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JANUARY/FEBRUARY 2022
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ISSUE 468 JANUARY/FEBRUARY 2022
Cover and spine
CITMA REVIEW
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CITMA REVIEW
LETTER FROM IPREG P6 WHO’S CARING FOR CARERS? P16 THE IMPACT OF ILLEGAL STREAMING P22
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What do brands need to know before they enter?
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Contents, 1 VERSION
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REGULARS
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04 41 42
Insider CITMA news and updates of interest Calendar The latest information about our upcoming events
TM20 Gail Nicol, Cameron
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10 14 16 20 22 25
Lord Chris Smith explains why IP has a key role to play post-COVID
CASE COMMENTS
26-40
Intellectual Property
FEATURES Letter from IPReg
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06
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Our members offer their analysis of selected recent decisions ◗ FACETUBE (Opposition) ◗ SHAKENBAR (Opposition)
Perspective Michelle Ward never planned to set up her own practice.…
Technology
◗ Stone v Wenman 16
Welcome to the metaverse
◗ Sony Interactive Entertainment Europe Ltd v EUIPO – Wai Leon Wong
In practice The process for purchasing bona vacantia
26
Inclusivity
◗ Chanel v EUIPO – Huawei Technologies
◗ MHCS v EUIPO ◗ Vans, Inc. v Paredes Holding Center, SL
Who’s caring for the carers?
Innovation Bringing AI to bear on UK registrations
Cybersecurity Investigating the impact of illegal streaming, plus strategies to tackle it
42
Career development How to be a career boss
CITMA CONTACTS
General enquiries The Chartered Institute of Trade Mark Attorneys Thanet House, 231-232 Strand, London WC2R 1DA tm@citma.org.uk Tel: 020 7101 6090
COMMITTEE CHAIRS
CITMA Paralegal Dan Hardman-Smart daniel.smart@iamstobbs.com Education, Qualification & Standards Kelly Saliger kelly.saliger@cms-cmno.com Executive Tania Clark tclark@withersrogers.com
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Events Sarah Vaughan sarah@citma.org.uk Law & Practice Rachel Wilkinson-Duffy rachel.wilkinson-duffy @bakermckenzie.com Publications & Communications Richard Hayward richard@citma.org.uk
Published on behalf of CITMA by
Think Media Group, 20 Mortimer Street, London W1T 3JW Tel: 020 3771 7200 www.thinkpublishing.co.uk Editor Caitlin Mackesy Davies Managing Editor James Sutton Designer Grant Pearce Advertising Tony Hopkins tony.hopkins@ thinkpublishing.co.uk
Client Engagement Director Kieran Paul Executive Director Jackie Scully
CITMA REVIEW
CITMA Review content is provided by members on a voluntary basis, and reader suggestions and contributions are welcome. If you would like to contribute an article to a future issue, please contact Caitlin Mackesy Davies at caitlin@thinkpublishing.co.uk
The views expressed in the articles in CITMA Review and at any CITMA talk or event are personal to the authors, and do not necessarily represent the views of the Institute. CITMA makes no representations nor warranties of any kind about the accuracy of the information contained within the articles, talks or events. © CITMA 2022
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CI T M A | I NSI DE R
PRESIDENT’S WELCOME REPRO OP
LOOKING FORWARD TO BEING FACE TO FACE
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s we begin a new year, now’s a good time to consider what 2022 might hold for us. Of course, 2021 was an exciting year for CITMA, featuring a range of courses, events and achievements. But going forward into 2022, despite the success of our online events, we’re looking forward to the opportunity to gather together once again. As my term as President will come to an end shortly, I’m pleased at the prospect of enjoying some in-person events with you before its conclusion. In particular, our Spring Conference should serve as a reintroduction to the world of larger, face-to-face events, if safe to do so. Focused on the theme of reconnecting, this conference provides the perfect opportunity to redouble our efforts to support our industry as it grows. Having marked the fifth anniversary of our Charter in 2021, we’re looking forward to another year of successful growth in 2022. We’re expecting to see continued development and expansion, complemented by another exciting array of learning and social opportunities. Happily, our industry continues to go from strength to strength, having proved its resilience in the face of the challenges we’ve faced over the last couple of years. I wish you all the best for the new year, and I look forward to seeing many of you – hopefully – very soon.
Formalities: Get a firm foundation
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ur new introduction to trade mark formalities course, launched in October, is an opportunity for those new to working as an administrator within the profession to develop a solid foundation in trade marks and IP. Aimed at staff with less than six months’ experience and developed by the CITMA Paralegal Committee, this course allows early-career team members to build upon their internal training. Available online to be completed at any time, the course will support on-the-job training while
presenting participants with activities and realistic scenarios to develop their knowledge and understanding. The units involve mini-quizzes, tasks and videos, helping participants to progress via a range of different interactive formats. CITMA Paralegal Committee lead Dan Hardman-Smart said: “When designing this course, we kept those new to our profession in mind. It provides that essential foundation needed to hit the ground running when new to the role. “We are delighted that this course has already been so well received.” Find out more and book your place at citma.org.uk/fcourse
Richard Goddard, CITMA President
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2022 EVENTS
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We have plenty of learning and networking opportunities planned for you in 2022. Find the latest event listings and book at citma.org.uk/events
WHAT THE COURSE COVERS The new course is made up of units looking at: • What a trade mark is • The trade mark lifecycle • Selection and searching • The trade marks register • Filing • Prosecution and registration • Post-registration • Overseas trade marks
IN MEMORIAM: CHRIS COOK We were saddened to hear of the passing of Chris Cook, a lifelong member and enthusiastic supporter of the trade mark industry. Alongside a career spanning more than 30 years at Forresters, Chris was also treasurer of CITMA (then ITMA) and an examiner. Learn more at citma.org.uk/ccook
OUR POLICY PATHWAY Our new environmental policy pledges that we will, by the end of 2022, set out a path to carbon neutrality for CITMA. Supported by Climate Action for Associations (CAFA), we will work towards a sustainable future and encourage the same across our industry. Read more at citma.org.uk/environpol
ADVANCED COMPETENCY We have updated our advanced competency framework. The framework provides an overview of the areas of expertise expected of a Chartered Trade Mark Attorney. It is of particular relevance for those who qualified more than five years ago. Find out more at citma.org.uk/adcom citma.org.uk January/February 2022
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Letter from IPReg, 1
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Letter from IPReg
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OUR IMPORTANT MISSION
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Lord Chris Smith issues a timely reminder of why IP is vital to our post-COVID recovery We are now, we all fervently hope,
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emerging from the worst impacts of the COVID-19 pandemic. Economic life isn’t exactly back to normal, but it is heading in the right direction. A combination of COVID and Brexit has ravaged our economy and continues to do so. Supply chain crises, staffing shortages in many sectors, export difficulties: we aren’t in terribly good shape. We do, however, have to try and make the best we can of where we find ourselves. Bewailing how we got here (which I frequently do) isn’t particularly helpful. The hope, though, has to be that it is intellectual property that will provide the greatest help towards our recovery. It isn’t too far-fetched to say that it’s patents and trade marks that will make the greatest difference to our economic future in the long run. It’s innovation, and the legal framework that underpins it, that will be the most important ingredient of that future. And in this respect it has been heartening
to hear that trade mark and patent activity – and the demand for service from attorneys in both fields – has remained reasonably vigorous over the past 18 months, despite all the challenges of the pandemic and the accompanying lockdowns. It varies, of course, from sector to sector and firm to firm, but my worst initial
If we’re going to build our way out of the economic malaise, it’s the things that need to be protected by IP law that will lead the way fears about a falling-off in activity don’t seem – so far at least – to be being realised. There was some mixed news for the world of IP in the latest Budget. Looking at the announcements on research and development (R&D), there were some welcome bits and pieces. The extra £400m for Innovate UK was one of these. The £800m announced – albeit spread over five years (it’s the oldest trick in the Treasury book, announcing
five years’ worth of money as if it’s one) – for the new “Aria” (Advanced Research and Invention Agency) was encouraging. This agency was apparently the brainchild of Dominic Cummings, and everything will crucially depend on the specifics of how it is set up, what its remit is, and how it operates. The devil, as always, will be in the detail. The underlying picture isn’t quite as good, however. We were originally promised an overall total of £22bn a year in government support for R&D by 2024/5. That target has now been pushed back to 2026/7. Chancellors (of all stripes) do tend to be rather good at committing to funding many years in advance and then subsequently adjusting the dates. Government funding matters, of course, because a lot of publiclyfunded research spins off into new ideas and products that get taken up by the private sector and then go on to need patent or trade mark protection. But the central point remains very clear, and very important, and I do wish the Government had gripped it more firmly: if we’re going to build our way out of the economic malaise, it’s the things that contribute to IP, and the things that need to be protected by IP law, that will lead the way. Let’s not forget the sheer importance of this mission, which we have all embarked upon.
The Rt Hon the Lord Smith of Finsbury Chair of IPReg 6 | LETTER FROM IPREG
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ON BEING BRAVE
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Michelle Ward reflects on the response she received when setting up her own practice
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“That’s brave,” they all said. This was not a reference to some daredevil feat that I had decided to take on for charity, but to the news that I was starting my own IP practice. But it was a sentiment that I only heard from the IP profession; if I mentioned what I was doing to anyone outside of the IP world, I was met with enthusiasm and “How exciting!” The difference in perception of what was involved in setting up a new business, albeit one that was an IP practice, still shocks me five years on. Why should it be seen as so scary and daunting to set up your own practice? Yes, there are risks, but that is true for any business. Perhaps it’s a testament to how conservative a profession we are and how reticent practitioners are to try something new or to be different. I’m not saying that what I do is anything wildly different either. I am certainly not a disrupter in the widely used sense of the word, and I don’t consider myself much of an entrepreneur. I’m just doing what I love my way and with the principal goal of making clients happy.
