New UK Trade Mark Regulations will come into force on 14 January 2019

A summary of the most important changes is set out below

Changes to a definition of a trade mark: 

When filing a UK trade mark application, it will not be necessary to provide a graphic or visual representation of the mark. You will be able to present the mark in a wider range of electronic formats, such as in an MP3 or MP4 format, via an online application. It still needs to be clear and precise to others, as to what it is, but this change envisages the registration of marks which incorporate, for example, movement or sounds. However if a UK application will form the basis of an International application, it will still have to be submitted in traditional graphic format.

Changes to extend “technical function” objections that can be raised to trade mark applications:

If the shape of a mark, as currently applied for, performs a purely technical function and adds value to the goods (or, the shape results from the nature of the goods), then it will not be registrable. This prohibition will extend beyond shapes to any characteristic which is intrinsic to the goods applied for

Changes to citation (and status) of expired trade marks:

Expired marks won’t be cited by the UK IPO any more. For the duration of the period a mark isn’t on the Register, it won’t be notified to the Applicant of a later similar mark. As the Applicant will be unaware of the earlier mark, the earlier owner will not be able to assert infringement for any usage by the Applicant of its later mark made during the period the expired mark wasn’t on the Register, even if subsequently restored.

Change to 5 year non-use period for purpose of opposition:

The relevant 5 year period to substantiate an earlier mark with evidence of use in opposition proceedings will be the 5 years immediately preceding the filing (or priority) date of the opposed mark (no longer its publication date).

Changes to who may own a Collective Mark:
“Legal persons governed by public law” will be able to own a Collective Mark, and, the type of Associations that will be able to own Collective Marks has been clarified.

Changes to Regulations for a Collective Mark:

These will have to include “conditions of use of the mark” and “sanctions that will be taken if the mark has been misused”. Also, if a Collective Mark contains a reference to a geographical area, the Regulations will have to allow any person whose goods or services originate in that region to become an authorised user of the Collective Mark (provided they meet all other conditions).

Changes to permissions of the owner of a Collective Mark:
The Association members of the Collective Mark holder will need permission of the Association Owner to initiate trade mark infringement proceedings (though they will be able to intervene directly in infringement proceedings to claim damages).

Widening of powers for trade mark owner against counterfeit goods in transit:

Counterfeit goods in transit will be detainable by UK Customs, if the person shipping the goods cannot prove that it is free to market the goods in the country of destination. In other words, the burden of proof now rests with the shipper of the goods in transit that they may be lawfully marketed at their destination rather than with the claimant trade mark proprietor. Civil claims may also now be brought by a trade mark owner against “preparations to infringe”.

New powers of trade mark owners against generic dictionary entries:

Where a publisher incorrectly identifies a trade mark as a generic term in a dictionary, the trade mark owner will be able to require the publisher to clarify that the dictionary entry is a registered trade mark, failing which a court order may be sought.

Proprietors of a trade mark will be able to remedy the unauthorised application or restoration of a trade mark by their agent/representative.

Invalidation of a registered trade mark will be considered by the Courts during the course of infringement proceedings based upon that registered trade mark:

It will no longer be necessary to file a separate invalidation or revocation action against a registered UK trade mark before or alongside infringement proceedings. As a defence in infringement proceedings, it will now be possible to request proof of use of the earlier mark (where applicable) to remove the need to file separate proceedings to contest its validity.

The ‘own name’ defence to trade mark infringement will only apply to personal names:

The “own name” defence no longer applies to trade names and company names. It is not clear what the position is for companies that would have previously been able to rely on this defence before the change in law i.e. whether they may still be able to rely on the defence by virtue of their prior use.

Widening of proof of use requirements for older marks in invalidation proceedings:

Where an earlier mark is relied on, in an invalidation attack on a later registration, and where that earlier mark has been registered for more than five years, it will now be possible for the owner of the contested registration to request proof of use of the earlier mark across two time periods i.e. for the five year period prior to the filing (or priority) date of the later contested registration and for the five year period running up to the filing of the invalidation action. (In other words, an earlier proprietor is obliged to show that its registration was valid both at the time the later mark was filed and at the time the attack is brought against the later mark.)

