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A B C D E F G H I J K L M N O P R S T V W Y

IP & IT

#Trademarks in the Digital Age
Tuesday 4th September 2018

With the power of hashtags stretching across all industries and the increasing reliance on social media marketing, it is unsurprising that more and more companies are not only using hashtags in their marketing schemes but also in company names, with an increasing number wishing to register hashtags as a trade mark. The issue here is the lack of guidance in relation to successfully registering such trade marks and how trade mark law can be enforced on hashtags in the media.

#MERKY

Since the start of his career, grime artist Stormzy has established the use of “#MERKY” in his brand, even incorporating his record label as ‘Hashtag Merky Records Limited’. This name has headed up multiple strands of the global brand connected to Stormzy, including #Merky Festival, #Merky Airways and #Merky Books. To many #Merky is a recognisable primary element of Stormzy’s brand as a whole.

In February 2017, Stormzy filed an application to register an EU trade mark for his label #MERKY, whilst also filing for the same in the USA and Canada. The applications are still pending in the USA and Canada and the EU application has been opposed by Spanish company Laboratorios Byly, S.A, on the grounds that there is a likelihood of confusion between “#Merky” and “Perky”. The status of this opposition is still open. Given the outcome in the recent Mango v Yango case, it might be surprising if this opposition is successful.

Registering a hashtag trade mark

Trade marks provide the consumer with a unique and distinguishing sign that helps to differentiate the goods and/or services of one company from another. In particular, UK trade mark laws require that the sign is distinctive and recognisable in relation to a particular set of goods and/or services, whilst not being of a descriptive or generic nature. The hashtag symbol as a standalone feature would be unlikely to be deemed distinctive on its own due to its insignificant identifying nature and its recent ubiquity.

Although the hashtag symbol may not be registerable as a trade mark when presented on its own, if it is paired with a name or word identifying a particular brand in relation to specific services and/or goods, and without the possibility for confusion with other marks, then the mark would be likely to be considered registerable.

In terms of distinctiveness, it can be argued that in relation to Stormzy’s application for “#Merky”, it has been used solely by the artist since the start of his career and that it is a recognisable and distinctive feature of the brand.  

UK Registered #Trademarks

A forerunner in the registration of hashtags trade marks, Wyke Farms successfully registered “#freecheesefriday” in light of its weekly social media competition. In order to register this trade mark, Wyke Farms had to prove that the mark had acquired distinctiveness. Whilst doing so they claimed that around 880,000 people used the hashtag on a monthly basis.

This successful recognition of acquired distinctiveness in relation to hashtag trade marks is important for future applications as it highlights two points:

  1. Evidence of extensive use of the mark on social media can assist in proving acquired distinctiveness; and
  2. The UKIPO are willing to accept the data on the use of the hashtag on social media as evidence for the above.

Before applying for registration of a mark, it is worth assessing the longevity of a hashtag trade mark in your marketing campaigns. Similarly, if there are variations of the hashtag, for example “#MerkyFestival” rather than “#Merky”, it is important to note that these variations would not be covered under the same registered trade mark. If your company already has registered trade marks of the same nature but without the preceding hashtag symbol, it could be an unnecessary move to file an application as it is unlikely to benefit the distinctiveness of the business any further.

Are #trademarks enforceable against infringement?

As there is little in terms of case law to reference here, there are substantial amounts of uncertainty in terms of how an owner can deal with hashtag trade mark infringement. As a basis, if the use of the hashtag mark in social media is in line with the intended message of that mark, then the use would not been deemed infringing and rather, it would be considered to serve a promotional purpose. However, if the mark is used in a way that suggests a link to the owner, or inflicts uncertainty and confusion between the owners mark and the later hashtag, then there may be grounds for infringement.

If you would like more information on registering or enforcing trade marks, please speak to a member of our IP team.


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Yango Unchained - Mango lose trade mark opposition appeal
Saturday 18th August 2018

The decision reached in the recent MANGO v YANGO trade mark opposition may seem a little surprising. It now means that Yango International Limited (“Yango”) is allowed to proceed with the registration of their mark despite Consolidated Artists B.V.’s (“Mango’s”) opposition.

