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

Darren Meale of Simmons & Simmons presents the eighth volume in his rundown of notable trade mark cases over the past six months. Here's what Darren writes:

Retromark Volume VIII: the last six months in trade marks 

by Darren Meale

As awful as this year has been, I’m constantly reminding myself how lucky us lawyers are. With a few changes in our ways of working, our jobs have continued throughout the year and avoided being literally banned like those of our friends and clients working in areas such as hospitality. That means this eighth volume is no less packed than the seven that have come before it. 

1 -     FreePrints stops Free Prints with last minute trade mark application (Planet Art v Photobox [2020] EWHC 713 (March 2020))

This was missed out of the last volume but featured in Volume 6 at the point of an interim injunction being refused. The idea that one purveyor of a free photo printing app could stop another free photo printing app from using the words FREE PRINTS seemed ludicrous to me then (and this decision does not grant the Claimant such a monopoly). But at trial the Claimant did win in part, because it was able to establish a likelihood of confusion between the parties’ logo marks.

The Claimant owned a trade mark for the logo + word combination shown in the table. The deputy judge, Daniel Alexander QC, found there was no infringement by the Defendant in its use of the name “Photobox Free Prints” and that there was no passing off by the use of this name or the Defendant’s logo + word combination app icon, despite the Claimant having taken extensive steps to acquire a secondary meaning for its otherwise descriptive “FreePrints” name.

But the deputy judge did find trade mark infringement, on both likelihood of confusion and unfair advantage grounds, of the Claimant’s logo + word combination mark by the Defendant’s use of its logo + word combination app icon.

As ever, this decision was based on the facts, which were explored in some considerable detail and turned heavily on the nature of the way in which apps are sold and/or downloaded from app stores and then used on consumers’ devices. At 218 paragraphs, it cannot be suggested that the deputy judge’s judgment did not have due regard to those facts.

One factor likely to have been important in the finding of infringement is the deputy judge’s remark that the Defendant had deliberately sailed too close to the wind. Or, as he put it, there had been “what might be described as an antisocial non-distancing of the Defendants' identity from that of the Claimants”.

This is a fascinating case. One fact, not discussed in the judgment, is that the Claimant’s winning trade mark was filed on 17 April 2019, one day before the letter before action and nine days before the claim was issued. The Defendant only commenced its infringing use early in April. The trade mark must have been applied for with an eye on the infringement. And it worked. 

From a distance, I don’t think I would have found infringement here. To me, this case concerns two different logos which both use the same descriptive text. But the facts are more complex, and it is on those which the deputy judge has made his decision.

IPKat here. 

2 -     Gömböc: a new textbook illustration of the technical result/substantial value prohibitions? (Gömböc Kutató v Szellemi Tulajdon, Court of Justice of the EU, Case C‑237/19 (April 2020))

While shape trade marks comprise less than 0.5% of all EU trade marks applied for ever, us trade mark lawyers do enjoy talking about them an awful lot. Given Christmas has just been all but banned in the UK, I’ve included Gömböc as it concerns the sort of novelty device you’d buy a lawyer for secret santa.

To use unscientific terms, a gömböc is a wobbly block with mathematical significance owing to its dual (one stable, one unstable) points of equilibrium. See a gif of one in action here. In this case, the Hungarian applicant sought to register a gömböc as a shape trade mark covering toys and “decorative items”. The Hungarian trade mark office refused registration on the grounds that the sign was exclusively of a shape which (a) is necessary to obtain a technical result; and (b) gives substantial value to the goods.

Because the unique properties of the gömböc couldn’t possibly be known merely be looking at the graphical representation of it in a trade mark application, the CJEU was asked to opine whether the application could be considered from the perspective of other material and viewpoints. It held that the perception of the relevant public could be taken into account in order to identify the “essential characteristics” of the sign. On technical result, it held that information from “objective and reliable sources” could be taken into account but not the perception of the relevant public (are they not objective or reliable then?). On substantial value, the perception of the relevant public could be taken into account, although only if objective and reliable evidence established this.

IPKat here and here. Buy a bronze Gömböc for £819 here. Cheaper secret santa friendly versions are also available.

3 -     No love and affection for XOXO (Global Brand Holdings v EUIPO, EU General Court, Case T‑503/19 (May 2020))

To me, the mark XOXO means nothing at all. If I had to pronounce it, I’d go with “zo-zo”. But once pointed out I would agree that when used in a text message an “X” is a kiss and a “O” is a hug. So XOXO = hugs and kisses.

Global Brand sought to register XOXO for a variety of fashion and accessories items, from lip balm to jeans. In a rarely used procedure, a third party wrote to the EUIPO arguing the mark should be refused and the office obliged, holding it devoid of distinctive character. The EUIPO Board of Appeal agreed and, now, so has the General Court.