CHANGE OF PERSPECTIVE
Indeed, I never set out in the profession with the idea to one day set up my own practice. I would readily agree that in my younger days it would have been something that seemed scary – perhaps more so as IP was never a profession I planned to enter. Like so many others, I found the world of trade marks accidentally. But things change – and need to change. I gained experience, worked
in different locations with different types of businesses, and I started a family. Over time, my perspective, interests and what I needed from life changed. Eventually, I realised that what I wanted to achieve in my working life was something I was going to have to carve out for myself. It still took me a couple of years to make that step though, and the lack of information and resources on how to do that was perhaps one of the things that held me back when the opportunity first arose. There is a lot to consider when you set up your own practice, even if just as a sole practitioner. Apart from all the standard issues that need to be considered when setting up a business, there is the added complication of regulation, as well as finding suppliers of specialist services that would be prepared to cater for my size of business and budget. As for the process of picking a name and developing my brand, I finally got to appreciate the pain that clients go through. Confidence, a positive attitude to being able to develop and grow a business, and taking the time to read through and research before I took the plunge were my key weapons to successfully setting up and getting going. But it is daunting, and at times it can seem a bit lonely if you’ve been used to a lively office. You soon discover that your support and business networks are essential to keep you sane. And then, of course, we had Brexit. The vote to leave the EU happened in my first month of business and I was devastated, although it did mean that I was able to adapt and plan for the coming changes from a very early stage. As part of this planning, I reached out to CITMA for help and guidance and was grateful for the support it was able to provide. HARD TIMES
Next, the pandemic hit. And it hit hard. It was as though someone had turned off the tap. Most projects suddenly stopped, as businesses held their breath and waited for the temporary lull to be over. But it went on, and my business suffered for a while. I spent a lot of time reaching out to friends to stay positive. And 8 | PERSPECTIVE
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I realised that what I wanted to achieve in my working life was something I was going to have to carve out for myself then, again, along came CITMA, which took time to set up online meetings for different groups within the membership. One of those was designed for solo practitioners and small firms, and I jumped at the chance to take part. I have to say that I was probably quite vocal about the impact that the pandemic was having, and the CITMA team took this on board. At the start of 2021, CITMA held talks with several firms to understand the difficulties they were facing and what support was needed going forward. After my experience of the pandemic and Brexit and the support I had received, but also knowing the challenges that being a solo practitioner can bring, I emphasised the need for there to be more support and understanding of those challenges, to see how CITMA could be of even greater assistance. CITMA acknowledged this, and in the spring a new meeting was trialled, aimed at bringing together solo and small practices. The objective is to help such firms with the specific challenges that result from their smaller size and resources, allowing CITMA to see what support and CPD may be able to help, and allowing a community to form among such firms to provide a level of mutual understanding and support. It’s early days, but I have high hopes for the longer-term gains from such a group, not least to help provide a resource for others who may want to embark on the journey of setting up and running their own practice. What I’ll tell anyone who asks is this: I’m glad that I took the plunge. Yes, it is challenging, but it is also very rewarding – and I absolutely love it. If you’re interested in learning more about CITMA’s support for sole practitioners, please email gus@citma.org.uk citma.org.uk January/February 2022
Michelle Ward is a Chartered Trade Mark Attorney and founder of Indelible IP Ltd michelle@indelibleip.co.uk
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Richard May gets us out in front of an online phenomenon
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or many people, the meaning of the word “metaverse” will be a complete mystery. But that won’t last long. Indeed, it’s the next big thing in the world of gaming and social media, and something that all trade mark practitioners should make sure they are aware of. To be a bit more specific, the metaverse is the future iteration of the internet, in which Epic Games (of Fortnite fame) is investing US$1bn. It’s also what Facebook is betting its future on (even rebranding its corporate name to Meta). In science fiction (the word was coined by novelist Neal Stephenson in 1992), the metaverse is a convergence of physical, augmented and virtual reality in which users can interact with a computer-generated environment – in simple terms, it’s an immersive virtual world you inhabit as an avatar. Think Ready Player One. Although this is a simple definition, it is one that has multiple layers. In fact, experts believe that a metaverse needs several key characteristics, namely: • Scalability (the ability to increase its size); • Persistence (overcoming technical limitations to improve its immersive nature and to allow a continuous virtual world); • Interoperability (the merging of different virtual worlds and operating systems); • Economic facility (allowing for trading); • Identity (enabling online identities for avatars to evolve
In simple terms, the metaverse is an immersive virtual world you inhabit as an avatar. Think Ready Player One
Facebook’s corporate rebrand looks set to take it into metaverse territory already occupied by online game Fortnite
to bring about a stronger connection to the user); • Digital and physical realms (spanning across many aspects of life); and • Multiple contributors (eg, ranging from individuals to commercial organisations). As these characteristics suggest, the concept of a metaverse is complicated and a true metaverse doesn’t technically exist yet – at least not one with all of these characteristics. However, early-stage versions of the metaverse are here. These so-called “proto-metaverses” take many forms, including games embracing blockchain technology and/or providing social and educational events. Fortnite already combines gaming and non-gaming elements in a digital world – and pop stars like Ariana Grande have played concerts in the Fortnite universe in front of millions of fans. So, the development of a true metaverse is no longer an “if” but a “when”. TECHNOLOGY | 11
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WHY THE METAVERSE MATTERS
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The metaverse provides new ways for brands to engage with consumers. For example, like Fortnite’s live music performances, many video game companies are now connecting with players through in-game events. Several have also undertaken brand collaborations for skins (which determine the appearance of your avatar) or digital-only items. The metaverse will also bring together a range of technological advancements such as cloud computing, AI and blockchain. There are already a number of blockchain games that use non-fungible tokens (NFTs) and cryptocurrency to facilitate the trading of digital assets in open marketplaces and allow players to not just spend money but to earn it too. Online games such as Minecraft and Roblox also provide non-coding development tools to simplify the creation of user-generated content. These technologies raise a number of legal issues that rights holders will need to grapple with before entering a metaverse. One of the greatest commercial appeals of the metaverse is the opportunity for brands to step into the driving seat and engage directly with consumers at a low
cost. Brands will see this as an opportunity to be innovative in their offers. For instance, fashion labels might provide branded digital clothing, and drinks brands might consider establishing their brand as a health-replenishing elixir for players within the metaverse. Indeed, this is already happening. In November 2021, Nike launched NIKELAND on Roblox, allowing users to try out digitalonly Nike-branded accessories within its universe. Protecting IP like trade marks in the online landscape has always been a challenge for brand owners. While the metaverse is proclaimed to be a new frontier, many existing laws are still relevant. However, rights holders should be asking some key questions before they choose to enter. PROTECTION EXTENSIONS
BRAND EXTENSIONS IN THE METAVERSE • The metaverse increasingly hosts non-game social activities, including branddriven events such as virtual concerts, product launches and fashion shows – a trend that’s known as Games as a Platform (GaaP). • It also facilitates the merging of virtual and physical worlds. For example, it allows users to try on virtual clothes using augmented reality (AR). • Digital avatars will become more complex over time, with digital pets and vehicles, for example. This will further exploit the popularity of customisable in-game “cosmetics” (ie, skins).
Previously, the online use of a brand was considered to be mainly “advertising use” in relation to the underlying goods or services that were being referred to. However, in a metaverse where there is the potential for digital assets to have independent economic value, there are likely to be questions about trade mark use and what relevant goods and services should be included in a specification to ensure the best level of protection. It’s almost certain that brands that were once essentially sold through physical retail sales but that are now also present on a website or on social media will need to consider expanding their protection into other classes, such as software and entertainment services, to ensure robust protection within a metaverse.
Proto-metaverses such as Minecraft and Roblox have led the way – and brands have been quick to see the opportunities
Entering a metaverse may mean that rights holders find their brands being misused in ways they had not anticipated. With this in mind, brand licencing is likely to be an important way to maintain quality control, and technology – such as NFTs linked to digital assets and user terms and conditions – will provide a certain level of protection. Also, the ability to perfectly duplicate digital assets will allow the quality of these items to be maintained as long as rights holders take care when first inserting them into the metaverse. However, the broader question of what is an acceptable use will vary by brand. For example, if a brand has a reputation and a carefully crafted image in the real world, are there any actions within a metaverse that would be incompatible with that image? In practice, quality control may be difficult to manage and enforce, particularly if consumers’ perception is that they “own” a digital asset. Further, the interoperability of metaverses will inevitably require the January/February 2022 citma.org.uk
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mixing of brands between metaverses, with the effect that brands are used in unforeseen ways. For example, a Peppa Pig avatar appearing in a horror survival game is unlikely to be acceptable. Companies will need to reconcile their marketing team’s desire for consumers to interact with brands in novel ways with ensuring that the interaction is compatible with brand values. This is particularly important since the opportunities for identifying and dealing with infringement issues within a metaverse are not yet clear.
web-crawling technology to scan for online infringements, it is not clear how this technology can be adapted to a metaverse. The net result of all of this is that enforcement budgets will need to increase and, if there is budget to take action, rights holders will need to adopt a considered approach and be mindful of the PR implications. In the past, brand enforcement on the part of video game brands has received mixed reactions from consumers and, in many cases, children have been the perpetrators of the infringement.
NEW COMPLEXITY
WHAT’S THE WAY OUT?
