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The Effect of the Coronavirus on Official Deadlines

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Intellectual Property Covid-19

 

National and regional intellectual property offices are, like all of us, feeling the effects of the on-going Covid-19 outbreak. Some of them have now extended deadlines or put into place corresponding measures which are aimed at helping you to weather the storm without losing your rights.

 

We remain very much open for business as usual, but here is a brief overview of the positions being adopted by the UK Intellectual Property Office (UK IPO), the European Patent Office (EPO), the EU Intellectual Property Office (EUIPO), and the World Intellectual Property Organization (WIPO).

 

UK IPO

 

The UK IPO has announced that all deadlines for UK patents, designs, trademarks, supplementary protection certificates, and applications for any of those rights, have been indefinitely extended. This applies to deadlines from 24th March 2020 to an unspecified future date.

 

It is important to note that this extension applies to UK rights only. Any applications for overseas rights made under international or regional agreements must still be made by the relevant deadlines.

 

The situation will be reviewed on 17th April 2020. The UK IPO indicates that there will be a two-week notice period before the extension period ends, so the earliest that any extended deadlines may fall would be 1st May 2020.

 

EPO

 

The EPO has announced that deadlines for time limits expiring on or after 15th March 2020 are extended until at least 17th April 2020. Oral proceedings scheduled during the same period have been suspended until further notice, unless video-conferencing has already been arranged.

 

It should be noted that the extensions apply to parties which are already party to proceedings under the European Patent Convention (EPC) or Patent Co-operation Treaty (PCT).

 

For opposition filing deadlines, it should be noted that the EPO has stated that the current situation qualifies as a ‘general dislocation’ under rule 134(2) EPC. Therefore, this should also extend the deadline for filing an opposition to a European patent until at least 17th April 2020, assuming that the opposition deadline had not already expired prior to 15th March 2020.

 

The EPO has also pointed out that the extension does not apply to some things such as the deadline for filing a divisional application and the deadline for making written submissions before oral proceedings. The same notice indicates that renewal fees falling due on 31st March 2020 can be paid until 17th April 2020, and that such renewal fees can for now be paid at the current rate rather than the increased rates coming into force from 1st April 2020.

 

EUIPO

 

The EUIPO has announced that deadlines expiring between 9th March 2020 and 30th April 2020 have been extended to 1st May 2020 (in practice, 4th May 2020, since 1st May is a public holiday followed by a weekend).

 

This specifically relates to deadlines for trademark or design matters, but does not cover deadlines which relate to other matters or which relate to another authority, e.g. bringing an action before the General Court against a Board of Appeal decision.

 

WIPO

 

The WIPO is still processing international patent, design and trademark applications as normal. The latest newsletter contains some advice on possible remedies in the event that a PCT deadline is missed for an international patent application.

 

If you are nearing the end of a priority filing period (12 months from first filing a patent application, or 6 months from first filing a design or trademark application), then the Paris Convention only allows for an extension to the priority period where the national Office was closed to the filing of applications. Please click the relevant links here for further details relating to the PCT, Hague System and Madrid System procedures as affected by the Covid-19 situation.

 

For the time being, the UK IPO, EPO, EUIPO and WIPO are still accepting applications. So, if you plan to file a national/regional application, a PCT international patent application, a Hague System international design application, or a Madrid System international trademark application through one of those Offices, it is still necessary to file overseas applications by the priority deadline.

 

The situation for all of the above Offices is still evolving, but we will endeavour to continue to provide up-to-date information on our website. If you have a query relating to a specific case, please do not hesitate to contact us for further information.

The Invention of Rules

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BBC

 

Intellectual Property can be a difficult topic to publicize, so credit is due to the BBC for continuing to keep the fundamentals of the patent system in the public (Dragon’s) eye year after year. Auntie Beeb’s mission statement is to inform, educate and entertain, and for such a weighty topic, you would expect the home of respected heavyweights such as Attenborough, Bragg, and O’Carroll to be firmly in favour of educating the public and bringing the subject to the attention of younger consumers.

 

Bitesize

 

BBC Bitesize is an online study support platform for school-age students in the UK, and contains lots of articles that delve into interesting titbits from the news. I, as a mostly grown man, therefore was naturally drawn to a blog post entitled ‘How do you invent a new sport?’. The article itself is a brief discussion of the history of Bossaball, a mix of football, volleyball and extreme gymnastics.