Mango chose to appeal to the Appointed Person (“AP”), in this case Emma Himsworth QC. They argued that the original decision handed down by the UKIPO Hearing Officer (“HO”) was incorrect for a number of reasons. It is also notable that Yango was successful both in the first instance despite not being represented and filing no evidence in the original opposition and no submissions in the Appeal.

First of all they contended that if Yango were allowed to register the word mark “YANGO” they would be able to use any stylisation of this word, including that used in the figurative Mango mark. The court was not taken with this argument and reminded Mango that it was required to compare Yango as a word to the stylised Mango mark. It was incorrect to compare the Yango mark as though it was stylised as this would fall outside its normal and fair use and change its substance. This raises a couple of interesting points, first of all it seems strange that Mango only have their mark registered as a stylised version and not the word alone. We would always recommend that clients register both the word mark and a figurative stylised version of their brand to ensure wider protection. Secondly, the court’s decision on this point hints that if Yango begin to use their mark in the same style as the Mango mark this could open the door for infringement action.

Next, the AP rejected Mango’s point of appeal that the initial letters in the respective marks had a central ‘V’ shaped element. It was held that the initial decision in respect of this point had been incorrect but that it was not a material mistake that would have led to a different decision. The AP reasoned that although there was a visual similarity to a “medium” degree, consumers would easily distinguish between the different letters “M” and “Y”, particularly as they were at the beginning of the word which they would more readily see.

Mango then asked the AP to consider the HO’s approach to assessing the conceptual similarities between the marks. The AP rejected Mango’s argument that the HO had erred in finding the marks to be ‘conceptually dissimilar’ rather than ‘not conceptually similar’. The HO had been correct in finding that the concept of the marks were quite different with Mango being a fruit or a tree and Yango being a made up word. Therefore, the AP held that the correct test had been applied and Mango’s semantic argument was rejected.

Finally, Mango argued that the AP had, in ruling that the conceptual differences were sufficient to avoid confusion between the marks, placed too much emphasis on this point and failed to properly consider the visual and aural similarities. This argument was rejected on the basis that Mango had not previously raised this.

It is interesting that Mango chose to appeal to the AO. Although this is usually quicker and less costly than a High Court appeal it does now mean that they have no further right of appeal. Case law has established that once a party has been unsuccessful in challenging the validity of a mark in registry proceedings they are estopped from attacking the mark in court proceedings (Hormel Foods Corporation v Antilles Landscape Investments NV [2005] EWHC 13 (Ch)).

As Mango cannot now pursue an argument of invalidity against Yango they may have difficulty bringing an infringement claim in relation to any UK rights as a Yango’s UK registered trade mark would be a defence to any UK TM owned by Mango. They may also have grounds for infringement of an EU right or for passing off, particularly as Yango has registered their mark in the same classes for similar goods which suggests an intention to use the mark in relation to such goods. It is difficult to pass comment on the likelihood of success in this respect as Yango does not yet seem to be using the mark. It is also possible to bring a quia timet action (to restrain wrongful acts which are threatened or imminent but have not yet commenced) but this has its own difficulties. Although the offence of passing off is more difficult to prove, if Mango can show that the Yango mark is being used in a way that is likely to induce a person to believe that the goods or services are those of Mango this option may be available. That being said, what appetite will Mango have for litigation having been stung in these proceedings?

Overall, whether or not you agree with the decision made by the AO, Mango is now in a difficult position with no avenue of appeal. This case highlights the importance of employing the correct strategies for protecting your brand’s IP. This includes registration not just of your logos but the underlying words and choosing the correct forum for appeal if a later mark does threaten your rights.

For more information about your trade mark rights and any oppositions; please contact a member of our trade mark team.


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IP Rights Post Brexit - An Update
Saturday 18th August 2018

In What We Know So Far, we listed the IP rights that will continue to be protected in an equivalent way and for the same period in the UK, providing that the right has been registered in the EU prior to the final day of the Brexit transition period. The blog also highlighted some areas that are still under negotiation.