Trade mark infringement in the metaverse is likely to be complex. One thing that is certain is that as the metaverse grows, so will the user-generated content. This alone will result in an increase in unauthorised trade mark use, and context will inevitably be crucial. For instance, does the unauthorised use have an impact on the function of the trade mark registration (meaning infringement), or could it amount to honest descriptive use (not infringement)? And just who is liable for the infringement: the user/generator or the platform? It’s almost certain that the current framework for intermediary liability will broadly capture the platforms providing metaverse-related services. Accordingly, it is likely that current “notice and take down” procedures will still provide rights holders with a non-court forum in which to complain, but undoubtedly this area will continue to develop as the metaverse ecosystem grows. Practically, there are potential issues with spotting infringements when they occur. While there are brand-watching services that use
For brands, an exit strategy from a metaverse is as important as an entry strategy. Once a decision has been made to withdraw from a metaverse, there is a risk of losing the ability to control or monitor activity there. This may not be of commercial concern if there is no revenue stream to protect after withdrawal. However, there is still a risk of harm to a brand’s reputation. Accordingly, rights holders should consider whether it is possible to insert contractual obligations into metaverse service agreements to ensure that there is no unlicensed use within those marketplaces for a set period after the brand has left. However, as the metaverse expands and develops, this may become more difficult. If rights holders are using NFTs within a metaverse, it may be worth considering disabling the servers that the underlying content derives from so as to remove access to it. To avoid reputational issues, it would also be prudent to include termination rights within an end-user licence agreement for consumers and an explanation that only these digital items are
LUXURY LINK-UPS In 2019, French fashion house Louis Vuitton entered into a partnership with Riot Games to design outfits (skins) for characters in fantasy game League of Legends. For example, it created a “prestige skin” for two characters, as well as designing a physical case for the League of Legends World Championship Trophy, according to a report on AdAge.com. The finals of that competition were said to been watched by nearly 100 million unique viewers. Meanwhile, online game Drest allows players to style themselves with high-fashion, and Balenciaga went as far as to create a video game, Afterworld: The Age of Tomorrow, just to showcase a season’s collection.
licensed and that the consumer has no rights in the IP. APPROACH WITH CAUTION
These considerations are likely just the tip of the iceberg. While the metaverse provides lots of opportunities for brands and first-mover advantage will be key, rights holders should be hesitant about launching into a metaverse without properly considering the issues raised above. And while IP is critical to the metaverse, there will be other issues for rights holders to consider too. It is important to treat the metaverse with caution and to have an open discussion about how to manage the risks. See Osborne Clarke’s full Metaverse Report at https://togetherwith. osborneclarke.com/metaversereport/home
Richard May is a Chartered Trade Mark Attorney, Solicitor and Partner at Osborne Clarke richard.may@osborneclarke.com Nick Kempton, a Senior Associate at Osborne Clarke, co-authored.
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HOW TO BUY INTO BONA VACANTIA
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Drawing on her post-Brexit experience, Cherrie Stewart brings us up to date on the process for purchasing IP rights from the Crown
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n several occasions pre-Brexit, an Irish trade mark application I filed would encounter an objection on the basis of relative grounds, even though it appeared that the EU trade mark (EUTM) registration in question was owned by a dissolved UK registered company and no change of ownership had been recorded.
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If notifying the Intellectual Property Office of Ireland of the status of the registered owner did not overcome the objection, the quickest and most costeffective route to overcoming the objection was to purchase the cited right from the Crown, if available. When a company is dissolved, any property vested in or held on trust for the company is deemed to be bona vacantia, meaning “ownerless goods”, and devolves to the Crown. Some such property can thereafter
be purchased by third parties through the relevant Bona Vacantia Department (BVD) office. Alas, the option of purchasing an EU trade mark registration is no longer open to us post-Brexit. The BVD for England and Wales has confirmed that when the UK left the EU, an EUTM registration became a foreign asset, since it is no longer enforceable in the UK and is therefore no longer available to purchase from the BVD. Despite this, the option of purchasing assets from the Crown
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remains an important route to obtaining the Intellectual Property Rights (IPR) of dissolved companies, which may still be enforceable in the UK, particularly if such IPR was overlooked in the dissolution process or if a third party wishes to revive an old brand. In the rare event that a relative grounds objection based on rights where the owning company has been dissolved are raised against trade mark applications in other jurisdictions, this may be one avenue to explore. For example, in Ireland, ownerless IPR from Irish dissolved companies may be purchased through the Property Section of the Department of Public Expenditure and Reform.
Asset disposal: Which office is responsible? England & Wales
Treasury Solicitor
Duchies of Lancaster and Cornwall
Duchies’ solicitors (ie, Farrer & Co.)
Scotland
Queen’s and Lord Treasurer’s Remembrancer
Northern Ireland
Crown Solicitor’s Office
• the reason why your client is interested in purchasing the IPR and how it plans to use it; • details of any past or current disputes relating to the IPR or its use; and • details of anyone who is currently using the IPR.
UK PROCESS
In the UK, the process is actually relatively straightforward. First, you need to identify which office is responsible for the disposal of the assets of the dissolved company. This determination depends on two factors: (1) the last registered office address of the company; and (2) where the asset is located. The last listed registered office will usually take precedence if the asset is in a different region, but this general rule is not set in stone. For example, the BVD may deal with assets that were owned by a foreign dissolved company, and this is likely to be dealt with by the office in the region in which the asset is located. For IPR, this is likely to be the Treasury Solicitor. It can speed the process along if you include certain information with your initial request for purchase. Essentially, you need to provide evidence that the IPR of interest has indeed become the property of the Crown and is free for assignment to a third party. You should therefore provide: • the name, company number and last registered office of the dissolved company that owned the IPR; • details of the IPR and evidence that the dissolved company owned it. A copy of the Registry extract will usually suffice; citma.org.uk January/February 2022
If the BVD clears the IPR for purchase, it will then set a price, which is usually the open-market value of the IPR in question. The minimum consideration payable will be: UK trade mark registration £1,000 + VAT Copyright £1,000 + VAT Patent £1,000 + VAT BVD service charges, in the region of £300 + VAT per item purchased, will also be incurred. If the total value of the purchase exceeds £10,000, anti-money laundering procedures will come into play and proof of identity of the purchaser will be required. The BVD will then draw up an assignment document to be signed by the assignee. All you need to do is record the change of ownership. I have found the BVD to be very helpful and, usually, swift to respond. Nonetheless, the
process can take several months from the initial enquiry to the eventual assignment. A WORD OF WARNING
Be warned, however, that the BVD does not assign any goodwill. What’s more, the registration will be assigned without any title guarantee and the BVD will provide no representations or warranties in relation to it. Also note that it may be possible for a director or shareholder to restore a company within six years if the company was still trading at the time it was dissolved by the Registrar of Companies. If the original company is resurrected, ownership of any bona vacantia assets is restored to it. However, any property that the BVD has reassigned will not be returned; instead, the restored company will be paid “the amount of any consideration received for the property or right or, as the case may be, the interest in it, or the value of any such consideration at the time of the disposition” (s1034(2), Companies Act 2006). As a result, a situation could arise in which one party owns the registered IPR and another owns the goodwill. Therefore, in order to safeguard the future use of the trade mark, it is essential to investigate the mark’s history and any risks associated with it.
Cherrie Stewart is a Chartered Trade Mark Attorney and Director at MacLachlan & Donaldson (Ansons) stewartc@ansons.co.uk
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CARING FOR CARERS
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Many of the UK’s legal professionals regularly carry out caring duties. Who’s looking after them?
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Carers, 1 WORDS: MATT PACKER
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ccording to the charity Carers UK, around 6.5 million people in the UK – that’s one in eight adults – have caring responsibilities. The charity’s figures also suggest that this segment of the population is constantly mobile, with 6,000 of us taking on a caring responsibility every single day (equivalent to 2 million people per year). In 2020, at the height of the COVID-19 pandemic, the nation’s bedrock of carers more than doubled, hitting 13.6 million. And currently, more than 1 million carers look after more than one individual. Carers UK provides help and advice for people who are dealing with the onerous time pressures that caring routinely presents, the professional effects of which are not to be underestimated. Some 5 million employees – around one in seven workers – juggle caring with their working lives. However, many carers find that process unsustainable. Every day, around 600 people leave their jobs to devote themselves to supporting older or disabled relatives. Around 1.4 million people provide more than 50 hours of care per week. The legal sector is a microcosm of this national picture. In March 2020, a diversity survey by the Solicitors Regulation Authority (SRA) found that 9% of almost 190,000 respondents were caring for someone other than a child. While data on specific legal disciplines is scant, a separate, more recent report from the Cost Lawyer Standards Board chimed with the SRA’s figures: 9% of participating costs lawyers said they had caring responsibilities for someone with either longterm physical or mental ill-health, or a disability. As we are about to see, the IP community also overlaps with this circle of the legal profession in which caring is a significant – and often challenging – part of daily life.
