Marketing a product as an “alternative” is no answer to trade mark infringement

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 a broad view of trade mark “use”, and the likelihood of confusion on the part of consumers, to find that both “PROTOX” and “instant Botox® alternative” are deceptively similar to the appellant’s “BOTOX” mark, and that the protection of the Respondent’s defensive registration was ineffective.

Key takeaways

  • The use of the phrase “instant Botox® alternative” was held to constitute use “as a trade mark”, such that it infringed the registered trade mark for BOTOX.
  • Although it will depend on context, the mere use of the word “alternative” to describe a product (for example, “instant Botox® alternative”) may not be sufficient to avoid trade mark infringement. Indeed, in some circumstances it may imply some association in the trade source.
  • Although an exception exists under the Trade Marks Act for comparative advertising, it is easy to fall outside the protection of that provision. In particular, simply referring to a competitor product is not enough to fall within its scope.
  • Advertisers should be cautious to avoid references to competitor products that seek to leverage off the competitor’s reputation, rather than advertise comparatively with that product in good faith.

For the full article, see here.


Sophie Yates
Sophie Yates
Solicitor, Sydmey
+61 2 9322 4897

Bryce Robinson
Bryce Robinson
Solicitor, Melbourne
+61 3 9288 1155

Shaun McVicar
Shaun McVicar
Partner, Melbourne
+61 3 9288 1587
Aaron Hayward
Aaron Hayward
Senior Associate, Sydney
+61 2 9225 5739

Sky kicks trade mark bad faith claims back into the box as Court of Appeal allows its appeal in Sky v SkyKick

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. In its Sky v SkyKick appeal decision of 26 July 2021, the Court of Appeal (CA) (Lord Justice Sir Christopher Floyd giving the leading judgment) 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.

Background

The Court of Appeal’s decision follows several rounds of litigation for Sky and SkyKick, including a reference to the CJEU in January 2020 (Case C-371/18 – see our report here), where the court provided clarification on important questions about the extent of the monopoly businesses can obtain legitimately through the registration of a trade mark. The CJEU held that a registered trade mark could not be declared wholly or partly invalid as a result of a lack of clarity and precision of the terms used to designate the goods and services covered by that registration. Further, whilst invalidity on the ground of bad faith may be triggered where an applicant registers a mark without any intention to use it in relation to specified goods and services, bad faith will only be established in exceptional circumstances. This outcome was helpful to existing trade mark proprietors and favoured the existing status quo of the trade mark system, including the UK’s.

On return to the High Court, Sky succeeded in its claim of infringement of its SKY trade mark (registered for telecommunications services and electronic mail services, among other things), by SkyKick’s use of “SkyKick” as a word and figuratively (for email services), but, significantly, whilst also giving Sky the opportunity to withdraw allegations of infringement based upon elements of its wider trade mark registration specification that Lord Justice Arnold (sitting in the High Court) found to be registered in bad faith (Sky v SkyKick [2020] EWHC 990 (Ch), 29 April 2020), rather than striking them down directly. The High Court held that certain of Sky’s trade marks were partially invalid on grounds that they were filed in bad faith.  Lord Justice Arnold had already found that certain registrations had been applied for in respect of certain goods and services for which Sky had no reasonable commercial rationale to do so. The Judge innovatively decided to cut down Sky’s registration for “computer software” to arrive at what he believed to be a fair specification, rather than rely upon SkyKick’s or Sky’s submissions.  He gave Sky seven days to withdraw that part of the infringement claim that relates to the removed part of the specification, in return for the court making no order as to the declaration of invalidity sought by SkyKick on that part of the registration.  That left Sky not being compelled by court order to adjust its specification. Sky appealed.

Bad faith claims

A finding of bad faith is an absolute ground for invalidity of a trade mark registration and leads to revocation of the trade mark.  This case examined whether revocation could occur in part or in full in relation to use which did not encompass the full possible extent of the goods or services covered by a general term in the specification.

