November 2020 – IP Law Watch

Not such a friendly decision for Hugz: A new development in passing off that could help combat fashion copy-cats

Nov 23 2020

On 19 November 2020, the Intellectual Property Enterprise Court (IPEC) in the UK handed down its judgment in the case of Freddy SPA v Hugz Clothing Ltd & Ors [2020] EWHC 3032, which ran for an unusually long time for the IPEC (three days).

The decision was a rare occurrence of a passing off claim, together with other IP causes of action, succeeding in the get-up of a functional item, being “bum enhancing jeans”. Ordinarily, such cases, particularly with respect to fashion items, fail as the get-up is seen as merely design elements or ornamental, or the circumstances of the use lead to a conclusion that other trade marks (e.g. brand names and logos) dominate consumer perception.

This case could embolden brand owners in relation to enforcement of the look and feel of their clothing as it creates the possibility of confusion ‘post-sale’ in addition to the point of sale.

Australia aligns with the U.S. and EU by adopting ‘exhaustion of rights’ doctrine

Nov 18 2020

The High Court of Australia’s recent decision Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41 (Calidad) has more closely aligned Australian patent law with its U.S. and European counterparts. Key takeaways from this decision are:

the ‘doctrine of exhaustion of rights’ has replaced the ‘implied licence doctrine’;
a patent owner’s exclusive rights are extinguished by the first sale of the patented goods;
innovators have greater scope to reuse products without risking patent infringement; and
patentees seeking greater control over post-sale use should do so through contract law.

Brexit and .EU Domain Names – A warning for UK registrants

Nov 08 2020

Despite the UK having officially left the European Union on 31 January 2020, the Brexit transition period has been in place maintaining the status quo until 31 December 2020. However, with the end of transition period just around the corner, there are a number of important factors for businesses to be considering including the potential impact on .EU domain names.

Importantly, from 1 January 2021, UK Registrants will no longer be eligible to hold a .EU domain name. Each of the following would be classed as UK Registrants:

UK undertakings or organisations established in the UK but not otherwise in the EU;
UK citizens who are not resident of an EU member state; and
UK residents who are not EU citizens.

Don’t mess with Ferrari: the Prancing Horse legal drama

Nov 06 2020

Use of Ferrari’s trade mark in a fashion show or on social media requires consent. This is the lesson we assume Philipp Plein has recently learnt following a couple of legal defeats before the Italian Courts that ruled in favour of Ferrari.

In a ruling issued by the Court of Genova last June, the Court ruled in favour of Ferrari for the illegitimate use of Ferrari’s trade marks on Plein’s Instagram account. The designer on that occasion posted several pictures as well as Instagram stories showing some of his clothing line with Ferrari’s trade marks in the background. Ferrari successfully argued that in those shots Philipp Plein was unlawfully appropriating the positive image and reputation of the well-known car company by using its trade marks for promotional purposes.

In another recent case, the Court of Milan ordered Plein to remove from its website, social media, and other online platforms all the videos and images showing Ferrari cars and trade marks. The Court also ordered the payment, in favour of Ferrari, of €300,000 in damages plus legal fees as well as the publication of the decision in two national newspapers. Furthermore, in the event in which that Philipp Plein would not promptly remove the contested images and videos representing Ferrari cars and trade marks, it will have to pay a penalty of €10,000 for each day of delay in the removal of the infringing images and videos. To view the decision, click here.

UK Advertising Regulator makes first ever ruling on disclosures required for commercial marketing via a TikTok video

Nov 05 2020

A TikTok post on an Emily Canham’s account, a beauty blogger and YouTube star, is the first TikTok video found to be in breach of the Advertising Standards Authority’s (ASA) requirement for disclosure in the UK (see here).

The post, which featured a video of Emily Canham using a branded hairdryer and straighteners, included a caption alongside the video stated:

“hiii just a lil psa there’s 20% off the [Brand] website TODAY ONLY with the code EMILY … #fyp #foryourpage“.

The brand in question had entered into an agreement with Ms Canham, which required Ms Canham to post a number of social media posts while at a music festival. The music festival was cancelled as a result of COVID-19. However, the contract was varied and still required several social media posts featuring a certain promotional code.

It was submitted to the ASA that the TikTok was created without the oversight or approval of the brand, and did not form part of Ms Canham’s contract. Additionally, both Ms Canham and the brand pointed to the fact that she had not been compensated for the promotional code featured in the TikTok video.

Air France restrained from using song that infringes “Love Is In The Air”

Nov 05 2020

In April, we wrote about the judgement Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535 (Decision), in which Glass Candy and Air France were found to have infringed the copyright in the well-known 1970s hit song “Love is in the Air” (Love).

Now, in the recent judgement Boomerang Investments Pty Ltd v Padgett (Scope of Injunction) [2020] FCA 1413, the Federal Court of Australia has finalised the injunctive orders necessary to give effect to the Court’s earlier conclusions on the issue of liability in the Decision, amongst other matters.

What an awful racket… Acoustic product trade mark case provides opportunity for brands being piggy-backed to drive search traffic

Nov 04 2020

An interesting recent decision by the Intellectual Property Enterprise Court (IPEC) on an unusual set of facts may provide an opportunity for brand owners to prevent unauthorised third parties from piggy-backing off a trade mark to drive traffic to their competing sites or product offerings. Uniquely, this has been found in circumstances which do not amount to traditional “bait and switch” or passing off and where consumers are not confused about the origin of the goods.

Archive:November 2020