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

Darren Meale of Simmons & Simmons presents the eighteenth volume of his rundown of notable trade mark cases over the past six months:

Retromark Volume XVIII: the last six months in trade marks

by Darren Meale

We’re back with another bumper volume of trade mark judgments. In an era where long-form writing is slowly (or maybe I should say swiftly) being replaced by generative AI, I can hold my hand on heart and promise that these are all my own words. The only exception is half of the pun title for case number 9, whereby an AI helped me overcome some writer’s block by suggesting I add “sucker punch” to my attempt at a boxing joke based around the term “fat jab”. It would appear that both Claude and I are good (or is that bad?) at Dad jokes. The first and fifth images, on the other hand, were made with Gemini!

1. Locked out of referential use defence if you cut the wrong keys

Banham Patent Locks Limited v Danny Rogers (t/a Rogers and Sons) [2026] EWHC 528 (Pat) (February 2026)

Referential use – using someone else’s trade mark to refer to that someone else or their products or services – is an interesting topic that comes up now and then and always seems to lead me into grey areas. This case, a claim by a lock and key maker against a sole trader cutting keys, is mostly about other things – I will deal only with the trade mark angle.

Banham’s patents effectively prevent a third party from cutting copies of its Mark III keys, but its Mark I and Mark II keys were no longer protected after their patents expired. Mr Rogers’ business offered the cutting of “Banham” keys on a poster at his premises, the poster apparently depicting a Mark III key. Mr Rogers claimed only to cut Mark I and Mark II keys, but Mrs Justice Bacon, giving judgment in the High Court, found on the evidence that he had also cut Mark III keys, helped by some trap purchases from private investigators.

In defending a claim against the poster for trade mark infringement, Mr Rogers relied on section 11(2) of the Trade Marks Act 1994, which provides a defence to infringement where another’s mark is used “for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular where that use is necessary to indicate the intended purpose of a product or service” – but the use must be “in accordance with honest practices in industrial or commercial matters”. In his view, the poster was doing just that – indicating that Mr Rogers could cut Mark I and Mark II Banham keys, against which there was no patent infringement claim.

The judge held that the defence could not apply as Mr Rogers also copied Mark III keys, and so his use did not meet the “honest practices” proviso. It is worth noting this was a summary judgment decision, Mr Rogers was not represented, and the defendant probably didn’t endear himself to the Court having insulted the Claimant’s solicitors’ trainee in emails and referred to those solicitors as “fucking parasites” (for which the judge hauled him over the coals and for which he apologised repeatedly at the hearing). In that context, and in light of the factual findings, it is not surprising that the defence failed. But an interesting question for me is whether it would be available to him if, in fact, he had never cut a Mark III key. Would the poster have then been fine if it just stated “Banham keys cut”, or would it have only been defensible if the text read “We only cut Mark I and II keys”?

2. Did Hadid’s bid for the right to terminate succeed, or would the licence last forever?

Zaha Hadid Ltd v The Zaha Hadid Foundation [2026] EWCA Civ 192 (February 2026)

The parties were two organisations set up by the famous architect Dame Zaha Hadid, who died in 2016. The Claimant, “Company” and the Defendant, “Foundation” were licensee and licensor respectively of the ZAHA HADID trade mark. Company sought to terminate the licence as it wanted to renegotiate the 6% licence fee, but Foundation argued there was no right to terminate.

The licence agreement expressly stated that it would “continue indefinitely” and the only termination right was given in favour of the licensor, Foundation. Thus there was no express provision as to the licensee’s right to terminate either way.

At trial, the judge held there was no term giving the Company the right to terminate – the contract was perpetual. On appeal, the Court of Appeal with the Chancellor of the High Court, Sir Colin Birss, giving lead judgment allowed the appeal, finding there was a right to terminate.

The Chancellor reviewed the authorities. They required one to draw a distinction between an agreement which was intended to be perpetual (that is, to last forever) or indefinite (that is, without a defined duration). If the latter is the correct conclusion based on the true construction of the parties' intentions, but the agreement does not provide for a method of termination, it could be construed as containing a power to terminate on reasonable notice.