The ‘Joint statement from negotiators of the European Union and the United Kingdom… published on 19 June 2018 has further clarified the position in respect of plant protection products and medicinal products. The paper states that Article 56 (relating to pending applications for supplementary protection certificates (SPCs) in the UK of the Draft Withdrawal Agreement has now been agreed at negotiators’ level as follows:

  • Regulation (EC) No 1610/96 and Regulation (EC) No 469/2009 of the European Parliament and of the Council shall apply in respect of applications for SPCs for:
    • plant protection products;
    • medicinal products; or
    • applications for the extension of duration of the above certificates.

Where the application has been submitted before the end on the transition period but where an administrative procedure was still ongoing at the end of the transition period.

It has been agreed at negotiator level that any certificate granted pursuant to the above shall provide for the same level of protection as that provided for in Regulation (EC) No 1610/96 or Regulation (EC) No 469/2009 i.e. the same level of protection that existed prior to Brexit.

Earlier this month, Parliament was presented with a white paper on The Future Relationship between the United Kingdom and the European Union’. Although this paper is not extensive in respect of the future of IP rights there are specific protections for geographical indications (GIs). These provide registered products with protection against imitation whilst also ensuring the protection of consumers from being misled about the quality or geographical origin of the goods. UK goods that will specifically be affected include Scotch whisky and Welsh lamb.

There is also confirmation that the UK will establish its own GI scheme post-Brexit that is not only in line with the World Trade Organisation (WTO) Agreement on Trade-Related Aspects of Intellectual Property (TRIPS), but will exceed these requirements by providing a ‘clear and simple set of rules on GIs, and continuous protection for UK GIs in the UK’. This scheme will be available to both new applicants from the UK and non-UK applicants immediately from the day that the scheme enters into force, the specific date of which is still unknown.  

Another area considered in the white paper is the Unified Patent Court (UPC). In April 2018, the UK Government ratified the Unified Patent Court Agreement, which highlighted its intention to seek to remain involved in the Court post-Brexit. As the Court follows a unique structure as a dispute forum for EU unitary patents and European patents, ‘the UK will work with other contracting states to make sure that the Unified Patent Court Agreement can continue on a firm legal basis’. Whilst there is no fixed timeframe for negotiations on this matter, this confirmation of intention and willingness to produce a solution post-Brexit will be warmly welcomed. However, it must be noted that the commencement of the UPC Agreement has been held up by constitutional challenges in Germany. The decision date for the German challenge is yet unknown. It also remains to be determined whether or not the UK can fully participate in the Unitary Patent or Unified Patent Courts post Brexit as it was an instrument set up by the EU for EU members (unlike the existing European Patent Convention which is not restricted to EU members only). For more information on the UPC see our previous articles.

The general tone that is apparent in this paper is that the negotiators appreciate and recognise the need for full co-operation on future arrangements in providing equivalent means of protection for IP right holders and ensuring that confidence and security remain operational both in and between the UK and the EU.

Shortly after the publication of the White Paper, the Parliamentary Under-Secretary of State for Exiting the EU, Robin Walker, confirmed that all existing EU trademarks, community-registered designs and unregistered designs in the UK, as we leave the EU, will be protected. To do so, the UK will clone the EU register granting 1.5 million new UK trademarks and registered designs automatically and for free.

This seemingly simplistic “solution”, while addressing the concern that existing EUTM owners should not lose any rights by the UK withdrawal’s from the EU, may have unnecessary complications and may create many duplicate and unwanted UK TMs. However in general this is good news for EUTM owners as it would enhance the rights they currently have at no extra cost.

Our view has always been to recommend clients file national applications (in EU Member States of key concern such as the UK) as well as EU TMs (for various reasons including in particular (i) that a UK right cannot be invalidated due to a prior right or lack of distinctiveness in another EU member state, (ii) for proof of use requirements once the marks have been registered for five years, and (iii) nuances of national laws such as in the UK a UK Registered TM being a statutory defence to infringement of another UK registered TM). It will obviously become more important to file separate applications in the UK post Brexit.

