[Guest post] Retromark Volume XIV: the last six months in trade marks

If you are interested in trade mark law developments, you cannot miss the classic Retromark update. Darren Meale of Simmons & Simmons presents the fourteenth volume in his rundown of notable trade mark cases over the past six months. Heres's what Darren writes:

Retromark Volume XIV: the last six months in trade marks

by Darren Meale

Six months stretches to eight months for this volume, which takes us from December last year to this month.

An amazing seven out of the 10 cases covered are judgments of either the UK Court of Appeal or the UK Supreme Court, proving that trade mark law is well and truly alive and kicking – and it would have been eight had SkyKick appeared, but the Supremes are still working on that. Here we go…

1. ICE, ICE, acquiescence maybe (remix)?

Industrial Cleaning Equipment v Intelligent Cleaning Equipment [2023] EWCA Civ 1451 (December 2023)

I covered the first instance judgment in the previous volume and consider it to carry the greatest pun title Retromark has ever seen. The parties used competing ICE names for floor cleaning equipment. Their overlapping registrations and a long period of coexistence ensured that the outcome of the dispute came down to the statutory acquiescence position. How does acquiescence work now that the importance of this doctrine has been elevated following the Heitec and Combe decisions? In this appeal, the focus was on the calculation of the five year period – or periods – which needed to pass before acquiescence swooped in to prevent a challenge.

To make this defence good on the trial judge’s interpretation of the legislation, the defendant needed to show that five years had passed since both (a) the claimant became aware of the defendant’s use of its 2015 mark; and (b) the claimant became aware of the defendant’s registration of the 2015 mark. These could be different dates, especially if the claimant had not checked the register. On the facts, the trial judge concluded that the earliest both dates were established was in 2019 (when the claimant was taken to have become aware of the defendant’s registration of its trade mark), a date still not five years passed. So there could be no acquiescence defence.

Arnold LJ gave the leading judgment on appeal. He concluded that the trial judge had correctly followed the interpretation of the law favoured by the CJEU following Budvar, but noted that the EUIPO’s and the General Court’s approach conflicted with that. Post-Brexit, the Court of Appeal was free to depart from the CJEU and effectively change the law (something it should do “rarely and sparingly”) and all three judges concluded that it was right to do so here.

The (new) correct approach should now be that the defendant only has to show five years of awareness of its use by the claimant starting from the date it registered its mark, whether or not the claimant knew of that registration. One factor in favour of this approach was that to do otherwise would be to incentivise a claimant not knowing that the defendant had a registration once it was aware of the defendant’s use.

Notwithstanding the change in the law and the relevant date, the defendant narrowly failed to establish its defence – the claimant having been found to have issued its claim form with just one or two days to spare. It is not clear to me whether the claimant knew it had got it just in time, or whether this was serendipity.

IPKat here.

2. The Court of Appeal confirms Samsung’s role in its smartwatch platform was active enough to make it liable for infringing apps, and no hosting defence in sight

Montres Breguet SA v Samsung Electronics Co Ltd [2023] EWCA Civ 1478 (December 2023)

Covered in Volumes 11 and 12, this is a case about the liability of a platform for hosting infringing smartwatch faces replicating the faces of watch brands owned by the claimant’s group of brands, including Swatch and many high end brands such as Blancpain. At first instance, Samsung was held directly and primarily liable for acts of infringement of others on its SGA platform. It was unable to reverse that decision before the Court of Appeal.

The cheapest second-hand price I could find for a real Blancpain Villert was more than £10,000. Definitely a birthday AND Christmas present.

Success for the claimant at first instance turned on the degree of active involvement Samsung took in its platform and the smartwatch face apps made available thereon (such involvement summarised at paragraphs 61 to 72 of the appeal judgment). The judge reviewed authorities which set out circumstances whereby service providers or intermediaries were excused liability, but found that Samsung’s role “went well beyond that of the can filler in Frisdranken, the warehouse-keeper in Coty, the online marketplace in L'Oréal and the search engine provider in Google France. It was not just providing the necessary technical environment, but had a clear commercial interest in the watch face apps in the SGA store, their availability, presentation and use by consumers”.