STRESS AND STIGMA
AA Thornton Partner and Chartered Patent Attorney Dr Marianne Privett has acquired varied experience of caring through looking after her husband, who suffered with degenerative disc disease, and her sister, who is autistic with a learning disability. The chronic, disabling back pain that stemmed from her husband’s condition, which affected his lower spine, spawned a two-year period of upheaval during which normal scheduling of everyday activities proved all but impossible. “Our eldest daughter was born in 2012,” Privett explains, “and around that time, my husband’s pain got particularly bad. As a result, I essentially became our child’s primary carer. I often felt like a single parent: while I had my husband’s full emotional support, and he was deeply involved with parental decision-making, his pain was so severe that he was unable to change or dress our daughter. Even something as minor as taking a walk outside was an event we’d have to plan for very carefully to ensure he’d have time to recover afterwards.” Social planning was even trickier and didn’t always bear fruit. “One of my husband’s friends was getting married,” Privett says, “and we thought we’d be able to make it if we could travel on the Thursday, rest on the Friday, go to the wedding on the Saturday, rest on the Sunday, then travel back on the Monday. The bride and groom thought that blocking out five days to attend an occasion that would last just a few hours sounded a bit much, and we ourselves were concerned about how the childcare arrangements would work. So, they told us we didn’t have to come all that way – bearing in mind that ‘all that way’ meant from south-east to north-west London.” Business-related travel also required special preparation. “We had no family nearby,” Privett explains, “so whenever I had to go away for work we were entirely reliant on friends. I’d leave our daughter with a couple who had a girl the same age. They’re lovely people – but handing her over to them for the first time was very difficult.” Amid all the extraordinary hurdles that became part and parcel
SOME 600 PEOPLE LEAVE THEIR JOBS EACH DAY TO SUPPORT OLDER OR DISABLED RELATIVES 1.4 MILLION PEOPLE PROVIDE MORE THAN 50 HOURS OF CARE PER WEEK INCLUSIVITY | 17
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I felt I had no choice but to continue as the main breadwinner and earn as much as possible to look after us and pay the mortgage
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of her daily routine, Privett bunkered down and pressed on, reluctant to reflect upon or open up about what she was going through. “My husband wasn’t sure whether he’d be able to carry on working,” she says. “As such, I felt I had no choice but to continue as the main breadwinner and earn as much as possible to look after us and pay the mortgage. I was also self-conscious about whether my firm would notice a difference in me. When I started there, my husband was in good health and my mum was around to help out with my sister. I was seen as fully capable, and I didn’t want that perception to change.” Privett adds: “The stigma around speaking up always hovered in the background. The pressure was two-fold: first, if you tell the people around you how hard things are, you have to recount everything – and you may not want to delve into all the details. Second, you worry that whoever you’re speaking to will think you’re somehow less capable and less worthy of promotion, and I didn’t want to be judged in that way.” LIFE ADMIN
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In late 2014, Privett’s husband had surgery to remove his degenerated disc and fuse his vertebrae – a procedure that alleviated his sciatica and restored sensation to his feet. This enabled him to walk without a stick. Since then, he has been able to live with a much lower level of discomfort. However, by contrast with the rigours of his condition, which called for constant lifestyle adjustments, Privett’s sister has occasionally required more urgent interventions. “She lives fairly independently in a flat, with the help of support
workers,” Privett explains. “However, a few years ago she missed a filing date for her Universal Credit and Personal Independence Payment. Her support workers could remind her about those bits of life admin – but, of course, they couldn’t make her fill in the paperwork.” By the time Privett learned the truth of the situation, she recalls, her sister’s bills were in the red and emergency intervention was needed. Sorting it out with the powers that be “was quite a job – so we’ve put steps in place to make sure that won’t happen again.” Earlier this year Privett’s sister tested positive for COVID-19 – thankfully, she had been doublejabbed, so wasn’t seriously ill – but as her support workers were unable to attend, Privett had to rally round. “My husband had installed TeamViewer, which enables you to access someone else’s computer with their permission, so I was on the phone with my sister while remotely using her laptop, arranging her COVID tests and ordering her food and medicines.” Privett says: “We now have a system where, if she faces a challenge, she comes to me. But I have to keep on top of things and monitor her a bit to make sure she doesn’t end up in a situation where something goes wrong on the admin side and everything just snowballs.” SQUEEZED SCHEDULES
Someone who understands the scheduling challenges that Privett has faced is Chris Clarke, a patent attorney at Cambridge-based pharma company Vectura. Clarke’s 14-year-old son Oliver looks big, strong and healthy, but he has a rare Chromosome 15 disorder. As Clarke explains: “Oliver is learning disabled, with very limited speech. Most 14-year-old boys can get themselves to school and back, but Oliver is different. In many respects, he’s quite toddler-like.” He continues: “Another feature of Oliver’s disorder is that he is often quite disturbed in the night and tends to rise very early. Plus, he has no control over his appetite and will simply eat and eat if left unsupervised.” As a result, Clarke faces time-management squeezes at either end of the working day. “In the morning, it’s a case of being around January/February 2022 citma.org.uk
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Carers, 2
Oliver before he goes to school so my wife and I can keep an eye on his eating and prepare him for the day. My wife actually works at a school. Once Oliver comes home, it falls to me to police his eating because my wife can’t leave work until a specific time in the evening. Despite his learning disability, he is very sharp and cunning: you may think he’s happily watching TV, but as soon as you go to the loo, he’ll be raiding the biscuit tin.” In the hours between, Clarke drives his work with ruthless efficiency. “As soon as Oliver goes out the door, it’s a matter of cracking on to fit in as much work as possible. I like to cluster my tasks. I deal with families of cases, so if I have something to do on a particular case in one country, I’ll wait till two or three more relevant action points come up and I’ll do them all at once. That saves me from having to relearn the particulars of cases after big gaps.” In terms of external help, Clarke says: “My wife and I have quite a lot of support. We have a social worker, plus a respite carer who Oliver stays with one weekend a month to give us a break. Mencap has also been a great source of information and advice.” HELP IS AT HAND
As their caring responsibilities have progressed, Privett and Clarke have both witnessed evolutions in how law firms are approaching this terrain. Privett stresses: “AA Thornton has always been great to work for, but now it has in place a formal employee assistance programme offering exactly the sort of help I’d have sought out years ago, had it been available at the time.” Clarke notes: “In Oliver’s early years, when my wife and I were trying to get a diagnosis so we could figure out what our lives were going to look like, I had a line manager who had quite a traditional attitude: that I should be the one doing the work while my wife worried about the caring. Thankfully, my current employer is far more laid-back and supports agile, flexible work. I’ve been working mostly from home since the pandemic began. My employer is also setting up an initiative to look at every aspect of diversity in the business, from caregiving through to ethnicity, gender and sexuality.” citma.org.uk January/February 2022
Alongside the developments they have seen in their respective workplaces, Privett and Clarke have joined forces to form IP Ability: a community within the IP Inclusive network. Launched in 2019, IP Ability aims to provide IP professionals who are either living with disabilities or caring for disabled relatives with a one-stop shop for advice and empathy. “To be honest, I wish something like this had been around ten years ago,” Clarke says. More recently, IP Inclusive launched its Non-traditional Family Network, which also offers help and support to carers, particularly those who are single parents. One of its organisers is Steph Bartley, a Paralegal at Abel + Imray. Mindful of the stigma that Privett has highlighted, what would she say to a carer who’s nervous about seeking help? “I completely understand why you may feel like that, because I’ve felt the same,” she says. “But there will
Just listening to other people sharing their stories will make you feel like you’re not alone definitely be people who have been in situations similar to yours, so you won’t feel alone or ashamed. To start with, perhaps you could just join our LinkedIn group, where you can observe interactions and read our blogs and posts. If you then feel a bit more at home, why not join one of our events? You can do as much or as little as you want. Even if you don’t feel happy speaking up, just listening to other people sharing their stories will make you feel like you’re not alone.” Find out more about IP Ability and the Non-traditional Family Network at ipinclusive.org.uk INCLUSIVITY | 19
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UK IPO, 1
With its pre-apply tool, the UK Office joins its international counterparts in bringing new technology to bear on the registration process. But what comes next?
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n the year following the launch of the UK IPO’s trade mark pre-apply service in October 2020 – the IPO’s first service to be powered by artificial intelligence (AI) – the number of trade mark applications rejected due to unsuitable Nice classification terms dropped by 14%. The service was used more than 15,000 times in the three months up to 1st November 2021. This equates to around two-thirds of all applications submitted by customers who weren’t represented by an attorney. The tool identifies any similar trade marks that already exist and presents these to the customer, which helps to improve the chances that the customer will be successful in registering their own trade mark. It also helps customers identify the right groups of goods and services for their proposed trade mark, which means applications are more likely to be accepted. The IPO has also seen a 70% drop in the length of goods and services lists since the service was launched. This increased specificity, says the IPO, means that customers will have more suitable trade marks that are more likely to protect the right goods and services, leaving them less open to challenge. It could also save applicants from spending unnecessary money. Because there is a fee payable for each additional category of goods and services that is selected, being more targeted can bring a better result for a lower cost. Other improvements the IPO attributes to the service include a better customer interface and Nice classification picker, as well as shorter and more relevant lists of goods and services. What’s more, gone is the option for customers to select all classifications listed on the page. As well as bringing about better-quality applications, these changes also mean that trade marks can be examined more quickly, according to the
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IPO. Examiners no longer need to trawl through long lists of goods and services, and it’s easier to search and compare. The service also uses AI to perform relative and some absolute grounds checks and gives an estimate of application costs. NEXT STEPS
With the customer feedback received so far suggesting that the Office’s first use of AI is delivering what it hoped for, the IPO is now planning to build this technology into future services as part of the One IPO transformation programme. David Holdsworth, Deputy CEO and Director of Operations at the IPO, says: “It’s great to see the positive impact our first AI-powered tool is making. More importantly, it’s a statement of intent for our future digital services”. According to the IPO, potential further uses of AI could include: • improved automated text searches using Natural Language Processing; • automated help and guidance, such as pre-apply services across all rights; • chatbots that could, for example, suggest appropriate classifications of goods and services; and
14%
How far the number of applications rejected due to unsuitable Nice classification terms dropped after the AI pre-apply tool was introduced
70%
reduction in the length of goods and services lists observed since the service was launched
