Category: Trade marks

If you or your clients are based outside the UK, we strongly recommend you have a UK address for service recorded for your/your clients’ UK IP rights, to ensure prompt notification can be received of any challenges upon their validity.

In January 2023, we emphasised the importance of appointing a valid UK address for service for trade marks and designs, especially those designating the UK in International trade mark (Madrid Protocol) or International design (Hague Agreement) registrations, which might otherwise only have an address for service outside the UK jurisdiction.   

In our article here, we reported upon a significant procedure change by the UK Intellectual Property Office (UK IPO), effected by their Tribunal Practice Notice (TPN) No 2/2023.  The TPN can be viewed here.

The TPN provides that – in the event of third party challenges to a UK registered right, such as invalidation, revocation on grounds of non-use, revocation on grounds other than non-use, or rectification – absent a UK address for service, a preliminary letter by post would be issued by the UK IPO directly to the rights holder (should they have no representative at all) but otherwise directly to the holder’s recorded representative outside the UK.  This communication would require the holder to provide a valid UK address for service within just one month, together with confirmation of its intent to defend its right.  Without any response within this very short period, the holder could risk losing its rights.

The effects of the TPN are now becoming significant for so-called “clone” trade mark and design registrations on the UK Registers, as created from European Union (EUIPO) registrations at the point of Brexit.  The Withdrawal Agreement between the UK and EU had specified that the UKIPO could not require a UK address for service for these clone registrations for a three year period, but that period will come to an end on 31 December 2023.  As such, from the start of next year, the TPN will encompass post-Brexit clone registrations as well, and will require appointment of a UK address for service where any new contentious proceedings are launched, such as invalidations, revocations or rectifications.  Directions from the UK IPO to appoint a UK address for service, where needed, will be sent by post to a non-UK address, and will give only one month for that appointment to be made.

Just one month is such a short period of time to receive by post, react to, obtain client instructions, and appoint UK representation for any challenge upon your/your clients’ UK rights.  As such, we would strongly recommend that you promptly appoint a UK address for service for any of your clients’ UK registrations – be those national registrations, UK designations in International registrations, or UK clone registrations created out of EUIPO registrations – to ensure that notifications of any challenges to those rights can be promptly received and acted upon.

Wherever questions are raised relating to validity of an IP right in the UK, local advice and representation is crucial, and Two IP’s attorneys are well qualified to help you. Get in touch here or email hello@two-ip.com.

This is the last of our series of blogs about supermarket branding battles, from Two IP trade mark attorney Rachel Havard.

Last time, we talked about copycat products and brand lookalikes – see our last blog here, which had particular focus upon discounter Lidl. Let’s now look at a classic case of “do as I say, not as I do!”

Few could have missed that Lidl have been prominent in the news lately, acting as gamekeeper rather than poacher. We refer, of course, to Lidl’s success before the UK High Court, against supermarket Tesco. This concerned Tesco’s selection and use of imagery of “a graphical device formed of a blue square background and a yellow circle”, for its Clubcard loyalty scheme, with examples shown below:

These images and others below are taken from the Judgment, which you will find here – and some great bedtime reading, if you like, at a mere 102 pages.

The essentials

Lidl registered, and use in the UK, The Mark with Text below:

Tesco were found to infringe Lidl’s registered trade mark rights by taking unfair advantage of and causing detriment to the reputation of the Lidl mark. Interestingly, this was the infringement case run, rather than allegations of a likelihood of confusion as to origin of the respective goods. Passing off and copyright infringement by Tesco were also found to have occurred.

Lidl also had trade mark registrations of the logo without the word “LiDL”, as below:

even though their use was always with the word “LiDL”. Trade mark applications which had led to registrations of The Wordless Mark were deemed to have been filed in bad faith; Lidl could not provide reasoning for seeking registration in that form at the date of application; also, repeated filing by Lidl of applications for this same mark were an attempt to “evergreen”, i.e. to circumvent the requirement to have used a trade mark in its registered form, or differing only in elements which do not alter the distinctive character of the mark in the form in which it was registered, if registration is not to be successfully attacked on non-use grounds. All bar one of Lidl’s registrations for The Wordless Mark were therefore deemed invalid.