On appeal, Samsung argued that it had done nothing more than create the technical conditions for the use of the infringing signs, allow use of the signs and (in most cases) receive payment. It criticised the judge for taking into account the wrong factors, but not taking into account the right ones. The Court of Appeal was having none of it, and sided with the judge in concluding that she had correctly assessed and weighed the evidence, facts and factors in reaching her conclusion as to the nature of Samsung’s role.

Samsung also failed to overturn a finding that it had used infringing signs in relation to smartwatches themselves, rather than in relation to apps on smartwatches. Again the Court of Appeal sided with the judge who had correctly taken into account consumer perceptions and interactions with smartwatches bearing the watch faces.

The third issue on appeal was whether, notwithstanding its infringement, Samsung had a hosting defence under Article 14 of the e-Commerce directive. This was clearly the most important issue to Samsung, as if it had a defence it could escape financial liability (although not liability to an injunction). But again there was no joy, with the Court of Appeal backing the judge. Giving the lead judgment, Arnold LJ concluded that in “in my judgment Samsung's acts of use of the disputed signs were active, and gave it knowledge of and control over that content. They were not merely technical, automatic and passive with no knowledge or control. Thus they were not within Article 14(1).”

This was a decision on the specific facts of Samsung’s method of operating its app store and the interactions and relationship it had with those apps and their developers. I do not see commentary definitively hailing this as a significant change in approach to the liability of platforms, who have previously enjoyed quite generous safe harbours under legislation dating back to the early days of the internet. But, it could be the beginning of change, and an indication that English courts may seek to shift the historic balance between the rights of platforms and brand/content owners towards the latter. This area was previously heavily regulated by EU-wide regulations and directives; the UK is now free to take its own path.

3. Aldi’s bull benchmark betters Thatchers in cider can confrontation

Thatchers Cider Company Limited v Aldi Stores Limited [2024] EWHC 88 (IPEC) (January 2024)

If you’ve seen one look alike case, have you seen them all? This decision in defence of a copycat came just a few months before the Court of Appeal’s decision in Tesco v Lidl, covered below.

Thatchers complained that Aldi’s lemon cider, sold under Aldi’s Taurus brand (which hitherto sold other types of cider in completely different get up), infringed its device mark featuring a composite of its name, its product’s description and some lemons. The evidence showed that the similarities between the mark and Aldi’s packaging were intentional, with disclosure showing Aldi instructed its designer to use Thatchers’ product as a “benchmark” and create something that would be a “hybrid” of the two brands (it is worth noting that Tesco’s intention was an important factor in its defeat to Lidl).

But that was not enough for HHJ Melissa Clarke, sitting as a judge of the High Court, to find infringement, either on the basis of a likelihood of confusion or on extended protection grounds.

The judge felt the competing mark (held to enjoy enhanced distinctiveness and a reputation) and sign (a whole can of Taurus) had only a low degree of similarity, for obvious reasons including that the brand names were all but dissimilar. Overall, she did not feel that there was a real likelihood of confusion. In theory in cases like these extended protection grounds hold more promise, as they only require a calling to mind – not confusion – and the judge found the requisite link would be made here. But the judge did not go as far as finding any injury. Although there was clearly an intention to take something from the Thatchers mark, the judge did not consider Aldi developed the product with an intention to take advantage of the goodwill and reputation of it, and found that no unfair advantage was in fact taken. A fine line perhaps – but Aldi trod it carefully enough to prevail.

IPKat here.

4. It’s all in how – and from what angle – you look at these logos – Umbro prevail on appeal

Iconix Luxembourg Holdings v Dream Pairs Europe Inc [2024] EWCA Civ 29 (January 2024)

This is another appeal from the first instance decision covered in our last volume. The trial judge said these competing logos for footwear (the claimant’s being the Umbro logo) would not create a likelihood of confusion. The Court of Appeal disagreed and reversed the decision in a succinct 38 paragraphs. Is this a rare example of the Court of Appeal upsetting the trial judge’s first instance multi-factorial assessment?

As regular readers know, a trade mark appeal generally needs to show an error of principle to succeed.