Having considered the facts, the Chancellor concluded that the parties had intended the agreement to be indefinite, not perpetual, and so Company had a power to terminate on reasonable notice. The Court’s reasoning is set out at paragraphs 43 to 56, but I’d summarise them very briefly as a finding that the ability for Company to terminate was ultimately the correct, sensible and right conclusion based on all the facts.

3. Tesla’s bad faith claim goes parabolic as the Court remits it back to the UKIPO with a new date

Parabolica Ltd v Tesla Holding AS [2026] EWHC 386 (Ch) (February 2026)

Brexit led to all kinds of silly things, including the overnight cloning of something like two million EUTMs into UKTMs. But if your EUTM application was pending as at 31 December 2020, you did not get a clone. Instead, you were given a window to file a UKTM application and backdate its filing date to that of your EUTM application. Simples?

Parabolica applied to register TESLA with an EUTM priority date in 2006. Its UKTM re-filing was made in 2021 within the Brexit window (the huge time gap a consequence of an ongoing dispute between the parties). Elon Musk’s Tesla opposed on the grounds of bad faith. But was that bad faith to be assessed as of 2006 (when Tesla was three years old) or 2021 (when it was a $1 trillion company)?

The UKIPO found the latter and then against Parabolica. Parabolica appealed to the Appointed Person, in this case Tom Mitcheson KC, who decided the matter involved a point of general legal importance and so it should be heard by the High Court, and so he took off his AP hat* and put on his Deputy Judge hat and heard it that way. In overturning the Hearing Officer’s decision (a decision which had also been reached by a number of other Hearing Officers in other cases) and finding that the correct date was 2006, the judge considered the Brexit Withdrawal Agreement, the Withdrawal Act and The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019. The judge concluded that, however one looked at it, the correct interpretation was that the intention had been for the EUTM application date to be ported to the UK for all purposes, including for the purposes of assessing bad faith. He remitted the case back to the Hearing Officer for reconsideration on that basis.

*NB: English judges do not wear hats, but they do sometimes wear wigs

4. A quarter of a century of trekking later, and both parties are in breach of their coexistence agreement

C & J Clark International Ltd v Trek Bicycle Corporation [2026] EWHC 659 (Ch) (March 2026)

You don’t have to have been in the trade mark business long before you negotiate your first coexistence agreement. This dispute concerned an agreement signed more than 25 years ago in 2001, the year Legally Blonde was released (a year also notable for less trivial but more significant events). The Claimant (Clarks) is the reputed shoe company, one of its longstanding product ranges being TREK shoes (originally being outdoor/walking type shoes plus one more casual shoe). The Defendant (TBC) is a seller of bicycles under the TREK name. The parties signed a coexistence agreement to regulate their use of the word TREK, arguably of limited distinctiveness in both the footwear and bike markets. Clarks were not to sell TREK shoes adapted for sports or fitness, while TBC was not to sell shoes at all.

In 2016, the parties started talking again as TBC wanted to sell cycling shoes. At a 2018 meeting TBC claimed Clarks gave them oral consent to do so but nothing was put in writing.

In due course, TBC started selling cycling shoes. Likewise Clarks expanded its range of TREK shoes into types of shoe TBC alleged were adapted for sports or fitness. Eventually, the present dispute came to be litigated.

Ian Karet in the High Court gave a concise and sensible interpretation of the key clauses of the agreement, including in relation to the key limits imposed on each side:

• TBC sought to argue that the reference to “footwear” in the agreement did not prohibit sales of shoes, because it could not mean anything that is worn on the foot, given that TBC were permitted to sell socks. TBC also argued in the alternative that if that was wrong, the term was to be interpreted to mean casual shoes only. The judge dismissed these rather optimistic pleas.
• The judge gave a broad definition to “adapted for wear when cycling, commemorating cycling events or participating in sports or fitness”, which determined the scope of the limitation imposed on Clarks, with “adapted for” accepted by both parties as meaning “suitable for”, and the judge finding that the shoes need not be suitable for any specific sport, given the general reference to “sports or fitness”.

Based on the parties’ evidence, the judge found that the unconditional consent claimed in 2018 had not been given.