• advanced validation and authentication features across customer accounts and application processes to help improve the quality of applications received. Although the tool is obviously aimed at unrepresented applicants and therefore of limited value to professional representatives, it does herald the IPO’s increased adoption of AI technology, which is very much in line with the direction being taken by its international counterparts. As Birgit Clark explained in CITMA Review Issue 466 (“All in on AI”), the IPO’s introduction of AI is very much part of a global trend. For example, WIPO reports that 50% of the IPOs it surveyed had started to use AI for at least one business solution back in 2018. Tools aimed at aiding classification include EUIPO’s TMclass and the Autochecker software tool used by the Singapore IPO. Clark also reported that similar tools were being investigated by China’s National Intellectual Property Administration, the Japan Patent Office and Russia’s Rospatent. Amid all the excitement around this innovation, however, there is still a need to proceed with care, says Chartered Trade Mark Attorney Catherine Wolfe, a Partner at Boult Wade Tennant. In particular, she stresses the need for IP professionals to have a firm understanding of what the AI has been trained on and the continuing need to allow for some form of override option. “AI is simply an acceleration of the present mechanisms,” she told the Review. “It is an automation from models and data and, as such, it is not to be feared and certainly cannot be stopped. Yet it is important to ensure that there is always an option to select ‘other’ or ‘manual’. Expert human oversight with the ability to intervene remains essential.” INNOVATION | 21
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PUTTING AN END TO THE PARTY
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Simon Brydon examines the impact of illegal streaming and explains how it can be tackled
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n the waves of the air... if it’s something we can share, we can steal it,” sang the Bee Gees on the soundtrack to Saturday Night Fever, one of the biggest selling movie soundtracks of all time. Today, TV streaming fever is all around us and the party is in full swing. But, as video service providers compete to host the most entertaining bash, offering original content and live sports over the internet at the touch of a button, uninvited guests are helping themselves to the family silver. With billions of dollars at stake, it’s no surprise that gate-crashing streaming pirates want a piece of the action. The TV and video industry’s revenue losses from digital piracy are eye-watering: research from the Global Innovation Policy Center suggests that between US$39bn and US$95bn is lost each year. But all is not lost. By paying close attention to how pirates achieve their goals and putting appropriate legal and technological barriers in 22 | CYBERSECURITY
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place, the industry can stop criminals siphoning off revenue that rightfully belongs to content owners and service providers. SPORTS: PRIZED PIRACY JEWEL
When it comes to premium content, live sport is the jewel. According to research conducted for Synamedia by Ampere Analysis, the illegal piracy of sports media rights costs the sports broadcasting industry more than US$28bn of potential revenue every year. Ampere Analysis’s extensive ten-country survey of more than 6,000 sports fans who admitted to viewing pirated content pulled no punches, asking them what sports content they pirated, why and how they pirated it, how much they paid and what would tempt them to switch over to legal services. The research found that while 89% of sports fans use pay-per-view or subscription-based streaming services more than half (51%) still pirate sports services at least once a month. What’s more, of those who regularly view illegal sports content, 52% are paying for some pirate
activities. However, 74% of sports fans said they would be willing to switch from illegal streams if a legitimate alternative was available and if the illegal streams were to become unreliable. NO LEGAL CONSTRAINTS
The inexorable shift from traditional broadcasting to streaming content over the internet (known as OTT) has created fierce competition. Every broadcaster needs to give customers an excellent viewing experience, offer a competitively priced service and, critically, provide compelling and stand-out sports and entertainment content, all of which requires massive investment. For legal players, the world of broadcasting is a high-risk, highstakes business. In contrast, with little-to-no acquisition costs, streaming pirates can run an enviable business model. Imagine being able to offer customers a 40,000-channel package with highly sought-after live sporting events, every premium TV show and the latest film releases with no geographic restrictions and, January/February 2022 citma.org.uk
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most importantly, no content costs. That’s what illegal OTT services do. They are the ultimate media super-aggregators. Pirates also don’t have the constraints of competition law, which decrees that content should be sold to multiple distributors. A legal broadcaster can’t compete with a completely monopolistic distribution and super-aggregated service offering everything a viewer could possibly want at an unbeatable price. Adding to the problem, social media services such as Facebook, YouTube, WhatsApp and many others provide a readymade platform for streaming, so it’s very easy for them to be used for piracy. This is not a fair fight. Multinational paid-TV network beIN Media Group is continually evaluating new ways to fight broadcast piracy which, according to beIN’s anti-piracy chief Cameron Andrews, is ubiquitous. “Piracy has affected broadcasting for a long time, but it used to be piracy of a broadcaster’s network, things like card sharing and cable piracy. While those problems still exist, citma.org.uk January/February 2022
A simple Google search will quickly take you into a world of organised crime the main problem for the industry these days – which is potentially an existential threat – is internet piracy. That is happening everywhere; it’s an international problem.” A simple Google search will quickly take you into a world of organised crime: industrial-scale professional hackers, criminal technology experts with content aggregators, content wholesalers and content resellers conducting the biggest criminal heist the world has ever seen. Synamedia currently tracks more than 7,000 organised pirate entities and the 108,000 internet TV streaming (IPTV) entities they supply, as well as 25,225 pirate stream servers. The technology of OTT delivery makes it simple and cheap to set up as a pirate operator. Pirates steal the
content by any means – often by hacking legitimate services. Then they aggregate all the content together in an unbeatable package at an unbeatable price and accumulate paying subscribers through a network of thousands of resellers or storefronts. The quality of service that the streaming pirates can deliver often rivals the quality available from a legitimate broadcaster. Most importantly, the financial rewards on offer and the ease of set-up, combined with the low risk of arrest or meaningful punishment, means the problem will not go away. LEGAL REDRESS
The number one – and more or less only – legal solution available to rights owners and licensees is to issue notices to internet service providers (ISPs) requesting that they take down services once pirate activity has been detected. In the UK, the legal system also has provision for forward-looking judgments allowing for services to be taken down before serious infringement has taken place. CYBERSECURITY | 23
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course of summer 2021 to serve cease and desist notices to a number of individuals suspected of supplying illegal streaming services. Then, following police investigations, various arrests in connection with suspected illegal streaming resulted in sentencing and imprisonment. COLLABORATION NEEDED
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Elsewhere, the situation is much more difficult. In many jurisdictions, takedown notices can be issued only once an infringement has occurred that involves non-compliant ISPs, leading to varying interpretations of what constitutes “expeditious” action on the part of the ISPs that are compliant. What’s more, some outdated legal frameworks allow ISPs to transact with clients without taking any identifying details. In recent months, there has been significant progress with the likes of YouTube and Facebook. Rights owners now have the tools available to them to take down illegal streams on these platforms. The European Parliament has put forward recommendations to the European Commission to submit a proposal for legislative change via its new Digital Services Act, including amendments to the IP Enforcement Directive to extend and harmonise blocking injunctions and takedowns. The UK has been very much at the forefront of blocking injunctions. The first live blocking injunction was issued by the High Court in March 2017 to tackle the illegal streaming of live Premier League matches. This was renewed and enhanced with new techniques such as Dynamic IP blocking for the 2021/22 season. Other sports right owners, including major boxing promoters and UEFA, have followed suit. The latest order tightens protection by compelling UK and Irish ISPs to block the IP addresses of pirate servers so that subscribers cannot access them. The blocking order’s owners appoint an anti-piracy partner, such as Synamedia (which specialises in IPTV piracy), to identify the IP addresses of the pirate services behind the illegal streams, capture evidence of their criminality and then notify the 24 | CYBERSECURITY
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$28.3BN
THE AMOUNT OF REVENUE LOST EACH YEAR TO SPORTS PIRATE STREAMING SERVICES WORLDWIDE SOURCE: AMPERE ANALYSIS (2021)
ISPs in real time. Under the legal obligation imposed on ISPs by the High Court, these IP addresses are then blocked by the ISPs so that users cannot view the streams using regular means. OTHER AVENUES
Although it might feel as if legal action is only a last resort, there has been some success with legal investigation and prosecution. For example, in October 2021, the International Broadcaster Coalition Against Piracy announced a lawsuit in New York against South Asian pirate services branded as Desi TV and Live TV, for US$26m. Other lawsuits filed in 2021 and awaiting decision include those against Chitram TV (for more than US$31m) and MyIndianTV (for more than US$26m in damages plus injunctive relief). Meanwhile, on this side of the pond, in an initiative aimed at preventing the illegal supply of IPTV streams, police officers and investigators from the Federation Against Copyright Theft visited addresses across the UK over the
Fighting streaming piracy requires collaboration and solutions to demotivate pirates at every point along the video distribution chain. Rights holders can do their bit by requiring OTT security – for example, mandating watermarking in their licensee contracts. But, as most content is not exclusive to a particular provider, co-operation is needed to ensure that solutions address all sources of pirated content. Everyone, from content network and cloud service providers through to ISPs, payment providers, chip manufacturers, anti-piracy tool vendors, rights owners, streaming providers and legislators, needs to work in concert to combat and outwit these gate-crashers. From a technological standpoint, tackling streaming piracy requires both protective and proactive approaches and solutions to deter, detect and disrupt the pirates. For example, Synamedia’s intelligencebased model leverages AI alongside human intelligence – including undercover investigators and experts in cybersecurity, psychology, criminology and sociology – to monitor and map the piracy supply chain and orchestrate legal and technical takedowns. The best parties will always attract gate-crashers. And with billions at stake, OTT pirates will not leave without a fight. But by watching every move the pirates make, we can minimise and disrupt their antics and keep the streaming party swinging for its invited guests.
Simon Brydon is Senior Director, Security Business Development (Sports) at Synamedia sbrydon@synamedia.com January/February 2022 citma.org.uk
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BE A CAREER BOSS What can you do to take charge of your progression?
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t our November event for Trade Mark Paralegals, an experienced panel offered some useful advice for anyone who would like to move forwards in their career. Take up every opportunity. This
was the advice shared by Deirdre Naessens, Formalities Manager at Tomkins IP. “I’m in favour of grasping every opportunity,” she said, “be it at the level you are at at the moment or if you see an opening at a higher one.” She also suggested getting involved in user groups and committees that will improve your knowledge. Her own involvement in the EUIPO key user group has been “a fantastic way to keep in touch with what is going on in the EUIPO, meet people and gain more knowledge,” she noted. Be more busy. Volunteer to take on new and varied tasks at work – but not to the point that you risk burning yourself out, cautioned citma.org.uk January/February 2022
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Naessens. Often, learning a bit of another role can help with your current one, and it also helps if you want to move on to do something different. Likewise, attend courses and seminars that don’t necessarily relate to your current job but just because you find them interesting. Don’t be scared of public speaking. This was the advice
from Samantha Park, Trade Mark Operations Lead at Bird & Bird. “If an opportunity arises, please don’t shy away. This is a great way to network and impart knowledge. Just remember, most people are listening because they want to know what you know.” Make yourself heard. If there’s a
project you’d like to get involved with but you haven’t been asked, make it known that you’re interested, said Park. And consider asking for more responsibility in your team or department; there’s always a way you can add value.