Several were established, but the key error came down to the judge’s approach to the way the defendant’s logo would be seen and experienced by consumers in the post-sale context. Arnold LJ reminded us that it is possible in an appropriate case for use of a sign to give rise to a likelihood of confusion as a result of post-sale confusion even if there is no likelihood of confusion at the point of sale. Here, post-sale the footwear would be encountered while worn by others and the logo seen looking down from above at an angle. In this context, it would appear “foreshortened”, more like a double diamond, and more like the Umbro mark. Arnold LJ concluded that the trial judge failed properly to consider this, too focused on a side-by-side square-on comparison of the marks.

Having identified this error, he swiftly re-evaluated the likelihood of confusion in a single paragraph, overturning the trial judge and finding in the claimant’s favour. Birss and King LJJ agreed.

One might feel a bit hard done by on behalf of the defendant. It seems to have lost because post-sale, on someone’s feet, viewed from an odd angle its logo looks like something else. And a conclusion like this also feels like a factual assessment – and not one on which an appeal would typically turn in a trade mark infringement claim.

Apparently this case is off to the UK Supreme Court – stay tuned!

5. Lidl v Tesco: the Court of Appeal stands behind the most surprising of infringement decisions

Lidl Great Britain Ltd & Anor v Tesco [2024] EWCA Civ 262 (March 2024)

Yet another appeal from a first instance decision in our last volume! The Court of Appeal has delivered a judgment almost as controversial as the first one.

Many of us were surprised by the trial judge’s findings of both trade mark and copyright infringement of the logos shown below. Should a simple coloured circle stop a rival one even where they bore the totally different words LIDL and CLUBCARD? Well, that wasn’t really the question on appeal.

As ever the appeal question was whether the Court of Appeal should interfere with the trial judge’s very carefully assessed findings of fact in view of any errors of principle. Ultimately, the Court of Appeal upheld the finding of trade mark infringement as no such errors could be found, but did reverse the copyright infringement finding. Two of the three Lord Justices found the findings of fact on trade mark infringement “surprising”, with Lewison LJ in particular indicating “undisguised reluctance” with having to follow them to a conclusion of infringement.

There is a whole lot in this judgment, and the IPKat’s write up, which delves into the price-matching allegation which was central to the trade mark infringement claim while looking at other issues including bad faith, can be read on the IPKat here.

6. Supreme Court Part 1: Amazon.com targets the UK

Lifestyle Equities v Amazon [2024] UKSC 8 (March 2024)

Amazon’s US website made it “painless” for UK consumers to order from it and did not limit them to ordering from its UK website. At first instance, the trial judge was not satisfied on the facts that this meant that Amazon US was “targeting” UK consumers, a prerequisite for a finding of trade mark infringement in the UK. The Court of Appeal (see Volume 11) reversed the decision, finding that there was targeting.

The Supreme Court backed the Court of Appeal, dismissing Amazon’s appeal.

The doctrine of targeting is EU law’s solution for dealing with the clash between the territoriality of intellectual property rights on the one hand and the unrestricted nature of online services on the other. How the doctrine is applied to the facts of each case is well established, taking into account factors including the currency of the products sold on a website; its language; and the delivery options. In this case, we ended up with three different assessments of those facts. At first instance, the trial judge found on the facts that there was no targeting. The Court of Appeal felt this conclusion obviously wrong. The Supreme Court held the Court of Appeal’s evaluation of the facts to be too simplistic with a backwards rather than forwards approach to reviewing Amazon’s website, preferring to make its own evaluation. But the outcome was the same: Amazon targeted UK consumers, with the facts pointing in favour of this conclusion greatly outweighing the facts pointing away from it.

One tends to assume that the Supreme Court is only to be troubled by tricky points of law, of which trade marks has many. This case feels unusual in that it was really all about the facts, and perhaps facts pretty obvious to everyone but the trial judge.

7. Veuve Clicquot’s orange colour mark on its last legs a quarter of a century after it was filed

Lidl v EUIPO Case T-652/22 (EU General Court) (April 2024)

Retromark has a fondness for colour marks, and is often disappointed by the repeated beatings they tend to take in UK and EU jurisprudence. Here comes another one.

Veuve Clicquot – a champagne that I daresay many lawyers will have had the privilege of enjoying at least once – obtained a registration for the colour orange depicted below in 2007 (having first applied for it in 1998) having proved to the satisfaction of the EUIPO Board of Appeal that the colour had acquired distinctiveness for champagne across the EU.

