Proceedings recently commenced in the Federal Court of Australia by the Scotch Whisky Association (SWA) serve as a reminder of the ability to use the trade mark system to protect Geographical Indications (GIs) in Australia. The use and protection of GIs in Australia will be of particular interest to followers of the Australian-European Union free trade negotiations, where GIs have been flagged by the European Union as a critical issue.
Waitrose has agreed to stop producing “copycat” chocolate slabs following an ongoing dispute with Hotel Chocolat.
Hotel Chocolat accused Waitrose of infringing its intellectual property rights in its distinctive curved shaped chocolate slab. This was further reinforced when individuals were taking to Twitter to question whether Hotel Chocolat were actually producing the chocolate slabs for Waitrose. Hotel Chocolat requested that Waitrose removed the offending chocolate slabs from sale.
EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.
EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.
On 29 November 2017, the Court of Justice of the EU (CJEU) released its judgment in response to a reference from an Italian court relating to cloud recording and computing services provided by VCAST Limited (VCAST). The services enabled VCAST’s customers to select live broadcasts of television programmes that VCAST then remotely, through its own systems, recorded and made available in a cloud data storage space. The Italian court asked whether VCAST could provide this service without the permission from the owner of the copyright over the programme, with a specific query as to the application of the private copying exception provided in Article 5(2)(b) of the Information Society Directive (2001/29/EC) (InfoSoc Directive).
In a positive decision for brand owners, the UK Supreme Court has confirmed that criminal trade mark offences can apply to the sale and distribution of grey market goods in addition to counterfeit goods.
In R v M & Ors  UKSC 58, the appellants had been importing clothes and shoes into the EU that bore trade marks of famous fashion brands. These were a combination of counterfeit goods and grey market goods (i.e. goods that had been produced with the trade mark owner’s consent but that had been subsequently sold without their consent).
In the UK, in a decision that will provide additional comfort to trade mark owners seeking to protect their intellectual property rights in the UK, the High Court held that a threat issued by a trade mark owner was not groundless simply because it was never followed up by proceedings being issued.
In Vanderbilt v Wallace & Ors  EWCH 45 (IPEC), the High Court held that “the emphasis is on whether the acts actually infringe or, if done, would infringe, not on whether a proprietor actually sues for infringement. The phrase does not impose an obligation to commence legal proceedings for every act complained of.”
The case involved a long running trade mark dispute between the claimant and defendant, including several concurrent actions. In this instance the defendant had argued that section 21 of the Trade Marks Act 1994 established that where threats are made the trade mark proprietor has to bring a claim in relation to everything that is the subject of a threat, and that if they fail to do so then the threats can never be justified, even if there is infringement.
The Court disagreed. It stated that there are often valid commercial reasons why a trade mark owner may elect not to issue proceedings even if there is an obvious infringement. The Court will consider the validity of the claim on its own and whether the acts complained of constitute an infringement, regardless of whether proceedings have been issued following any threats to sue.
In addition to providing clarity, this outcome will please trade mark owners. Provided that they have established infringement they can send cease and desist letters without worrying about issuing legal proceedings that may not be commercially desirable.
By Briony Pollard and Serena Totino
Last month, a quintessential London symbol was subject to the scrutiny of the Hon. Mr. Justice Arnold in a case concerning Community and UK trade marks for the iconic shape of the black London taxi cab in Class 12 (the Trade Marks), owned by The London Taxi Corporation Limited (LTC).
LTC claimed that Frazer-Nash Research Limited and Ecotive Limited (FNR) had intended to deceive the public as to the origin of the Metrocab, a new model of the London taxi. LTC argued that a result of FNR adopting the specific shape it had for the Metrocab, was that consumers would think that it emanated from the same source as LTC’s taxis. As such, FNR threatened to infringe the trade marks and to commit passing off by marketing the Metrocab. FNR contended that the trade marks were invalidly registered because they lack distinctive character and give substantial value to the goods.
Fashion retailer, H&M has been unsuccessful in its application to the EU General Court to invalidate YSL’s Community designs for handbags. Community designs protect designs for up to 25 years in every EU Member State. In November 2006, YSL successfully registered two of its designs for handbags. H&M had applied for a declaration of invalidity for these two YSL designs arguing that the designs had no individual character.
The UK Supreme Court (the country’s highest court of appeal) has refused permission to appeal in the long-running Assos v Asos trade mark dispute.
As reported in our post on 2 April 2015 here, the Court of Appeal held that online retailer Asos did not infringe Swiss clothing company, Assos’s, Community trade mark as use of the ASOS brand was defensible under the ‘own name’ defence in Community law.
Christian Louboutin (Louboutin) has again been successful in a long running opposition proceeding filed by Roland SE (Roland) against its red sole trade mark in the European Union.
Louboutin has faced legal challenges around the world in registering and enforcing its signature red sole on its shoes. In 2010, Louboutin filed a Community Trade Mark application for the below trade mark in class 25 for “high-heeled shoes (except orthopaedic footwear)” (Louboutin Mark):