 

Unfortunately, the blog has a rather fuzzy approach to the fundamentals of IP, which will no doubt encourage the reader towards some of the more common misconceptions about the difference between patent, trademark and copyright law.

 

The laws of invention

 

“Creating a sport isn’t just about building a player base – patents also comes into it. A spokesperson for the Intellectual Property Office (IPO) explained to BBC Bitesize that the name of a sport can be trademarked in the UK – recent examples are Zumba, Boxercise and Spinning. Rules of the game can’t be trademarked but they can be protected by copyright, and revisiting them over time also keeps them in copyright.”

 

There is a lot to unpack here.

 

  • The focus of the is on trademarks. The names of the new sports referenced are protected by Registered Trademarks. This is fine – a trademark protects branding or trading stylisation – but these are definitively not

 

  • The rules of a game cannot be trademarked, but this isn’t really the point. What the author wants to say here is that the rules of a game cannot be patented (in the UK). Rules for a game are explicitly excluded from patentability. A patent can protect the method of a technical invention (such as a method of manufacture), but the rules of a game are deemed non-technical in nature.

 

  • The rules of a game can be copyrighted, in the sense that the literal wording of the rules codifying the game fall under the scope of copyright protection, if original. Copyright cannot protect the underlying concept of a game.

 

The confusion between trademarking and patenting is reiterated in the next paragraph:

 

“Anything unique to a new sport in terms of equipment can be trademarked. The IPO has seen patents registered for wetsuit technology linked to triathlons, with many more for equipment linked to rugby and cycling. The UK is also number one in Europe for patents regarding sports-adapted wheelchairs used in the Paralympics and other events.”

 

In this instance, I believe the author is referring to trademarks when they mean patents. The name of a piece of equipment can be trademarked, but the unique (and inventive) aspects of a product can be patented.

 

A cursory search of the patent databases finds a single British patent application to a ‘sports wheelchair’, GB2130154, which dates back to the 1980’s. It’s not clear where the assertion of the UK’s pre-eminence in the sports-adapted wheelchair technology sector arises from, but I for one would be interested to know more!

 

Bossaball

 

Potentially, some of the confusion arises from the conversation with Filip Eyckman, the creator of Bossaball. He acknowledges a tricky past with the enforcement of his IP over the years.

 

The Bossaball website directs the reader towards a page entitled ‘Patents’, which recites the following:

 

“Bossaball Sports S.L. is the owner of all rights worldwide. Bossaball Sports S.L. is protected through international copyright and additional trademark and design patents worldwide.”

 

Herein lies another common misconception about IP – the existence of the ‘design patent’.

 

A design subsists in the aesthetic (i.e. non-functional) aspects of a product. Bossaball Sports S.L. do not appear to have any patents (called utility patents in some jurisdictions, such as the US), but instead have design patents or registrations.

 

As such, Bossaball Sports S.L. IP rights portfolio would appear to comprise the following (in at least some territories):

 

  • Protection, via a design patent/registration, over the aesthetic appearance of the inflatable court, upon which Bossaball is played.

 

  • Protection, via a trademark registration, to at least the Bossaball name.

 

  • Protection, via copyright, to the written rules of the Bossaball game.

 

What Bossaball can’t do, it would seem, is prevent the unauthorised use of a game played on an inflatable court which looks different to that protected by the design patent/registration, under a different name, and not utilising a copy of the rules created for Bossaball.

 

So how do you protect a game?

 

Whilst it may seem as though Bossaball Sports S.L. have vulnerabilities in their portfolio (i.e. potential avenues for copycats to arise), the vulnerabilities are narrow in scope. The protection sought by Bossaball Sports S.L. is actually a textbook case as to how to obtain some sort of protection for a game which otherwise cannot be patented.

 

  1. Obtain design (or, if feasible, patent) protection for any equipment or paraphernalia in the game;

 

  1. Register the game name as a trademark, and build up brand awareness to improve the strength of the trademark; and

 

  1. Ensure that you have good and detailed records of copyrightable material, so as to permit enforcement of any rights available against direct copycats.

 

What you shouldn’t do is mark your concept as patented or patent pending, when you only have trademark to the brand. This is illegal, and highlights why it’s important to be selective in the terminology you use in the IP arena. So I tip my hat to BBC Bitesize for raising these points to the wider audience, whilst giving them a digital slap on the wrists for using some misleading phrasing!

 

Albright IP – Covid 19 update – 17 March 2020

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Covid 19

 

We should like to assure our clients, colleagues and friends that we are all in good health.

