IP Law Watch

Legal issues, law and regulations concerning the world of IP.

 

1
Not such a friendly decision for Hugz: A new development in passing off that could help combat fashion copy-cats
2
Australia aligns with the U.S. and EU by adopting ‘exhaustion of rights’ doctrine
3
Brexit and .EU Domain Names – A warning for UK registrants
4
Don’t mess with Ferrari: the Prancing Horse legal drama
5
UK Advertising Regulator makes first ever ruling on disclosures required for commercial marketing via a TikTok video
6
Air France restrained from using song that infringes “Love Is In The Air”
7
What an awful racket… Acoustic product trade mark case provides opportunity for brands being piggy-backed to drive search traffic
8
Putting Position Marks Front and Centre: CJEU Considers Assessment of Position Marks for Services
9
Louis Vuitton playing chess or checkers? The CJEU annuls’ the invalidation of Louis Vuitton’s EU trade mark
10
Protecting Animated Logos – LA28 Ushers In A New Era

Not such a friendly decision for Hugz: A new development in passing off that could help combat fashion copy-cats

On 19 November 2020, the Intellectual Property Enterprise Court (IPEC) in the UK handed down its judgment in the case of Freddy SPA v Hugz Clothing Ltd & Ors [2020] EWHC 3032, which ran for an unusually long time for the IPEC (three days).

The decision was a rare occurrence of a passing off claim, together with other IP causes of action, succeeding in the get-up of a functional item, being “bum enhancing jeans”. Ordinarily, such cases, particularly with respect to fashion items, fail as the get-up is seen as merely design elements or ornamental, or the circumstances of the use lead to a conclusion that other trade marks (e.g. brand names and logos) dominate consumer perception.

This case could embolden brand owners in relation to enforcement of the look and feel of their clothing as it creates the possibility of confusion ‘post-sale’ in addition to the point of sale.

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Australia aligns with the U.S. and EU by adopting ‘exhaustion of rights’ doctrine

The High Court of Australia’s recent decision Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41 (Calidad) has more closely aligned Australian patent law with its U.S. and European counterparts. Key takeaways from this decision are:

  • the ‘doctrine of exhaustion of rights’ has replaced the ‘implied licence doctrine’;
  • a patent owner’s exclusive rights are extinguished by the first sale of the patented goods;
  • innovators have greater scope to reuse products without risking patent infringement; and
  • patentees seeking greater control over post-sale use should do so through contract law.
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Brexit and .EU Domain Names – A warning for UK registrants

Despite the UK having officially left the European Union on 31 January 2020, the Brexit transition period has been in place maintaining the status quo until 31 December 2020. However, with the end of transition period just around the corner, there are a number of important factors for businesses to be considering including the potential impact on .EU domain names.

Importantly, from 1 January 2021, UK Registrants will no longer be eligible to hold a .EU domain name. Each of the following would be classed as UK Registrants:

  • UK undertakings or organisations established in the UK but not otherwise in the EU;
  • UK citizens who are not resident of an EU member state; and
  • UK residents who are not EU citizens.
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Don’t mess with Ferrari: the Prancing Horse legal drama

Use of Ferrari’s trade mark in a fashion show or on social media requires consent. This is the lesson we assume Philipp Plein has recently learnt following a couple of legal defeats before the Italian Courts that ruled in favour of Ferrari.

In a ruling issued by the Court of Genova last June, the Court ruled in favour of Ferrari for the illegitimate use of Ferrari’s trade marks on Plein’s Instagram account. The designer on that occasion posted several pictures as well as Instagram stories showing some of his clothing line with Ferrari’s trade marks in the background. Ferrari successfully argued that in those shots Philipp Plein was unlawfully appropriating the positive image and reputation of the well-known car company by using its trade marks for promotional purposes.

In another recent case, the Court of Milan ordered Plein to remove from its website, social media, and other online platforms all the videos and images showing Ferrari cars and trade marks. The Court also ordered the payment, in favour of Ferrari, of €300,000 in damages plus legal fees as well as the publication of the decision in two national newspapers. Furthermore, in the event in which that Philipp Plein would not promptly remove the contested images and videos representing Ferrari cars and trade marks, it will have to pay a penalty of €10,000 for each day of delay in the removal of the infringing images and videos. To view the decision, click here.

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UK Advertising Regulator makes first ever ruling on disclosures required for commercial marketing via a TikTok video

A TikTok post on an Emily Canham’s account, a beauty blogger and YouTube star, is the first TikTok video found to be in breach of the Advertising Standards Authority’s (ASA) requirement for disclosure in the UK (see here).

The post, which featured a video of Emily Canham using a branded hairdryer and straighteners, included a caption alongside the video stated:

hiii just a lil psa there’s 20% off the [Brand] website TODAY ONLY with the code EMILY … #fyp #foryourpage“.

The brand in question had entered into an agreement with Ms Canham, which required Ms Canham to post a number of social media posts while at a music festival. The music festival was cancelled as a result of COVID-19. However, the contract was varied and still required several social media posts featuring a certain promotional code.

It was submitted to the ASA that the TikTok was created without the oversight or approval of the brand, and did not form part of Ms Canham’s contract. Additionally, both Ms Canham and the brand pointed to the fact that she had not been compensated for the promotional code featured in the TikTok video.