Drive the discussion. Make sure that you and your manager discuss your progression more than once a year, and not just in your appraisal, recommended Park. “I’m a big one for putting in meetings and having chats with people – because people’s skills change, as do their attitudes to work.” And if someone offers you an opportunity, take it, she said. Even if takes you out of your comfort zone, you don’t know where it may take you. It’s OK to stay put. Striving to
move on is great, but if you think you’ve found the niche that’s right for you, it’s reasonable to recognise that and stay put. For example, Naessens described how she has tried out a lot of different jobs on the side over the years, including dabbling in a bit of interior design. “However,” she concluded, “I have finally found my niche, and that is at Tomkins IP.” See citma.org.uk/events for all of our events for Trade Mark Paralegals CAREER DEVELOPMENT | 25
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O/610/21, FACETUBE (Opposition), UK IPO, 18th August 2021
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Face race Facebook’s solid reputation swung the decision, writes Kasongo Swana
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Opponent) filed an opposition against an application by Financial & General Holdings Ltd (the Applicant) for the composite mark FACETUBE (the Application). The composite mark (shown opposite) depicted a retro-style television device as well as the word “Facetube” presented along the bottom of the television. The Application covered a number of services in class 42, all of which the Hearing Officer (HO) noted were in the field of science and technology, and all of which were opposed. The Opposition was brought on the grounds of s5(2)(b) and s5(3) of the Trade Marks Act 1994. The Opponent relied on its earlier marks for FACEBOOK and FACE, with the former mark landing success on both grounds. A POINT ON PLEADINGS
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Before delving into the grounds of the Opposition, it is interesting to note that the Opponent submitted, and the HO agreed, that the Applicant had not commented on the similarity of the goods and services in issue in its counterstatement. Whether the Applicant opted to concede on an issue that it did not consider to be worth fighting over, or simply omitted to take a stance on whether similarity was accepted, denied or for the Opponent to prove, the result was the Applicant being
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taken to accept that there was similarity between the goods and services. Conversely, in regard to the Opponent’s reputation, the Applicant not only admitted in its pleadings the Opponent’s reputation in the FACEBOOK marks for social networkingrelated services in classes 35, 38 and 45, but also did not dispute the Opponent’s claimed reputation in a number of other areas. In respect of both the similarity of goods/ services and reputation, the HO ultimately came to a conclusion that favoured the Opponent on both fronts. SOME WORDS ON SIMILARITY
The HO found that almost all the contested services were similar or identical to those covered by the earlier Facebook marks. In comparing the opposing marks, the HO found that there was a point of visual difference, notably due to the word marks themselves (FACEBOOK v FACETUBE), but also due to the device element in the contested sign. Visually, the marks were held to be similar to a low-medium degree, aurally similar to a medium degree, and conceptually similar to a medium degree. The real tipping point seems to be the enhanced distinctiveness found in the mark FACEBOOK. The Opponent was not short on evidence to show its purported reputation, from the 42 million active users of its
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The Opponent’s reputation was strong enough to outweigh the differences between the marks platform as of December 2019, to being ranked in the top three applications in the Google Play Store for social networking as of February 2020. It even evidenced articles breaking the news that HM The Queen had joined Facebook’s platform. On the other hand, the Applicant had filed evidence of FACE marks on the register in classes 9, 38 and 42 and provided 10 of the 69 results. However, the evidence was not persuasive or of probative value. The HO noted that nine of the 10 results provided were “dead” and commented that most of the evidence was undated. Even where the evidence was dated, it was not sufficient to have a bearing on the distinctiveness of the earlier Facebook marks. The Opponent’s evidence, however, seemed to be enough to establish the enhanced distinctiveness of the Facebook marks for a number of services, particularly those relating to social networking. Of course, if the marks in issue were simply FACEBOOK (word mark) and FACETUBE (word mark), similarity between the marks would perhaps be a more straightforward assessment. But what to make of the device element accompanying the contested sign FACETUBE? The HO took the view that consumers would mistakenly recall or misremember the word element in the contested sign due to the distinctiveness
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of the earlier Facebook marks. The Opponent was therefore successful on s5(2)(b), with the HO finding a likelihood of indirect confusion for the services for which the Opponent’s marks had enhanced distinctiveness and which were considered similar to the opposed services to at least a medium degree.
+ This decision is a reminder that a famous mark should not be penalised for its reputation. A likelihood of confusion may not only be possible, but more probable where enhanced distinctiveness is established + A strong reputation may be enough to overcome any dissimilarities between the marks or between the goods and services in question
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Although the HO noted the differences between the opposing marks, she held that the Opponent’s reputation was strong enough to outweigh the differences, causing a significant part of the public to make a link between the marks – even for the services that were not held to be similar (noting that they were still in the field of science and technology). Where a strong reputation can be demonstrated, it is arguably foreseeable that the later mark will benefit from image transference. In this case, the HO went as far as to find that, even for dissimilar services, the Applicant stood to benefit from “the transfer of an ‘innovative’ image”, leading to an unfair commercial advantage. As a result, the Opponent succeeded entirely under s5(3).
MARK THE APPLICANT’S MARK
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It seems that the Applicant may have been relying on the Opponent’s reputation to show that the applied-for mark could not possibly be mistaken for the well-known Facebook marks. However, it was precisely the strength of the Opponent’s reputation that seems to have been decisive in the HO finding a likelihood of confusion and a link causing an unfair advantage. Few people would deny that the Opponent has a reputation, in some respects at least. The Applicant’s decision not to challenge this may therefore hardly be surprising. However, this case shows that a strong reputation can bridge the distance between marks that may not be straightforwardly similar, even when the goods and services in question are considered to be dissimilar. The decision had not been appealed at the time of writing. Stobbs IP acted for the Opponent in these proceedings.
Kasongo Swana is a Trainee Trade Mark Attorney at Stobbs kasongo.swana@iamstobbs.com CASE COMMENT | 27
91CITJUL22113.pgs 09.12.2021 16:13
VERSION
Shakenbar, 1
CASE
O/610/21, SHAKENBAR (Opposition), UK IPO, 18th August 2021
REPRO OP
Stirred by shaken The HO was moved to find for the Opponent, explains Peter Collie Bubbleshake Bar Ltd (the Applicant)
SUBS ART
applied to register the mark shown below in relation to a range of milk drinks, confectionery goods and the provision of food and drink services. Shaken Udder Ltd (the Opponent) opposed based on likelihood of confusion, reputation and passing off with its earlier SHAKEN UDDER mark (also shown below). The earlier mark covered identical and similar goods to those in the application. CONFUSION CONCLUSION
PRODUCTION CLIENT
The Hearing Officer (HO) held that the marks shared a low to medium degree of visual similarity, and a medium degree of aural and conceptual similarity. The SHAKEN UDDER mark’s allusive qualities resulted in a low degree of inherent distinctiveness in relation to milk products. However, the Opponent demonstrated enhanced distinctiveness for milkshakes. The HO concluded that the differences between the marks were sufficient to ensure no likelihood of direct confusion. However, he also concluded that the shared element SHAKEN is sufficiently distinctive to give rise to a risk of indirect confusion in relation to all the goods and services. The HO highlighted the words “Shaken cow” in the Applicant’s mark, suggesting that this pointed to the likelihood of the same
undertaking using more than one trade mark featuring the word “Shaken”. Ultimately, the likelihood of confusion claim succeeded in full. REPUTATION RESPONSE
The Opponent’s evidence for enhanced distinctiveness was also found to demonstrate a moderate reputation in relation to milkshakes. On the basis that both marks begin with the word “Shaken” and the Opponent’s reputation is for goods in the same economic sector as the Applicant’s (food and drink), the HO concluded that the necessary link between the marks was established and there was potential for the Applicant to gain an unfair advantage. The reputation claim, therefore, succeeded in full. The passing off claim also succeeded in full. The Opponent’s evidence for enhanced distinctiveness demonstrated a fairly strong goodwill for the mark SHAKEN UDDER in relation to milkshakes. The HO again emphasised the presence of “Shaken” in both marks and the overlapping market sectors, concluding that misrepresentation, and damage through the diversion of sales, was likely.
KEY POINTS + Conceptual meaning within a mark, even at a very general level, can be a powerful tool for blocking third-party marks + Evidence of enhanced distinctiveness to a level that is “higher than medium” may be sufficient to override relatively low inherent distinctiveness
MARKS THE APPLICANT’S MARK
Detail
BROAD INTERPRETATION
There were clear visual, aural and conceptual differences between the marks – for example, the contrasting concepts of “udder” and “bar”. However, the HO took a broad interpretation of conceptual similarity by referring generally to “something that has been ‘shaken’”. The alignment of the marks’ conceptual meaning at a general level was sufficient to support the finding of indirect confusion, the necessary link for the reputation claim, as well as a finding of misrepresentation for the passing off claim. It is difficult to avoid the conclusion, however, that the additional logo containing the words “Shaken cow” in the Applicant’s mark considerably aided the Opponent’s case for indirect confusion.