That said, the latest statement by Robin Walker may suggest that from a cost benefit only, if it is the intention to simply clone the EUTM register on the UK TM register (without charge to TM owners) upon Brexit (or following any transitional period), filing EUTM’s only at this stage may be a preferable option to TM owners. However, this position could change, and although Brexit may be as early as 29 March 2019, the relevant date upon which EUTMs are cloned into UK TMs could be much later if a transitional period or an extension is agreed. As such for the broadest protection, unless budget is particularly right, where use is EU wide, our recommendation remains to file both EU applications as well as national applications (in EU Member States of key concern such as the UK).

If you would like more information on your IP rights, please contact a member of our IP team.


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Four Fingers up to Kit Kat
Thursday 26th July 2018

Is this the final instalment in our series of blogs regarding Kit Kat’s ongoing battle to protect their 3D mark, the 4 finger chocolate bar?

That seems unlikely as the Court of Justice of the European Union (CJEU) has delivered its judgment dismissing their appeal in respect of the ruling that the EU Intellectual Property Ofiice (EUIPO) should annul their EU Trade Mark (EUTM). The matter has been sent back to the EUIPO for further determination. We have previously commented on related decisions here and here.

The mark is already protected in Australia, Canada and South Africa, and throughout the ongoing battle with Mondelez (owners of Cadbury, Milka and Toblerone amongst others) the EU courts have determined that Nestle have proved the bar’s distinctive character in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden, and the UK. Their case failed in particular in respect of evidence relating to Belgium, Ireland, Greece and Portugal. As they had not shown acquired distinctiveness in all EU Member States, they could not get EU wide protection

There is some concern amongst IP Lawyers that this decision sets a very high bar for EU TM for non-traditional trade marks (particularly shapes) whereby in order to prove distinctiveness in cases where the mark is not inherently distinctive in any territory they must prove distinctiveness in every single member state. In the words of the CJEU Press Release:

The Court upholds the General Court's judgment in which the latter held that the acquisition of distinctive character by a mark that was initially devoid of inherent distinctive character must be shown throughout the EU, and not only in a substantial part of the territory of the EU, and consequently, although such proof may be produced globally for all the Member States or groups of Member States, it is not, however, sufficient that the party with the burden of providing such evidence produces only evidence that fails to cover part of the EU, even a part consisting of only one Member State."

This represents a disadvantage of EUTMs over national marks in particular for non-traditional marks, where acquired distinctiveness through use is required to be proved in order to register the mark. TO be successful applicants may need to show acquired distinctiveness in all 28 Member States. As such if an entity does not use the mark in all Member States and/or has particular territories of trade, it may be beneficial to file national marks in those territories as well as (or instead of) an EUTM.

Despite fighting this battle for more than 10 years this latest decision leaves Nestle, the owners of Kit Kat, facing a number of less than ideal options in order to protect their “four trapezoidal bars aligned on a rectangular base” shape since it can no longer rely on EU wide protection under an EU trade mark (EUTM).

  1. Submit further evidence of distinctiveness in the territories where the court was not satisfied this had been done.

The CJEU’s ruling is not a final verdict, they now pass their decision back to the EUIPO to implement. It is standard for the EUIPO to allow the owner of the mark to file more evidence before it is annulled and we assume the same opportunity will be afforded to Nestle in this case. It may be that since the proceedings were brought, Nestle are now able to provide the EUIPO with sufficient evidence to prove distinctiveness in particular in Belgium, Ireland, Greece and Portugal, thereby overcoming the objections raised by Mondelez.

  1. Convert the EUTM into national trade mark in those member states where distinctiveness had been proven.

Nestle also have the option to convert the EUTM into national trade marks in the member states where they have been able to prove distinctiveness. Mondelez had appealed the ruling themselves on the basis that Mondelez consider the General Court found wrongly that the mark at issue had acquired distinctive character in the 10 member states listed. Their appeal was dismissed but it may be that they launch similar objections in each member state should Nestle chose to convert the mark.