 

  • We are open for new and existing business, we can meet your IP deadlines and our office is open for telephone enquiries.

 

Most of our staff are remote working in line with UK Government advice.

 

  • This week the EPO extended deadline dates to 17 April 2020 and the EUIPO pushed back deadline dates to 1 May 2020 for time limits falling within 9 March 2020 and 30 April 2020. Currently UK deadlines have not been extended.

 

  • It is worth bearing in mind that EPO fees are increasing by around 4-5% on 1 April 2020. You may want to file in March to beat the fee increases.

 

  • Please do continue to send us your instructions, when requested, so that we can serve your requirements.

 

Thank you. In these unprecedented times, we wish you, your colleagues and families, good health.

How To Make Competitors Aware Of Your IP

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Competitors of intellectual Property

 

It is a question that we are frequently asked: ‘I have patents and trademarks, so how do I put a notice on my products and website to notify competitors of my intellectual property rights?’

 

Whilst driving home from a recent ski trip with my family, I noticed the following on a cardboard sleeve used by Starbucks® to hold my piping hot triple-shot cappuccino:

 

Competitors of intellectual Property

 

Curiosity took me to the stated page: www.lbpmfg.com/patents/, and I liked the way this was laid out.

 

The company’s rights are clearly displayed in a table, with a picture of the product, and the trademarked name …

Competitors of intellectual Property

 

… followed by the associated patent rights:

 

Competitors of intellectual Property

 

If curious, the granted patent rights can be viewed at US8,529,723 and US9,056,712.

 

(Interestingly, their associated right US9,580,228, granted in 2017, is not listed on their web page, so it does seem that LBP Manufacturing are behind with their updates.)

 

Undertaking a manufacturing run, whilst having pending patent and trademark applications, costs money to reprint or retool once your applications are finally allowed and become granted or registered rights. This usually results in a new ‘grant’ number, particularly for patent rights.

 

To this end, having a single website address which can be referred to on your products and literature, and which can be easily updated as new rights are won and older rights lapse, will save time and costs downstream.

 

Why Do I Want To Notify Others Of My IP Rights?

 

Let’s look briefly at the UK, and also the USA to answer this question.

 

In the UK, there are provisions for at least a partial defence against infringement if the infringer can argue that they were ignorant of the existence of the patent or similar rights. See ‘Section 62(1)’ on the UKIPO’s website.

 

The onus is on the infringer to prove that they were not aware.

 

Being clearly directed to a list of your IP rights by a statement on your product or associated literature makes this defence difficult or impossible to use.

 

There are no specific requirements, under UK patent law, for a patent owner to state their rights publicly (but why wouldn’t you? You have paid for the asset, why not use it to protect your market?). Under US patent law, legal damages will not accrue until an effective notice of rights is given.

 

35 USC 287(a), since the introduction of the America Invents Act (AIA) in 2011, gives the option of ‘virtual’ marking to avoid the necessity of physical marking. Virtual marking is as shown above, where LBP Manufacturing has put a statement on their cardboard sleeve of ‘Patent’ followed by their internet address for a web page that outlines a complete and up-to-date list of associated patent rights. See Page L-67 of the MPEP from the USPTO for more specifics.

 

As alluded to above, since you have paid to stake a claim to your intellectual property, why would you not make the best use of the assets? Use the rights as a ‘keep off the grass’ sign to deter your competitors.

 

That’s the way, a-hah a-hah, Joe Lycett

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Trade Mark enforcement

 

In these bewildering times, we find ourselves in (Brexit, COVID-19, Brexit again), fortune occasionally sees fit to part the gloom, and serve up some much-needed levity. Enter Hugo Boss. Not the designer clothing company one might expect but rather, the comedian formerly known as Joe Lycett.

 

On 1 March 2020, Hugo Boss, the man (hereafter “Boss”), tweeted the following in protest against the Trade Mark enforcement practices of Hugo Boss, the brand (hereafter “Hugo Boss”):

 

So [Hugo Boss] (who turnover approx $2.7bn a year) have sent cease & desist letters to a number of small businesses & charities who use the word ‘BOSS’ or similar, including a small brewery in Swansea, costing them thousands in legal fees and rebranding.

 

It’s clear that @[Hugo Boss] HATES people using their name. Unfortunately for them this week I legally changed my name by deed poll and I am now officially known as Hugo Boss. All future statements from me are not from Joe Lycett but Hugo Boss. Enjoy.