THE OPPONENT’S MARK SHAKEN UDDER
Peter Collie is a Trainee Trade Mark Attorney at Haseltine Lake Kempner LLP pcollie@hlk-ip.com January/February 2022 citma.org.uk
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91CITJUL22114.pgs 09.12.2021 16:13
Stone v Wenman, 1
VERSION
CASE
[2021] EWHC 2546 (IPEC), Stone v Wenman, IPEC, 22nd September 2021
REPRO OP
Spirited dispute The arguments around use of an angelic mark are summarised by Briffa
SUBS
The Defendant here, Alexandra Wenman,
ART PRODUCTION
was successful in her counterclaim against the Claimant, Claire Stone, for passing off. This outcome saw Stone’s UK trade mark for ARCHANGEL ALCHEMY in class 41 declared invalid pursuant to section 47(2)(b) of the Trade Marks Act 1994 (the Act). As Her Honour Judge Melissa Clarke’s judgment details, this was “a dispute between two spiritual and holistic therapists over use of the trade mark ARCHANGEL ALCHEMY to sell metaphysical/spiritual education and coaching courses which aim to connect participants with archangels”. THE PARTIES
CLIENT
Both parties to this dispute operate in the world of spiritual and holistic therapy. They each offered coaching and training courses under the “Archangel Alchemy” name. What differentiated the parties was that Stone had filed to protect that name as a UK trade mark on 3rd October 2019 (which was entered into the register on 27th December 2019), whereas Wenman, who claimed to have offered spiritual and holistic services under the “Archangel Alchemy” and “The Archangel Alchemist” names since around 2010, had not registered any trade marks for those names. Stone became aware in February 2020 that Wenman had been offering for sale online courses under the ARCHANGEL ALCHEMY sign. Stone claimed that Wenman’s activities were an infringement of her trade mark pursuant to s10(1) of the Act, or alternatively under s10(2) if the services were not identical. Wenman’s position was to deny trade mark infringement on the grounds that: (i) the trade mark was invalid under s5(4) of the Act; (ii) her activities amounted to use in the course of trade in a particular locality of an earlier right under s11(3) of the Act; or (iii) if she did not have goodwill sufficient to invalidate the trade mark, then her use of the signs was not as an indicator of origin citma.org.uk January/February 2022
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What differentiated the parties was that one had filed to protect that name as a UK trade mark whereas the other had not CASE COMMENT | 29
91CITJUL22115.pgs 09.12.2021 16:32
VERSION
CASE
[2021] EWHC 2546 (IPEC), Stone v Wenman, IPEC, 22nd September 2021
REPRO OP SUBS ART
and therefore had no effect on the origin function of the trade mark, or that the signs were descriptive and used in accordance with honest commercial practice pursuant to s11(2)(b) of the Act. His Honour Judge Hacon conducted the case management conference (CMC) on 20th November 2020, in which he ordered a split trial, made directions and characterised the real issue in the case as being “who got there first”. Although Stone had brought the claim, it soon became apparent that Wenman’s Archangel Alchemy would take centre stage in the Intellectual Property and Enterprise Court, because if Wenman could establish goodwill and misrepresentation, Stone admitted damage (satisfying the classic trinity of passing off) and invalidity of her trade mark. THE EVIDENCE
PRODUCTION
At the CMC, permission was given to Wenman to rely on the further evidence of four witnesses of fact and on the evidence of an expert in web analytics. The trial was
The judgment in this case should serve as a warning to small businesses to protect all of their brands, not just the ‘important’ ones
CLIENT
to be conducted remotely over one and a half days before HHJ Melissa Clarke, sitting as a judge of the High Court on 19th and 20th July 2021. Stone relied on her own evidence and filed a witness statement. She gave evidence to explain how she created the idea and concepts behind her Archangel Alchemy course, which was based on her previous angel work, and how on 3rd October 2021 she had applied to register the ARCHANGEL ALCHEMY mark. Wenman provided evidence in which she discussed her activities in providing spiritual and holistic education, training and therapy services, by reference to the names “The Archangel Alchemist” and “Archangel Alchemy” since 2010. Wenman’s evidence followed from her defence and counterclaim, in which she pleaded various activities to support her claim to goodwill. Wenman also relied on evidence from three customers and one ex-colleague who was also a customer. Each gave evidence of Wenman offering spiritual and holistic services under the “Archangel Alchemy” and “The Archangel Alchemist” names. Wenman additionally relied on the evidence of Patrick Findlay, a web analytics expert. At trial, just one of Wenman’s witnesses, one Lorraine Flaherty, was cross-examined. HELPFUL SUMMARY
HHJ Clarke gave a helpful summary of Wenman’s evidence in her judgment, which itself is of use in uncovering what activities give rise to goodwill. For the court, Wenman’s key activities were: • 2010-2013: A regular “Archangel Alchemy” column in Prediction magazine. • 2011 onwards: Teaching “Archangel Alchemy” courses. • 2012-2014: Meditation CDs and sessions at the Hale Clinic • 2013-2014: “The Archangel Alchemist” publicity and various mind/body/soul/ spirit exhibitions. 30 | CASE COMMENT
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January/February 2022 citma.org.uk
Stone v Wenman, 2
• 2014: The “Archangel Alchemist” podcast. • 2014: The “Archangel Alchemist” book pitch to publishers. • 2016 onwards: Offering PDF-based “Archangel Alchemist” mini e-courses on the Defendant’s website. • 2017-2018: YouTube videos; and • 2019: “Archangel Alchemy” online course, first advertised on 24th September 2019. CENTRAL ISSUE
The central issue in this case was whether Wenman’s activities were sufficient to generate goodwill under the “Archangel Alchemy” name. Wenman admitted during cross-examination that she was not very good at marketing herself online or updating her website. Counsel for Stone, Ben Longstaff, submitted that there must be a level below which use of a name must be so de minimis as to be insufficient to justify a claim of passing off. It was further submitted for Stone that, in particular, Wenman had exaggerated the scope of her Archangel Alchemy work and that there was a disparity between Wenman’s professed use of the mark as a brand and an almost total absence of the names on her website. The problem for Wenman was that “Archangel Alchemy”/“The Archangel Alchemist” was not her “main” brand. What’s more, there was little in the way of documentary evidence and she had not registered any of the names as trade marks. In her judgment, HHJ Clarke found that Wenman’s “problems” – for example, whether she could have made better and more extensive use of the “Archangel Alchemy”/“The Archangel Alchemist” names on her website – were not relevant and that the real question was whether she had used the names on a sufficient scale to generate actual goodwill that was more than trivial. Mr Findlay’s expert report gave evidence to the court about Wenman’s website. One activity he identified was the sale of four Archangel Alchemy “mini e-courses”, which were offered on Wenman’s 2016 website. HHJ Clarke refused to look at this item of evidence in isolation but found that “even four sales is trade which gives rise to goodwill”. Next, HHJ Clarke went on to consider Wenman’s oral evidence that between 15% and 25% of her work related to Archangel Alchemy, as well as her Counsel’s later submission that it is possible that the appropriate figure may be as low as 5% or 1%. In HHJ Clarke’s judgment, even the smaller amount of use would be more citma.org.uk January/February 2022
than trivial and would generate sufficient actual goodwill to be capable of damage by reason of a misrepresentation. Misrepresentation was on the list of issues for trial and was determined in Wenman’s favour. In the Particulars of Claim, Stone pleaded that there would be confusion in the market because the services that both parties provide are identical, being provided to “the exact same market to the exact same customers”. In cross-examination, Stone volunteered that any confusion would be likely to work in both directions. HHJ Clarke found that it would be inevitable that if someone told another person they had been to an excellent Archangel Alchemy course, without being provided with Wenman’s name, that person could find Stone’s course marketed under the same name and assume it must be the same as, or connected with, Wenman’s course. This would amount to a misrepresentation.
KEY POINTS + The Defendant succeeded in a counterclaim for passing off + Even minimal use of a mark can be more than trivial and generate goodwill + Businesses should protect both their “main” and “subsidiary” brands to avoid costly passing off litigation
ELUSIVE METRIC
This case provides useful guidance on that ever-elusive question of what amounts to use of a brand name giving rise to goodwill to form a case in passing off. Here, Wenman had little documentary evidence to support her claim, nor was she particularly good at keeping a record of her activities under the “Archangel Alchemy” and “The Archangel Alchemist” names or maximising her marketing and advertising activities. What she did have was use of a mark over the course of more than ten years, in all shapes and forms, and more than trivial goodwill. Goodwill is easy to say, easy to conceptualise, but often tricky to see. While HHJ Clarke’s judgment should offer small businesses some security – in the sense that even four sales of an online course can generate goodwill that is more than de minimis – it should also serve as a health warning to small businesses to protect all of their brands, not just the “important” ones. Briffa acted for the Defendant in these proceedings.
William Miles is a Partner at Briffa william@briffa.com Samuel O’Toole, an Associate at Briffa, co-authored. CASE COMMENT | 31
91CITJUL22116.pgs 09.12.2021 16:14
VERSION
CASE
T-44/20, Chanel v EUIPO – Huawei Technologies, General Court, 21st April 2021
REPRO OP
It’s a lock Abdulmalik Lawal reports on a decision in favour of Huawei which took a strict stance on similarity
SUBS
KEY POINTS
ART
+ It is necessary to compare marks in the form in which they are registered + A strict comparison of the elements may result when assessing purely figurative marks
MARKS PRODUCTION
THE HUAWEI MARK
CLIENT
THE CHANEL MARKS FR3977077
FR1334490
UNDER AMOUR, INC.’S MARK
Chanel has lost an appeal against its denied opposition of a Huawei figurative mark. The Huawei mark (shown below) consisted of two interlocking letters positioned in an inverted mirror image, with curved portions interlaced and intersecting with each other to produce a central ellipse resulting from the intersection of the curves. The difference in orientation of the elements of the marks played a key role in the decision. INITIAL TIMELINE
On 26th September 2016, Huawei Technologies Co. Ltd (Huawei) filed an EU trade mark application for its figurative mark. The trade mark application covered a number of goods in class 9, including “computer software applications, downloadable; earphones and headphones; cases for smartphones; [and] protective films adapted for mobile phone screens”. On 28th December 2017, Chanel filed a notice of opposition based on two grounds. The first was Article 8(1)(b) EUTMR, relying on Chanel’s earlier French registration FR 3977077 (FR’077), which covered inter alia goods in class 9, including computer software, headphones, and protective films for mobile phone screens. The second was Article 8(5) EUTMR, relying on Chanel’s earlier French registration FR 1334490 (FR’490), which covered goods in classes 3, 14, 18 and 25. On 19th March 2019, the Opposition Division (OD) rejected the opposition in its entirety. Chanel subsequently filed an appeal against the decision of the OD, which it lost. It then appealed its failure before the Board of Appeal (BoA) to the General Court (GC).