SkyKick’s complaint was that “Sky did not intend to use the mark in respect of all computer software, and there was no prospect of their using the mark in relation to all computer software. It is true that Sky had no prospect of using the mark in relation to every conceivable sub-division of computer software, but that fact is not, in my judgment, a relevant or objective indication of bad faith” held Floyd LJ. “It is no more of an indication of bad faith than would be an allegation on the facts of Jaguar Land Rover that the proprietors had no prospect of using the mark registered for land vehicles more broadly than “cars”“.

The CA further held that it was not the case that an applicant for a trade mark had to formulate a commercial strategy for using the mark in relation to every species of goods or services falling within a general description or else be held to have applied in bad faith.

Floyd LJ held that: “Such an applicant is entitled to say “I am using the mark for specific goods falling within description X. I have no idea precisely where my business in goods of that description will develop in the next 5 years, but there will undoubtedly be more such goods than there are now.” Such an applicant would always be forced to accept that there was no prospect whatsoever that it would use the mark for every variety of goods within the description. Such an applicant could not, however, be accused of bad faith in the light of its strategy for applying for protection of sufficient width to cover some further, as yet unformulated, goods within the same category.”  

A reaffirmation that exceptional circumstances are needed for bad faith – good news for trade mark proprietors

The High Court decision appeared to be one driven by policy, building on the CJEU decision: parts of wide trade mark specifications will be struck down, if certain terms seek over broad protection not justified by actual use or the reasonable prospect of use at the time and not filed for legitimate business reasons.  It also opened a new line of attack for parties defending trade mark claims against brand owners, to force them to open up the history of why broad registrations were filed and seek extensive disclosure as to the trade mark proprietor’s motives at the date of filing.  This proved to be an uncomfortable area for in-house teams in the interim (prior to the successful appeal), since the effect was such that they would need to either seek to preserve legally privileged communications and not be able to use them to defend such allegations or have to waive privilege to fight them.

The CA’s more trade mark proprietor-friendly interpretation of the CJEU’s decision (which due to retained EU law is still part of the UK law post-Brexit, although the CA could have chosen to depart from this if it had wished – see our discussion here), which reaffirms that bad faith will only be found in truly exceptional circumstances and that proprietors are not required to provide proof of commercial intent to use the trade mark across the full extent of the specification where a relatively generic term like “computer software” is used, will therefore be welcomed by brand owners with broad or generically phrased specifications.

Authors and Contacts: 

Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217
Victoria Horsey
Victoria Horsey
Senior Associate, London
+44 20 7466 2701

Enforcement of intellectual property rights across online platforms

Considering how to enforce your IP rights online and make maximum use of the take-down procedures? Read Victoria Horsey, Joanna Silver and Sabesh Asokan’s practical tips in their practice notes, recently updated and published in Practical Law:
Enforcement of intellectual property rights across online platforms: injunctions A checklist on the circumstances in which a rightsholder may be able to obtain an injunction against online intermediaries, in particular ISPs, in relation to online intellectual property right infringement, and the practical points that need to be considered.
Protecting brands by enforcement against intermediaries A guide to the options available to brand owners when seeking to enforce their rights against intermediaries, such as ISPs, including website-blocking injunctions, take-down notices and domain-name seizures.

Victoria Horsey
Victoria Horsey
Senior Associate, London
+44 20 7466 2701

Joanna Silver
Joanna Silver
Senior Associate, London
+44 20 7466 2315
Sabesh Asokan
Sabesh Asokan
Trainee, London
+44 20 7466 3231

The Trade and Cooperation Agreement and its impact on IP, Pharma and Medical Devices

The final Brexit agreement, the Trade and Cooperation Agreement (the “TCA”) was agreed between the UK and the EU on 24 December 2020. Within this agreement are provisions that set out the standards expected to be recognised (mutually) between the EU and the UK in relation to intellectual property (including SPCs and trade secrets). There are some provisions concerning pharmaceutical regulation and product standards, but overall there is a lack of mutual recognition, with the consequence that, for both pharmaceuticals and medical devices, there are now effectively two separate regimes for the EU and the UK.