As a consequence of the judge’s straightforward examination of the facts and sensible (if not plain) interpretation of the agreement, the final outcome was unsurprising. Both parties were found at fault – TBC had indeed started selling cycling shoes and was unlikely to get away with that after its creative interpretation of the agreement’s drafting got nowhere. Clarks had expanded its TREK shoe range into a wider sports and fitness range, with five models held to be breaches – all of these models were held to have the appearance of sports or fitness shoes, were all made to a “trainer” design, were described internally as “Sports” and sold to consumers as sports – rather than walking – shoes.

Clarks’ “ATL Trek Run” shoe, unsurprisingly held not to be a mere walking shoe (the clue’s in the name!)

As a consequence of the judge’s findings, Clarks’ claim for trade mark infringement against TBC also succeeded. TBC dabbled in a couple of potential defences. First, TBC tried to argue that were it in breach of the agreement such that it may not sell cycling shoes, this was a restraint of trade rendering the agreement unenforceable. The judge swiftly rejected this. Secondly, it argued statutory acquiescence but failed for lack of evidence that Clarks had been aware of its otherwise infringing use for the requisite five year period.

Cases which unfold over very many years are often horribly complicated to piece together and resolve. It may be that Ian Karet’s judgment made that look easy here, but reading through its 196 paragraphs, the case seems rather straightforward to me. The parties made a relatively simple coexistence agreement a long time ago. As is usual, that agreement was set to last forever. But times changed and they both wanted to do something they agreed not to. Whether or not they did so with their eyes open, they both proceeded to breach their agreement. The outcome once the matter reached the Court was unsurprising. Both parties are losers here – time for another coexistence agreement? Fast forward to Retromark Volume CCC for the next chapter.

IPKat here.

5. Bargain Bust-up gets personal as contempt complaint crumbles

Bargain Busting v Shenzhen SKE Technology Company [2026] EWHC 933 (Ch) (April 2026)

Volume 16 contained three instalments of this big-money vaping trade mark litigation in which the parties (and their advisors) clearly hate each other. In this next instalment, Bargain Busting’s (BBL’s) solicitors Brandsmiths tried to get Shenzhen’s (SST’s) solicitors at Stobbs held in contempt of court, for something no right-minded IP litigator would even think was an appropriate candidate for such a severe penalty (and yes, I do have a strong view on this one!).

SST’s earlier opposition at the UKIPO against BBL’s “Crystal Bar” application had failed at both the UKIPO and on appeal to the High Court. SST’s solicitor asked the UKIPO not to mark the application as “registered” on the basis that SST had time to appeal to the Court of Appeal. BBL’s solicitor was having none of this, and told the UKIPO it should register the mark immediately. The parties evidently disagreed on the effect of the Court’s order following the unsuccessful appeal, wording which they had agreed between them. Stobbs proceeded to ask for the Court’s Order to be amended to follow their interpretation, while Brandsmiths threatened proceedings for contempt of court unless Stobbs wrote to the UKIPO agreeing to Brandsmiths’ position on registration. Brandsmiths also threatened to sue the UKIPO (at least I think that is what the judge recorded when he said “on 27 August 2025 [Brandsmiths] sent an email to the IPO threatening High Court proceedings against it unless the mark were registered by 4 PM on the next day”). There then came a hearing at the UKIPO in which the Hearing Officer accepted that keeping the mark showing as pending was its usual practice while appeals were still possible but that the Court’s Order had provided for something else, that being immediate registration.

That surely should have been the end of it unless and until the Court agreed to vary its Order. But no – Brandsmiths continued to pursue Stobbs and its solicitors for criminal contempt it characterised as “Criminal contempt (intentional interference with the administration of justice) by seeking to prevent or delay the registration of a trademark as directed by the High Court.”

On application by Stobbs, the contempt proceedings were struck out. The judge was not impressed with Brandsmiths’ bully boy tactics, noting they were an example of the contempt jurisdiction being “weaponised” by solicitors looking to “show how strong and fearless they are”.

Stay tuned for further instalments in this battle to the death.

6. A brief assessment of damages for bubble tea breaches up north

Duadata Ltd v Tian Cha Le Ltd [2026] EWHC 1055 (IPEC) (May 2026)

Do you drink bubble tea? I don’t, but it seems plenty do. Duadata owns the MOOBOO bubble tea retail brand and as of May 2024 there were other 100 MOOBOO stores in the UK, the majority of them run by franchisees. The defendant was a former franchisee who continued to use MOOBOO brand elements (such as its menu design, menu products and signature drinks) after the franchise agreement was terminated by the claimant. A judgment in default for passing-off was obtained and HHJ Hacon in the IPEC was called upon to determine an inquiry as to damages on paper.