Changes to licensing provisions and recordable procedures:

A trade mark owner will be able to take legal action under the Trade Marks Act against a licensee, if they have failed to observe license terms including: how long it lasts, the way the mark is used, what goods or services are covered, the geographic area of use and quality of the goods or services.

The rights of licensees are changing. Previously, a non-exclusive licensee was entitled to bring proceedings for trade mark infringement (where it had called upon the proprietor to take action, without success, and where its licence permitted). This has now been changed so that a non-exclusive licensee may not now sue without the trade mark owner’s permission.

The status quo remains for exclusive licensees; they may bring proceedings in their own name albeit after they have asked the proprietor to sue, without success.

A licensee (of either type) will nevertheless be able to intervene directly in infringement proceedings brought by the proprietor to obtain damages for its losses suffered as a result of the infringement.

Licence provisions will now apply to both trade mark applications and registrations.

It will now be possible to divide trade mark registrations, as well as applications.

Extension of renewal reminder period:

The point at which the UK IPO will notify a trade mark owner or their representative that a mark has become due for renewal will now be about 6 months before the renewal fee is due to be paid and the registration expires. Reminders are currently issued about 4 months before the due date.

By Joanna Larkey

The impact of Brexit on UK Copyright – as reported by the EU Commission

At the beginning of this month, the EU Commission issued a report on the impact of Brexit on UK copyright. This indicates that, as of 30 March 2019, the various EU Directives and Regulations on copyright will no longer apply in relation to UK Copyright ownership.

Although UK copyright law is largely national, it is based on several EU Directives and Regulations. In its report, the EU Commission specifies the impacts on leaving the EU on UK broadcasters and database users, some of which we’ve summarised below.

The EU “Broadcasting” Directive concerning copyright applicable to satellite broadcasting and cable retransmission, and which essentially allows for trans-frontier broadcasting, will no longer apply to UK based broadcasters. Currently, UK  broadcasters are only bound by the laws of the Member State they are actually broadcasting from, and not by the laws of the Member States in which their signal is received. Post-Brexit, UK based broadcasters will have to secure clearance from all relevant copyright holders in the countries they are broadcasting to. At the same time, EU broadcasters to the UK will have to secure clearance from all relevant rights holders in the UK, before broadcasting here.

The EU’s “Collective Rights Management” Directive, which sets common standards for multi-territorial licensing of rights in musical works for online uses in the single market, will no longer apply to ensure the governance and transparency of UK based Collective Management Organisations/Collecting Societies.

The EU’s “Orphan Works” Directive will no longer apply to UK orphan works. This has standardised the rules on the digitisation and online display of  “ orphan” works held in UK cultural institutions, i.e. works including books, newspaper and magazine articles and films that are still protected by copyright but whose authors or other rightholders are either not known or cannot be located or contacted to obtain copyright permissions.

The EU’s 2017 Directive which enables visually impaired, blind or otherwise print-disabled persons to obtain accessible format copies from authorised entities in the EU will no longer apply to UK persons.

The EU “Online Content Portability” Regulation will no longer enable UK residents travelling to the EU to be assured of the equivalent provisions of access to the same content, on the same range and number of devices, for the same number of users, and with the same range of functionalities from their online content providers.

Finally, the EU’s “Database” Directive entitling UK nationals (without habitual residence in the EU) and UK incorporated companies to maintain or obtain a sui generis database right in respect of EU databases will no longer apply.

The above-specified anticipated consequences of Brexit are of course subject to any re-negotiation of terms of withdrawal, in the run up. The UK Government has also confirmed it will be addressing the final consequences of the Brexit agreement by updating national laws or establishing equivalent new national rights, so we await further developments on these areas of copyright law.

Authored by Joanna Larkey[:]

Unauthorized selling of “grey goods” is a criminal offence, says Supreme Court

English law has long enabled registered trade mark owners to bring criminal prosecutions against anyone trading in fake or “counterfeit” goods, but in a recent ruling, the Supreme Court has now confirmed that the criminal provisions of the Trade Marks Act enables such prosecutions in relation to grey goods, ie. goods originally produced with the brand owner’s consent but then sold without their consent.