Intellectual Property

The provisions on IP match or exceed those for IP set out in the various treaties to which the UK and EU have acceded (such as WIPO, WTO and TRIPS agreements).  These IP standards are to be maintained as a minimum. The cited objectives and scope in relation to intellectual property (see Title V) indicate the aims behind these provisions which are to:

(a) facilitate the production, provision and commercialisation of innovative and creative products and services between [the UK and the EU] by reducing distortions and impediments to such trade, thereby contributing to a more sustainable and inclusive economy; and

(b) ensure an adequate and effective level of protection and enforcement of intellectual property rights.

The provisions are intended to “complement and further specify the rights and obligations of each [of the UK and the EU] under the TRIPS Agreement and other international treaties in the field of intellectual property to which they are parties” and do not “preclude either [the UK or the EU] from introducing more extensive protection and enforcement of intellectual property rights than required under [this section of the TCA] provided that such protection and enforcement does not contravene [those provisions]”. However, there are aspects of current UK and EU IP law, such as the dilution provisions in trade mark law, to which the agreement does not refer, instead referring to the Paris Convention provisions on the protection of well known marks. Whether this will be a point of future divergence remains to be seen.

Both the UK and the EU also have the ability to develop their own exhaustion regimes. The provisions on geographical indications (“GIs”) indicate that a mutual future scheme has not be agreed although a review clause on GIs has, which provides that the UK and EU may (if both parties agree it is in their interests) use reasonable endeavours to agree rules for the protection and domestic enforcement of their GIs.

The UK Government’s Summary document that accompanies the TCA (see here) states that the agreement “includes mechanisms for cooperation and exchange of information on IP issues of mutual interest” and “retains regulatory flexibility for each [of the UK and the EU], enabling the UK to develop an IP system in line with [its] domestic priorities“, thus enabling the UK to diverge where it so requires.

We have already commented on the changes to the UK IP regime in the firm’s guide to Brexit here (see the IP section).

The Regulation of Medical Devices and Medicinal Products

Medical devices: The TCA has a chapter (4) (under Trade – Title I) on eliminating unnecessary technical barriers to trade which deals with conformity of standards. However, this only provides for an approach under which each party can agree that its standards bodies (including those relating to medical devices) will conform with international standards and will work together to influence those and to “foster bilateral cooperation with the standardising bodies of the other Party“.

For medical devices, it had been hoped that there would be at least mutual recognition of conformity assessment under which each of the EU and the UK would recognise the other’s certification bodies. However, as things stand, although Great Britain will continue to accept CE marked medical devices until 30 June 2023 those devices certified by the UK and marked as UKCA (standing for UK Conformity Assessed, as discussed in more detail in our post here), will not mutually recognised by the EU.

Medicinal Products: For medicinal products there is a dedicated annex in the TCA, Annex TBT-2 – Medicinal Products (the “Medicinal Products Annex”), which applies to all medicinal products listed in its Annex C, namely:

  • marketed medicinal products for human or veterinary use, including marketed biological and immunological products for human and veterinary use,
  • advanced therapy medicinal products,
  • active pharmaceutical ingredients for human or veterinary use,
  • investigational medicinal products,

with this list being subject to amended by the UK-EU Partnership Council (the main governing body for the agreement and supplementing agreements).

The aim of the Medicinal Product Annex is to “facilitate availability of medicines, promote public health and protect high levels of consumer and environmental protection in respect of medicinal products”.  To help achieve this aim, the Annex provides for:

  • the mutual recognition of Good Manufacturing Practice (“GMP”) inspections and certificates, meaning that manufacturing facilities do not need to undergo separate UK and EU inspections;
  • the individual inspection, on notice, by the EU or UK of each other’s facilities); and
  • for the suspension of the mutual recognition arrangements.