Duadata sought a modest £14,349.11 being the sums it said would have been paid by a hypothetical franchisee in accordance with its standard franchise terms in South Shields, in the North of England, where the defendant was based. The defendant contested the sum on six grounds, all swiftly dismissed by the judge:

1. The similarity of menu design was limited in duration – the defendant provided no evidence of any relevant dates, so this plea got nowhere.
2. The defendant acted promptly to replace the menu complained of – again no dates, no dice.
3. The defendant’s business was loss making – “not relevant” says the judge.
4. There was no evidence of loss suffered by the claimant – the judge agreed there was no “direct” evidence, but he was entitled to rely on the Points of Claim bearing a signed statement of truth and the assumptions on which the points made in that document were based were not, the judge found, unreasonable.
5. There was no causal link between the defendant’s conduct and the sums claimed – again the Points of Claim pled otherwise and the assumptions made therein were not considered unreasonable.
6. There was no contractual relationship between the parties at the time of the passing-off – the claimant was entitled to posit a hypothetical for the purposes of assessing its loss.

HHJ Hacon rounded up and awarded £14,350 to the claimant.

Mooboo.co

7. Court of Appeal reinterprets the effect of non-registration of licences and dismisses claim based on losses of sub-licensees

Lifestyle Equities CV v Frasers Group Trading Ltd (formerly called Sportsdirect.com Retail Ltd) [2026] EWCA Civ 583 (May 2026)

Volume 16 features the first round of this chapter of the Lifestyle Equities book of frequent trade mark disputes. The claimant sought in an inquiry as to damages to recover its own losses plus those of an unregistered sub-licensee or two. The High Court dealt with an application by the defendant for summary judgment on the latter head of claim.

Under section 25 of the Trade Marks Act, licensees must register their licences to obtain important rights, including the protection of sections 30 and 31. Section 30 includes allowing the licensee’s losses to be taken into account when the proprietor makes a claim.

The defendant’s application was dismissed on the judge’s interpretation of sections 30(6) and 30(6A) of the Trade Marks Act. The judge did not consider that licences had to be registered for a licensee’s or sub-licensee’s losses to be taken into account – considering that this was a protection in favour of the proprietor, such protections not impacted by registration or a lack thereof. Nor was there, in his view, a time limit for registration of sub-licences.

The Court of Appeal was asked to look at the sections again. The first ground of appeal challenged the judge’s conclusion that section 30(6) was a protection for the proprietor such that non-registration by the licensee could not remove it. Giving the lead judgment with which Peter Jackson and Arnold LJJ concurred, Lord Justice Zacaroli held that “to read s.30(6) as a protection for the proprietor makes little sense”. The first instance judge had also split section 30(6) into two parts, with only the second part being a protection for the licensee – no rational purpose could be found for such a distinction. Appeal allowed on Ground 1.

The second ground of appeal concerned the time limit for registration. There was no limit prescribed in the Trade Marks Act. But Zacaroli LJ noted the Limitation Act’s time limit for bringing proceedings still applied. Thus, a proprietor could not bring a claim to recover losses on behalf of a licensee until an application to register the licence is made. If that happens after the end of the limitation period for the claim for losses, the claim is statute barred. In this case, the claimant had waited many years to start its inquiry as to damages and nearly a decade had now passed since the last act of pleaded infringement. Appeal allowed on Ground 2 and summary judgment in favour of the defendants.

8. No short Shorts appeal, this descriptiveness case will run a little longer

Shorts International Ltd v Google LLC [2026] EWCA Civ 668 (May 2026)

Volume 15 covers the first instance decision – in which Shorts was unable to prevent Google from using “YouTube shorts” for short-form audiovisual content based on its various SHORTS and SHORTSTV marks. Those marks ended up partly invalidated after Google’s counter-attack. The low-distinctiveness of what Shorts was able to assert did not, in the trial judge’s view, offer enough protection to justify interfering in Google’s activities.

