Misleading brand name ‘Glen Buchenbach’ infringes the registered geographical indication ‘Scotch Whisky’

In a decision that extends the law of geographical indications into the territory of the UK tort of passing off, the District Court of Hamburg (the ‘Court’) has prohibited the use of ‘Glen’ in the name of a whisky that did not originate from Scotland on the basis of the geographical indication protection associated with ‘Scotch Whisky’ . Continue reading

Herbert Smith Freehills’ global Trade Marks Practice lauded a ‘formidable force’ in WTR 1000 rankings

Herbert Smith Freehills has been lauded a ‘class act’, after it was ranked highly in the 2019 edition of World Trademark Review (WTR) 1000.

Now in its ninth year, the WTR 1000 highlights firms and individuals that are deemed outstanding in this area of practice.

Herbert Smith Freehills has been showcased in the research directory as being ‘a formidable force within the trademark sphere’ and a ‘prestigious commercial outfit’, after it was highlighted for having particularly strong trademark experience globally in WTR 1000. The firm’s practices in the UK, Australia, France and Italy were all highly ranked in the directory.

The publication singles out the firm for being “packed to the rafters with world-class talent that consistently exceeds the expectations of clients”.

WTR cites the “hands-on leadership” of Joel Smith, UK Head of IP as crucial to the side’s recent growth and success and goes on to highlight Joel as “a brilliant strategic thinker” flagging his work for major brands alongside much-praised Paris Partner Alexandra Neri on cross-border trade mark disputes.

Global Head of IP Mark Shillito is lauded as an “exquisite complex problem solver and litigator” and Laura Orlando has also been showcased, after she helped set up our growing Milan office in late 2017. She is flagged for her, “super pragmatic and business oriented” approach, which makes her one of the “best IP lawyers in Italy”.

Celia Davies, who heads Herbert Smith Freehills’ Trademarks prosecution group in Australia, is “a true leader in the trademark market”. Melbourne Partner Shaun McVicar has also been held up as possessing a “commercial and strategic outlook on litigation” which means that brands are in “good hands when he is on a case.” Partner Sue Gilchrist is also singled out as being a “top-flight litigator” and Kristin Stammer as an “eminent adviser with terrific technical trademark knowledge”.

In its write-up of the firm’s trade mark practice, WTR comments, “Herbert Smith Freehills isn’t about being the biggest in trademarks; it focuses, instead, on quality and adding strategic value for blue-chip international rights holders – and routinely surpasses expectations in both regards.”

As with previous editions, to arrive at the 2019 rankings, WTR undertook an exhaustive qualitative research project to identify the firms and individuals that are deemed outstanding in this critical area of practice. The publication says that when identifying the leading firms, factors such as depth of expertise, market presence and the level of work on which they are typically instructed were all taken into account, alongside positive peer and client feedback.

To view the full write-up, please visit: https://www.worldtrademarkreview.com/directories/wtr1000


The Japan-EU Economic Partnership Agreement, the largest free-trade agreement between Japan and the EU (aka Japan-EU Free Trade Agreement or JEFTA) entered into force on 1 February.

JEFTA eliminates most custom duties and trade barriers between Japan and the EU and sets out rules enhancing mutual intellectual property protection and recognition.

JEFTA will not apply to the UK if there is a no-deal Brexit, as the UK is not an independent party to the agreement, only as part of the EU.

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Changes to the UK trade mark regime: Trade Marks Regulations 2018 – coming into force on 14 January 2019

The new EU Trade Mark Directive (2015/2436), designed, in part, to make trade mark law across the EU fit for the digital age, will be implemented into UK law on 14 January 2019 via the Trade Marks Regulations 2018 (the Regulations). It makes significant and important changes to the UK trade mark regime.

Key changes are:

