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  • Rosie Burbidge

A year in blogs - bad faith, NFTs, TV characters, colour marks, damages & more...


In the grand tradition of seasonal round ups, this post recaps the top 10 most popular blogposts of the year (and highlights a couple which have flown under the radar).


When is a trade mark registration made in bad faith?

An important question for rightsholders and trade mark practitioners alike and one which we considered in the context of the ongoing dispute between Lidl and Tesco regarding Lidl’s device mark for a blue colour with a yellow circle in the centre. The scope of bad faith is currently in a state of flux. How this will ultimately be determined, remains to be seen.


Are NFTs goods?

This has been a mixed year for the crypto industry. However, whilst some of the wider crypto structures have been found wanting, there remains an appetite for virtual goods, particularly in fashion and gaming, and NFTs remain important as a means of authenticating these virtual goods. How these sorts of goods should be defined in the context of a trade mark specification has been considered from multiple angles, including by the EUIPO. The question remains as to whether NFTs are even goods at all. Readers will be delighted to learn, that I have been working on a practice note on NFTs for LexisNexis which will be published in the New Year.


How much will a court award in additional damages for flagrant IP infringement?

Not the most succinct title to a blog post but an accurate summary of the issues considered in this decision which likely marks the end of the House of CB vs Oh Polly saga. The case provided very helpful insight into the judicial thought process when awarding additional damages and is a very helpful guide for damages inquiries and settlement negotiations alike.


How should an IP licence agreement be interpreted?

This case concerned an application to clarify the terms of an IP licence agreement and subsequent assignment. The relevant licensor (and later assignor) initiated proceedings in order to clarify certain requirements under the agreement, including regarding renewal, use of design rights and auditing of sales. The Deputy Master who heard the case, noted that it was not appropriate for the court to grant declarations in response to open ended questions but he did help the parties by reaching various findings about the factual background to the agreement, the positions of both parties and their understanding of design law at the time. The key point for rightsholders is that a ‘best efforts’ obligation requires an assignee to take all reasonable steps to renew the relevant design registrations but is not an absolute obligation to renew the rights.


When can a colour be a trade mark?

Cadbury’s has done the world of colour trade marks a great favour by testing out the various different types of colour mark in the courts. Meade J considered the different options from (i) the Libertel form (which is the colour only) through to the use of descriptions such as (ii) “applied to the whole visible surface of the packaging of the goods” and (iii) as was used in a subsequent application: “applied to the packaging of the goods”. Meade J concluded that less is more and endorsed the first and third options. Option (ii) was considered undesirable as it left it unclear “whether combination marks including purple and other colours would be within the scope of the right applied for”.


Can a TV character be protected by copyright?

This question was considered in the context of an interactive ‘dining experience’ based on the popular UK sitcom Only Fools and Horses. The judge found that, although the body of scripts for the TV series did not constitute a literary or dramatic work, each individual script was a dramatic work.


In addition, the judge concluded that the character of Del Boy was a literary work as it was an original creation of John Sullivan, which was the expression of his own free and creative choices, and was clearly and precisely identifiable to third parties in the Only Fools scripts. Once the subsistence of copyright was established, the infringement finding was fairly straightforward as copying had clearly occurred.


This conclusion is consistent with the German Supreme Court’s decision regarding the Pippi Longstocking character, and US decisions concerning Sherlock Holmes and Dr Watson.


Is a warning letter all you need to avoid acquiescence?

This is a key issue of practical importance for rightholders. The short answer is: “no”, at least as a matter of EU law, a warning letter is not sufficient to avoid acquiescence. The CJEU noted that where a trade mark owner is time-barred from bringing an invalidity action or opposing the use of a mark, it is also time-barred from bringing other related claims, such as for damages, provision of information or destruction of goods.


Do smartwatch apps infringe Swatch trade marks?

Third party smartwatch face apps which were sold on Samsung’s smartwatch app store were found to infringe a large number of trade marks owned by members of the Swatch group. Samsung was found liable for this infringement. The case provides useful guidance on infringement and the role of operators of third-party app stores. For those looking for some distraction from the Christmas festivities, the judgment (234 paragraphs, 17 footnotes and three appendices setting out the findings for each app) is well worth reading. It is especially useful for brand owners in the fashion industry and technology companies. With the rise of digital fashion and more shopping (both physical and digital) moving onto apps, similar clashes between the physical and digital worlds are likely to increase – the thorough analysis of UK and EU law in this judgment will help to navigate the rocky terrain.


When is purchasing an old trade mark a good idea?

Trade mark infringement, honest concurrent use and so-called “moribund marks” were the focus of an interim decision in a case concerning alleged infringement of the claimant's trade marks STEALTH and STEALTH VR (stylised) for gaming headsets. The judge refused the defendants’ counterclaim that the claimant’s marks were invalidly registered because the defendant had acquired an earlier mark.


What are the IPEC costs caps?

2022 marked a year of change for the IPEC costs caps which had remained the same since the Patents County Court (now named the IP Enterprise Court) was reconstituted under new rules, including the introduction of costs caps, in 2010. The overall cap is now £60,000 for a trial on liability and £30,000 for a trial on quantum.


Under the radar

Other key issues that resonated but didn’t fly quite as high as the top 10 posts included:

  1. The risks of filing takedown notices including whether use of Amazon’s IPR procedures could amount to a threat.

  2. The difficulties associated with securing an interim injunction for passing off.

  3. A review of the latest developments on geographical indications.

  4. The question of when a component part of a complex product is an EU design.

  5. Insight into when a document must be disclosed in copyright proceedings.

Reviewing a year’s worth of blogposts, I can see a huge variety of legal issues and the impressive way in which the judicial system has analysed and resolved these disputes. They represent the tip of the iceberg in terms of IP litigation and the myriad issues that we encounter on a daily basis. I look forward to more thorny questions in the year ahead and to sharing them with you. Until then, I hope you have a wonderful festive period and a very happy New Year.


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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