The applicant agreed with the EUIPO that the mark would be understood to mean “hugs and kisses” and be an “expression of love and affection”. So, what’s wrong with that? Well the examiner thought consumers would see the mark as a promotional statement, the function of which was to inform consumers that those goods were offered in order to express love and affection. The Board of Appeal also took into account that the goods were “typically offered as gifts”. The General Court accepted the reasoning below, and that was the end of it.

I have neither love nor affection for this decision. For one, lots of things are offered as gifts, but I can be very confident that the vast majority of all clothing; sunglasses; luggage; earrings and soap (to give a few examples from the case) are not purchased as gifts. Secondly, there is too much in the way of mental gymnastics to go from the sign XOXO to its meaning (to some) of “love and affection” to that being perceived by consumers as indicating that buying or receiving them will result in those emotions. The EUIPO et al have tried too hard to refuse this mark. 

IPKat here.

4 -     Move over trade marks, copyright is in town (and its riding a Brompton) (Brompton v Chedech, Court of Justice of the EU, Case C‑833/18 (June 2020))

This is a copyright case, but in my view the CJEU’s decision is short and important for the whole IP profession. It tells us that a product with a shape in part determined by a technical function can enjoy copyright protection where it is an original work resulting from the author's own intellectual creation. 

After Cofemel, in my view copyright likely extends to a whole host of things we would not have thought previously. As discussed elsewhere, trade mark law struggles with shapes almost to the point of only pretending to offer them protection.

But who cares about trade marks, or designs for that matter, if your creation can readily achieve copyright protection. It is automatic, costs nothing to maintain, and lasts an awfully long time. Copyright may now be the EU's most powerful IP right. 

IPKat here. 

5 -     “Brand new torpedo with severe consequences?” Nice try, but no banana (AMS Neve v Heritage Audio [2020] EWHC 1876 (June 2020))

The only non pay-walled coverage I can find is via Lexology, I cannot find this case on Bailii! This case has appeared in multiple Retromark volumes (1, 3, 5 and 6). The case concerns a long running (five+ years) battle chiefly focus on jurisdictional issues and the ever relevant question of targeting. It has already been to the CJEU and back.

The June judgment concerns a device which, with Brexit, may (sadly?) become a thing of the past. It is the infamous Alicante torpedo, a cheeky trap which has caught many unawares over the years. Put simply, if I attack your EUTM at the EUIPO before you sue me for infringement of it in the UK courts, the UK courts have to stay your infringement action pending the resolution of the action at the EUIPO. This is because the EUIPO is the one first seised with the dispute. That can take years and really take the sting out of your enforcement actions.

But here the Defendants sought to create a brand new torpedo with even more devilish consequences. Their torpedo, they claimed, allowed them to attack an EUTM at the EUIPO after the UK court was seised of the infringement action, and then demand a stay in the UK. One senses that Recorder Douglas Campbell QC thought this a bit of try on when he commented “The defendants did not dispute that the consequences of their argument were to create what the claimants had called a "brand new torpedo", nor that this was a torpedo which never previously appears to have occurred to anyone in any European country”.

It turned out it hadn’t occurred to anyone ever before because it was wrong. The answer lies in Articles 128 and 132 of the EUTMR. The only thing that could be stayed was any counterclaim before the UK court. In my view, any other answer would have not just severe but silly consequences. Interestingly, however, the judge did grant the Defendants permission to appeal the point. We might see it back again in Volume 9!

6 -     SkyKick saga: £3.5m in costs later, it’s off to the Court of Appeal we go (Sky v SkyKick [2020] EWHC 990 (April 2020) and [2020] EWHC 1735 (July 2020))

SkyKick has now featured in volumes 2, 3, 4, 6 and 7 of Retromark – so needs no introduction (see the links below to earlier volumes if you wish to catch up). Two High Court judgments have been handed down over the course of the pandemic, one implementing the Court of Justice’s conservative decision from January and the other looking at the practical consequences, costs and looking ahead to an appeal. The IPKat has covered these judgments here and here, but here are my takeaways:

• Despite Lord Justice Arnold finding Sky acted rather nefariously by filing for trade marks for goods and services it never intended to use, the legal consequences were minimal: a handful of goods and services relied upon in the infringement action were narrowed down. For example, “computer software” became types of computer software associated with TV, home entertainment and telecommunications. Given it once looked like this case could cause trade mark portfolios to figuratively implode, this is something of a damp squib.
• These narrowed down terms were also a sideshow. Sky won by its coverage for “electronic mail services” and particular types of computer services.
• Sky’s bad faith didn’t persuade the judge to let SkyKick off without an injunction, but it did help him decide that each party should bear its own very substantial costs. Despite being the losing party, this let SkyKick off paying £1.52m to Sky (its own costs were £1.97m).
• Both sides were granted permission to appeal on key issues. So there’s at least on more judgment, from the Court of Appeal, to come.

