England – Page 2 – IP Law Watch

Batman Won Another (Trade Mark) Battle

Aug 02 2023

Batman may be a superhero but it is the General Court who has come to the rescue following an invalidation action bought against DC Comics, a Warner Bros subsidiary, by Commerciale Italiana Srl, a wholesale retailer of costumes. In 2019, the Italian company applied for the invalidation of the well-known Batman logo (EUTM 000038158) for some of the goods in classes 25 and 28 (including clothing, footwear, and costumes), based on lack of distinctive character.

Just Because the Court can, Doesn’t Mean it will: The Difficulty in Seeking to Avoid an Injunction Following a Finding of Copyright Infringement in the UK

Jul 07 2023

As reported previously in our blog post here, earlier this year the High Court of England and Wales found in Lidl’s favour regarding allegations of trade mark infringement, passing off and copyright infringement by Tesco. However, Tesco has suffered a further loss following a supplementary hearing focused on what the most appropriate form of relief was for copyright infringement (although it was agreed by the parties that Lidl was entitled to an injunction in light of findings of trade mark infringement and passing off).

A Lidl Decision with big Implications – UK High Court Finds that Tesco’s Clubcard Logo Infringes Lidl’s logo

May 05 2023

In a recent decision, the High Court of England and Wales has found that Tesco’s use of the yellow and blue Tesco Clubcard logos (reproduced below) infringed Lidl’s trade marks (see the relevant Lidl marks below) and also gave rise to copyright infringement and passing off.

Why CMA, What Large Teeth you (Could) Have! Take Care to Heed the ASA and CMA’s Warnings Against Misleading Advertising

Mar 14 2023

In the UK, we have seen an increase in regulator activism, and particularly, in relation to advertising misleading consumers. This can be seen in the recent spate of the UK Competition and Markets Authority (“CMA”) investigations and a whole host of the UK Advertising Standards Authority (“ASA”) decisions. Companies will need to take extra care as the CMA may get some (very large) new teeth from the Digital Markets, Competition and Consumer Bill (“Bill”).

CJEU Paves the way for Red-Soled Heels to Widen the Scope of Liability of E-Commerce Platforms

Mar 14 2023

A recent preliminary ruling by the Court of Justice of the European Union (“CJEU”) in the joint cases (C-148/21 and C-184/21) between a luxury fashion brand known for its signature red-soled heels Christian Louboutin and an e-commerce giant Amazon might mark a start of an era of increased accountability of marketplaces in relation to listings of third parties they accommodate on their platforms.

False Advertising – Large Jury Verdicts in 2022 and the Likely Uptick in False Advertising Suits in 2023 – Part 1

Feb 10 2023

Some of the largest false advertising jury verdicts were recorded in 2022. This, coupled with increased inflationary pressures will likely lead to an uptick in false advertising suits given that such pressures will impact consumer spending habits, leading to increased scrutiny of competitor advertising practices—particularly in the social media space.

Dec 23 2022

It is beGINning to look a lot like a legal disputes saga between supermarkets in the UK. We have recently covered an ongoing dispute between Lidl and Tesco (see here), which relates to an alleged trade mark infringement. This time, Marks & Spencer (M&S) are suing the largest Europe’s discount grocery chain Aldi for copying their registered designs of the light-up Christmas gin bottles. This is the second legal case in recent times brought by M&S against Aldi, with the first one involving the famous Colin the Caterpillar cake, which has since been settled. Notably, the case at hand in relation to gin bottles demonstrates the benefits of registering designs in the UK, especially if such design is unique and has a significant value to the brand, and the brand would like to protect it against any copycats.

The ‘Standard’ of Use Evidence in the EU – Advertising and Promotion Can be Enough to Show Genuine Use of a Service Without That Service Actually Crossing the Pond

Dec 21 2022

Does evidence showing booking, advertising and selling services in the EU constitute genuine use if the service actually registered takes place abroad?

This was the question contemplated by a recent decision of the General Court. The case T-768/20 (Standard International Management LLC v EUIPO) addresses the use of trade marks in the EU where the relevant brand operates hotel and leisure facilities outside the jurisdiction.

The Battle of the Supermarkets – Evergreening of Trade Marks and Potential Bad Faith

Dec 09 2022

Two well-known grocery stores, Tesco and Lidl, are involved in an ongoing trade mark dispute (Lidl Great Britain Limited v Tesco Stores Limited [2022] EWHC 1434 (Ch)). While the trial is set to take place in 2023, the recent developments in relation to arguments of bad faith are noteworthy, especially for brands engaged in trade mark refiling, or ‘evergreening’.

Keep an Eye on Your Mailbox – Appoint a UK Representative for Trade Marks Filed Through WIPO

Oct 05 2022

A direct United Kingdom (UK) trade mark application to the UK Intellectual Property Office (UKIPO) contains a requirement to name a UK address for service. In contrast, it has been a standing practice of the UKIPO to process International Trade Mark Registrations via the Madrid Protocol designating the UK without requiring a UK service address. The UKIPO would only require to specify a UK service address in circumstances where objections or oppositions are raised in relation to the International Trade Mark Registrations during prosecution. However, the recent decision in MARCO POLO (O/681/22) has called this UKIPO’s practice into question.

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