The ruling came about following an interlocutory appeal in ongoing criminal proceedings in which the Supreme Court was asked to consider whether the criminal provisions of the UK Trade Marks Act 1994 distinguish between counterfeit goods and grey goods.

The relevant criminal provisions are as follows:

“A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor- (a) applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark, or (b) sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears such a sign, or (c) has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b).”

In the particular criminal proceedings, the defendants are alleged to be involved in the importation and sale of fashion clothing and footwear bearing the trade marks of Ralph Lauren, Adidas, Under Armour, Jack Wills, Fred Perry and others. Some are fake, but others are the original branded products, which were being sold in the UK by the defendants without the consent of the trade mark owners.

As part of their appeal, the defendants were attempting to argue that it is only fake goods which would be caught by the criminal provisions, ie. those goods to which 3rd parties have applied signs likely to be mistaken for the registered trade marks, but the Supreme Court ruled that the trading in grey goods, ie. trading in goods bearing the registered trade mark but crucially without the consent of the proprietor, would be equally in breach of the criminal provisions.

The related criminal trial continues, and meanwhile we suggest that trade mark owners regularly review their quality control measures, production controls and return goods policy with their authorised manufacturers and agents, to maximise pre-emptive measures against unauthorised trade in grey goods.[:]

Not so ‘SORRY’ – Bieber accused

A copyright infringement action has commenced in the the U.S. District Court for the Middle District of Tennessee (allegedly already known for issuing a number of controversial copyright rulings) by an independent artist called Casey Diesel who styles herself for recording/performing purposes as White Hinterland.

She alleges that the opening few seconds of Bieber’s hit “SORRY” steals the beginning of her 2014 track “Ring the Bell”. Bieber and his producer have both denied the allegation on social media, but it is not yet known whether Bieber’s lawyers will defend their client at trial, or, whether they are working towards an out of court settlement.

For her copyright action to succeed, Diesel will have to establish first of all that copyright subsists in the relevant part of her earlier work, and then, that the later work is “substantially similar” from a qualitative as well as a quantitative point of view.  Finally she will have to establish that Bieber’s song was not created independently.

Diesel’s lawsuit sets out the similarities between the respective songs, noting the virtual identity between the respective vocal sequences and that the melody of both songs is constructed around keyboard synthesizers, samples, synth bass, drums and percussion.

In respect of this, Bieber’s producer has already published a video on social media showing precisely how the contentious vocal loop was produced.

Because Diesel is unlikely to have direct proof of copying, she will have to rely upon indirect proof that her work was copied. This might include demonstrating

  1. how easy it would have been for Bieber and his producer to access her song (which will have been readily accessible on the YouTube and Spotify sites at the relevant time), and
  2. how very similar the two songs are. In the latter respect, Diesel’s lawsuit asserts that “the identical and/or striking similarity of “Sorry” to Plaintiff’s song “Ring the Bell” surpasses the realm of generic coincidence and independent creation”.

It is understood that Diesel’s lawyers wrote to Bieber’s lawyers and received no response, leaving Diesel “no other option” but to commence proceedings in court to “stand up for my music and art”.

The filing of such copyright law suits always attracts a great deal of media interest. For example, Charles Cronin, a copyright authority and lecturer at the Gould School of Law at the University of Southern California has been quoted as saying: “Music infringement claims tend to be settled early on, with financially successful defendants doling out basically extorted payoffs to potential plaintiffs rather than facing expensive, protracted and embarrassing litigation.”

In weighing up whether or not to go to trial, no doubt Bieber’s lawyers will also be mindful of the well-known “Blurred Lines” dispute, which culminated in Marvin Gaye’s family securing an award of costs amounting to $7.4 million in 2015 from Pharrell Williams and Robin Thicke, for infringing copyright in Marvin Gaye’s 1977 hit, “Got to give it up”.[:]

High Court Ruling on Nestle’s Four Finger Chocolate Bar Shape – Not Registrable As A Trade Mark

The High Court of England and Wales has just rejected Nestle’s appeal against the Registrar of Trade Mark’s decision to reject the shape of its four-finger KITKAT chocolate bar for trade mark registration in the UK.