7 -     Can’t defend the Defender in Jaguar 3D fender bender (Jaguar Land Rover v Ineos Industries Holdings [2020] EWHC 2130 (Ch) (August 2020))

Under opposition from Ineos, in 2019 the UKIPO refused to register Jaguar’s UK trade mark applications for the shape of two models of the Land Rover Defender for a variety of goods and services, including motor vehicles. It held that the marks lacked inherent distinctiveness for vehicles and that acquired distinctiveness was not proven.

The High Court, in the form of HHJ Melissa Clarke, upheld the refusal.

The mark could not be inherently distinctive, had held the UKIPO, because the shape as a whole did not depart significantly from the norms and customs of the sector. This was despite some fairly convincing press coverage from journalists using terms such as “instantly recognisable”, “distinctive”, “the most recognised… on the planet”. Ultimately, HHJ Clarke concluded that there was no error of principle on the part of the UKIPO, and so she would not interfere with its decision.

The outcome was the same for acquired distinctiveness. Despite compelling survey evidence (which suffered from the usual problems, ie, you can look at the results in all sorts of helpful and unhelpful ways) indicating that in the region of 20-25% of those surveyed were able to identify a Land Rover from just its shape, the UKIPO was not convinced. Again, finding no error of principle, the judge would not interfere with its conclusion.

Will it ever get any easier for those seeking 3D trade marks? Is there any point in permitting them if even the most famous of shapes are refused over and over? Answers on a Land Rover shaped postcard. 

IPKat here. News that Ineos’ Grenadier, shaped not unlike the Defender, will be built in France here.

8 -     Two QCs, a bottle of bourbon and an eagle walk into a bar… (Sazerac Brands v Liverpool Gin Distillery [2020] EWHC 2424 (September 2020))

In a three-day remote trial before Mr Justice Fancourt under the Shorter Trials Scheme, two apparently well-resources parties battled over two bourbon brands: EAGLE RARE and AMERICAN EAGLE. In a solid illustration of the strength of trade mark rights, the Claimant, owner of the well establish EAGLE RARE Kentucky straight bourbon whiskey brand, convinced the court that the Defendant’s EAGLE-formative brand was too close.

The judge held there was a likelihood of confusion between the names. The Claimant was the only bourbon on the UK market with EAGLE in the name prior to the Defendant’s appearance, and while the judge was not convinced that consumers would directly confuse the two brands, he did find indirect confusion – a significant proportion of the relevant public would be likely to think that American Eagle and Eagle Rare are related brands. This seems a generous conclusion, especially given his recognition later in this judgment that the Claimant was not entitled to a monopoly over the word EAGLE – the judge’s conclusion appears to grant just that.

The Claimant’s reputation was also established and it sought to demonstrate that the Claimant took unfair advantage of (free-riding) and caused detriment to the distinctive character (dilution) of that reputation. The judge’s reasoning on these claims is a little hard to follow, because although he found indirect confusion he proceeds on the assumption that he did not (see para 90). His view is that if he is right about indirect confusion, dilution must follow. On the basis of his no confusion assumption, he found (a) on unfair advantage, that the Defendant will get an advantage from being associated with the Claimant but that no sales would be lost by the Claimant, and the advantage would not be unfair; and (b) that there will be no dilution or whittling away of the Claimant’s reputation.

9 -     Resale and replacement parts usage passes genuine use test for Testarossa (Ferrari v DU, Court of Justice of the EU, Joined Cases C–720/18 and C–721/18 (October 2020))

In Aiwa v Aiwa, last year the UK High Court revoked a trade mark for non-use where the only evidence of use adduced was that of resale of second-hand goods by third parties via places like eBay (see Volume 6 for more).

In Ferrari, the CJEU took a more generous approach to the law on genuine use when considering whether Ferrari had made use of the iconic TESTAROSSA brand. The Testarossa had not been produced since the 90s (bar a one-off in 2014). The only “use” thereafter appeared to be in respect of the sale of replacement and accessory parts for those vehicles by Ferrari, where the mark was used to identify the previously sold vehicles, and some resale of vehicles by Ferrari. The CJEU held that these uses were capable of comprising genuine use.

IPKat here.

***

I should have delivered this volume in the autumn, but life and lockdown got in the way. As luck would have it, the timing is such that I can generously offer it to you as a yuletide gift just as Boris has cancelled the UK’s Christmas. I hope you can still enjoy some happiness with your families before the end of the year notwithstanding it is almost completely illegal to do so.

Big thanks to my colleagues Amy Palmer and Nancy Heath 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