  1. Submit TM applications in each individual member state.

Alternatively, Nestle can issue new applications in each member state and deal with any objections on a country by country basis.

Although it may be a victory for Mondelez (who have their own four fingered bar which is apparently very popular in Norway and predates KitKat) and arguably the cheap imitators and supermarket own brands today, it is unlikely that Nestle will take a break from enforcing their “four trapezoidal bars aligned on a rectangular base” chocolate bar, in just the same way as Mondelez seek to enforce rights in Toblerone.

If you are worried about how this decision might affect your EUTMs or would like more information on the different protection offered by national trade marks and EUTMs please get in touch with a member of our IP team (email: trademarks@brabners.com) who will be happy to assist.

 


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ICO investigation into Facebook, Cambridge Analytica and political campaigns
Wednesday 11th July 2018

A progress report published yesterday by Information Commissioner Elizabeth Denham provides insight into the ICO’s investigation of the Facebook/Cambridge Analytica scandal and the use of data analytics in political campaigns.

US social media giant Facebook has been issued by the ICO with a notice of intent to issue a fine of £500,000, for failing to take sufficient measures to safeguard users’ data and for its lack of transparency around the “harvesting” of personal data by third parties.

The notice follows the widely reported scandal involving, amongst others, data analytics outfit Cambridge Analytica, whose parent company SCL Elections Ltd also faces criminal sanctions for its failure to comply with a prior enforcement notice.

Facebook is under investigation for breaches of the Data Protection Act 1998 arising out of its failure to enforce its own policies on how user data may be collected and processed by other organisations. This led to an estimated 87 million users’ personal information being collected through a psychometric analysis app developed by Cambridge University academics, such data supposedly having then been used to psychologically profile and influence constituents in elections around the world.

Whilst a £500k fine would represent the maximum that the ICO may impose, and the largest fine issued to date by the ICO for data protection breaches, it is a fraction of the amount that Facebook could have been fined had the breaches occurred under the new GDPR regime, which came into force on 25 May this year.

According to The Guardian, if imposed, this fine would equate to a mere five and a half minutes’ worth of revenue for Facebook (based on figures from Q1 2018) – a sanction branded as “unacceptable” by privacy campaigners. Had the GDPR been in force at the time of the suspected breaches, Facebook could have been hit with a fine in excess of £1 billion based on 4% of its worldwide annual turnover, although we are yet to see the extent to which supervisory authorities will make use of the new maximum penalties under the EU Regulation.

The progress report also highlights warnings that have been issued to the UK’s 11 main political parties concerning their practices, including purchasing marketing lists without conducting due diligence on the legality of how that data was obtained, failing to provide fair processing information to data subjects and engaging third parties to undertake potentially unlawful analysis and profiling of individuals.

With widespread concerns that the data harvested from Facebook has been used in attempts to sway election results – including on both sides of the Brexit referendum in the UK and in President Trump’s election campaign in the US – by spreading misleading information to targeted individuals, this investigation illustrates the far-reaching impact that data protection breaches, by large data-led organisations such as Facebook, can have.


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The Lucky Country? Not if you’re a smoker.
Friday 29th June 2018

The World Trade Organisation (WTO) has ruled in favour of Australia’s law, introduced in 2011, that made it mandatory for cigarettes to be sold in brown packets that carry health warnings. Tobacco producing nations Cuba, Honduras, Dominican Republic and Indonesia argued to the WTO that plain packaging infringed on trademarks and intellectual property rights. Regular readers of our blog will be familiar with similar claims brought in the EU regarding similar UK regulations, which you can read about here: https://www.brabners.com/blogs/ip-&-it/uk-standardised-tobacco-packaging-rules-ok.

The WTO rejected their arguments that Australia could use alternative measures to achieve an equivalent benefit to public health. Australia was the first country to introduce the drastic packaging measures. Plain-packaging rules insist that 75% of the front of a cigarette pack is covered by a health warning, and 90% of the back. The packaging rules, coupled with significant (and still increasing) taxes and restrictions on where people may smoke in public places has seen a significant reduction in the number of smokers in the country.