Deep dive

From a consumer perspective, this case and its outcome grabs attention, because the players and branding elements concerned are so recognisable; but a judgment running to 102 pages seems a lot to reach the conclusions discussed above.

For brand owners and their advisors, however, the judgment is a treasure chest of dos and don’ts for the process of selecting, designing, developing and registering trade marks, but also for futureproofing in anticipation of challenges further down the road. It highlights the importance, early on, of recognising red flags and seeking appropriate advice.

The creative process behind Tesco selecting the yellow circle presentation – a clear change of direction from previous promotions of its Clubcard scheme – was subjected to close scrutiny at trial. Early concerns expressed in emails within the Tesco creative team were exposed. Much criticised was a lack of clarity on the extent of involvement of external branding agencies in the creative process. Ordinary people, who had been doing their every day jobs, found themselves on the stand accounting for the part they had played.

Intentions of Lidl, too, at the date of filing their trade mark applications for The Wordless Mark even as long ago as 1995, were open to question and an inability to explain those historical intentions led to important trade mark registrations being deemed invalid.

No simple, side by side comparison here – of two trade marks for the same goods and whether they might be confused. This judgment shows that brand owners may need to be prepared for a deep dive into their entire process of brand creation.

Afterword

What cannot be ignored in all of this, is something of a double standard on the part of Lidl, as they regularly adopt the same colour elements and presentations for their products as those directly competitive with them, but argue to distinguish these by use of different word elements with such get up. The High Court disregarded mention by Tesco of Lidl’s own behaviours, as not being relevant to the case before them; but it will certainly be interesting when reasoning from this case is utilised by those in the same market place, whose products and branding are regularly imitated closely by Lidl.

With Tesco all set to appeal, and their version of the yellow circle/blue background imagery still being used extensively, there is definitely more to come!

For advice and assistance at all stages of the brand creation process, our experienced trade mark attorneys are here to help. Get in touch here or email hello@two-ip.com

This is the second of our series of blogs about supermarket branding battles from Two IP trade mark attorney, Rachel Havard.

Last time, we talked about the evolution of the consumer, and fierce competition amongst supermarkets and discounters – see our last blog here.  Copycat products and brand lookalikes now play a huge part in this.

The problem

Discounters such as Aldi and Lidl are no strangers to imitation of the leading brands, using very similar aspects of product appearance, packaging, and colour, but generally avoiding use of word elements which might be seen as too close to the leading brand name.  That said, they often choose brand names sharing first letters or letter combinations in common with the imitated brand, as well as other similarities of product get-up.  Even if there is not confusion as to the commercial origin of the respective goods, there is a deliberate imitation by one of another, to piggy back off the reputation of the leading brand and prompt customers to buy the cheaper, lookalike product instead. 

Below for comparison are a few examples of brand imitations by Lidl, placed beside the well-known or leading brand:

IP protection considerations

The traditional approach of Intellectual Property Offices and the courts has been to attach more significance to word elements of branding than to stylisation, logo elements or other product get-up. Likewise, there has been the tendency for brand owners to register the block capitals version of their word trade marks, quite rightly to embrace any reasonable graphic representation of that word. There is also the issue that, once a trade mark has been on the register for 5 years or more in the UK, non-use for a 5-year period of that mark as registered could result in revocation of the registration if challenged by a third party.

As stylisation and logo elements will come and go for a brand, just as design trends come and go, registration of a brand name in block capitals would seem best for futureproofing. Ideally, though, the brand owner should consider available IP protection for all or any elements of their branding which they see as capable of attracting custom; this could include word elements, stylisation of words, logo elements used and/or the overall get-up of packaging, including particular colour schemes.

