An Update on Geographical Indications Post-Brexit

As the finale of the Brexit saga draws near it is high time for IP rights holders to make sure that they will not be caught out by the proposed changes to the various IP regimes.

Patents are unaffected and the position as regards EU trade marks (EUTMs) and Community registered designs (CRDs) is relatively clear in that comparable UK rights will be automatically created out of existing EUTMs and CRDs at no cost to the rights holder.  So far so good then – but what about Geographical Indications (GIs) which are perhaps not at the forefront of people’s minds and might be in danger of being overlooked?

The UK Government’s plan for GIs is to create, at the end of any transition period or in the event of a no deal, an independent UK GI scheme which mirrors the EU GI’s four registers for i) food, drink and agricultural products (including beer, cider and perry), ii) spirit drinks, iii) wine and iv) aromatised wine.

Crucially, all of the 88 EU GIs which are registered in respect of a UK product would be given automatic protection under the new UK regime but no such automatic right will be created for any of the other EU GIs.

This, of course, means that the holders of EU GIs for any non-UK products such as cheese, wine and olive oil would need to re-apply for protection in the UK to ensure that their rights continue to be protected.

Following the UK’s exit from the EU there will be a 9 month transition period during which EU GI holders covering non-UK products can re-apply for a UK GI under the new scheme.  The details of such a UK application would be the same as for the current registered EU GI but the application might face substantive examination before maturing to registration – so eventual protection in the UK is not guaranteed even for holders of existing registered EU GIs (details of the scheme have not yet been published).

The position as regards the continued enforceability in the EU r27 of the 88 EU GIs which are registered in respect of a UK product is not yet fully clear.  The most likely outcome at present is that these rights will continue in force and that no re-application will be needed.  The UK Government has committed to assisting rights holders with any re-application should that in fact become necessary.

The key message, therefore, is that holders of EU GIs covering non-UK products should make sure that they re-apply for corresponding UK GIs during the post-Brexit 9 month window to ensure that their rights are protected.

By Andy Clemson

A Cracking Idea by the UKIPO; Inspiring young inventors

The UK Intellectual Property Office (UKIPO) has launched a competition aimed at inspiring innovation amongst children. The competition, which closes on Friday 24 April 2020, is backed by Wallace and Gromit creators Aardman, who are offering the winners a chance to star in a new Wallace and Gromit project and partake in an Aardman model-making workshop.

UKIPO CEO Tim Moss hopes that, like in Wallace and Gromit, the entrants will be inspired by objects around us to produce inventions which make our world “a better, safer, easier place in which to live.”, and will show them “how to get the credit they deserve for their ideas and creations”.

Whilst aimed at a younger audience, the competition will help to show the next generation how important inventions and inventors are for the future, a consideration which was highlighted in the Queen’s speech in October, which emphasised the importance of science and innovation.

With innovation and intellectual property coming hand-in-hand, teaching inventors about their rights from an early age might also help to inspire the next generation of patent attorneys.

By James Bishop

Planned support for science

It was welcome to see that science and innovation warranted a mention in the Queen’s speech given at the State Opening of Parliament on the 14 October.

The Queen stated that: “My Government is committed to establishing the United Kingdom as a world-leader in scientific capability and space technology. Increased investment in science will be complemented by the development of a new funding agency, a more open visa system, and an ambitious national space strategy.”

It is thought that the new UK agency would be modelled on the US Defense Advanced Research Projects Agency (DARPA). There has been speculation that one of Mr Johnson’s prominent advisors is behind this typically disruptive drive to invigorate UK R&D. However, it is worth noting that, in his biography of Churchill, the Prime Minister himself clearly expresses appreciation for the confidence that Churchill had in key scientists such as RV Jones and Henry Tizard, and the value that scientific innovation can bring.

By Nick Bennett

New Partner appointments at Cleveland Scott York

Intellectual property law firm, Cleveland Scott York has continued its recent growth and added two new Partners to its partnership team.

