The Chartered Institute of Trade Mark Attorneys (CITMA) have published and shared their position paper on post-Brexit registered trade mark and design rights, as well as rights of representation.

In the eight-page document, they have gathered all of their work to date on the rights of representation and registered trade marks and designs.

To read more and to download the paper please click here.

Abigail Nicholls discusses the recent dispute over Louboutin’s trade marked red sole.

Since 2010 Louboutin has owned a Benelux trade mark registration for footwear, later limited to high-heeled shoes, which includes the iconic red sole famously associated with the brand.

In 2013 Louboutin used this registration against Dutch retailer Van Haren, who also sold high-heeled shoes with red soles. They obtained a preliminary injunction to prevent the manufacture and sale of the red-soled shoes by Van Haren.

Van Haren appealed this decision and also challenged the validity of the trade mark. They argued that it is an invalid 2D shape mark and that the colour gives the shape substantial value, so should not be protected. The following question was referred to the Court of Justice of the European Union:

“Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95 … limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour”

Advocate general AG Szpunar issued a preliminary opinion in June, stating that there should be an overall assessment, taking both the shape and colour together. The rules do not prevent the registration of a mark which includes a non-functional element, although an assessment of the mark as a whole may bring the mark into the prohibition in Article 3(1)(e)(iii). This may be bad news for Louboutin, which is awaiting the judgment.

An interesting element of the opinion was that the reputation of the mark and its owner should not be taken into account when assessing whether a shape gives substantial value to the goods.

For any questions or further information please contact Abigail Nicholls.

Lionel Newton recently discussed the importance of Nordic IP in an article published by Danish-UK Chamber of Commerce.

A number of high-profile cases involving Nordic IP have enjoyed widespread media attention in recent months. From cell phone components to chocolate bars (and even the name of a Nordic country itself!), Nordic IP continues to show its importance on an international scale.

IP vs Goliath

Nokia and Ericsson are well known pioneers of the cell phone industry. Despite increasing competition from the likes of Apple and Samsung, the value of their IP (which was central to setting cellular standards) continues to provide them significant gains. In Dec ’16, Nokia asserted 32 ‘smartphone’ patents relating to displays, user interfaces, software, antennae, chipsets and video coding against Apple across multiple jurisdictions. Through leveraging their strong patent portfolio, Nokia has been able to enter into a financial agreement with Apple (thought to be worth hundreds of millions of dollars) allowing Apple to use its technology. Patents acquired from Ericsson have allowed Unwired Planet to enter into and subsequently settle infringement disputes with Goliaths Samsung, Google and Apple. More recently, the English courts ordered Huawei to pay a global fee to Unwired Planet for the use of technology covered by these patents. Acquiring these patents from the Swedish pioneer Ericsson has indeed proven worthwhile to Unwired Planet, and will yield further gains for Ericsson given that it was agreed that Ericsson should share revenues generated from the patents.

Trademarks

A critical judgement relating to the trade marking of ‘shapes’, in which Nestlé were refused a trade mark for the shape of its four-fingered KitKat bar, was highly influenced by the existence of Norwegian chocolate bar ‘Kvikk Lunsj’. The four-fingered rectangular shape of Kvikk Lunsj was significant ammunition for Cadbury (part of the same parent company which owns Kvikk Lunsj) when convincing the courts that this shape does not belong solely to the KitKat and should not be trade marked as such – as a result the Norwegian treat can continue to be sold in its original, beloved form.

Many will have heard of the Iceland trademark saga which broke at the end of last year, in which the Icelandic government is seeking to cancel the “Iceland” trademark owned by the supermarket of the same name. Iceland (the country) is pursuing this action to gain more freedom in national branding. However, Iceland (the supermarket) is unlikely to let go of the trademark easily, given the enormous value it brings to its brand strategy.

The value of a strong IP portfolio

These cases and their widespread media coverage have forced the world to stand up and notice the global impact of IP originating from Nordic companies. Given the enormous value of these cases, we’re sure more and more companies in Britain and elsewhere will seek to bolster their IP portfolio to Nordic levels of strength.

