Advocate-General opinion sets the bar high for establishing infringement of the registered geographical indication ‘Scotch Whisky’ by the use of ‘Glen’

Certain geographical indications (“GIs“) are protected by EU Regulation 110/2008/EC, which aims to ensure that use of such indications is to identify a spirit drink as originating within a certain territory where a given characteristic is attributable to its geographical origin. In the case of The Scotch Whisky Association, The Registered Office v Michael Klotz, the Advocate General has provided guidance, for the first time, on the extent to which a protected geographical indication (being ‘Scotch Whisky’) with no similarity, either phonetic or visual, with a designation (being the term ‘Glen’), may nevertheless be infringed by that indication.

The Advocate General’s opinion states that the use of ‘Glen Buchenbach’ on the label of a whisky produced by a distillery located in Germany is: (1) not unlawfully ‘indirectly using’ ‘Scotch Whisky’ unless ‘Glen Buchenbach’ is identically or phonetically and/ or visually similar to ‘Scotch Whisky’; and (2) not unlawfully evoking ‘Scotch Whisky’ unless, when the average European consumer is confronted with the term ‘Glen’, the image triggered in his mind is that of ‘Scotch Whisky’.

The Scotch Whisky Association had taken issue with Mr Michael Koltz’s use of the term ‘Glen’ alongside the word ‘Buchenach’ (a valley) on the labels of the German-produced whisky. The whisky labels included the address in Germany where the whisky was produced. However, such additional information is not necessarily to be taken into account when looking to establish the existence of a prohibited ‘evocation’, nor a ‘false or misleading indication’, the Advocate- General opined.

The Court of Justice will deliver its judgment later in the year hopefully, but the Advocate General has set the bar high for infringement of a GI.

A link to the decision can be found here.

Author

Jessica Welborn
Jessica Welborn
Associate
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+44 20 7466 2243

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Filed under GIs

Dyson argues against unfair and misleading labelling comparison by competitor

Compulsory energy labels on vacuum cleaners must strictly comply with an EU Labelling Regulation. In the case of Dyson Ltd, Dyson BV v BSH Home Appliances NV (C-632/16), the Advocate General of the EU Court of Justice held that there is no leeway within energy label regulations regarding the format or content of energy labels. This means that energy labels must contain only the classification of a vacuum cleaner’s energy consumption as required by the Regulation, and cannot specify the conditions under which the energy tests were performed. In addition, supplementary labels clarifying the information further are not acceptable.

Dyson brought this action against BSH, arguing that BSH’s energy labels were misleading consumers in breach of the Unfair Commercial Practices Directive 2005/29/EC, because they did not explain BSH’s tests were carried out with an empty dust bag. Dyson’s own products do not have a dust bag, and so there is no loss of energy efficiency during normal conditions of use. However, BSH’s vacuums do have a dust bag—and therefore Dyson argued become more energy inefficient the more the dust bag is filled. Dyson sought to force BSH to specify its testing conditions on its energy labels, or for its current energy labels to be declared misleading.

The Advocate General found that the specific, standardised information selected to be provided to consumers was a deliberate choice by the EU Legislature. The methodology for measuring energy efficiency of vacuum cleaners is not included in the information to be provided to consumers. Therefore, BSH cannot be required to include additional test procedures on its labels and it is not necessary to consider whether BSH’s current practice is misleading. He concludes that the Unfair Commercial Practices Directive does not apply in situations where a Regulation provides no lee way for the traders involved.

Dyson will have to wait to see if the Court of Justice leaves the competition in the dust.

A link to the decision can be found here.

Author

Emma Sherratt
Emma Sherratt
Associate (New Zealand)
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+44 20 7466 2385

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Filed under Consumer products, EU

“Two stripes are enough” – adidas succeeds in opposing competitor’s 2 stripe trade mark application on basis of its 3 stripe registration

The similarity between a two stripe design for shoes and adidas’ earlier trade mark for its renowned three stripe shoe, combined with adidas’ significant reputation in that mark, means that adidas can oppose the two stripe application for use on shoes, as there is a substantial risk that the use of the two stripe mark being applied for is taking unfair advantage of the reputation of adidas’ mark.