Dr Alicia Instone and Nick Bennett, both formerly Senior Associates at the firm, have joined the partnership with effect from Tuesday 1 October 2019.

Alicia is based at the firm’s Hertfordshire office in Hatfield and is a dual-qualified Chartered Patent and Trade Mark Attorney. She specialises in technology areas including chemistry and medical devices, as well as the fashion and food & beverage sectors.

Nick is a European and Chartered Patent Attorney based at the firm’s London office. He specialises in chemistry, medical devices and mechanics.

Alicia said: “Our appointments continue the growth of Cleveland Scott York since it was formed from the merger of Cleveland IP and Scott & York IP Law in April 2017 and I am delighted to be joining the partnership.

“I am looking forward to continuing my work with our clients and the wider trade mark and patent professions in my new role.”

Nick said: “I’m excited to join the Partnership and I look forward to continuing to grow the practice, building on our recent successes in EPO Opposition work.”

Jonathan Clegg, a Partner at Cleveland Scott York, added: “Alicia and Nick’s promotions are well deserved. They both have strong reputations amongst our clients and the wider professions and we are very pleased to welcome them to the partnership.

“We are confident that Alicia and Nick will bring energy and drive to developing and growing the business and are looking forward to working with them in their new roles.”

Color trade mark protection in the fashion industry

Colour inevitably plays a central role in fashion—and public attitudes about fashion—from Coco Chanel’s iconic little black dress to Meryl Streep’s unforgettable cerulean sweater monologue in The Devil Wears Prada to the collective journalistic obsession with the shade known as “millennial pink” in more recent years. The Pantone Company, known for its proprietary colour-matching system, even releases a “Fashion Color Trend Report” coinciding with New York Fashion Week as a guide to forthcoming colour trends in fashion.

Colour is also a profoundly powerful marketing tool, with companies like Tiffany & Co and Cadbury jealously guarding single colours associated with their brands. But when and to what extent should colours be protected by law as trade marks? While consumers may well come to recognise certain colours or colour combinations as identifying the source of products, there is a strong interest in keeping colours available for use by competitors, particularly in the fashion industry, where aesthetics, trends, or the need to communicate a certain message may demand a particular palette.

The eye-catching red sole of a Christian Louboutin stiletto cuts right to the heart of this conflict between genuine widespread brand recognition on one side and the need to maintain free competition and protect creative expression on the other. Unsurprisingly, Louboutin’s registered trade marks in the contrasting red sole have been litigated in numerous jurisdictions, with divergent results.

In 2018, the CJEU gave a judgment in favour of Christian Louboutin on a request for a preliminary ruling on the question of whether its mark of a red sole shown on the contour of a shoe constituted a three-dimensional shape mark. The CJEU ruled that mark did not consist “exclusively of a shape” and so was not subject to the additional restrictions on registration.

While this was hailed as a victory for Louboutin, the judgment interpreted an earlier provision of the Trade Marks Directive that applied only to shapes. The amended Article 4(1)(e)(iIi) in Directive 2015/2436, however, applies to “the shape, or another characteristic, which gives substantial value to the goods”. The CJEU has since clarified that the amended article does not have retroactive effect on previously-registered marks. But it is unclear how this will affect future colour-mark registrations; there could easily be challenges based on the argument that a colour or combination of colours can give substantial value to goods by virtue of aesthetic merit.

Anyone thinking about protecting a colour mark in the EU must also take note of the CJEU’s recent judgment in Red Bull (C‑124/18), where it rejected Red Bull’s request to set aside the General Court’s judgment relating to invalidity proceedings for its silver-and-blue combination colour mark (below). The General Court had confirmed that the mark and description was insufficiently precise and durable to meet the requirements of graphic representation—Heidelberger Bauchemie, (C‑49/02) having established that a “combination of colours must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way” in order to meet the requirement of graphic representation.