Britain, Ireland, France, Hungary, Norway and New Zealand - have already followed Australia in introducing similar legislation. The WTO ruling paves the way for more countries to follow suit. The tobacco growing nations have promised to appeal the ruling, so watch this space. In the meantime, you can read Colin Bell’s comprehensive analysis of The Court of Justice of the European Union rulings on the Tobacco Products Directive here: https://www.brabners.com/articles/commercial-insight/repackaging-tobacco-industry.

For more information on plain packaging issues, contact a member of our IP team.


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Is this America? Then Let's Get it On
Friday 29th June 2018

Regular readers of our blog will remember our previous posts on music copyright, most recently here, https://www.brabners.com/blogs/ip-&-it/update-unsuccessful-appeal-and-settlement-%E2%80%93-status-quo-music-copyright-claims and here, http://insights.brabners.com/post/102ehdi/leave-it-yeah-lethal-bizzles-little-bit-of-intellectual-property-rights-in-thre. This issue seems to be in the news much more frequently these days. Perhaps following the considerable pay out (£4.8 million) awarded to Marvin Gaye’s heirs after a jury in the US found that Pharell William and Robin Thicke’s hit Blurred Lines was too similar to Gaye’s Got To Give It Up is to blame. Their lawyer said the case set a “horrible precedent” and indeed it may have fuelled these subsequent claims. Our thoughts on the original decision are here, http://www.brabners.com/tags/copyright-infringement-damages-pharrell-williams-robin-thicke-marvin-gaye-blurred-lines-.

Childish Gambino is the latest music maker to be hit with allegations of copying. Users on Reddit and Twitter began discussing how similar his “ground breaking track” This Is America, https://soundcloud.com/childish-gambino/this-is-america, particularly known for its video, https://www.youtube.com/watch?v=VYOjWnS4cMY and which has reached number 1 in the US charts, is to rapper Jase Hartley’s 2016 song American Pharaoh, https://soundcloud.com/jaseharley/american-pharaoh-produced-by-jase-harley. Having spent an afternoon listening to one song after the other I’m still undecided as to whether or not Childish Gambino’s song is a copy of Hartley’s. Other writers, more musically in tune than me perhaps, have pointed out the similarity in subject matter, lyrical tone, instrumentation, flow, and inflection. From my listening I would agree, it seems to be the overall vibe (if you will) that is similar, but is that enough to support a cause of action?

Luckily for Childish Gambino he is unlikely to have to defend himself in court. Hartley has responded to fans on social media by agreeing that it seems Gambino has been inspired by his track and urging listeners not to let the controversy surrounding the similarities to overtake the message both artists are trying to get across about race in America. Hartley has also pointed out that "All artist[s] get inspired by others.” And this is one of the concerns of artists globally, there are a finite number of musical notes and ways to put them together, when there are similarities it will not always have been a deliberate copy.

Ed Sheeran is unlikely to be as lucky as Gambino though. He has already settled a case in respect of his song Photographs, see https://www.brabners.com/blogs/ip-&-it/update-unsuccessful-appeal-and-settlement-%E2%80%93-status-quo-music-copyright-claims. Now, Structured Asset Sales who own one third of the copyright in Marvin Gaye’s song Let’s Get It On have launched legal proceedings worth $100 million against Sheeran in the US alleging that his song Thinking Out Loud copies "the melody, rhythms, harmonies, drums, bass line, backing chorus, tempo, syncopation and looping" of Gaye’s song. This comes two years after the estate of Ed Townsend (who also claim ownership rights in Let’s Get it On) made similar allegations (see http://www.brabners.com/news/intellectual-property-partner-colin-bell-speaks-bbc-radio-4-ed-sheeran-hits-headlines-over); their original claim in the US failed for procedural reasons although a subsequent one was refiled in 2017. With two cases looming and with the potential reputational risks for a popular song writer like Sheeran it would not be surprising for him to settle rather than risk court hearings but only time will tell.

Get in touch with a member of our IP team, particularly if you’re concerned that your music has been copied too!