The UK Registrar found the shape applied for to be unregistrable for all goods except “cakes” and “pastries”, and, found that Nestle had demonstrated insufficient evidence of its acquired distinctiveness through use.

Nestle’s appeal challenged the Registrar’s findings. In particular Nestle argued that it had shown sufficient distinctive character acquired through use, via the results of a survey in which over half of those who took part recognized or used the word “KitKat” in their response, thus identifying the image of the four-finger shape with Nestle’s KITKAT product.

Cadbury cross-appealed against the acceptance by the Registrar of the mark for “cakes” and “pastries”.

In an earlier judgement last year, Justice Arnold allowed Cadbury’s cross-appeal and found that the Registrar was incorrect to accept the mark for registration for “cakes” and “pastries”. Arnold referred to the CJEU for a preliminary ruling on 3 questions (concerning acquired distinctiveness of the mark through use, and, necessity for the product to be shaped in a particular way in order to obtain an technical result).

Following the CJEU ruling, Justice Arnold has now completed his decision, and has found that the Registrar of Trade Marks correctly held that the shape of the bar was devoid of inherent distinctive character, and, that Nestle had not shown sufficient acquired distinctive character in it, as a trade mark.

In particular, the Registrar had been correct to conclude that whilst Nestle’s survey had shown association of the chocolate bar shape among consumers with the KitKat product/Nestle,  it hadn’t shown that consumers were, in fact, relying on the shape itself in a trade mark sense, ie as the indicator of the source of the product:

“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:

  1. i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application;
  2. ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;

iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.

In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The full judgment of the court can be found here.[:zh]The High Court of England and Wales has just rejected Nestle’s appeal against the Registrar of Trade Mark’s decision to reject the shape of its four-finger KITKAT chocolate bar for trade mark registration in the UK.

The UK Registrar found the shape applied for to be unregistrable for all goods except “cakes” and “pastries”, and, found that Nestle had demonstrated insufficient evidence of its acquired distinctiveness through use.

Nestle’s appeal challenged the Registrar’s findings. In particular Nestle argued that it had shown sufficient distinctive character acquired through use, via the results of a survey in which over half of those who took part recognized or used the word “KitKat” in their response, thus identifying the image of the four-finger shape with Nestle’s KITKAT product.

Cadbury cross-appealed against the acceptance by the Registrar of the mark for “cakes” and “pastries”.

In an earlier judgement last year, Justice Arnold allowed Cadbury’s cross-appeal and found that the Registrar was incorrect to accept the mark for registration for “cakes” and “pastries”. Arnold referred to the CJEU for a preliminary ruling on 3 questions (concerning acquired distinctiveness of the mark through use, and, necessity for the product to be shaped in a particular way in order to obtain an technical result).

Following the CJEU ruling, Justice Arnold has now completed his decision, and has found that the Registrar of Trade Marks correctly held that the shape of the bar was devoid of inherent distinctive character, and, that Nestle had not shown sufficient acquired distinctive character in it, as a trade mark.

In particular, the Registrar had been correct to conclude that whilst Nestle’s survey had shown association of the chocolate bar shape among consumers with the KitKat product/Nestle,  it hadn’t shown that consumers were, in fact, relying on the shape itself in a trade mark sense, ie as the indicator of the source of the product:

“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:

  1. i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application;
  2. ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;

iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.

In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The full judgment of the court can be found here.[:ja]The High Court of England and Wales has just rejected Nestle’s appeal against the Registrar of Trade Mark’s decision to reject the shape of its four-finger KITKAT chocolate bar for trade mark registration in the UK.

The UK Registrar found the shape applied for to be unregistrable for all goods except “cakes” and “pastries”, and, found that Nestle had demonstrated insufficient evidence of its acquired distinctiveness through use.