Not unlike Louboutin, the court in Red Bull was interpreting a provision from an earlier version of the EU Trade Mark Regulation under the shadow of recent changes to the law; under Section (1)(4)(b) of  Regulation 2017/1001, the requirement of graphic representation has been removed, instead requiring marks to be represented “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. While this might appear at first glance to be a relaxation of the requirement of graphic representation, the General Court in Red Bull asserted that the new wording is, in fact, more restrictive because itexpressly incorporates into the body of that provision the objectives identified in” the cases of Heidelberger and Sieckmann.

Just like fashion, trade mark law has its trends. With the changes to European trade mark law, and the CJEU’s approach in Red Bull,  it is looks like the latest trend in Europe is towards making it more difficult to protect colours as trade marks.

By Dr Barbara Lauriat, Senior Lecturer, The Dickson Poon School of Law, King’s College London.

Top 15 IP tips for the fashion business

  1. Register a trade mark early, especially if it’s your personal name, because this will help to enforce your rights. Having to deal with trade mark infringers is bad enough in the normal course of events, but even more unsettling, when it concerns misappropriate of your personal name.

 

  1. If you have a name similar to another fashion designer, be prepared to negotiate or even just live with the fact that you may need to rebrand, to avoid long-running and expensive trade mark disputes, not just in the United Kingdom, but also overseas.

 

  1. Inform yourself regarding the scope of copyright and unregistered design right, as these provide free of charge protection for the designs you create.

 

  1. Keep details and dated records of your design process, as a matter of course, so that in an infringement situation, you can prove the date of creation of any of your designs. This is often crucial in any dispute as to ownership/ authorship of a design as well as in resolving the question of which entity copied the other.

 

  1. Registering designs provides increased protection and is worth looking into for your important designs.

 

  1. If you are interested in registering designs, be aware that in a lot of countries, designs have to be new to be validly registered. The UK, EU and some other countries have a grace period, allowing designers to sell their designs and then only invest in registration for the most commercially successful. If you do decide to take advantage of the grace period, use a reliable diary system/keep your IP attorney advised, so that the opportunity to register designs is not lost.

 

  1. Use copyright notices and non-disclosure agreements to ensure that those you have commercial dealings with are fully aware that they are not free to copy your designs.

 

  1. Make sure you deal with contractors correctly – under UK Law, the owner of copyright work is the creator or their employer, unless there is an agreement to the contrary. So third party contractors own copyrights in works you commission, unless you agree otherwise.  Such agreements should always be obtained in writing and before work is done, or at least at an early stage. Once a job is completed, both sides have less impetus to clear up legal loose ends.

 

  1. If you think someone is copying your brand or design, make sure you work quickly to get hold of evidence. This means keeping records of any contact you or your employees have with confused customers and getting hold of media cuttings, as well as obtaining and saving screen shorts of any websites or social media postings.

 

  1. Be aware that while BREXIT will bring changes to IP regimes, in the context of copyright, these are not likely to be major.

 

  1. Be aware that the world of trade marks/brands extends beyond logos, slogans and words. The fashion industry relies heavily on non-traditional trade marks such as position marks, stitching patterns, the get up of retail stores, the colour of soles on shoes etc.  These can be powerful weapons in the fight against infringers.

 

  1. The fashion industry is commonly targeted by cyber-squatters, and so it is important to be aware of the issues around domains – see our previous Top Tips article for details.

 

  1. Be aware there are low-cost ways for dealing with infringement of your rights, such as take-downs from social media, applications for Customs seizures and assistance from Trading Standards. Whenever the writers have been contacted by Trading Standards or the Customs authorities, in relation to counterfeit items, they have always been fashion items.

 

  1. If you decide to increase revenue by licensing your brand, be aware that excessive licensing could lead to a situation where your brand is no longer an indication of origin, which could lead to rights in the trade mark in question being lost. Such a situation might arise if lots of unrelated companies were licensed to use the brand in question in relation to shirts, for example, and produced items of wildly varying quality levels.

 

  1. If you use your personal name as your brand and decide to sell your business, make sure you understand and are prepared to abide by the contractual arrangements relating to use of your name. A purchaser is likely to want to have exclusive rights to the brands the business has been using to date. If you don’t intend to retire, you may need to think carefully about how you will work as a fashion designer in the future.