This decision by the EU General Court on 1 March 2018 (cases T-85/16 and T-629/16) is a reminder that the courts will take a strict view on trade mark applications that sail too close to famous marks.  In this case, the General Court was particularly scathing of a 2007 advertising campaign used once by a licensee of Shoe Branding Europe, which featured the slogan “Two stripes are enough”.  The General Court considered this as evidence of the risk of unfair advantage being taken of the repute of the adidas mark by Shoe Branding Europe.  Care must be taken by brand owners not to engage in, and to ensure that any licensees do not engage in, marketing campaigns that could be misconstrued as taking advantage of, or seeking to trade on, the repute of a similar earlier mark.

The decision also suggests that any use of the two stripes by Shoe Branding will likely be infringing, given the findings of the General Court in relation to registration and the similarity of the tests for trade mark infringement. Last year, adidas sued Puma in relation to the latter’s use of four stripes on sports footwear.

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Filed under Consumer products, EU, Trade marks & Passing-off, UK, Uncategorized

Supreme Court considers the role of plausibility in UK patent law

This week the Supreme Court is hearing an appeal in Warner-Lambert v Generics (UK) Ltd (Mylan) and others (UKSC 2016/0197) which will consider the following questions relating to the role of plausibility in UK patent law:

  • “Whether (and what) role plausibility should play in the statutory test for sufficiency, and whether a patent should be held insufficient for lack of plausibility even though it is in fact enabled across the full scope of the claim.”
  • “If a plausibility test is appropriate, provided there is basis to support the claim across part of its scope, whether later evidence can be used to fill the gap.”

“Plausibility” has been an increasingly hot topic in patent litigation in recent years, particularly in cases relating to pharmaceuticals, and its rise has not been without controversy amongst patent lawyers.  It has most frequently been associated with inventive step and insufficiency, but it has also come up in relation to industrial applicability, priority and novelty and it is now a firmly established concept for any lawyer considering the validity of a patent.

What is required for something to be “made plausible” has been considered by the Supreme Court before (HGS v Lilly (2011), in which it was found to be a low, threshold test) but that was in the context of industrial applicability.  This appeal to the Supreme Court asks the fundamental question of whether (and what) role plausibility should play in the statutory test for sufficiency.  The Court of Appeal has accepted that plausibility plays a role in sufficiency (and inventive step), based on EPO Technical Board of Appeal case law relating to both inventive step and insufficiency, combining it with English law relating to principles of general application.  It will be particularly interesting to see how the Supreme Court approaches this question, given the firmly established case law in the EPO on this issue.

Fundamentally, this is a question about what is required of a patentee at the time they file a patent application – is it enough for them to speculate in the specification on a possible use for the claimed compounds, in the hope that that speculation will later turn out in fact to be true (if it is not, the claim will be insufficient anyway), or should public policy require that the patentee at least provides some real reason for believing that the proposed use is true at the time of filing, to prevent patentees from excluding others from large areas of research in the hope that active compounds turn up one day?  The answer to that question has potentially significant ramifications for patentees, both in terms of what they need to be including in future patent applications by way of reasoning and/or data (which may affect the stage of the R&D process at which they are able to file them) and in considering the validity of their existing patents.  It is interesting that the UK BioIndustry Association has intervened in the case – more details on their position can be found here.

It’s worth noting that as well as the plausibility questions being considered, the Supreme Court will also hear argument on questions regarding expert evidence on claim construction and abuse of process in relation to late claim amendments, the answers to which may have effects on routine practice in the Patents Court.

Authors

Andrew Wells
Andrew Wells
Senior Associate
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+44 20 7466 2929

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Filed under Patents

12 key developments in trade mark law you might have missed in 2017

Missed any of the big trade mark developments from 2017?  Key developments include the Supreme Court finding that there is potential criminal liability for dealing in parallel imports under section 92(1) the Trade Marks Act 1994 and the Court of Appeal making it ever more difficult for brand owners to obtain shape mark protection in light of its judgments on acquired distinctiveness. We also review the impact of two particularly important areas of new legislation: the EUTM reforms and a new unjustified threats regime which both came into force on 1 October 2017.

Read our Trade mark update for the start of 2018, on the key trade mark cases and legislation from 2017 here.