Nestle’s appeal challenged the Registrar’s findings. In particular Nestle argued that it had shown sufficient distinctive character acquired through use, via the results of a survey in which over half of those who took part recognized or used the word “KitKat” in their response, thus identifying the image of the four-finger shape with Nestle’s KITKAT product.

Cadbury cross-appealed against the acceptance by the Registrar of the mark for “cakes” and “pastries”.

In an earlier judgement last year, Justice Arnold allowed Cadbury’s cross-appeal and found that the Registrar was incorrect to accept the mark for registration for “cakes” and “pastries”. Arnold referred to the CJEU for a preliminary ruling on 3 questions (concerning acquired distinctiveness of the mark through use, and, necessity for the product to be shaped in a particular way in order to obtain an technical result).

Following the CJEU ruling, Justice Arnold has now completed his decision, and has found that the Registrar of Trade Marks correctly held that the shape of the bar was devoid of inherent distinctive character, and, that Nestle had not shown sufficient acquired distinctive character in it, as a trade mark.

In particular, the Registrar had been correct to conclude that whilst Nestle’s survey had shown association of the chocolate bar shape among consumers with the KitKat product/Nestle,  it hadn’t shown that consumers were, in fact, relying on the shape itself in a trade mark sense, ie as the indicator of the source of the product:

“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:

  1. i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application;
  2. ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;

iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.

In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The full judgment of the court can be found here.[:]

Copyright in Company Logos

In the recent IPEC case of Atelir v Kilnworx, the Judge decided that if logo designs are commissioned specifically for a company’s use, that company may be “equitably entitled” to copyright ownership in the logos, even if the ownership appears to have gone astray.

The circumstances of this case were that three individuals, Mr Bunting, Mr Sandhu and Mr  Shabbir, set up the “Kilnworx Climbing Centre”  in Stoke on Trent. The first individual was also a director of a second company called Atelier. He instructed a design company, Purple Penguin, to create some logo designs specifically for Kilnworx, though his Atelier company footed the bill for these. He then departed from Kilnworx after its failure to pay Atelier back for this and other payments, he claimed ownership by Atelier of Kilnworx’ logo designs and advised his former partners at Kilnworx, Mr Sandhu and Mr Shabbir, that in order to legitimately use the Kilnworx logos they would need to purchase the rights from Atelier. Kilnworx rejected this, Atelier alleged copyright infringement by Kilnworx who denied infringement claiming that it had, at all times, been equitable owner of the logo copyrights  (since they had been specifically created for Kilnworx to use). Alternatively Kilnworx claimed that it, and not Atelier, benefited from an exclusive license from Purple Penguin under the copyrights.

The Judge cited “Griggs Group Ltd v Evans” (an earlier copyright ownership case). In “Griggs”, it was established that where a designer is commissioned to create a logo for a client, in order to give business efficacy to the contract of commission there will in the normal course be a presumption that the client has the right to prevent others from using the logo. It was also stated in “Griggs” that whilst on certain facts it may be that the designer is entitled to retain rights in the work pending further payment, the facts would have to point very clearly to such an arrangement with the commissioner of the logo. This is because in normal circumstances, if a company is having a logo designed for its use, it is hardly likely to be happy for the designer to be free to sell that logo on to a third party.

So, the Judge decided that under an implied term to the commissioning contract, Kilnworx in fact owned the copyright in the logos created for it. Payment by Atelier for the works did not entitle it to the copyright ownership.

Atelier had not been entitled to assume the legal interest in the copyrights, having been clearly aware of Kilnworx’ interest in them. Plus, Purple Penguin was the owner of the legal interest in the copyrights only in trust for Kilnworx and at the time they were created.

This case provides some reassurance to trade mark proprietors that they can, in certain circumstances, recover title to the copyright in their logos, relying on equitable principles. Nevertheless, every case turns on its facts and, in order to avoid disputes of this nature, a company should always take care, when commissioning a design company to create logos for it, to ensure in the commissioning process that legal title to the copyright in the logos will be assigned to it.