By Andy Clemson and Cathy Ayers

Opportunities in vehicle electrification

Jaguar Land Rover has recently completed its fit-out of its Castle Bromwich Plant for producing the new electric, ninth-generation Jaguar XJ vehicle. This site has seen a great deal of technical innovation over the years, having first been created as a shadow factory for the advanced Spitfire fighter plane and then subsequently being fitted out for building the highly automated robotised XJ40 in the 1980’s ready for Jaguar’s 4th generation XJ40 vehicle.  The factory continues to produce other advanced vehicles in the model line-up, but this is the first time that Jaguar has set up for electric vehicle manufacturers in the U.K. (its fully electric I-Pace vehicle being made under contract by Magna Steyr in Austria). (more…)

Are patents being considered when looking at tackling global warming?

According to data published by NASA’s Gravity Recovery and Climate Experiment, over the past 35 years, global warming has occurred, however, the warmest years on record have taken place since 2010. (more…)

Chat sh*t and get banged – how offensive does a trade mark have to be to be refused registration?

On 2 December 2016, the company V9 Media Limited, which has two directors, Jamie Richard Vardy and Rebekah Vardy applied to register 5 trade marks in the United Kingdom.  The marks were V9 ACADEMY, V9, JAMIE VARDY, JAMIE VARDY’S HAVING A PARTY and CHAT SH*T GET BANGED.  All the marks are now registered, but the scope of the CHAT SH*T GET BANGED application was limited after filing, to focus the protection on goods for adults, and was registered in March 2017.

This appears to be the truth behind the rather more controversial story run by the Daily Mail on 31 July 2019 https://www.dailymail.co.uk/news/article-7303713/Jamie-Rebekah-Vardy-fail-bid-trademark-phrase-Chat-s-banged.html

In this article, it was claimed that Jamie and Rebekah had failed in an attempt to get the mark registered after ‘rapper Stomzy said it in a new song with Ed Sheeran’. It also went on to report that the Intellectual Property Office ‘…denied their bid to protect its use in music because it contained an expletive.’

The application appears never to have covered recorded music, nor entertainment services.  However, the application wasn’t limited to items for adults when it was filed, and, particularly interestingly, covered school satchels, school bags and baby carriers!  One assumes that the UK Intellectual Property Office were a bit squeamish about allowing registration of the mark for those items and for any other items which might be purchased by children, while accepting the phrase is not something adults would find particularly shocking. CHAT SH*T GET BANGED is apparently a term widely used by Jamie Vardy, and means ‘those who speak ill of others can expect negative consequences’. Some internet comments suggest the term should in fact be CHAT SH*T GET HIT, which is more readily understandable, as well as being more poetic!

Trade mark laws throughout the world generally prohibit registration of marks which are offensive, but a lot of marks fall into a grey area and the trade mark offices have to make a difficult judgement-call over whether a mark is entitled to protection or not.  The FCUK brand is probably the most famous/ widely used, ‘offensive’ brand in the UK and although it is a registered trade mark, the mark was the subject of a lengthy dispute https://www.ipo.gov.uk/t-challenge-decision-results/o13706.pdf as to whether it was entitled to protection. The question of whether the mark is validly registered is probably still one on which there are mixed views. For anyone wanting to know more, the UK Intellectual Property Office has a detailed practice guide, see this link https://www.gov.uk/guidance/trade-marks-manual/the-examination-guide  and scroll down to ‘offensive marks’.

It is not uncommon for journalists to get completely the wrong end of the stick regarding trade mark cases, but even so, the Daily Mail’s reporting of this case is very depressing. Some of the comments on the case are worth a read, though, if you appreciate a certain type of wit! My favourite at the time of writing this was ‘Jamie Vardy had one good season. Can I get that trademarked???’. The answer (particularly given that Jamie has registered his name as a trade mark) is ‘probably not’. But it would be fun to try.

By Cathy Ayers

Top tips in domain name disputes

Here is our list of top tips in domain name disputes. (more…)