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  • Writer's pictureRosie Burbidge

2023 in Blogs: Keyword advertising, polo confusion, social media marks & more

Updated: Jan 2



As we welcome the New Year, it's a good opportunity to reflect on our key updates over the last year.


This case considered the visible and invisible use of trade marks as keywords in Google AdWord campaigns. As English law's divergence from the EU accelerates in 2024, this area is likely to get a lot more attention over the next year.


The Beverly Hills Polo Club saga continues. In this latest instalment, the judge concluded that the Beverly Hills mark was not a “successful global brand” with its failure to demonstrate and provide sufficient evidence to show reputation in the relevant market. He noted that in particular, the polo club trade mark scene is somewhat saturated by similar trade marks depicting a polo player and a horse, increasing the risk for this motif to be considered generic. Amongst other things, this case is a great example of the importance of evidence to successful trade mark proceedings.


The social media giants are becoming ever more territorial over what they consider use of their trade marks and derivatives of them. Software developer EE&T applied to register the trade mark for ‘Soundgram’ which was met with fierce opposition from Meta, the owner of Instagram. Despite Instagram being immortalised in the Cambridge English Dictionary, Mr Justice Richards found that Meta had failed to prove enhanced distinctiveness through use and therefore the opposition was refused.


A triple victory for Lidl against Tesco in trade mark, copyright infringement and passing off proceedings. This case is indicative of the importance in having a well rounded trade mark portfolio. Lidl had registered its notable blue and yellow logo in different iterations, both with and without the text. Mrs Justice Joanna Smith DBE concluded that Tesco's use of a similar mark for its Clubcard offers was an attempt to take unfair advantage of the repute Lidl had accumulated under its marks.


A passing off claim depends on proving goodwill, misrepresentation and damage. In this case, the Claimant, Yours Naturally Naturally Yours Ltd, proved passing off of its ‘Elixir’ beauty serum.


This question arose in the context of a case brought by a company against a former employee and his new company. The former employee, Mr Aughton started supplying new software in the United States which had functional similarities to the software he had developed at his previous company. Mr Aughton had deleted the source code for both software, making it impossible to compare for purposes of infringement. The judge noted that based on the totality of the evidence, a substantial part of the source code had been copied. Mr Aughton's somewhat unreliable evidence didn’t help his case.

 

This case highlighted the significance of having comprehensive processes in place for keeping evidence and ensuring records are effectively stored. Although there had been some use of the mark, easyGroup had failed to provide satisfactory evidence which would prove genuine use. A complicated case which was no doubt hindered by the lack of effective record keeping.


An important and key reminder on the limitations of communication on a without prejudice basis. It is imperative that communications are clearly marked as without prejudice where appropriate to do so. However, simply marking a letter as 'without prejudice' does not automatically mean that it is in fact without prejudice. The court will consider the context of the correspondence in the relevant circumstances to determine its position.


What's next?

We are getting ready for an exciting year filled with technological change, Get in touch to plan your IP strategy for the year ahead.


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com

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