Further, the TCA also states that the EU and the UK should work together to implement agreed international guidelines and that any changes to either the UK or the EU’s regulation regime should be on 60 days’ notice and be subject to discussion by a Working Group on Medicinal Products, which will be established to enable mutual consultation. This Working Group on Medicinal Products will be under supervision of the Trade Specialised Committee on Technical Barriers to Trade, and will monitor and review implementation and ensure the proper functioning of the Medicinal Products Annex. It is noteworthy that the Medicinal Products Annex is specifically excluded from the TCA’s disputes mechanism, however, through its role in facilitating discussions and functioning as an appropriate forum for issues relating to Medicinal Products, it is hoped that it will be a sufficient mechanism to deal with any concerns.

When considering the confidentiality of information supporting applications for marketing authorisations (“MAs”), regulatory protection of pharmaceutical products, and Supplementary Protection Certificates (“SPC”) it is noteworthy that this is not included in the Medicinal Products Annex, but is included in the IP section (Title V) of the TCA.

  • In relation to regulatory data protection generally, the TCA requires that both the UK and the EU ensure that commercially confidential information submitted to obtain an MA is protected against disclosure to third parties, unless there is an overriding public interest or steps are taken to ensure the data is protected from unfair commercial use.
  • For the regulatory protections of data and market exclusivity, the TCA provides that, subject to any international agreement to which both the EU and the UK are party, and without prejudice to any additional periods of protection which either party may wish to provide for in its domestic law, these regulatory protections will be “for a limited period of time to be determined by domestic law”. This allows each of the UK and the EU to determine the length of such regulatory exclusivities under their own regulatory regimes.
  • For SPCs, the TCA records the agreement of both the UK and the EU to provide for further patent protection to compensate for the impact of regulatory administrative procedures but, again, the length of time is not stipulated.

The effect of these provisions is that they provide some comfort that these valuable forms of protection for medicinal products will be maintained by both the UK and the EU.

For detailed commentary on the new regulatory position for Pharma in the UK, and the impact on IP rights generally, see our series of posts on the HSF Intellectual Property Notes blog here.

Other provisions relevant to the pharmaceutical and medical device industry

The TCA also has provisions relating to the UK’s continued participation in EU programmes and on UK / EU cooperation on “serious cross-border threat[s] to health that are relevant for the pharmaceutical industry.

  • Subject to the UK making financial contributions, Part 5 of the TCA includes agreement on the UK’s continued participation in EU programmes, including the EU’s research and innovation funding programme, Horizon Europe.
  • UK / EU cooperation on serious cross-border threat[s] to health is covered by the TCA including agreement between the UK and the EU on emergency relief in relation to importation requirements, tax and road transport exemptions, and agreement to cooperate in relation to international health security systems.

Future developments

Although tariff free and quota-free trade has been agreed, there is little mutual recognition of regulatory provisions. This may not be the end of negotiations, with automatic reviews every 5 years written into the TCA and termination possible on 12 months’ notice.  See the HSF Brexit blog for further information, and the updated Intellectual Property section of our Beyond Brexit Legal Guide is now available, in which we look at the impact of the end of the Brexit transition period on:

  • EU trade mark rights
  • Community design rights
  • Patents & SPCs
  • Copyright
  • Designs
  • .eu Domain names
  • Plant variety rights
  • sui generis database rights
  • Exhaustion of IP rights
  • Licensing
  • Disputes

Key contacts and authors

Jonathan Turnbull
Jonathan Turnbull
Partner, London
+44 20 7466 2174
Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217
George McCubbin
George McCubbin
Senior Associate, London
+44 20 7466 2764
Priyanka Madan
Priyanka Madan
Associate - London
+44 20 7466 2986

Geographical Indications – a new scheme for the UK from 1 January 2021

In the same way that trade marks already registered as EU trade marks before the end of transition will be replaced in the UK by equivalent rights post transition, geographical indications (GIs) (by this we refer to protected designations of origin, geographical indications and traditional specialities guaranteed) registered under the EU scheme prior to the end of transition will continue to apply across the remaining EU states post-transition and will also be replaced in the UK by rights under the new UK GI scheme.

