The Full Court of the Australian Federal Court has found that marketing a product as an “alternative” to a trade-marked brand is no answer to a claim of infringing use as a trade mark. In Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163, Justices Jagot, Lee and Thawley took … Read more

The transition towards a circular economy is central to global sustainability objectives. National governments are also increasingly looking to regulate production processes in order to encourage the private sector to design out waste within their value chains. While related policy objectives and regulatory developments are abundant, the legal implications of this fundamental shift within production and consumption processes have faced little scrutiny to date. Our article, published in the August 2021 edition of PLC Magazine, sets out key legal considerations for businesses in the private sector that are engaged in the journey towards circularity, including the legal risks and consequences associated with the adoption of circular business models (including IP, know-how, collaboration, competition, supply chain and contractual risks). Read more

The Court of Appeal of England and Wales has granted Sky's appeal from the High Court decision that had held that some of its trade mark registrations were applied for in part in bad faith. The Court of Appeal found that it was not bad faith not to have an intention on application to use a mark for everything that could fall within a specification term (here "computer software"), nor was there a requirement to demonstrate a commercial strategy for using every type of good or service that could fall within a general description. The decision reaffirms that bad faith will only be found in exceptional circumstances, which were ultimately not found in this case. Read more

In the first ruling on a sound mark submitted as an audio file (rather than a word description of the sound) the General Court dismissed the appeal from the EUIPO's rejection of the application for lack of distinctiveness whilst also clarifying the criteria for assessing the distinctive character of sound marks and the perception of those marks in general by consumers. Ardagh Metal Beverage Holdings v EUIPO (T-668/19) 7 July 2021. Read more

Our latest intellectual property related briefing in the HSF "Views on an evolving automotive industry" series, concentrates on the importance of a clear IP strategy for automotive sector businesses. It considers the necessary elements of a successful IP strategy and the heightened importance of such a strategy in the context of an industry where new systems and technologies are taking centre stage. Read more

The UK Intellectual Property Office has published a consultation on the UK's exhaustion of intellectual property rights regime and what changes might be appropriate post-Brexit, including how such changes should be implemented. The consultation runs for 12 weeks until 31 August 2021. Here we outline the principles behind the different types of exhaustion regime, and summarise the options proposed by the consultation, highlighting the issues associated with each. Read more

Herbert Smith Freehills' European IP team have had a feature article on the EU's IP Action Plan published in the April edition of PLC Magazine – see EU Action Plan on IP – the challenge ahead here. The article looks at the current challenges for the EU in relation to IP, its key focus areas and plans for future regulation and legislation, including: • The Unified Patent Court (UPC) • Supplementary Protection Certificates (SPCs) • Compulsory licensing • Standard Essential Patents (SEPs) • AI and emerging technologies • Counterfeiting • Designs • Geographical Indications • Data • The Pharmaceutical Strategy for Europe Read more