 


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IP RIGHTS POST-BREXIT – WHAT WE KNOW SO FAR
Monday 18th June 2018

In March the European Commission published the “Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community”. The paper sets out the position of the negotiations so far and makes clear those areas that have been agreed by the negotiators (subject to technical legal revision) and proposals made by the Union which are still under discussion.

Many of the proposals in respect of Intellectual Property rights have been agreed between the negotiators. The UK has agreed that the following  IP rights will continue to be protected in an equivalent way, for the same period in the UK so long as the said right is registered in the EU before the last day of the transition period:

  1. EU trade mark;
  1. Community design;
  1. Community plant variety right;
  1. International trade mark (as per the Madrid system with the EU designation);
  1. International design right (as per the Hague system with the EU designation); and
  1. Unregistered community design.

The above rights will, where relevant, enjoy the same date of filing and date of priority in the UK as it does in the EU.

If any of the rights listed at points 1 to 3 above are declared invalid or revoked (or declared null and void and cancelled in the case of a Community plant variety) as a result of an administrative or judicial procedure that was ongoing on the last day of the transition period then the corresponding right in the UK shall also be declared invalid or revoked. The date of such declaration will be the same in the UK as it is in in the Union. In addition, any IP rights that have been exhausted in the EU and the UK before the end of the transition period shall remain exhausted both in the EU and UK.

If a person has filed an application for an EU trade mark before the end of the transition period and a date of filing was given, they will have 9 months from the end of the transition period to file an identical application in the UK and still benefit from the filing date and priority date allocated to the EU mark application. The same shall be true for an application for a Community plant variety right but the ad hoc right of priority will be 6 months from the end of the transition period.

Finally, the negotiators have agreed that holders of rights in relation to a database in the UK that arise before the end of the transition period will continue to be afforded the same level of protection as was afforded to them under the relevant EU laws.

Yet to be agreed between the parties are the rules on:

  • Geographical indication, designation of origin or traditional speciality (most famously these rules apply to products such as Champagne and Parmesan Cheese).
  • The registration of existing EU rights in the UK, whether the UK entities will be allowed to charge for this process and what information the EU entities will be required to pass to the UK.
  • How to deal with application for supplementary protection certificates that were submitted in the UK before the end of the transition period but was still outstanding.

From this position paper it appears that rights holders can expect to enjoy the same level of protection in the UK as they already do and do not have cause for concern at least until the end of the transition period and when such rights are due for renewal at which point the UK may have developed their own rules post-Brexit.

After the transition period, rights will cease to have effect in the UK, accordingly rights owners who wish to retain UK rights will need to ensure their UK rights are protected separately. We already recommend clients file national applications (in EU Member States of key concern) as well as EU TMs, this will obviously become more important in the UK post Brexit. While at this stage there is no need to do anything differently, clients may wish to give more consideration to separate UK rights and registrations in advance of Brexit and the end of the transition period.

For more information, please see http://brand-protection.brabners.com/ and please also visit our IP & IT page or contact a member of our IP Team.


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No chance of a break for Kit Kat
Monday 18th June 2018

As followers of our previous blog may remember, the EU General Court found that Nestle had failed to show that their 3D mark, Kit Kat’s four fingers, had acquired distinctive character through use in the EU. The Court found that Nestle had shown use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK.

Nestle raised an appeal, that was supported by MARQUES, The Association of European Trade Mark Owners. Their argument was that it would be impossible for anyone to provide adequate evidence if the registration of an EU mark could be refused because of lack of evidence of distinctiveness in a single Member State.

The Attorney General considered various legislation and case law in this respect and ultimately found that the General Court’s view could be summarised to say that “the acquisition of distinctive character is not linked simply to a majority of Member States and populations, but also to the concept of ‘geographical representativeness’. When proving distinctive character in respect of an EU trade mark application, the geographical nature of this requirement is not set out by Member State borders but the application must show how the distinctive character has been established across the territory of the EU.