If elements of branding or product get-up have accrued goodwill, such that a misrepresentation by another could damage that goodwill, then there could be the option to bring a passing off action, as a common law right even without registration. However, passing off actions would require the compilation of persuasive evidence of goodwill, and proof of other essential elements of the tort when, in contrast, a trade mark registration could very clearly define exclusive rights enjoyed in a trade mark, who owns them and for what goods. Similarly, design protection could be utilised to defend other key elements of branding, in the same way as relied upon by Marks & Spencer in their successful challenge of a “light up gin bottle” the subject of an Aldi imitation of Marks & Spencer’s own product.

Join us next time for our final blog in this series – “Do as I say, not as I do!”

If you have brands you need to protect, or want to bolster the protection you do have, our experienced trade mark attorneys are here to help. Get in touch here or email hello@two-ip.com

This is the first of a series of blogs about supermarket branding battles from Two IP trade mark attorney, Rachel Havard.

We, as consumers, want our weekly shop to still include quality products, but at an affordable price. We need those pennies in our wallets to stretch that little bit further.

Major players in the supermarket sector are jockeying for position, pursuing that all important competitive edge, so that we spend with them rather than elsewhere.

Whatever a business’ fame or fortune these days, continued survival is not a given – we have only to look at our local high street to see it – and those still in the game are trying everything they can, including imitation, mimicry and probing the boundaries of others’ intellectual property rights for limitations.

Historically, supermarkets have placed their own brand equivalent products next to the leading brands on the shelves. It might have been the case many years ago that customers believed the leading brand to manufacture the supermarket’s own version. So much so that Kelloggs once ran a marketing campaign stressing that they “don’t make cereals anyone else”.

Supermarkets are now finding their biggest competitors to be so-called discounters, such as Aldi and Lidl, both of whom imitate the appearance of leading brands as closely as they can.

Today’s savvy consumer knows exactly what they want and where to get it. If they feel they cannot justify paying for the leading brand, they will look for what they believe will be the next best thing, and the degree of similarity in brand elements of respective products will play a big part in the choices they make.

Join us next time for our blog about “Copycat products and brand lookalikes”.

If you have brands you need to protect, or want to bolster the protection you do have, our experienced trade mark attorneys are here to help. Get in touch here or email hello@two-ip.com

The popularity of non-fungible tokens (NFTs) and the provision of virtual goods, and services, in the metaverse continues to grow. So how can we protect trade marks for these new assets and services?

The UK Intellectual Property Office (UK IPO) has just issued new guidance on the classification of trade marks for NFTs, virtual goods, and services provided in the metaverse.  The new guidance (set out in UK IPO Practice Amendment Notice (PAN) 2/23) has been prompted by a significant increase in applications filed at the UK IPO to register trade marks for these evolving goods and services, and it seeks to provide some clarity in this area.

Two IP trade mark attorney, Rachel Havard, discusses the new guidance and what it means for UK trade mark applications.

Non-fungible tokens/NFTs

The UK IPO defines these as “unique and unalterable digital authenticity certificates of ownership for virtual or physical assets such as art, collectibles and gaming”, adding the Cambridge Dictionary definition of them, as “a unique unit of data (the only one existing of its type) that links to a particular piece of digital art, music, video etc. and that can be bought and sold”. 

The UK IPO will not accept “NFT” or “non-fungible token” as a specification term in its own right, especially due to the inextricable link of an NFT to an asset (usually digital) to which it relates, and as this would lead to a lack of clarity if the NFT is not stated as linked to a specific asset.  The PAN confirms that the following would be acceptable in class 9:

• Digital art authenticated by non-fungible tokens [NFTs];
• Downloadable graphics authenticated by non-fungible tokens [NFTs];
• Downloadable software, namely, [list the type of goods], authenticated by non-fungible tokens [NFTs];
• Digital audio files authenticated by non-fungible tokens;
• Downloadable digital files authenticated by non-fungible tokens [NFTs].

It is recognised by the UK IPO that NFTs may not always relate to digital assets, and they might be used to authenticate physical goods.  Thus, the following specification terms could be accepted, using the class to which the physical goods would be proper:

• Artwork, authenticated by non-fungible tokens [NFTs] [Class 16];
• Handbags, authenticated by non-fungible tokens [NFTs] [Class 18];
• Training shoes, authenticated by non-fungible tokens [NFTs] [Class 25].