 

As one might expect of such an unorthodox protest, Boss’ efforts were an immediate viral sensation, spawning tens of thousands of retweets, and extensive news coverage by the British media. The reaction provides an insight into an aspect of Trade Mark enforcement that should not be overlooked; a Trade Mark owner should not assume that their rights confer exclusive, and inexhaustible rights no matter what the context.

 

Like recent PR nightmares for McDonald’s, Red Bull and Sky, Hugo Boss is another in an ever-growing list of toppled Goliaths whose enforcement tactics have caught the wrath of the public.

 

From the perspective of responsible Trade Mark maintenance, Hugo Boss’ actions are understandable; they would wish to avoid their rights becoming diluted. At its most extreme, dilution can result in irreparable damage to a company’s reputation if, for example, the goods and/or services covered by the conflicting Trade Mark are of inferior quality.

 

In the ‘small brewery in Swansea’ case mentioned in Boss’ tweet, Hugo Boss took action against two Applications by Boss Brewing Co for Marks that were ostensibly similar in terms of both Mark and goods and services. On paper at least, this seemed to be a prudent move to secure the exclusivity of their Trade Mark rights.

 

However, where one can go wrong is in failing to also consider consumer perception of a conflict, even if the conflict seems clear ‘on paper’.

 

In Hugo Boss v Boss Brewing Co, it was unlikely consumers would ever confuse the activities of a designer clothing company with those of a brewery. Thus, Hugo Boss’ legitimate actions were perceived by the public as being so heavy-handed, that it has led to this most unusual of protests.

 

Consequently, it is important that Trade Mark owners consider how they conduct the enforcement of their rights. Blanket, uncompromising enforcement is not always the best method of protecting a Trade Mark, especially when approaching individuals or small companies that may be unfamiliar with Trade Mark practice, and proceedings.

 

Here at Albright IP, we endeavour to offer pragmatic commercial advice when dealing with Trade Mark infringement. Should you require, our excellent Trade Mark team are always happy to provide assistance.

 

Brexit update – 31 January 2020

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Brexit - 31 January 2020

 

The UK formally leaves the EU today on, 31 January 2020. A transition period will run up until the end of 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. A summary of these is set out below.

 

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 all new Applications in the EU and the UK.

• 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.

 

Licences 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. 

New Year, New IP

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New IP

 

Happy New Year from Albright IP. As we welcome in a new decade, we want to wish all our clients, colleagues and partners around the world a prosperous 2020.

 

At the turn of the last decade we were just starting out with six staff, today we have expanded not only in size to a team of 30 people split across two patent teams and a trade mark team, but also in the considerable development in our sector expertise.

 

Across our teams we now have technical expertise in sectors such as Bio Medical, Mechanical Engineering, AI and Software, Physical Chemistry and the Life Sciences to name but a few!

 

Our trade mark team has grown to six and was ranked, last year, at number 20 for the top 100 UK trade mark filers by the Chartered Institute of Trade Mark Attorneys (CITMA), beating many much larger firms.

 

Much like the ‘roaring twenties’ we hope that this new decade continues to see great advances in technology and economic growth and we are very much looking forward to supporting our clients and partners across the globe to secure their IP and grow their businesses over the coming decade.

 

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.

 

Has Sky been grounded? – Sky v Skykick

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Sky v Skykick

 

The recently published Opinion of the Attorney-General in the Sky v Skykick case, has provided some much-needed clarity on the legitimacy of wide-ranging specifications, and the associated issue of ‘bad faith’ being pleaded in trade mark invalidation proceedings.

 

Should the CJEU go on to adopt the AG’s Opinion, the subsequent changes in European law and practice, will have an enormous impact on the scope of protection that a trade mark can be granted a monopoly for. With an expected tightening of the rules, now is a prime opportunity for trade mark owners to assess the suitability of their specifications, and tighten their filing practice.

 

Background

 

In 2018, SkyKick successfully countered a claim of trade mark infringement against broadcasting juggernaut Sky PLC. Despite the clear similarities of the marks involved (see below), the presiding judge, Justice Arnold, ruled in favour of SkyKick.

 

Sky’s Marks The Signs Complained of
SKY

UKTM No. 2500604

EUTM Nos. 5298112 & 6870992

EUTM No. 3203619

EUTM No. 3166352
Sky v SkyKick [2018]

 

SkyKick had argued that:

 

  1. Sky’s specifications were insufficiently clear or precise.
  2. Sky’s specifications were filed in bad faith because they contained terms Sky clearly had no discernible interest or rationale in pursuing.