Authors

Joel Smith
Joel Smith
Head of IP - UK
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+44 20 7466 2331
Sarah Burke
Sarah Burke
Senior Associate, London
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+44 20 7466 2476

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Filed under Consumer products, EU, Trade marks & Passing-off, UK, Uncategorized

BREXIT AND IP – LAW SOCIETY NOTE CALLS FOR GOVERNMENT ACTION

The exact mechanics of how Brexit will materialise and what it would mean for intellectual property rights in the UK is still unclear. However, time is now running short and the main representative bodies for IP practitioners have become concerned that IP rights (which are some of the assets most likely to be adversely impacted by Brexit – indeed in some cases at risk of being lost without specific provision being made by the UK Government prior to Brexit) have not been receiving the attention they require.

On 22 December, a note was sent to the UK Government by the Law Society which had been contributed to and signed by representatives of the IP Committee of the Law Society of England and Wales, and of the IP Bar Association, the Chartered Institute of Patent Attorneys (CIPA), the Chartered Institute of Trade Mark Attorneys (ITMA) and the IP Federation (whose website also carries a copy of the note).

The note makes the case for the UK as a key IP forum and identifies “a short list of the biggest areas where Government action is necessary to ensure continuity and certainty of IP law and to prevent disruption both to undertakings which use IP services and IP service providers“.

The following are some of the key recommendations made by the note:

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Filed under Brexit, Consumer products, Copyright, Designs, EU, Patents, Pharma, The Unified Patent Court and the Unitary Patent, Trade marks & Passing-off, UK

THE UNIFIED PATENT COURT (UPC) – OPEN FOR BUSINESS IN 2018?

At the start of 2017 the expectation was that the UPC Agreement would achieve the required ratification levels and that the UK could well ratify in advance of Brexit in order to become a full participant, even given the question marks that arose about the ability of a non-EU jurisdiction to be part of the new unitary and European patent enforcement system. Now, at the start of 2018, things are still uncertain.

Despite the IP Minister’s announcement in November 2016 that the UK would ratify, no ratification was forthcoming, although the UK has drawn closer to ratification as a result of the International Organisations (Immunities and Privileges) (Scotland) Amendment (No 2) Order 2017 being approved by the Scottish Parliament on 25 October 2017. This order will confer certain privileges and immunities on the UPC and its judges and other staff. The equivalent statutory instrument, the Unified Patents Court (Immunities and Privileges Order) 2017 was laid before the House of Commons on 26 June 2017 and following approval by both chambers of the Westminster parliament (including the House of Lords in December 2017), it is waiting approval by the Privy Council, along with the Scottish order. Representative bodies of IP practitioners joined together shortly before Christmas 2017 to send a note to the Government on the key areas that need addressing prior to Brexit, including ratification of the UPC Agreement (see our post on this here).

Elsewhere in the EU three more states ratified the UPCA in 2017: Italy, Estonia and Lithuania, and Latvia on 11 January 2018. This brings the total number of ratifying states to 15 more than the 13 required, but still missing two of the mandatory ratification states other than France: Germany and the UK (while it is still in the EU).

However, with France ratifying the Protocol on Privileges and Immunities at the end of December 2017 and Belgium adopting legislation in December to implement the UPC, the EU looks poised to commence the new court system as soon as possible once the UK leaves the EU. This will be possible only once Germany has ratified. Italy will take the place of the UK as the third mandatory ratifier after France and Germany, and has already ratified as mentioned above. Continue reading

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Filed under Brexit, EU, Pharma, The Unified Patent Court and the Unitary Patent, UK

Future of Consumer – Targeted Advertising

It is estimated that the average consumer is exposed to up to 10,000 ads in a single day. Advertising is a big part of the consumer experience and as technology increasingly plays a protagonist role in our daily lives, it is no news that online advertisements are steadily replacing the more traditional forms of publicity. The UK’s Internet Advertising Bureau recently announced that the overall digital ad spend in the UK grew by 13.8% to £5.56bn in the first half of 2017 alone, with spend in online video ads overtaking the expenditure on banner ads for the first time. At the same time, over 40% of the world’s population now has access to the internet and users are constantly leaving digital footprints, across a range of online channels, by willingly sharing mass volumes of useful data.

This creates a huge market for advertisers, as well as a vast pool of insightful information about consumer behaviours and preferences. Technology giants such as Google and Facebook are also making an impact by creating platforms that enable data not only to be collected more easily but also analysed and extracted.