Additionally, retail of NFTs in on-line market places could be acceptably covered by the following class 35 terms:

• Retail services connected with the sale of [e.g. virtual clothing, digital art, audio files] authenticated by non-fungible tokens;
• Provision of online marketplaces for buyers and sellers of goods and services which are authenticated by non-fungible tokens.

Other NFT descriptions may be acceptable, but would require consideration on a case-by-case basis, and to assess the most appropriate class for them.

Virtual goods

Virtual goods are seen by the UK IPO as consisting essentially of data such as images, which would be proper to class 9 rather than to classes where their physical counterpart might be found; but such terms would still need to comply with requirements of clarity and precision, to be acceptable.  The UK IPO would therefore require clear definitions of what the goods are, such as:

• Downloadable virtual clothing, footwear, or headgear;
• Downloadable virtual handbags.

Virtual services, including those provided in the metaverse

In contrast with virtual goods, deemed acceptable by the UK IPO for placement in class 9, the UK IPO indicates that ability to provide some services by virtual means should not alter the class in which that service might historically have been placed, e.g. had it been provided in person.  On this basis, the following services descriptions would be acceptable:

• Education and training services delivered by virtual means [class 41];
• Conducting interactive virtual auctions [class 35].

With the metaverse being a type of digital reality, where services might be provided just as they could be in the physical world, the UK IPO indicates that services provided in the metaverse could be protected in the same class as for more traditional forms of delivery.  The following examples are given:

• Education and training services provided via the metaverse [class 41];
• Conducting interactive auctions via the metaverse [class 35].

The UK IPO identifies limitations to this approach in case, say, a trade mark were sought to be registered for the provision of food and drink in the metaverse: the traditional form of these services would be placed in class 43, but this is seen as inappropriate for metaverse equivalents where the food or drink is to be “consumed” inside the metaverse, e.g. by an avatar, rather than physically consumed outside of it, albeit where the food or drink might have been ordered by virtual means.  Examiners are likely to seek further clarification if a service is specified for provision via the metaverse, if not immediately apparent that the service itself could be provided within the metaverse. 

There is potential, too, for services to fall into a more general category, such as:

• Entertainment services, namely, provision of a virtual reality or metaverse based simulation gaming service.

Responding to official objections or avoiding them from the outset

Should specifications of goods and/or services require further clarification in an Examiner’s view, they will set a two-month period for response and with the applicant also having the right to a hearing.

The UK IPO is returning to its previous swift turnaround times in examination of trade mark applications, but it is preferable to pre-empt or avoid objections wherever possible, including with careful drafting of specifications of goods and services prior to the filing of new applications. 

Two IP’s chartered trade mark attorneys are well equipped to assist you in reviewing the goods, services, and market of interest to you, and in making appropriate preparations for as smooth an application process as possible when seeking to protect your trade marks. Get in touch here or email hello@two-ip.com

The Digital Services Act (hereafter “the Act”, or “the DSA”) is a huge leap forward in the regulation of online intermediaries. Approved on 27 October 2022, the Act (Regulation (EU) 2022/2065, DSA) began to come into effect in February 2023.

Organisations including social media platforms, marketplaces and search engines face increased obligations relating to trader verification and transparency, monitoring and reporting of illegal content or products, and advertising. And the bigger the organisation, the wider the obligations.

The Act applies to providers of digital services to EU consumers (whether based in the EU or not), with fines for non-compliance set at up to 6% of a provider’s annual turnover. Its intention is to protect consumers from illegal or harmful content in any form, but the impact on counterfeit goods and on brands affected by this ever-increasing problem could be enormous.

Liability of online intermediaries has been limited until now, creating ambiguity and frustration for brand owners tackling counterfeit goods and illicit content, with platforms not adequately held to account. The new requirements are set to change that, to the benefit of brand owners and consumers alike. Although only applicable to the EU market, the changes required by providers will doubtless be adopted across other territories, whether voluntarily by the provider or enforced under local supporting legislation. Similar legislation for retailers is being rolled out in the US, in the form of the Integrity, Notification and Fairness in Online Retail Marketplaces (INFORM) for Consumers Act which was made law in late 2022.