For any questions or for further information please e-mail Lionel Newton here.

Disclosure is often one of the first steps in any IP dispute, yet the rules across different jurisdictions can be confusing, as a comparison of the regimes in England and Wales, France and the United States demonstrates.

Margaret Arnott considers a comparison of these regimes in a recent article published in World Trademark Review. To read the article please click on the link below. To read more about our team please visit the Litigation hub, or to contact the team please email [email protected].

In June 2017 the Court of Appeal decided in favour of BMW in an appeal from the Intellectual Property Enterprise Court “IPEC”, regarding alleged infringement of three of BMW’s trade marks by Technosport.

Technosport is a garage in London which specialises in BMW repairs and maintenance, although there is no formal connection between the garage and the famous car manufacturer. Technosport was accused of infringing trade marks including “BMW” and also BMW’s iconic roundel symbol, by displaying the marks on the exterior and interior of its business premises, on business cards and on its website. Technosport was also accused of using the trade marks on social media, on t-shirts and on the rear of its van, although these uses were all in close conjunction with the word “TECHNOSPORT”.

The IPEC judge decided that use of the trade marks on their own, i.e. on the premises, business cards and the website, indicated to consumers that Technosport was formally linked to BMW, which misled consumers and was an infringement of their trade marks. However, the court separately decided that use of the trade marks in conjunction with Technosport’s own name was not an infringement (the use on social media, t-shirts and on the van), as there was no evidence from actual consumers that this use indicated that Technosport was authorised by BMW. BMW appealed the latter element of the judgment.

The Court of Appeal considered the difference between informative use of trade marks, such as explaining that a business can repair BMW cars and uses genuine BMW spare parts, versus misleading use, which would indicate a false commercial connection. The use of trade marks by businesses such as those which specialise in repairs to specific brands of car, is not automatically an infringement of those marks; the important consideration was whether that use of the marks conveyed a true or false message to consumers.

The Court confirmed that it was responsible for assessing what message was conveyed to an ordinary consumer, rather than it being a requirement for the claimant to provide evidence from actual consumers. The court concluded that use of BMW’s trade marks in conjunction with Technosport’s own trading name, i.e. Technosport BMW, was more than informative and carried a risk of misleading use. Therefore BMW succeeded in its appeal.

This decision clarifies the law for those working with car repairs and genuine spare parts. The manufacturer’s mark can be displayed, as long as the services provided are made clear and there is no misleading message to consumers.

It is interesting to note that, although the court stated it was not BMW’s strongest argument, use of registered trade marks in social media handles can constitute trade mark infringement.

For any questions or further information please contact Margaret Arnott or Abigail Nicholls. 

In the latest edition of Intercontinental Finance & Law magazine, Margaret Arnott has outlined the key differences between disclosure rules in three major IP Litigation forums; the U.K, the U.S and France.

Disclosure (for discovery) refers to the stage in a litigation process whereby each party is required to exchange copies of documents relevant to that dispute to the other side. The different disclosure regimes which exist in these jurisdictions highlight the complexities surrounding litigation, and the extent to which litigation proceedings can differ across various territories.

To read the article please click on the link below. To read more about our team please visit the Litigation hub, or to contact the team please email [email protected].

As part of the Israel Desks International Legal Guide 2017, Dani Kramer has provided some top tips to Israeli firms’ developing their patent strategy.

Israeli companies naturally see the U.S. as their number one priority when seeking overseas patent protection for their technology. However, Europe and China, the two other world economics of similar size, have some considerable differences in local patent practice, so an IP strategy primarily focused on the U.S might well lead to missed opportunities in these other major markets.

Dani’s article outlines the key differences to consider when protecting and enforcing IP in the U.S., China and Europe, including costs, type of protection available and enforcement. To read the article in full please click here. 

Dani Kramer heads up our Israel Practice. For further information please contact Dani at [email protected], or +44 207 830 0000.

We teamed up with Insider Media as we were keen to understand the value that businesses in the North West place on their Intellectual Property (IP), and the role that it plays in  protecting their brand.

