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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.

 

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.

 

Mitigating the Effects of Prior Unpublished Patent Applications

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Prior art searching is one of the most difficult things to get right in the IP sector, since any search is open-ended. How do you know whether there is a knockout document which discloses something identical to your invention that has just not been found, or whether it just does not exist?

 

This issue is compounded for patents by the publication cycle. Almost all patent applications are secret for the first eighteen months of their lives, and therefore have the potential to act against later-filed applications.

 

The prospective patentee is therefore presented with an unpleasant uncertainty – even the most thorough search cannot guarantee validity if unknown non-public prior art is available. Given that preparing and filing a patent application can involve a significant outlay of initial resources for start-ups, this can be very off-putting.

 

The British Process

 

It is worth, at this stage, outlining just what happens to a British patent application once filed.

 

From the date on which the application is filed, the claimed invention is ‘patent pending’. However, only a few morsels of information are visible on the UK Intellectual Property Office Register.

 

Provided the interim steps are taken, in particular, submitting formalised drawings suitable for publication, then the application will publish in full eighteen months from the date of filing or priority, which allows third parties to inspect the content of the application.

 

Critically, though, the first person (or their successor) to apply for a patent to an invention is the only person to whom the patent can be granted. This is known as the ‘first-to-file’ system, rather than ‘first-to-invent’.

 

Double Patenting

 

This secrecy creates an inherent problem. A patent is a monopoly right, but since the applications are secret when filed, it is feasible that lots of people could independently arrive upon the same idea, and want to patent it before any of the pending applications become public.

 

To offset this issue, prior-filed or prior-priority but unpublished patent applications are deemed relevant to the patentability of later-filed applications, for the purposes of novelty (i.e. uniqueness) only, provided that the application was filed in the same jurisdiction. Such a document cannot be cited against the inventiveness of a later application.

 

This provision in the law is specifically designed to prevent ‘double patenting’, that is, two patents being granted to the same invention.

 

This provides some comfort to prospective patentees. An unpublished document can only be used to attack the validity of any later-filed patent application in very specific circumstances. It would be unjust for the unpublished document to be deemed relevant to inventiveness (i.e. obviousness), when the skilled person could not rely on that information at the time of applying for their own patent.

 

Hunting for information

 

Whilst full patent applications are not available until the date of publication, there is some information available regarding patent applications which have been filed.

 

Every Wednesday, the UK Patents Journal is published, which has a list of patent applications which have been filed recently. The visible information includes the date of filing, the name of the applicant, the title of the invention, and the application number.

 

Whilst this is a very minimal amount of information, it does allow some level of monitoring to be undertaken to see whether competitors are filing patent applications themselves, and to what type of technology. It also allows you to keep track of the status of the application over time where applicable.

 

Strategies for minimising surprises

 

If you are considering filing a patent application, you may want to take the following steps to avoid unpleasant surprises downstream:

  1. Ensure that full patent searches are conducted prior to filing a patent application so that relevant prior art documents can be uncovered in advance. See our earlier articles on how best to go about conducting free patent searches.
  2. Keep an eye out for competitors’ product launches, and monitor the patent journal for applications which have been filed shortly in advance of the product launch. This may give you an idea of the sort of things that they are looking to protect, and you then may be able to foresee potential difficulties.
  3. File early! As soon as you are ready, and have the necessary technical information to warrant filing a patent application, you should do so. Delaying increases the risk of third parties filing their own applications before you.
  4. Ensure that you have thought through optional embodiments of your invention, or other clever features which may be important. The more technical information that is provided about these features from the outset, the greater the likelihood that you will have options for overcoming surprises during the examination procedure of the application.

 

As patent attorneys, we try and provide you with a flexible application which can withstand the rigours of examination, so that if close prior art documents are found, you have options for still getting some form of patent granted, so that initial risk does not become a lingering concern as you grow your business.

 

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