However, those GIs registered under the EU scheme from 1 January 2021 will not apply in the UK (this includes all GIs, once registered, where applications were still pending at 1 January 2021).  After 1 January 2021, applications for protection made under the EU scheme for Great Britain (GB) localised GIs, i.e. applications made by producers from England, Scotland and Wales, will be treated as “third country” applications by the EU scheme.

From 1 January 2021, the UK will set up its own GI scheme which will be managed by the Department for Environment, Food and Rural Affairs (DEFRA). The scheme will be open to producers from the UK and from other countries worldwide. New GIs can be registered under the scheme from 1 January.

The UK scheme will cover the geographical names of food, drink and agricultural products (including beer, cider and perry), spirit drinks, wine and aromatised wine. These are the same categories protected under the EU scheme, as under the Withdrawal Agreement, the relevant EU regulations will be incorporated as UK law (unless the UK and the EU come to a different agreement as a result of free trade negotiations). The UK scheme will use the designations of Protected Designation of Origin (PDO), Protected Geographical Indication (PGI) and Traditional Speciality Guaranteed (TSG), which again mirrors the designations available under the EU scheme.

The UK government has issued guidance (Protecting food and drink names from 1 January 2021 (28 September 2020)) on the new scheme, which also provides additional clarification on the interrelationship between this scheme and the EU scheme. From 1 January 2021, the EU scheme will no longer apply to the UK as it does to members of the EU – see the comments made by the European Commission in its Notice to stakeholders – Withdrawal of the United Kingdom and EU rules in the field of geographical indications (6 July 2020).

Current EU scheme: UK GIs registered under the European scheme before the end of the transition period should continue to receive protection in the EU, but applications that are pending with the EU at the end of the transition period will no longer cover the UK.

Under the current (and continuing) EU scheme, to register a product name as a geographical indication, EU producers have to address their application to national authorities for scrutiny. The Member State concerned thereafter forwards the application to the European Commission, who examines the request following the procedures laid down in the above listed EU legislation.

For non-EU product names to be registered as geographic indications in the EU, producers send their applications either directly, or via their national authorities, to the European Commission. From 1 January 2021, Great Britain producers (but not Northern Ireland producers – see below) will be treated as a “third country” under the EU scheme, and will first need to secure protection for new GIs under the UK scheme before applying under the EU scheme. The criteria applied to determine registration of an application from a GB producer are otherwise the same as those which apply to products originating from the EU as outlined in the relevant EU regulations. Once registered, a GB GI under the EU scheme will benefit from the same level of protection as EU GIs.

Protection in Great Britain under the new UK scheme: From 1 January 2021, producers will need to apply for a new GI in Great Britain under the UK scheme.

According to the Withdrawal Agreement (and unless an alternate agreed position is reached regarding GIs), the EU regulations that govern the EU scheme will be directly retained in UK law (save for any amendments made by a statutory instrument to deal with deficiencies). Therefore, the criteria for obtaining protection under the UK scheme should in theory be the same as that required under the EU scheme, though in practice it is possible that the criteria could be applied differently.

Under Article 54 of the Withdrawal Agreement, where a GI ceases to be protected under the EU scheme after 1 January 2021, the UK is not obliged to continue to provide protection for the GI either.

According to the UK government guidance, DEFRA will publish further guidance relating to the application process.

On 22 October 2020, the UK government published a draft statutory instrument, Agricultural Products, Food and Drink (Amendment etc.) (EU Exit) Regulations 2020 (Draft), which amends deficiencies to the retained EU regulations which govern the scheme for geographical indications.