An optimistic lawyer might hope that such a victory was the end of the story, but alas Lidl had other ideas and applied for a declaration of invalidity of the mark in 2015. Back to square one for Veuve Clicquot, save that it could now prevail either by proving (a) again that it had acquired distinctiveness at the application date or (b) that it had acquired distinctiveness subsequently and prior to the date of the invalidity attack. One would expect success on (a) would follow from the original success, but no – the EU tribunals and courts were not bound to follow the outcome from 2007. The Invalidity Division and the Board of Appeal nevertheless did, but the General Court had different ideas. With Veuve Clicquot required to prove acquired distinctiveness across the EU, the GC found that it had not done so in Portugal and Greece, holding that the evidence relied upon by the Board of Appeal for those countries was not sufficient. It drew a distinction between the value of primary evidence (surveys, market studies, statements from professional bodies or statements from the specialised public) and secondary evidence (sales figures and advertising material) and decided there was not enough of the former for those countries.

The only saving grace for Veuve Clicquot was that the Board of Appeal had not considered acquired distinctiveness by route (b), so rather than invalidate the mark the GC sent the case back to the Board of Appeal to assess the evidence from that perspective.

Acquired distinctiveness at EU level is never easy given the geographical scope we are dealing with, but knowing that if you get it through the EUIPO you might have to go through it all over again years later if your mark is ever challenged is almost a discouragement from bothering in the first place. But perhaps that is the price you pay for a monopoly over a colour – the EU system grants this prize rarely, and perhaps only temporarily.

We may be about to raise a glass for this colour mark for the final time… IPKat here.

8. Supreme Court Part 2: no accessory liability for a director of an infringing company in trade mark cases?

Lifestyle Equities v Ahmed [2024] UKSC 17 (May 2024)

This case concerned both accessory liability (eg, common design) and the remedy of an account of profits. The Court of Appeal (see Volume 9) previously played their part in reducing the liability of the defendant directors of the infringing defendant company in this case from £3.4m by way of an account of profits down to less than £118,000. The defendant company had been the primary infringers, the defendant directors liable as accessories. The company was dissolved, leaving the claimant to claim for compensation from the directors themselves.

The UK Supreme Court agreed to hear a second appeal by both parties. It unanimously dismissed the claimant’s appeal, disagreeing with the claimant that the defendants should account for the profits made by their company. But it upheld the defendants’ appeal, holding not just that they had not profited from the infringements (no sums paid to them by the company could be regarded as profits) but that they were not in fact liable for them at all as accessories or otherwise.

The full get out for the defendants operated as follows. First, the Supreme Court held that a person who causes another person to do a wrongful act will only be jointly liable as an accessory for the wrong done if they have knowledge of the “essential facts” which make the act done wrongful. Secondly, the directors were held not to have been aware of the essential facts which made their mark, SANTA MONICA POLO CLUB, an infringement of the claimant’s BEVERLY HILLS POLO CLUB marks.

But why not? Lord Leggatt, giving the judgment with which the other four Supreme Court Justices agreed, noted that in a case of the sale of counterfeit goods, it may be obvious that a director who oversaw their sale by the company must have known the facts which made the company’s acts an infringement. But in this case of alleged infringement between similar (and by no means identical) marks, “there was room for argument and honest difference of opinion about the extent of the similarity and whether it gave rise to a likelihood of confusion or otherwise resulted in infringement”.

This conclusion is remarkable because it describes almost all trade mark cases in this jurisdiction that are settled before a Court. Indeed, it might be a hallmark of the trade mark case that goes to trial: there is room for argument and honest difference; let’s have the judge settle it. In practice, this must mean that accessory liability will be all but impossible to establish in a trade mark infringement case. There is some justice to that. The director of a defendant can go into an infringement trial absolutely able to hold an “honest difference of opinion”, in a case that could go either way. The judge must decide whether they are a wrongdoer or not. If they lose in that sort of a case, which on another day with another judge might by its nature have gone in their favour, perhaps it is fair to award a consolation prize by which, although their company will suffer, the claimant won’t be free to take them personally to the cleaners.

