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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.

Targeting and trade marks - Beverly Hills Polo Club takes on the Amazon

Rosie Burbidge

Feb 19
3 min

Targeting and trade marks - Beverly Hills Polo Club takes on the Amazon

When is an online marketplace “targeting” consumers in a particular jurisdiction? This was the question that Mr Justice Michael Green wrestled with in his judgment in Lifestyle Equities CV & Anor v Amazon UK Services Ld & Ors [2021] EWHC 118 (Ch). The case involved trade mark infringement and passing off claims brought against Amazon regarding the sale of goods bearing the Beverly Hills Polo Club trade marks on amazon.com. The claimants are familiar faces in the English High

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

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

Feb 2
2 min

Brand investment pays off for Dr Martens

Dr Martens, the footwear and clothing brand that defined my teens, is launching an initial public offering (IPO) which could value the company at £3.7 billion! The company is currently majority owned by Permira (the UK private equity firm). One reason behind this high valuation is that it is a fashion brand that truly recognises the value of its IP (even if it famously once failed to secure the copyright in its logo - see below!).* It sells 11 million pairs of boots and shoes

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

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.

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 4, 2020
3 min

Don't lose your rights after Brexit

We first wrote about the impact of Brexit over a year ago back in a pre pandemic era. Although we still don't have a deal. The outcomes outlined in that post are likely to apply from 1 January 2021 (i.e. the end of the Brexit transition period). It is no longer possible to file an EU mark and get it registered before the end of the transition period (31 December 2020). Therefore all new EU trade mark filings will need to be filed separately in the UK if trade mark rights in t

More Than Just a Game V - IP and the gaming industry

Rosie Burbidge

Apr 10, 2019
3 min

More Than Just a Game V - IP and the gaming industry

More Than Just a Game V - MTJG - is an international series of academic-led conferences on Games and Interactive Entertainment Law attracting an international network of researchers and legal professionals who are passionate about the most successful and fastest-growing of the Creative Industries. The 2019 conference covered a number of issues including: (i) loot boxes & the risks of randomised monetisation; (ii) the impact of GDPR on artificial intelligence, and (iii) the im

ROSIE BURBIDGE