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Air France restrained from using song that infringes “Love Is In The Air”

In April, we wrote about the judgement Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535 (Decision), in which Glass Candy and Air France were found to have infringed the copyright in the well-known 1970s hit song “Love is in the Air” (Love).

Now, in the recent judgement Boomerang Investments Pty Ltd v Padgett (Scope of Injunction) [2020] FCA 1413, the Federal Court of Australia has finalised the injunctive orders necessary to give effect to the Court’s earlier conclusions on the issue of liability in the Decision, amongst other matters.

Injunctive Relief
Principally, Justice Perram addressed the appropriate injunctive relief against Air France in relation to its use of the adaptation of the infringing song “Warm in Winter” (Warm) called “France is in the Air” (France).

Air France contented that the injunction should only go as far as preventing the act of infringement which it was found to have committed, being the use of France as hold music for callers to its Australian toll-free number. However, Justice Perram agreed with the applicants that a wider injunction to restrain Air France from communicating France to the public without the licence of the copyright owner was appropriate.

This would encompass:

  • allowing France to be played on Air France’s YouTube channel (or other such channels) if the licensing arrangement with APRA was altered in the future such that ‘infringing uses’ of Love were no longer covered by the APRA licence
  • further efforts by Air France to use France on services which do not hold an APRA licence, and
  • the authorisation by Glass Candy of any such conduct.

Justice Perram ruled that a wide injunction was appropriate, as there was risk of Air France repeating the infringing behavior which, absent the licence of the copyright owner, ought to be restrained. This was especially so due to the fact that Air France had declined to undertake not to continue using France, leaving open the possibility for Air France entering into a fresh licence agreement for the use of France with Glass Candy and recommencing its ad campaign.

It was decided that the injunction would refer to the ‘copyright owner’ rather than a specific party, to account for any future ownership changes.

Declaration of flagrancy
Justice Perram held that it would be inappropriate to make a declaration regarding the flagrancy of Air France and Glass Candy’s conduct, since:

  • the various factors for assessing additional damages set out in s 115(4)(b) of the Copyright Act 1968 (Cth), which includes the flagrancy of the infringement, were neither necessary nor sufficient conditions for the award of additional damages. Rather, these factors, like any finding of flagrancy, are intermediate steps along the way to another legal conclusion, and
  • the claim for damages against Air France failed as the owner of the communication right comprised in the right to digitally stream Love was incorrectly identified by the applicants (as detailed in the Decision).

Assessment of additional damages
Glass Candy submitted that the Court should not proceed to any assessment of additional damages since the conduct found to be flagrant in the Decision related to the creation of Warm and not the infringements that the Court found Glass Candy committed (which mainly related to the exercise of the communication right in Love). Justice Perram acknowledged that there might be some force in these submissions, but that the additional damages case should proceed.

Key takeaways
While the Court found a broad injunction to prevent the widespread communication of a musical work was appropriate in this case, a declaration of flagrancy was not.

Further developments will be reported once damages are assessed.

By Chris Round, Bianca D’Angelo and Talia Le Couteur Scott

What an awful racket… Acoustic product trade mark case provides opportunity for brands being piggy-backed to drive search traffic

An interesting recent decision by the Intellectual Property Enterprise Court (IPEC) on an unusual set of facts may provide an opportunity for brand owners to prevent unauthorised third parties from piggy-backing off a trade mark to drive traffic to their competing sites or product offerings. Uniquely, this has been found in circumstances which do not amount to traditional “bait and switch” or passing off and where consumers are not confused about the origin of the goods.

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Putting Position Marks Front and Centre: CJEU Considers Assessment of Position Marks for Services

In a recent Court of Justice of the European Union (CJEU) ruling, based on a referral from the Stockholm Court of Appeal, the CJEU considered whether the distinctiveness of a sign that is to be applied to specific services should be assessed with regard to what is customary in the relevant sector. A full copy of the decision can be found here.

The Court clarified that, in the context of trade marks for services, the assessment of a sign’s distinctiveness should not always involve an assessment of norms and/or customs of the sector.

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Louis Vuitton playing chess or checkers? The CJEU annuls’ the invalidation of Louis Vuitton’s EU trade mark

Louis Vuitton received a favorable decision from the EU General Court (“General Court”) in June 2020 which may assist brand owners seeking IP protection of their decorative patterns. The decision confirms the distinctive character an EU trade mark must possess in order to benefit from protection throughout the EU as well as highlighting how patterns may be protected through registration as a trade mark rather than under other forms of IP protection such as copyright or design protection. However, the decision also reaffirmed the EU’s strict approach to assessing the unitary character of EU trade marks, which potentially sets a high bar for applicants to clear.

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Protecting Animated Logos – LA28 Ushers In A New Era

The Los Angeles Organizing Committee for the 2028 Olympic & Paralympic Games (LA28) has recently unveiled the official LA28 emblem, which, for the first time, is an animated emblem consisting of multiple logos (shown below). “Built for the digital age”, LA28 has designed the emblem to “evolve over time, reflecting [Los Angeles’] spirit of limitless possibility”.

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