9. Back to the Big Mac Burger Attack

Supermacs v EUIPO Case T‑58/23 (June 2024)

This meaty non-use revocation battle over the Big Mac featured in Volumes 5 and 12, with McDonalds recovering from an initial defeat with better proof of use evidence allowing them to save their registration on appeal. Supermacs, a long-time Irish enemy of the American fast food giant, were not giving up there. They appealed to the EU General Court. Accepting that McDonalds had proved use for “meat sandwiches” (hamburgers to you and me, but note type of meat undefined), Supermacs nevertheless contested other terms including “Foods prepared from meat and poultry products” and “chicken sandwiches”.

It won, at least as far as chicken was concerned. Yes that’s right, McDonalds’ chicken credentials failed to check-out, with its proof of use evidence inadequate. It was not clear whether there just was not enough use to evidence or whether it had again done a bad job, as it had originally before the EUIPO. Supermacs was also able to defeat McDonalds’ mark for restaurant services – it had only ever used its mark for goods – those good ol’ meat sandwiches – and never the services.

But McDonalds was able to save “Foods prepared from meat… products”, the General Court decided this term was a sufficiently specific category that need not be divided further, meaning that proof of use for “meat sandwiches” also sufficed as proof of use of this term.

As with previous iterations of this case, the decision hit the headlines with the press frequently getting the wrong end of the chicken stick (with The Guardian claiming that ”The ruling also means [McDonalds] has lost the right to use the name “Big Mac” in the EU in relation to chicken burgers”). It is questionable this decision achieves anything in practice, given that last time I checked with a vegetarian, chicken was a meat and all of the terms mentioning meat survived the revocation action.

The Supermacs v McDonalds match-up is often billed as a David v Goliath fight for justice, but Supermacs is no small fry – its revenues exceeded Euro 270 million in 2022 and it has more than 100 restaurants in Ireland.

IPKat here.

10. No luck for the polo club in riding out the crowded market

Lifestyle Equities CV v Royal County of Berkshire Polo Club [2024] EWCA Civ 814 (July 2024)

That’s right you guessed it, we covered the claimant’s failure in this claim a year ago in Volume 13. As one of the UK’s most prolific trade mark litigants, it was no surprise to see this case appear in the Court of Appeal. But the claimant has been defeated again.

In a lengthy first instance judgment, Mellor J dismissed the claim that two “polo club” logos for clothing conflicted, in part because of the little to no distinctiveness of a horse and rider motif, and the crowded market of similar clothing brands.

There were two principal issues on appeal: was the judge right (1) to conclude that a “crowded market” of other polo-themed clothing brands featuring horse-and-rider logos reduced the distinctiveness of the claimant’s mark; and (2) to rely on the terms of coexistence agreements, including those each party had with Ralph Lauren?

The Court of Appeal (Arnold LJ giving a leading judgment with which Nugee and Baker LLJ agreed) dismissed the claimant’s appeal on the first question, satisfied that the authorities – and the market – demonstrated that third party use of similar signs does tend to diminish the distinctiveness of a trade mark. On this point, the Court also made some interesting statements regarding the relevance (and scope) of the context of use in an infringement claim (see paras 51 to 58). On the second question, the Court was satisfied that the coexistence agreements were relevant, providing a useful and practical insight into the market, and found no indication that they had been given undue weight in the confusion analysis (indeed it appeared they had made little impact).

Lifestyle Equities are no strangers to taking their fights to the Supreme Court, but I am doubtful there is enough in the two points – relatively simply dismissed by the Court of Appeal – in play here to warrant a third stage of this litigation.

***

Thanks to my colleagues Naomi Anahory and Bryan Tan for helping me collate this volume.

• Volume I – April 2016 to March 2017
• Volume II – March 2017 to September 2017
• Volume III – November 2017 to April 2018
• Volume IV – May 2018 to October 2018
• Volume V – November 2018 to March 2019
• Volume VI – April 2019 to October 2019
• Volume VII – October 2019 to April 2020
• Volume VIII – April 2020 to October 2020
• Volume IX – November 2020 to May 2021
• Volume X – April 2021 to December 2021
• Volume XI – January 2022 to June 2022
• Volume XII – July 2022 to February 2023
• Volume XIII – February 2023 to November 2023