These combined developments have kick-started the reshaping of the advertising industry, particularly in terms of enabling organisations to target advertising at their most receptive audiences. And the forms of targeted advertising continuously evolve – they can be based on a wide range of information, including browsing history, purchasing habits, sociodemographic traits such as consumers’ age, gender, race and economic status, psychographic characteristics, including a consumer’s lifestyle, opinions and values, or geographic location, to name a few. Add to the mix the increasingly sophisticated technologies that companies are developing and applying to deepen their understanding of consumer reactions and accurately predict behaviours, and you end up in a world where advertising becomes almost shockingly personalised.

In our second article in our Future of Consumer series on the key issues facing the Consumer Sector, we look at Targeted Advertising, including some of the methods that can be used for tracking consumers’ digital footprints, new technologies which are developing to identify consumer reactions to adverts, as well as certain privacy, data and consumer protection issues arising from this topic.

See the first article in our series, The Future of Retail: AI, VR and AR,  or visit the Latest Thinking section of the Consumer Products Sector pages of our website.

 

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Filed under Advertising, Consumer products, Media, Technology, media & telecommunications, Trade marks & Passing-off, UK

CJEU RULING IN COTY – GREATER ONLINE PROTECTION FOR LUXURY GOODS SUPPLIERS

In its hotly anticipated ruling in the Coty case, the Court of Justice of the EU (CJEU) has held that, in the context of a selective distribution system, a restriction imposed on an authorised retailer not to sell the goods through online third-party platforms does not infringe Article 101(1) TFEU provided that the following conditions are met:

  • the objective of the restriction is to preserve the luxury image of the goods concerned,
  • it is applied objectively and in a non-discriminatory manner, and
  • the restriction is proportionate and does not go further than necessary.

The ruling will be welcomed by suppliers of branded and luxury goods who have increasingly expressed concerns over the potential erosion of the image of their products as a result of the recent growth in online sales, in particular on third-party online platforms such as Amazon and eBay.

In order to maintain a level of quality control over online sales of their products, suppliers of luxury goods are more frequently resorting to vertical integration and handle the distribution in-house. The Coty ruling now confirms that sales through third party distributors will allow suppliers the same level of quality control. Suppliers will still, however, need to show that their distribution system either meets the thresholds of the VABER or otherwise that their product is indeed a “luxury” or complex product which requires such a restriction to protect its image.

The CJEU decision treats the ban on third-party online platforms as a qualitative restriction that is necessary to protect the image of the goods concerned, rather than as a restriction of the customers to whom authorised distributors can sell the luxury goods at issue or as a ban of passive sales to end users, which would be in breach of Article 101(1) TFEU and amount to a restriction of competition by object.

According to the CJEU such a restriction is also not considered a “hardcore” restriction under the Vertical Block Exemption Regulation (VABER) and hence an agreement including such a restriction can benefit from the VABER if all other conditions are also met.

For the full ebulletin on this development see here.

See our previous commentary on the AG’s opinion in this case here.

Contacts

Joel Smith
Joel Smith
Head of IP - UK
Email | Profile
+44 20 7466 2331
Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
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+44 20 7466 2217

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Filed under Advertising, Consumer products, EU, Licensing, Trade marks & Passing-off, Transactions, UK

UK Court of Appeal rules on validity of trade mark in light of prior existing localised goodwill

Summary

The UK Court of Appeal in Caspian v Shah considered whether a trade mark could be invalidated on the grounds of prior existing third party goodwill in a confined geographical area. On 23 November 2017, the Court of Appeal ruled that, under section 5(4) Trade Marks Act (TMA 94), goodwill established in a specific locality was capable of preventing registration of a countrywide mark: it was not necessary for goodwill to be established nationwide.  In the same way, the Court of Appeal confirmed that, once a trade mark had been registered, prior localised goodwill was capable of invalidating a mark under section 47 TMA 94 (Caspian Pizza Ltd & Others v Shah & Anor).

The Court recognised that an application for registration could be made subject to territorial limitations, but clarified that, once a trade mark was registered, the trade mark registration could not be altered to restrict its geographical scope.

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Filed under Consumer products, Passing Off, Trade marks & Passing-off, UK