The EUIPO recently held an informative webinar detailing the changes and their impact on online service providers, and we share some of the key points in this article.

It showed a fascinating timeline of the rise of the internet since the last legislation, the E-Commerce Directive, was adopted in 1999.

It is alarming that Facebook and Twitter have been available for around 15 years and only now is legislation catching up to protect users from potentially harmful content or products. Advances in the ways and extent to which online content is consumed have far exceeded the laws that govern them, and the need for reform to manage this new world that has sprung up online over the past two decades is evident.

The new EU-wide rules aim to protect consumers online and ensure that businesses can compete fairly. In practice, this means that:

• illegal content can be removed faster;
• sellers of illegal goods will be more easily identified;
• tech giants will need to mitigate the risks created by their algorithms;
• sanctions for non-compliance may be imposed.

The E-Commerce Directive imposed little liability on online intermediaries, such as ISPs, search engines, social media sites, marketplaces, domain hosts and cloud services. The DSA introduces increased liability for each of these intermediaries. For very large online platforms (over 45 million monthly users) there are specific additional obligations.

Enforcement of the DSA will be the responsibility of the relevant national Digital Services Coordinator (which will be appointed within each member state), the European Board for Digital Services and ultimately the EU Commission.

Under the Act, all online providers must follow rules such as:

• Utilise standard ‘notice and action’ system, allowing consumers or brands to raise a complaint about offending content;
  • Implement a ‘trusted flagger’ system, enabling certified organisations or individuals with competence and experience to have notices of offending content dealt with as priority;
  • Redress mechanisms available to notice providers to challenge a platform’s decision to remove (or not remove) content, with the platform liable for the costs of any necessary court proceedings decided in favour of the notice provider;
  • EU representatives required if providers are not established in the EU, allowing more effective enforcement;
  • Repeat infringers’ policy to suspend accounts of anyone frequently uploading illegal content, and also applying to repeat notice givers who may repeatedly complain without reason or legal basis;
  • Increased transparency, including annual reports on how content is removed, ranked, recommended and advertised;
  • Know Your Business Customer – the need to identify the third party seller with random checks being implemented.

Very Large Online Platforms and Very Large Online Search Engines are the first to be liable under the DSA, 4 months from when they are designated as a VLOP or VLOSE with the first obligations having begun in February 2023. They are liable under the full obligations of the DSA. Other providers are liable on a scale of obligations according to their size or nature:

For the remaining platforms, the Act comes into force by 17 February 2024. By this time, EU member states must have designated a Digital Services Coordinator.

Some question whether the new legislation will reduce the prevalence of harmful content online and ask how, or how well, the DSA will be enforced.

The most recent International IP Index report from the US Chamber of Commerce suggests that the DSA will not improve consumers’ or brands’ recourse against illegal content. The report argues that the DSA does not go far enough to fundamentally change how IP is enforced online. The report warns that “The sprawling nature of the legislation and the inclusion of such a high number of exceptions, carveouts, categorizations, definitions, and determinations to be made on a case-by-case basis will almost guarantee that once operational, the law will have a whole host of unintended consequences both in Europe and beyond.” It questions whether the ‘trusted flagger’ system will lead to non-trusted flaggers being deprioritised, and queries how the DSA will interact with other national or EU-wide legislation. All of these points, the report says, are inadequately clarified by the DSA.

As with any new legislation there are bound to be teething troubles, but closer monitoring of, and increased obligations on, online providers is a step in the right direction. With the implementation of INFORM and the DSA across two of the world’s largest online communities, it is hoped that the worldwide online space will gradually become a safer place for consumers and brands.

Further information, and the Act itself, can be found here.

If you have any questions or would like to discuss how your business can tackle counterfeits or unauthorised use of your brands, our trade mark attorneys can help. Get in touch here or email hello@two-ip.com