons on which its own decision is based, and that an obligation did not extend towards identifying the incorrect aspects of the Cancellation Division’s decision.

 

Undoubtedly in agreement with the preceding Board of Appeals’ decisions, it was confirmed that ‘the average consumer normally perceives a mark as a whole’, without engaging in lengthy analysis as to the various details, and therefore, it was right to find that the Marks were visually similar overall.

 

Most interestingly, the General Court also remarked approval of the Board of Appeals’ previous assessment, which found a certain correlation between the word ‘tobbia’ and ‘peppa’, in the sense that both words contain the reiteration of a strong consonant, namely, the ‘B’ in ‘tobbia’ and the ‘P’ in ‘peppa’.  Although not verbally similar therefore, it seems that there was a consensus that the structural correlation and extremely similar graphical elements in the Marks rendered an impression of similarity in the minds of the consumer, who might consequentially come to view the Marks, and also the respective goods, as being related in some way.

 

Despite assertions from the owner of the Mark that the ‘TOBBIA’ Mark depicted a tapir, rather than a pig, the court considered it unlikely that the public would at all associate the Mark with a tapir, consequently finding there to be conceptual identity in the Marks, in the sense that they both represented a pig.

 

Consequently, when considering the overall similarities from a visual, phonetic and conceptual perspective, the invalidity decision was upheld.

 

Conclusion

 

Whilst today’s decision may seem an overly generous stretch in favour of the creators of Peppa Pig, at least, when it comes to the court’s apparent approval of the ‘correlation’ between the ‘strong consonant’ elements of the Marks, the decision of the court does not appear all that surprising. A side-to-side comparison certainly highlights the ‘TOBBIA’ Mark’s eerie resemblance, highly reminiscent of the famous pig character. Given ‘Peppa Pig’s reputation, there is certainly a likelihood that consumers might come to perceive the Marks, and the respective goods, as being somehow associated and/or connected to the Peppa Pig franchise. Like it or not, what would have undoubtedly been interesting in the court’s decision would have been a more thorough discussion, or at least, a reference to the previous grounds raised by the owner of the ‘Peppa Pig’ Mark, specifically, the conflicts with the earlier copyright.

 

Albright IP Brexit update: May 2018

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The United Kingdom is scheduled to leave the European Union on the 29 March 2019. Whilst the precise terms of exit are yet to be agreed, in March 2018, the European Commission and the UK published the first draft of a Withdrawal Agreement. This is the most comprehensive document to date, although each of the proposals are open to further revision.

 

The Withdrawal Agreement touches on the post-Brexit administration and scope of EU intellectual property rights, including EU Trade Marks (EUTMs) and Registered Community Designs (RCDs).

 

The proposed Transition Period:

 

The Withdrawal Agreement provides that the transition period will end on 31 December 2020. It is envisaged that during the transition period i.e. from 29 March 2019 to 31 December 2020, the applicable European Union law will still be effective in the United Kingdom. Consequently, EUTM and RCD rights will continue to be valid and enforceable in the United Kingdom until at least 31 December 2020.

 

In addition, UK IP practitioners will retain their rights of representation before the European Intellectual Property Office (EUIPO) until at least 31 December 2020.

 

Points of agreement:

 

In terms of existing EU intellectual property rights, both sides have voiced the intention to create equivalent “cloned” UK rights, with the same filing, and priority dates and with no examination required. The proviso is that the rights in question are granted or registered before the end of the prescribed transition period.

 

“The holder of any of the following intellectual property rights [EUTMs/RCDs/Plant Variety rights] which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom.”

 

Points of uncertainty:



What currently remains unclear, is the administrative procedures that will be put in place to transform and/or extend EU IP rights by the end of the transition period.

 

For trade mark rights that are pending at the end of the transition period, the owners will be allowed nine months to request a transfer and re-examination to the UK IPO, in order to retain the original filing and/or priority dates. This is very likely to incur an additional fee, and an inevitable delay in protection being granted.

 

A separate issue also to be addressed is the entitlement to representation at the EUIPO for UK practitioners, in a manner that will give reassurance to UK based rights-holders that they can continue to trust in the professional relationships that have been established.

 

The draft agreement remains silent in respect of unregistered designs. At present, the UKUDR is not a comparable replacement for the European UCD.

 

Summary:



For IP rights holders, as the months towards Brexit and the end of transition pass, seeking to secure separate UK and EU trade mark and design protection from the outset, is recommended. Whilst there are some reassurances that granted rights will be ‘cloned’, there is currently no parallel comfort being offered for pending applications.

 

Whatever the outcome of the Brexit negotiations, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.

 

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