 

SkyKick’s arguments had highlighted an ambiguity of European legislation that allowed companies like Sky to operate an aggressive enforcement strategy; namely, lack of clarity on whether a trade mark can be declared as having been filed in bad faith (and thus subject to invalidation) if the registered goods and services are wholly unrelated to core interests of the applicant.

 

In filing incredibly broad specifications, some covering 8,000 words of goods and services, Sky had enjoyed years of success in its infringement claims against marks containing the word element ‘SKY’, regardless of the distance in goods/services of the later marks relative to Sky’s actual commercial interests.

 

Sky, by its own admission, is a direct-to-consumer media and entertainment company [1] and thus, unsurprisingly, Justice Arnold questioned whether its clear lack of intention to use (i.e. bad faith) constituted grounds for invalidation. This question, and four others, were referred by Justice Arnold to the CJEU for clarity, summarising that “if the [Sky] Trade Marks are valid, then there is a likelihood of confusion” [2].

 

AG Opinion

 

On 16 October 2019, Attorney-General Tanchev’s Opinion in response to Justice Arnold’s questions was published. The questions and answers (in summary) were as follows:

 

  1. Is insufficient clarity and precision of the specification a ground for invalidity in and of itself?

 

 

The AG answered in the negative, stating “there is no provision in any of the relevant legislation for [invalidation] … on the ground that some or all of the terms in the specification of goods or services lack sufficient clarity and precision” [3].

 

 

 

  1. May the requirement of clarity and precision be connected with a ground for invalidity that is laid down by the EU legislation?

 

The AG concluded that whilst there are no legal provisions for invalidation on the basis of a specification lacking clarity or precision, specifications could instead be found invalid where this is a breach of public policy/order i.e. bad faith. In other words, because Sky’s specifications confer the holder such a wide monopoly, broad terms such as the aforementioned “computer services” should be declared invalid to prevent repression of market competition.

 

  • What is the scope of bad faith?

 

The AG concluded the legal requirement preventing application of a mark in ‘bad faith’ was intended to encompass and broaden the previous provision, an explicit bona fide intention to use. Therefore, a broad specification, where there is a clear lack of intention to use but for the purpose of blocking third parties from using an identical or similar mark, falls within ‘bad faith’.

 

  1. What are the consequences of bad faith where bad faith only concerns some of the goods and services covered by a registration?

 

A relief to broad filers, the AG did not find that the existence of bad faith within a specification constituted invalidation of a mark in its entirety. Rather, “where the ground for invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark is to be declared invalid as regards those goods or services only” [4].

 

  1. Is UK law regarding intention to use compatible with EU law?

 

Yes. Specifically, the AG found that the UK’s requirement that applicants declare they are, or will be, using their mark across the entirety of their specification is compatible with EU law. However, failure to live up to such a declaration would not be ‘the sole basis for a finding of bad faith’ [5].

 

Conclusion

 

As stated, if the CJEU adopts the positions expressed in the AG’s Opinion, trade mark owners will need to review carefully the contents of their specifications and consider whether they are fit for purpose. Failure to do so could ultimately be costly, even beyond registration.

 

Consequently, we recommend that our clients:

 

  • Avoid extending protection beyond the list of goods and services that are realistically likely to be provided, when filing a new trade mark application.

 

  • Avoid the temptation of filing for a list of speculative goods and services, that may be introduced at a future date, simply as a way of gaining ‘more value’ out of an application. Ultimately, instructing a second application if and when use expands to other areas, will be far more useful and cost effective, than fighting an invalidation action that could result in having goods/services struck through.

 

  • Do contact us should you require advice on how to best protect your trade marks. As always, our highly experienced team of Attorneys will be pleased to advise further, and share their expertise in the drafting of an appropriate specification.

 

In view of the possible changes to come, we will be monitoring for the publication of the CJEU’s final decision, and provide an update when this is delivered.

 

[1] www.skygroup.sky [Date Accessed: 06 November 2019]

[2] Sky Plc & Ors v Skykick UK Ltd & Anor [2018] EWHC 155 (Ch) (06 February 2018). Paragraph 358.

[3] Opinion of Advocate Tanchev [2019] Case C‑371/18 (16 October 2019). Paragraph 39.

[4] AG Opinion. Paragraph 127.

[5] AG Opinion. Paragraph 143.

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.

 

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