The results have revealed that many businesses regularly create new brands,  and recognise that they possess IP. However we found it surprising that very little actively protect, enforce or commercialise their IP, and more worryingly, less than 20% of respondents have a comprehensive IP policy in place. Please click on the link below to read the results of the survey, as well as our key findings.  

With the UK election over, attention in the world of patents can turn back to the ratification process for the Unified Patent Agreement. The Chairman of the UPC Preparatory Committee has released a statement indicating that he is hopeful that the sunrise period of the UPC might start in early 2018 and the UPC might be brought into effect in Spring 2018, but the timing is reliant on ratification progress in the signatory countries.

In the UK, the legislative process to ratify the UPC has been resumed with the order to bring the Protocol on Privileges and Immunities being laid before parliament, allowing it to start the process of being considered by committees in the House of Commons and the House of Lord. This process is not expected to be complete until at least Autumn 2017.

However, while it is not unreasonable to hope that the UK ratification process might be complete in time to meet the new timetable, a recent court action in Germany has called into question whether German ratification might face significant delays. We may see further revisions to the timetable before this chapter in the harmonisation of European patent law is brought to a conclusion.

If you have any questions about the UPC please speak to your attorney at Mathys & Squire or contact Caroline Warren at [email protected]. 

The London Mayor has announced ambitious plans to make London’s transport system zero emissions by 2050, a shift away from polluting vehicles being key part of the strategy to make London a greener, healthier city to live in. As part of his strategy, Sadiq Khan has introduced an additional £10 pollution charge on the most polluting of vehicles as of October and has called on the government to incentivise a diesel scrappage scheme.

Environmentalists, and others, believe that these schemes should be rolled out nationwide to protect other areas from the same level of pollution. But where will this leave the UK’s car manufacturing industry, and indeed those car owners who may be captured by such schemes?

Despite fears in the industry regarding the weak pound and what Brexit will entail, the UK car industry remains the country’s largest manufacturing export sector with a national supply chain and a presence in every UK region. The government is being urged to boost funding for the UK manufacturing industry to ensure that companies remain in the UK despite its exit from the European Union.

There is no getting away from the fact that for the economy the country needs to keep these big manufacturers within the UK. If they leave, the financial repercussions and job losses will be disastrous.

However, the rolling out of new and more efficient vehicles across commercial and domestic transport will take time, not least due to the amounts of capital needed to fund replacements.

So, what is one of the solutions in the meantime? – Funding green technology to reduce diesel emissions.

The United Kingdom is indisputably a country of technological innovation. The solutions needed to ‘clean up’ the toxic air, already exist locally and the government should engage with local businesses to source technologies capable of minimising the number of harmful by-products being pumped out. One example is reducing the amounts of harmful exhaust particulates from diesel engines using green solvent, dimethyl carbonate (DMC), which is non-toxic, VOC exempt (already approved for commercial use), biodegradable and environmentally friendly.

Green Lizard Technologies, a client of intellectual property firm, Mathys & Squire has recently launched an innovative new process which uses DMC to eliminate 80 to 90% of exhaust particulates from conventional diesel engines without the need to modify the engine. DMC itself is a well-known solvent and has been approved for use in Europe for a number of years already. Its use in diesel engines would help eliminate health issues associated with diesel engine fumes and solve one of London, and indeed the UK’s key challenges without a need for changing engines.

We worked closely alongside the team at Green Lizard Technologies to help identify and patent key areas of technology and chemical compounds in their ground-breaking process.

“By further investment in key science areas in universities and their spin-outs, as well as providing funding to those that innovate to provide green solutions; the government could turn a bad situation in to a good one not only in terms of the motor industry, but in improved health of the population. The advantages to the UK economy would also be great, by funding local businesses to help develop such products, the economy would be boosted both by using the technology locally and developing it for export to other countries.”

While Sadiq Khan quite rightly has big plans for the capital’s air quality, we can only hope that the current government does the right thing to safeguard the strength of the UK’s manufacturing industry. Investing today can only lead to a healthy more prosperous economy in the future.