An example given by the Attorney General is that companies may group together certain national markets due to historical links, or common languages, customs and practices. Accordingly, in those situations, an applicant could rely on evidence of distinctiveness in the UK market as sufficient for that in the Irish market or evidence provided in the Spanish market may also be sufficient for the Portuguese market, provided the applicant could show the relevant groupings and evidence of market comparability.

This may give Nestle some hope but the Attorney General still reached the opinion that the Court dismiss the appeal brought by Nestle. He explained that, “Nestle had not established, in respect of the product concerned, the comparability of the Belgian, Irish, Greek, Luxembourg and Portuguese markets with some of the other national markets for which it had provided sufficient evidence.”

To summarise, because Nestle had not established the relevant regions or parts of the EU where the distinctive character could be shown, they are not now able to claim (for example) that the Irish market (where insufficient evidence was provided) is part of the same market as Great Britain (where distinctiveness had been established) and so on.

Whilst the appeal appears at first glance to be nuanced legal arguments, if the Court follows the Attorney General’s opinion it will serve as useful guidance for other companies hoping to register a trade mark of “distinctive character” in the EU. Evidence does not need to be shown for each Member State but applicants should be careful to ensure that they establish the geographic regions across the EU that show “distinctive character” has been established across all regions.

If you would like to discuss your trade mark application in the EU, or any other jurisdiction, please contact our trade mark team at trademarks@brabners.com.


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Copyright and Planning Permission – brave (or stupid) to develop without assignment of rights
Monday 18th June 2018

Copyright and Planning Permission – brave (or stupid) to develop without assignment of rights

The case of Signature Realty Ltd v Fortis Developments Ltd and another [2016] EWHC 3583 (Ch), 17 February 2017 provides useful insight for developers and architects regarding the use of plans approved as part of planning permission.

The case concerned a property developer, Signature Realty Ltd (“Signature”), who secured planning permission for the construction of student flats in Sheffield city centre. Planning was approved on the basis of the drawing of their architect C&W. Signature subsequently encountered problems with funding and was unable to purchase the site.

Fortis Developments Ltd later bought the site and Beaumont Morgan Developments Ltd were engaged by them as the design and build contractor (jointly referred to as “the Defendants”). The planning permission granted to Signature was conditional upon the development being carried out in accordance with their C&W’s drawings which had been published on Sheffield’s Planning Portal. This contained a copyright notice that limited the use of the drawings to consultation purposes, for comparing current applications with previous schemes and for checking whether developments had been completed in accordance with approved plans.

It is commonplace within the development sector for site owners or developers to instruct architects to draw up planning designs on the proviso that the site will later be sold to a third party who will carry out the development in accordance with these designs without infringing copyright. So long as the architect has been paid for their work there will be an implied licence to use their plans for all purposes connected with the site to which the plans relate. This implied licence may be transferred and is not conditional upon the architects being included in any subsequent work.

In the Signature case the distinction was that the new owner, the Defendants, did not buy the site from the party which owned the copyright (Signature). They purchased the site from the owner who did not have any licence to the copyright or the ability to transfer this. The implied licence was with Signature who did not own the land.

In the decision the judge commented that there was no statutory or intellectual property right in planning permission. It was held that copyright did subsist in C&W’s drawings and that the bar for subsistence of copyright was not high. The Defendants had engaged their own architect but the judge found that there had been instances of infringement.

In order to avoid copyright infringement in relation to planning permission we suggest:

  • Remember that planning permission is not a licence to copy or use the approved plans. Planning permission and the public availability of the underlying designs is not a licence to use them.
  • Avoid copying or reproducing plans or drawings.
  • Be mindful that changing or using only a small part of the designs will not be sufficient to evade a claim for infringement. Substantial copying is sufficient and this is judged qualitatively as opposed to quantitatively.
  • Prior to acquiring a site carry our proper due diligence to establish who owns the copyright in the designs.
  • Secure a written licence or assignment of the copyright holder before using approved plans.

For any queries regarding Signature Realty Ltd v Fortis Developments Ltd and another [2016] EWHC 3583 (Ch), 17 February 2017, or copyright law in general, please visit our IP & IT page or contact a member of our IP Team.


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