IP Two Minute Monthly – August/September 2020

This is our summary of developments and cases in the world of IP from August and September which should take you no more than four minutes to read (two per month!):


Frand Licences and Patents

The UK Supreme Court has confirmed that the UK courts do have jurisdiction to decide the FRAND rates for a global licence relating to an international portfolio of Standard Essential Patents, even where the validity of non-British patents is in issue. For a detailed summary of the judgment see our article here.

Royalties and Trade Marks

A UK trade mark application for a figurative mark featuring a rearing lion (animals in trade mark cases are rarely static!) wearing a crown with the words THE ROYAL BUTLER underneath, to cover educational and entertainment services, was refused based on the little used s.4(1)(d) Trade Marks Act 1994 which prevents registration of marks which suggests Royal patronage. The public would consider the words would suggest the owner had or recently had Royal patronage, and the use of a similar lion image to that appearing in the Royal coat of arms did nothing to dispel that impression.

Brexit and Customs

While the UK Customs authorities will no longer be able to take action in relation to EU Applications for Action (AFAs) filed under the Customs Regulation post-Brexit, certain aspects of the Regulation will continue to apply in Northern Ireland, so that a decision made in an EU member state could still cover Northern Ireland after the end of this year.

Instruments of Deception and Passing Off

In finding in favour of the Claimant in a passing off action against the manufacturer of a cleaning fluid for turbines called Turbo-K, the UK High Court held that the product bearing the Claimant’s product name (in which it owned goodwill) amounted to an instrument of deception. It did not matter that UK distributors would not have been confused because they would have realised that the Claimant and Defendant were different manufacturers, since the ultimate purchasers of the product, even if based overseas, would have been confused (Turbo-K Ltd v Turbo-K International Ltd [2020] EWHC 2078 (Ch)).

Shapes and Trade Marks

Jaguar Land Rover failed in its appeal against a UK IPO decision allowing an opposition against its trade mark applications for the shape of two Land Rover Defender models. The Hearing Officer was entitled to find that the shapes did not depart significantly from those of other passenger cars, applying the approach taken in our London Taxi Corporation Ltd v Frazer-Nash Research Ltd case, and that they had not acquired distinctiveness so as to guarantee the shape trade mark as an indicator of origin (Jaguar Land Rover Ltd v Ineos Industries Holdings Ltd [2020] EWHC 2130 (Ch)).

Drinks and Trade Marks

After supermarket chain Aldi launched a lookalike beer to Brewdog’s Punk IPA, the companies have now collaborated to sell a beer called ALD IPA following Brewdog’s tongue in cheek response with its YALDI beer.

Music, Royalties and Copyright

The CEJU ruled that Member States were not permitted to pass laws which prevented non-EEA nationals from being entitled to remuneration under the Rental Directive. The only condition for the right to be triggered is that a phonogram or a reproduction of it is used for broadcasting by wireless means or for any communication to the public within the EU. Further, the remuneration could not be paid just to the producer, but had to be shared with the performer (Recorded Artists Actors Performers (Case C-265/19)).

Famous People and Trade Marks

The CJEU has confirmed that footballer Messi was entitled to a figurative trade mark including the name MESSI because it was not confusingly similar to an earlier EUTM for MASSI, both covering clothing, given his reputation. The court was entitled to take into account of Messi’s reputation when assessing the conceptual similarity between the two marks.

Specifications and Trade Marks

The CJEU upheld the General Court’s refusal to include “electrical energy” within the class 4 specification for an EUTM for Edison on the basis that the ordinary meaning of the terms “illuminants”, “fuels (including motor spirit)” and “carburants”/”motor fuel” did not include electrical energy (Edison SpA v EUIPO (Case C 121/19 P)).

Inventors, AI and Patents

The Patents Court has rejected an application for a patent in which the inventor was named as an artificial intelligence machine. The inventor had to be a natural person. The Court left open the question of whether the person who owned or controlled the machine could be the inventor (Stephen L Thaler v Comptroller-General of Patents, Designs and Trade Marks) [2020] EWHC 2412 (Pat)).

Drinks and Trade Marks

The High Court held that the sale of bourbon whiskey under the mark AMERICAN EAGLE infringed the claimant’s trade marks for EAGLE RARE registered for bourbon whiskey as there was a likelihood of confusion. For the purposes of infringement under 9(2)(c) of the Trade Marks Regulation (although the court had already found infringement under 9(2)(b)), the claimant need only show a “commercially significant” part of the public was aware of the mark for the goods/services for which it had been used if the trade mark owner was only seeking to restrain infringement in respect of those goods/services (Sazerac Brands LLC v Liverpool Gin Distillery Ltd [2020] EWHC 2424 (Ch).

Genuine Use and Trade Marks

The EUIPO’s Cancellation Division have cancelled Banksy’s trade mark consisting of one of his artworks of a man throwing a bunch of flowers on the grounds of bad faith because he did not have any intention to use the EUTM in relation to the contested goods and services at the time he filed his EUTM. Setting up a shop to sell merchandise featuring the work after the proceedings had been commenced was found to be “inconsistent with honest practices” and did not amount to a genuine intention to use the image as a trade mark (issuing a statement saying he had been advised to open the shop to prevent losing his trade mark worked against him). The Cancellation  Division also said that trying to use trade marks in substitution for copyright protection (which was not available to Banksy while he remained anonymous as he could not prove title to his own work) was not a function of trade mark protection.

Brexit and Trade Marks

The EUIPO issued a new communication on 11 September on various Brexit-related changes, including confirmation that from the start of next year trade mark distinctiveness and “earlier rights” established through use in the UK will no longer be relevant in EUIPO proceedings, although proof of use in the UK before the end of this year will continue to be relevant to support genuine use of an EUTM.

EU, China and Geographical Indications

The EU and China signed an agreement under which they agreed to register 100 EU GIs in China and vice versa.

Simon Clark


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