Protection in Northern Ireland (NI): For new applications for protection in Northern Ireland and the EU from 1 January 2021, an application will need to be made under the EU scheme. Northern Ireland producers will need to make a separate application under the UK scheme for protection in Great Britain. Unlike EU producers, Northern Ireland producers will not need to be protected first under the EU scheme before applying for protection under the UK scheme.

In addition, registered GIs in relation to products that can be produced anywhere on the island of Ireland (including Irish Whiskey, Irish Cream and Irish Poteen) will continue to be protected and protectable under both the EU and the new UK schemes.

New UK regime logos: There are logos for each of the three UK designations that can be downloaded and used from 1 January 2021. For food and agricultural GI products produced and for sale in Great Britain and registered from 1 January 2021, the relevant UK logo must appear on the packaging and marketing material from the date of registration. As for food and agricultural GI products produced and for sale in Great Britain and registered under the EU system before 1 January 2021, producers will have until 1 January 2024 to amend the packaging and marketing materials to display the relevant UK logos.

As is the case under the EU scheme, displaying the UK logos will be optional in relation to wine and spirit GIs.

For food and agricultural GI products of EU origin and of Northern Ireland origin (i.e. that are not produced in Great Britain), the use of the UK logos will be optional from 1 January 2021. In accordance with the draft statutory instrument as at the time of writing, EU and Northern Ireland producers that have food and agricultural GI products registered under the EU scheme, even if is also registered under the UK scheme, can continue to use the EU logos on their products for sale in Great Britain from 1 January 2021 and beyond 1 January 2024.

Continued use of EU logos: Food and agricultural GI products of EU origin must, under existing EU regulations, display the relevant EU logos. The same will continue to apply to food and agricultural GI products of Northern Ireland origin that are registered under the EU scheme.

As noted above, for food and agricultural GI products produced and for sale in Great Britain that were protected under the EU scheme before the end of the transition period, the EU logo may continue to be used until 1 January 2024, after which these producers will need to add the UK logos to the relevant packaging and marketing materials. Great Britain GI products that are protected in the EU can continue to use the EU logo on products sold in GB (but it will no longer be mandatory under the EU regulations) in addition to the mandatory UK logo.

International protection: In February 2020, the Geneva Act of the Lisbon Agreement came into force. This treaty establishes the Lisbon System, an international registry for GIs through which registration can be obtained via a single application to WIPO. The EU acceded to the Geneva Act in November 2019, which enabled the Geneva Act to come into force.

The Geneva Act currently applies to the UK during the transition period. However, the UK will not be obliged in its own scheme to continue to protect geographical indications registered through the Lisbon System after the transition period ends (unless the UK ratifies the Geneva Act independently after the transition period). It seems unlikely that the UK will independently ratify the Geneva Act, as this issue is not addressed in the UK government guidance on geographical indications. Further, under Art 54(2) of the Withdrawal Agreement, where protection in the EU is derived from international agreements to which the EU is a party, the same level of protection does not need to be provided in the UK.

The UK government guidance on GIs does state that reciprocal international protection of UK GIs will continue after 1 January 2021, if protection is granted under an EU free trade agreement where the UK has signed a continuity agreement. The UK government guidance lists the Andean Community (being a free trade area comprising Bolivia, Colombia, Ecuador and Peru), Chile and Switzerland as examples, and recent developments in the UK government negotiations mean that a level of protection will also continue in Japan and Korea.  Reciprocal international protection of UK GIs will also continue where protection is granted under other EU third country sectoral agreements (agreements that are not free trade agreements) where the UK has signed a continuity agreement.

It remains to be seen in the upcoming months whether the UK government’s international negotiations mean that reciprocal international protection of UK GIs will have the same jurisdictional coverage as the UK previously had in the EU. If continuity agreements to EU free trade agreements cannot be agreed before 1 January 2021, then the UK is likely to miss out on a level of reciprocity of protection for UK GIs going forward, unless and until alternate agreements can be made.