These aren’t the shorts you’re looking for

Shorts tried and failed again on appeal. The Chancellor of the High Court, Sir Colin Birss, dismissed on all grounds a wide-ranging appeal that sought to challenge many aspects of the first instance judgment. The three grounds that took up most of the judgment were:

Ground 1 – was the judge wrong to give “shorts” a descriptive meaning in relation to short AV content? To try to get around this argument, Shorts came up with an “ingenious” attempt to posit an average consumer who would give the mark a narrower descriptive meaning than others (ie, just “short films”, not extending to Shorts’ own content). The Chancellor rejected this.

Ground 5 – was the judge wrong to decide that several of Google’s uses of “shorts” were purely descriptive? Again no, said the Chancellor. This ground appears to have been a challenge to a pure finding of fact and was rightly rejected.

Ground 6 – the judge "wrongly allowed the criterion of distinctiveness to pollute his comparison of the Marks". It was claimed he did this, for example, by “double counting” and giving the impact of the mark’s lack of distinctiveness too much weight. This was also rejected.

I often describe trade mark law as an area which is (or should be?) simple at first principles (are these two marks confusing or not?) but some of the points debated in this appeal illustrate its almost infinite complexity. It also illustrates that sound judgments of first instance judges can, once in the hands of determined appellants and before the Court of Appeal, become subject to all sorts of complicated and sophisticated attacks. Actually, having written that sentence I’ve spotted this in paragraph 68 from the Chancellor, which I think sums it up perfectly:

Trade mark law is already complex and difficult to state concisely. A further accretion of sub-tests serves no practical purpose other than creating the possibility of finding foot faults by trial judges in order to support appeals against what are, in truth, evaluative conclusions.

Shorts is not deterred – it has lodged an application for permission to appeal at the UK Supreme Court.

9. Fat jab, sucker punch: the rise of “dynamic blocking” orders?

Novo Nordisk A/S & Anor v British Telecommunications PLC [2026] EWHC 1535 (Ch) (June 2026)

Blocking injunctions emerged over a decade ago, originally as a method of preventing UK internet users from accessing websites offering pirated media content, then extended to counterfeit goods in Cartier in 2014-2018. I even ran a rapid response seminar pre-Retromark times on the Court of Appeal judgment in that case – see grainy photo of a much younger me presenting here.

Time flies, and in true 2020s style it’s not so much fake handbags under attack but fake fat jabs. Novo Nordisk – purveyors of OZEMPIC and WEGOVY – sought orders that the major UK ISPs prevent their users from accessing a number of websites selling counterfeit and unlicensed medicinal products to UK consumers, being versions of the popular weight loss drugs. In fact, an order of this nature was already in place following a judgment the previous month. This time, Novo wanted to add more websites to the order, but also to introduce “dynamic blocking”, a mechanism for Novo to add websites to the order by way of a self-certifying process without having to seek court approval. The ISPs were consulted and were said not to object to the principle, on the basis that their costs of compliance were met (as per the UK Supreme Court’s final word on Cartier).

Mr Justice Adam Johnson was initially “sceptical about the propriety” of such an order, perhaps understandable given that it removed the Court from the process and that the criteria for self-certification were only to be available in a confidential schedule – so not open to public scrutiny. Indeed, although the judge was concerned that the targeted activity may include criminal acts, he noted that the blocking criteria might lead to the blocking of websites which did not infringe Novo’s private rights, but breached regulation, thereby allowing Novo to act as if it were some sort of public regulator (a job perhaps instead for the MHRA, although it was said to support Novo’s initiative). The judge weighed the pros and cons and came out in favour of allowing dynamic blocking and the self-certification regime.

The blocking injunctions in this case undoubtedly have good intentions – not just for the claimant’s IP rights but for public safety and health. But I am a little wary of this obviously inventive solution to the challenges of internet enforcement. While it is one thing to allow a party to decide for itself when a website should be blocked, I think it is another to allow the criteria to do so to be kept hidden from the public and indeed any blocked websites themselves.

Thanks to my colleagues Emily Hufton and Charlotte Chan 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

Volume XIV – December 2023 to July 2024

Volume XV – August 2024 to February 2025

Volume XVI – March 2025 to July 2025

Volume XVII – August 2025 to February 2026