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7 days ago
2 min

Influencers are advertising... and the ASA is watching

Influencers are advertisers. This has been clear for some time. But now influencers are trending for the wrong reasons as the Advertising Standards Authority starts to clamp down on the use of filers for beauty products and failure to identify paid content. Use of filters Advertisers should not use filters on photos promoting beauty products on Instagram if the filters are likely to mislead or exaggerate regarding the effect the product was capable of achieving. This was the

Rosie Burbidge

7 days ago
1 min

‘Genuine use’ for EU trade marks

The Court of Justice of the European Union (CJEU) has ruled that ‘genuine use’ for EU trade marks can be established through the provision of spare parts services or second-hand goods which are linked to the mark in question in Ferrari SpA v DU. Background In this case, Ferrari’s longstanding battle against revocation of the “Testarossa” mark was finally won. The Testarossa name related to a now defunct line of cars which Ferrari has ceased manufacturing and opponents argued

Why contracts are in writing: lessons from an oral trade mark co-existence agreement

Rosie Burbidge

Feb 22
2 min

Why contracts are in writing: lessons from an oral trade mark co-existence agreement

A recent decision by the Intellectual Property Enterprise Court reveals the problems that can arise when businesses that once shared name fall out and do not have a clear agreement in place. The case covered 22 issues(!) in total, including copyright infringement, trade mark validity and infringement and passing off. Following a two-day trial in November, Deputy High Court Judge David Stone handed down his judgment on 18 January 2021. The case was brought by Cormeton Fire Pro

Court Room Recordings are not necessarily for Public Consumption

Rosie Burbidge

Feb 22
2 min

Court Room Recordings are not necessarily for Public Consumption

Lockdown boredom has caused recordings of meetings with irate characters or funny, and accidental, filters to become internet sensations. From the heated Handforth Parish Council meeting to the absurdly necessary declaration, “I am not a cat”, in a virtual US courtroom, the public clearly has an appetite for these farcical recordings. However, it's important to remember that the basic rules on recording court hearings (i.e. don't do it) continue to apply in the digital realm.

Rosie Burbidge

Feb 19
1 min

USTR Notorious Markets List

In its annual review of markets that engage in or facilitate counterfeiting and piracy, the US Trade Representative has named 39 online markets (including many of Amazon’s foreign domains, Shopee and Taobao) and 34 physical markets. The European Commission published a similar list in its Counterfeit and Piracy Watch List in December 2020. Both lists provide useful information on the challenges IP rights owners face in enforcing their rights in the various online marketplaces,

Joint authorship dispute resolved after retrial

Rosie Burbidge

Feb 2
2 min

Joint authorship dispute resolved after retrial

The long-lasting litigation over the authorship of the screenplay for the 2016 film “Florence Foster Jenkins” has resulted in the court finding that Julia Kogan (the Claimant) was a co-author of the screenplay with the contribution valued at 20%. Mr Justice Meade’s decision came following a retrial after an earlier judgment was overturned by the Court of Appeal. This is an unusual decision which reflects a changing approach toward defining artistic contribution. Ms Kogan was

Passing off vs US law contract - guess which eagle wins?

Rosie Burbidge

Feb 2
3 min

Passing off vs US law contract - guess which eagle wins?

Mr Justice Miles’s judgment in Lyle & Scott Limited v American Eagle Outfitters, Inc is an important decision for international fashion brands. The two companies use very similar eagle logos (pictured) for clothing that is sold through similar marketplaces in the UK and internationally. Lyle & Scott (L&S) is a long-standing British high-end fashion brand. It historically made golf clothes but by 2019 around half of its sales were polo shirts and T-shirts which are sold throu

Rosie Burbidge

Feb 2
2 min

The benefits of IP Insurance

With IP worth 75% of a business’ value why do less than 13% of businesses have IP insurance? It’s fascinating to read the insurance industry’s perspective on this phenomenon: Protecting Intellectual Property in the new world order. I find insurance (& third party funding) essential in many disputes. In most cases, this is "After the Event" or ATE insurance. Matthew Hogg and Edward Cartwright's article makes a great point that many people forget: you may assume that you have

Watch out! New employees could lead to a breach of confidence claim against you

Rosie Burbidge

Feb 2
2 min

Watch out! New employees could lead to a breach of confidence claim against you

A new employee joins a business. They have lots of new ideas and suggestions. Sounds great but might you be at risk? To put it another way, where is the line between creativity and confidentiality? Trailfinders Ltd v Travel Counsellors Ltd There was a rare Court of Appeal judgment on confidential information on 19 January 2021. The Court upheld a decision from the English IP Enterprise Court (IPEC) in a dispute between travel agent Trailfinders Ltd ("Trailfinders") and its co

Rosie Burbidge

Jan 27
2 min

Domain names are personal property

Domain names have been treated as a type of intellectual property for years but their precise status has not been clear in the UK, until now. The owner of the blackjack.com domain decided to roll the dice and asked His Honour Judge Hacon to determine whether or not the domain name was intangible personal property. This case, Hanger Holdings v Perlake Corporation SA & Anor [2021] EWHC 81 (Ch), offers clarity on this important question. Background Hanger Holdings, a company in

The limits of shape protection: The Gömböc example

Rosie Burbidge

Jan 24
2 min

The limits of shape protection: The Gömböc example

It is very challenging to obtain a legal monopoly in a shape. The easiest solution is to file one or more registered designs within the one year grace period applicable for UK and EU registered designs. Miss the deadline, unregistered designs, copyright or even trade marks may be available. The criteria for protection vary and, particularly in the case of trade marks, there are a lot of exceptions. The Gömböc is a mathematical theory made real. It is a convex, three-dimension

Rosie Burbidge

Jan 24
3 min

Legal Innovation = Microsoft Office?