Authors

Joel Smith
Joel Smith
Partner, IP, London
+44 20 7466 2331
Julie Chiu
Julie Chiu
Senior Associate (Australia), London
+44 20 7466 2658
Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, IP, London
+44 20 7466 2217

 

UKIPO launches ‘AI and IP Call for Views’

The UK Intellectual Property Office has published its call for views on artificial intelligence (‘AI’) and intellectual property (‘IP’). The IPO is interested in understanding the implications that AI might have for IP policy, and vice versa, in the near to medium future.

To respond, email AIcallforviews@ipo.gov.uk before 11:45 pm on 30 November 2020.

Overview

In this call for views, the IPO recognises that “AI and machine learning are enabling. They are transforming the global economy and already an integral part of our lives. They impact our workplace, our homes, our transportation, and our healthcare”, and wants to understand “the commercial, economic, legal and social implications of AI and how the IP framework can incentivise the development and adoption of AI technologies”.

The call for views asks a number of questions in relation to how the IP framework currently relates to AI and the future of AI and IP policy.

It contains five sections covering the below IP rights and themes:

  • Patents (including in relation to AI inventorship, patentability of AI inventions, and infringement of patents by AI systems);
  • Copyright and related rights (including in relation to use of copyright works by AI systems and copyright protection of AI-generated works);
  • Designs (including in relation to AI ownership and authorship, and infringement by AI systems);
  • Trade marks (including how current trade mark law would apply to AI technology and infringement by AI systems); and
  • Trade secrets (including the advantages and disadvantages of using trade secrets in the AI sector).

A full list of the questions asked across all of the IP rights above can be accessed here.

 

Priyanka Madan
Priyanka Madan
Associate - London
+44 20 7466 2986
Laura Adde
Laura Adde
Associate - London
+44 20 7466 7491

Glaxo’s purple inhalers fail to get trade mark protection

Like Cadbury before them, Glaxo’s hard-fought attempts to register a trade mark for a shade of purple have been rejected. In this case, Glaxo had sought to register the colour of its seretide inhalers and asthma treatments as a trade mark, by providing the description “Purple – Pantone: 2787C” and this sign:

The General Court of the European Union upheld earlier decisions by the European Union Intellectual Property Office and its Board of Appeal, commenting that it was not in the public interest for colours to be monopolised in this context, and found that the mark applied for lacked “inherent distinctive character” and that the evidence of acquired distinctiveness provided by Glaxo (in opinion surveys and comments of doctors and pharmacists on social media and website, as well as sales figures) was not sufficient to demonstrate that it had acquired distinctive character through use (Case T‑187/19). Continue reading

3D Trade Marks: Further guidance from the CJEU regarding shapes necessary to give a technical result

The CJEU has concluded that factors in addition to the graphic representation of a sign could be relevant to the assessment of whether a sign consisted exclusively of the shape of goods which was necessary to get a technical result. Further, the fact that a sign was protected by other intellectual property rights, such as designs, did not mean that trade mark protection could not co-exist (Gömböc Kutató, Szolgáltató és Kereskedelmi Kft v Szellemi Tulajdon Nemzeti Hivatala (Case C-237/19) EU:C:2020:296 (23 April 2020)).

The Hungarian National Intellectual Property Office referred questions to the CJEU following its rejection of an application for registration as a trade mark of a sign representing a three-dimensional object which, due to its external design and the homogeneous material used, always returned to its position of balance. The sign was represented as follows:

The CJEU has added to the sizeable volume of case law on the interpretation of the Trade Marks Directive (2008/95/EC), clarifying further how the grounds for refusal or invalidity in relation to signs that consist exclusively of the shape of goods that are necessary to get a technical result, or the shape that gives substantial value to the goods, should be interpreted.