  • Graphical representation is no longer a pre-requisite for registration of a trade mark so sound and motion or hologram trade marks may now be registered (amendments are made to the technical function exception to apply to new forms of trade mark representation too).
  • Seizure of goods passing through the UK will now be easier with the burden of proof on the shipper not the trade mark owner.
  • Licensing and assignment of trade marks: There are several changes to the Trade Marks Act 1994 (TMA) implemented via the Regulations which affect the rights and remedies of licensors and licensees of registered trade marks in the UK, including changes to rights to bring proceedings. There is also provision for a contractual obligation to transfer a business to be taken to include an obligation to transfer any registered trade mark or application of that business, except where there is agreement to the contrary or it is clear in all of the circumstances that this presumption should not apply. For further details see the section on Licensing and Assignment below.
  • Trade marks shown (incorrectly) as generic terms in dictionaries: The regulations provide for court action to be brought where dictionaries refuse to amend reference to a registered trade mark as a generic term (where this is incorrect). A new section 99A TMA.
  • Infringement claims may be brought without the need for an invalidity claim also: An action for infringement of a registered trade mark by another registered trade mark may be brought without the need for an invalidity application (as was previously the case).
  • Changes to infringement defences:
    • The “own name defence” will now only apply to personal names (not company or trading names);
    • Non-use will now also be a specific defence;
    • If a similar earlier mark had expired before you registered yours and is then renewed or restored, you have a defence to infringement allegations for a fixed period.
  • Anti-counterfeiting measures: Greater scope for civil actions of enforcement against those preparing tags and security or authenticity features or devices, as well as labels and packaging to which trade marks are attached in an unauthorised fashion, prior to making counterfeit products (rather than recourse to criminal offences).
  • Opposition – proof of use – changes to the start of the 5 year period of use.
  • There are also provisions on collective trade mark ownership and rights to bring actions, and on division of trade mark registrations.

The old Trade Mark Directive 2008/95/EC is repealed with effect from 15 January 2019.

The main changes to UK trade mark law and practice are set out in more detail below:

Licensing and Assignment

Rights of Licensor: Under the revised TMA, a licensor may bring proceedings against a licensee who breaches certain provisions of its licence. These new rights of the licensor are in addition to the rights the licensor may have to bring proceedings against a licensee for breach of the licence under contract law.

The relevant provisions must relate to:

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Cadbury’s colour purple trade mark can’t be split

Clarity and precision in a trade mark description are the winners in the Court of Appeal

Cadbury’s attempt to argue its trade mark registration for the colour purple was actually a series mark which could be split and partially maintained was rejected yesterday by the Court of Appeal. Although another blow in Cadbury’s multi-decade, hard-fought attempt to trade mark the colour purple for chocolate bars in the UK, the decision helps to maintain clarity and certainty on the trade marks register.

Key take away: If you are applying for a trade mark, then it is important that the monopoly you are claiming is clear and precise – especially if your mark is ‘unusual’, such as a colour or shape mark. To be successful, the trade mark application should not be able to be interpreted in multiple different ways.

Cadbury v Comptroller of Patents [2018] EWCA Civ 2715 (5 December 2018)

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Draft Withdrawal Agreement Approved by UK Cabinet – IP and Marketing Authorisation Provisions Summarised

As was widely reported yesterday evening, 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 Draft Withdrawal Agreement (14 November 2018)), detailing the arrangements for the UK to leave the EU has now been agreed by the UK Cabinet. The draft is as agreed between the UK and the EU’s negotiators. As stated in HSF’s Brexit Withdrawal Agreement webinar invitation here, a special European Council, anticipated to be held on 25 November 2018, will be asked to approve the Draft Withdrawal Agreement and the full text of the political declaration. The deal will also have to pass through the European Parliament. However, the main challenge to a deal being ratified is the requirement for approval by the UK Parliament. The first vote by the UK Parliament is expected within two weeks of the European Council.

We set out below a summary of the Draft Withdrawal Agreement’s provisions on intellectual property. The situation is not much changed from the previous draft issued in March 2018 although the provision for geographical indications has now been agreed: EU-wide rights will be replaced or recognised in the UK and provision has been made for pending applications, including for supplementary protection certificates (SPCs). The sharing of information for assessment of marketing authorisations between the MHRA and the EMA and vice versa is also provided for.

The Draft Withdrawal Agreement provides for an implementation/transition period from the date the UK leaves the EU (29 March 2019) to end of 31 December 2020. If the Draft Withdrawal Agreement is agreed, this transition period will mean that effectively the UK will continue to be treated as part of the EU from a legislative point of view. As the Commission’s press release puts it,”During this period, the entire Union acquis will continue to apply to and in the UK as if it were a Member State”. IP registrations and enforcement will carry on as normal during this period. Until the end of the transition period you will still be able to acquire/register and maintain EU-wide IP rights that will have effect in the UK. See the detail in our summary section below.  However, “as of the withdrawal date (i.e. including during the transition period), the UK, having left the EU, will no longer be part of EU decision-making. It will no longer be represented in the EU institutions, agencies and bodies, and persons appointed, nominated, or representing the UK, and persons elected in the UK, will no longer take part in the EU institutions, agencies, and bodies“.