Legal innovation is often equated with one of the incredible new AI tools that are unveiled at tech events on a regular basis. However, the key software package that lawyers use on a daily basis throughout the world remains Microsoft Office. Like it or loathe it, this is where legal innovation is for the vast majority of lawyers. This is a fact to be embraced and celebrated! Once you have a quick rummage under the Microsoft Office hood, there is an array of useful tools which

Future gazing in a time of global crisis

Rosie Burbidge

Jan 19
3 min

Future gazing in a time of global crisis

There is no doubt that we are living through an unstable time. The pandemic has changed daily life for everyone. Politics are far from stable – this impacts many things, not least international trade. The origins of established brands are coming under the microscope. The economic good times (such as they were in the wake of the global financial crisis) are over. With recession set as the new normal, it is clear that things will be in flux for a long time to come. It is hard t

Arbitration (clauses) last a long time...

Rosie Burbidge

Jan 6
1 min

Arbitration (clauses) last a long time...

Are arbitration clauses a good idea? This post is not going to resolve this longstanding debate but it will highlight some of the intended (and unintended) consequences of an arbitration clause. The use of arbitration clauses in trade mark coexistence agreements was recently considered by the UK's IP Enterprise Court (IPEC) in Lifestyle Equities CV & Anor v Hornby Street (MCR) Ltd & Ors. Lifestyle Equities owns six EUTMs and one UKTM (post Brexit that is 7 UKTMs) for BEVERLEY

European Commission takes fight to online counterfeiters

Rosie Burbidge

Jan 6
2 min

European Commission takes fight to online counterfeiters

Is help coming to tackle the scourge of counterfeits sold on online marketplaces? Counterfeit goods affect all businesses as they grow from fashion to merchandise and related goods. On 15 December 2020, the European Commission published its “Europe fit for the digital age” proposals: the Digital Services Act (the DSA) and Digital Markets Act (DMA) . If adopted, they will replace the eCommerce Directive, which was introduced 20 years ago. DSA obligations The DSA is particularl

The last Community Design case (in the UK)

Rosie Burbidge

Dec 24, 2020
1 min

The last Community Design case (in the UK)

A case regarding “ballet flats” is likely the last time in which a UK court will sit as a Community Design Court, and the judgment was handed down expeditiously given the end of the Brexit transition period on 31 December 2020. The case involved registered Community designs (RCDs) and unregistered Community designs (UCDs), and issues of both validity and infringement. Deputy High Court Judge David Stone found: both the registered and unregistered design to be valid as they pr

Rosie Burbidge

Dec 24, 2020
2 min

Brand extensions beware!

You take a famous car company with a well known trade mark, say Ferrari, and decide that you can get an entirely new revenue stream licensing this mark for use on FMCG products such as clothing. It is a roaring success! Competitors look at this success and think - great idea! Let's copy it... but not all of them clear their rights first. The following is a cautionary tale in more ways than one. I was in charge of this case from its start until well into the disclosure phase.

Protecting digital designs - the clock is ticking

Rosie Burbidge

Nov 26, 2020
2 min

Protecting digital designs - the clock is ticking

Designs are one of the key IP rights for the gaming and fashion industries but they are complex and consequently poorly understood. There are two key categories of design: registered and unregistered designs. They are best known for protecting three dimensional products but a little known fact is that they can also protect logos and graphical user interfaces. Given the shift to remote and virtual living, protecting digital assets is more important than ever. The European Comm

What happens if the trade mark you use in practice is different to your registration?

Rosie Burbidge

Oct 28, 2020
2 min

What happens if the trade mark you use in practice is different to your registration?

Branding and trade mark use can change in subtle (and not so subtle) ways over time. For example, it may be used in a different typeface, a different colour or together with another device mark. This creates a problem for trade mark holders as, in the EU if you have not used a trade mark for some of the goods and services for which is it is registered, once the initial 5 year grace period after registration is over, anybody may apply to revoke the trade mark on the basis that

Rosie Burbidge

Oct 25, 2020
4 min

Will wearable tech revive retail?

Fashion and technology have long been on a collision course and, like so much, the pandemic has accelerated things in a dramatic and life altering way. It’s no secret that the fashion sector has been particularly badly hit by Covid-19. The saving grace for many brands has been the investment that it has made in the digital and technology business. It’s fair to say that businesses with a strong ecommerce offering have fared much better than the competition – particularly if th

ROSIE BURBIDGE