Shapes necessary to give a technical result

The CJEU ruled that Article 3(1)(e)(ii) of the 2008 Trade Marks Directive (now Article 4(1)(e)(ii) of the Trade Marks Directive ((EU) 2015/2436) (“2015 Trade Marks Directive”)) did not have to limit the assessment of whether a sign consisted exclusively of the shape of goods which was necessary to get a technical result to the graphic representation of the sign. Other information, such as the perception of the relevant public, might be used to identify the essential characteristics of the sign, although when it comes to establishing whether those characteristics performed a technical function of the goods, such information must originate from objective and reliable sources (and so could not include the perception of the relevant public).

The CJEU also considered Article 3(1)(e)(iii) of the 2008 Trade Marks Directive (now Article 4(1)(e)(iii) of the 2015 Trade Marks Directive), and held that, where a product was represented graphically by a sign that consisted exclusively of the shape of the product, the perception or knowledge of the relevant public regarding that product might be taken into consideration to identify an essential characteristic of the shape. Therefore, for the ground to apply, it must be apparent from objective and reliable evidence that the consumer’s decision to purchase the product was, to a large extent, determined by one or more features of the shape that alone formed the sign. Other characteristics of the product not connected to its shape, such as its technical qualities or reputation, are irrelevant.

Further, the CJEU ruled that Article 3(1)(e)(iii) also meant that the ground for refusal must not be applied systematically to a sign which consisted exclusively of the shape of the goods, where the sign enjoyed protection under the law relating to designs or where the sign consisted exclusively of the shape of a decorative item. The objective behind this ground of refusal (to prevent the exclusive and permanent right that a trade mark confers from serving to extend indefinitely the life of other, time limited, rights) did not mean that EU intellectual property law prevented the coexistence of several forms of legal protection. For the ground to apply, it must be apparent from objective and reliable evidence that the consumer’s decision to purchase the product was based to a very large extent on one or more characteristics of the shape, and this was a matter for the competent authority to assess on the facts.

See our previous updates on cases relating to shape marks here and here.

 

Joel Smith
Joel Smith
Partner, London
+44 20 7466 2331
Joanna Silver
Joanna Silver
Senior Associate, London
+44 20 7466 2315

 

COVID-19: Pressure points: UK Government disables domain names and social media accounts involved in selling fake or unauthorised COVID-19 products

On Saturday (4 April 2020) the UK Government issued a press release on how the medicines and medical devices regulator, the Medicines and Healthcare Products Regulatory Agency (MHRA), is investigating the increasing number of bogus medical products being sold through unauthorised websites claiming to treat or prevent COVID-19 cases of fake or unlicensed COVID-19 medical products.

These concerns were reflected in our blog post of 2 April, COVID Counterfeits, which identified many of the problems facing business supply chains caused by the opportunities that unscrupulous parties see arising from the pandemic, and suggested ways to deal with them using intellectual property rights and advertising regulations inter alia.

The Government’s press release refers to “self-testing kits, ‘miracle cures’, ‘antiviral misting sprays’, and unlicensed medicines” as being amongst the products being promoted, and states very clearly:

At this time, there are currently no medicines licensed specifically for the treatment or prevention of COVID-19 and there are no CE marked self-testing kits approved for home use“.

According to the press release, the MHRA has disabled 9 domain names and social media accounts selling fake or unauthorised COVID-19 products.

Lynda Scammell, MHRA Enforcement Official, is quoted as saying: “There is no medicine licensed specifically to treat or prevent COVID-19, therefore any claiming to do so are not authorised and have not undergone regulatory approvals required for sale on the UK market. We cannot guarantee the safety or quality of the product and this poses a risk to your health.”

Key Contacts and Authors

Joel Smith
Joel Smith
Partner, Head of Intellectual Property, London
+20 7466 2331
Jonathan Turnbull
Jonathan Turnbull
Partner, Intellectual Property & Pharma, London
+44 20 7466 2174
Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, IP, London
+44 20 7466 2217