The accompanying political agreement document “Outline of the political declaration setting out the framework for the future relationship between the European Union and the United Kingdom” (currently a summary version, with a fuller version to follow) looks to the future relationship between the UK and the EU post-transition. There is mention of IP in the section on Economic Partnership, but all that is said is: “Protection and enforcement of intellectual property rights beyond multilateral treaties to stimulate innovation, creativity and economic activity”.  Under ‘Basis for cooperation’, the political agreement states that “Terms for the United Kingdom’s participation in Union programmes, subject to the conditions set out in the corresponding Union instruments, such as in science and innovation, culture and education, development, defence capabilities, civil protection and space”. There is also mention of “Cooperation in matters of health security”.  For more on the impact of no deal on the pharma industry see our post on the UK Government’s “no deal technical notices” published on 23 August 2018.

Summary of the Draft Withdrawal Agreement’s provision for IP and marketing authorisations:

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Brexit “no deal” technical notices published on Patents, Trade marks, Designs, Copyright, GIs, and Exhaustion of rights

The latest tranche of “no deal” technical notices was released yesterday afternoon by the UK Government. Amongst them are several notices that highlight the Brexit issues faced by intellectual property right owners and, in some cases, confirm the Government’s approach to resolving them. The Government also released this news story today which comments on the guidance given in the technical notices and comments on the Government’s longer term aims for IP protection.

Key announcements, in the context of no deal, are:

  • Provision of a new right to replace unregistered Community design rights, to be known as “the supplementary unregistered design right“.
  • Existing EUTMs and Community registered designs will be replaced with new, equivalent rights in the UK at the end of the implementation/transition period, “with minimal administrative burden“.
  • The SPC, compulsory licensing, pharmaceutical product testing exception and patenting of biotechnological inventions regimes will remain unchanged at least initially.
  • If the UPC comes into force the UK will replace unitary patent rights with equivalent rights if the UK needs to withdraw from the new system, although the UK “will explore whether it is possible to remain within it“. The Government’s news story states that “The UK intends to stay in the Unified Patent Court and unitary patent system after we leave the EU.”
  • UK originating sui generis database rights will no longer be enforceable in the EEA; “UK owners may want to consider relying on other forms of protection (e.g. restrictive licensing agreements or copyright where applicable) for their databases
  • The UK will set up its own GI schemewhich will be WTO TRIPS compliant“. The new rights “will broadly mirror the EU regime and be no more burdensome to producers“.  Since the UK would no longer be required to recognise EU GI status, EU producers would be able to apply for UK GI status. Those wishing to protect UK GIs in the EU will need to submit applications on a third country basis.
  • The UK will continue to accept the exhaustion of IP rights in products put on the market in the EEA by, or with the consent of, the rights holder. However, the EU will likely not consider that goods placed on the UK market are exhausted in the EEA, and thus permission may need to be sought from the rights holder to transfer goods to the EEA that have legitimately been put on the market in the UK. The Government news story says that “The UK looks forward to exploring arrangements on IP cooperation that will provide mutual benefits to UK and EU rights holders and we are ready to discuss issues the EU wishes to raise in the negotiations on our future relationship, including exhaustion of IP rights”.

Links to the notices:

  1. Patents
  2. Trade marks and designs
  3. Copyright
  4. Geographical Indications
  5. Exhaustion of IP rights

More detail on each of these is provided below. For those with an interest in Life Sciences please also see our blog post on the notices related to that sector that were released last month.

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HSF Legal Guide to Brexit – an update on provision for intellectual property rights

IP rights which are designated as applying across the EU (EU trade marks, Community plant variety rights, Community registered designs and Community unregistered designs) and those, qualification for which involves activity within the EU (such as database rights), are all at risk of termination in relation to the territory of the UK once the definition ‘EU’ no longer includes the UK. However, the Commission and the UK Government have agreed at negotiator level (as published on 19 March 2018 and subsequently, 19 June 2018) certain sections in the withdrawal agreement including provision of replacement rights for those registered rights thus affected and for the UK Government to provide replacement rights for UK registered rights.

The UK Government’s White Paper detailing its proposal for the future relationship between the UK and the EU (published on 12 July 2018) includes a limited number of proposals relating to intellectual property as follows:

• The UK intends to explore staying in the Unified Patent Court (UPC) and Unitary Patent system post-Brexit. The UK will work with the member states that have signed up to the UPC Agreement to ensure that the UPC Agreement can continue on a firm legal basis;

• Arrangements on future co-operation on intellectual property are recognised as important to provide confidence and security to rights holders operating in and between the UK and the EU;

• The UK will establish its own Geographical Indications (GIs) scheme to provide continuous protection for UK GIs in the UK and protection for new GIs applied for by UK and non-UK applicants

In our detailed briefing, we review the proposals for the treatment and protection of intellectual property rights in the UK at Brexit: see Intellectual Property and Brexit (part of the HSF Brexit Legal Guide 2018).

See also the Herbert Smith Freehills Brexit Hub and Brexit Blog.


Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217

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


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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