APPEAL DECISION
The Fourth BoA dismissed the appeal on the basis that the marks in question were not similar. In relation to Article 8(1)(b), the BoA was of the view that the Huawei mark consisted of two interlocking U-shaped elements in a vertical position surrounded by the basic geometric shape of a circle, while Chanel’s FR’077 mark consisted of two bold, black, interrupted circles, placed mirror-like and overlapping in a horizontal position. Visually, the BoA thought the marks produced a very different overall impression. It concluded that the mere fact that each of the marks was composed of two connected elements did not make them similar. The BoA concluded that, overall, the marks at issue were dissimilar for the purposes of applying Article 8(1)(b). In relation to Article 8(5), the BoA observed that from a visual point of view the Huawei mark and Chanel’s FR’490 mark had a different structure and were composed of different elements. It also observed that the marks were also not similar from a conceptual point of view. Since the marks were dissimilar, the BoA concluded that the first of the cumulative conditions required to satisfy protection under Article 8(5) (the marks at issue must be identical or similar) had not been satisfied, and thus the opposition under said provision had to be rejected on that ground alone. The BoA concluded that it was not necessary to examine the other conditions for the application of the provision.
The mere fact that each of the marks was composed of two connected elements did not make them similar 32 | CASE COMMENT
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January/February 2022 citma.org.uk
Chanel/Huawei, 1
Chanel argued that the marks were similar overall to an average to high degree when the Huawei mark is rotated by 90 degrees GC DECISION
Chanel relied on two pleas in law when asserting that the BoA made an error of assessment when it rejected the opposition, in so far as it was based on Article 8(5) and on Article 8(1)(b). In its Article 8(5) plea, Chanel argued that the Huawei mark and the FR’490 mark were similar overall to an average degree when they are viewed in the orientation in which they are applied for and to an average to high degree when the Huawei mark is rotated by 90 degrees. It argued that the BoA ruled out as a matter of principle any possibility of taking into account the mark applied for in an orientation other than that in which it had been filed on the incorrect ground that trade marks should always be compared as applied for and registered. Chanel claimed that it is permissible, by contrast, to take account of the different orientation of one of the signs if it corresponds to the perception which, irrespective of the intentions of its proprietor, the public may have of it when the mark is affixed to goods on the market. The GC pointed out that when assessing whether marks are identical or similar, they must be compared in the form in which they are protected – that is to say, as they were registered or as they appear in the application for registration. It concluded that the case law relied on by Chanel could not call such a finding into question. On comparison of the marks, the GC noted that the marks at issue shared certain characteristics but that there citma.org.uk January/February 2022
were visual differences which, when assessed globally, result in the marks being visually different. Conceptually, it considered the marks to be different because the Chanel mark included the initials of its founder, while in the Huawei mark it was the stylised letter “H” or two interlaced “U”s that would be perceived as a part of the mark. In its Article 8(1)(b) plea, Chanel put forward similar arguments in relation to the similarity between the Huawei mark and the FR’077 mark. The GC assessed the marks in question and noted that the circle present exclusively in the Huawei mark gave it a specific arrangement and proportions that are not present in the FR’490 mark. It concluded that while the marks at issue share characteristics, the absence of a circle in the FR’490 mark and the consequent arrangement rules out any visual similarity. The GC found that the BoA had been correct in its finding that the marks at issue were dissimilar overall and that the opposition should be rejected. I wonder if Under Amour, Inc. would have had a more favourable outcome if it had opposed the Huawei mark on the basis of its figurative mark (shown opposite).
Abdulmalik Lawal is a Chartered Trade Mark Attorney at Franks & Co. abdulmalik.lawal@franksco.com CASE COMMENT | 33
91CITJUL22117.pgs 09.12.2021 17:13
VERSION
CASE
T-463/20, Sony Interactive Entertainment Europe Ltd v EUIPO – Wai Leon Wong, General Court, 1st September 2021
REPRO OP
Game over for Sony Showing the same letters in the same sequence does not lead straight to visual similarity, warns Sarah Husslein
SUBS
In this decision, the General Court (GC)
ART PRODUCTION CLIENT
confirmed the EUIPO Board of Appeal’s findings and dismissed an appeal by Sony in its entirety. To recap the case history, it began when Mr Wong (the Applicant) filed an application on 23rd August 2017 to register GT RACING as an EU trade mark (EUTM) in respect of various goods in class 18, notably “leather and imitations of leather; backpacks and rucksacks; wallets, key cases, purses and pouches; etc” (the Application). Sony then filed an opposition against all goods covered by the Application, pursuant to Articles 8(1)(b), 8(4) and 8(5) EUTMR, relying on 14 trade marks including figurative and word marks, registered and unregistered. These marks featured a figurative element, the words “Gran Turismo” or the letters “GT”, and covered various goods, notably in classes 9, 16 and 28. The Opposition Division (OD) rejected the opposition in its entirety, and the appeal filed by Sony was subsequently dismissed by the Board of Appeal (BoA). Sony further appealed the decision to the GC and limited the scope of the opposition to EUTM No. 820738 for the figurative mark shown opposite (the Earlier Mark) registered in classes 9, 16 and 28, as well as EUTM No. 920662 for “GT” registered in class 16. GC DECISION
Sony did not dispute the level of attention of the relevant public adopted by the BoA but challenged the identification of this public. The GC dismissed Sony’s arguments and confirmed that the goods at issue were all aimed at the general public, as they were not goods intended for a specialist public
The figurative element represents the capital letters ‘G’ and ‘T’, but their depiction is so stylised that it was unlikely that they would be recognised 34 | CASE COMMENT
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or for a limited circle of persons. It noted that these goods are not sold on a target market, but on a general public market, and that no special skills or knowledge are essential for their purchase. Therefore, the GC confirmed the BoA’s finding that the public in relation to which the analysis of the likelihood of confusion had to be carried out consisted of the general public with, at most, an average level of attention. When comparing the Application and the Earlier Mark, the BoA found that if the figurative element of the Earlier Mark represents the capital letters “G” and “T”, their depiction is so stylised that it was unlikely that they would be recognised as such by the relevant public. The BoA considered that the consumer would have to make significant efforts to perceive characteristics which constitute the letters “G” and “T” in the two figurative forms contained in the Earlier Mark. Accordingly, the BoA concluded that the signs at issue were visually different and that a phonetic and conceptual comparison was not possible. Sony disputed this assessment and argued that the BoA had erred in limiting the examination of the similarity of the signs to the uneducated consumer and ignored the use of the Earlier Mark. It argued that this error vitiated the BoA’s entire analysis. The GC reiterated the general principle that although the marketing circumstances are a relevant factor in the application of Article 8(1)(b), they are to be taken into account during the global assessment of the likelihood of confusion and not when assessing the similarity of signs. Only the signs’ intrinsic qualities must be taken into consideration when comparing the marks. The GC then confirmed the BoA’s finding. It considered that the Earlier Mark consists of bold, curved, vertical and horizontal lines and noted that the Application is for the word sign GT RACING. The mere fact that the Earlier Mark may have been developed on the basis of the abstract concept of the capital letters “G” and “T” is not, in itself, a sufficient ground for concluding that there is a visual similarity between the signs at issue. January/February 2022 citma.org.uk
Sony, 1 KEY POINTS
The fact that all of the goods in question may be used for merchandising purposes is not sufficient to establish similarity The very specific graphic design of the Earlier Mark therefore had the effect of counteracting to a large extent the alleged point of similarity relating to the fact that it may be understood as a reference to the capital letters “G” and “T” by part of the public. Therefore, the GC considered that the consumer would have to engage in a highly imaginative cognitive process in order to “decipher” that figurative sign and to perceive it as representing the capital letters “G” and “T”. It concluded that the trade marks under comparison were therefore visually different. The GC went on to confirm that the signs were not phonetically similar and that since the marks did not convey any message, it was not possible to conclude there was any semantic concept in common between them. Turning to the comparison of the goods, the GC confirmed the BoA’s finding that the goods at issue are neither of the same nature nor the same purpose, nor intended for the same purpose or for the same use.
It also held that the fact that all of the goods in question may be used for merchandising purposes is not sufficient to establish similarity. The other pleas in law relied on by Sony – alleging that the BoA failed to take into consideration the other grounds of opposition set out in Article 8(1)(b) and 8(5), and erred in the application of the rules relating to an action for passing off – were also rejected as unfounded. Overall, the GC dismissed the action in its entirety. It reiterated some basic principles when assessing the likelihood of confusion between trade marks, as well as the different steps in the comparison process that should be followed by the Office and the parties. This decision is also a good reminder that filing one trade mark for a word element and one trade mark for a highly stylised version of that word element may in some cases offer better protection (and also some flexibility should the rights owner change the stylisation in the future).
+ The very specific stylisation of the Earlier Mark counteracted to a large extent the allegation that it may be understood as a reference to the letters “G” and “T” by part of the public + Too much stylisation makes the verbal elements of a mark hard for consumers to perceive + Similarity between trade marks must be assessed separately, without taking into account marketing materials. These elements cannot compensate for a lack of similarity between the signs
MARK THE EARLIER MARK
Sarah Husslein is a Chartered Trade Mark Attorney and Senior Associate at Bristows LLP sarah.husslein@bristows.com
91CITJUL22118.pgs 09.12.2021 16:32
VERSION
CASE
T-274/20, MHCS v EUIPO, General Court, 15th September 2021
REPRO OP
Power play Anna Caruso covers a decision that backs a reclassification of a mark as a colour
SUBS
On 15th September 2021, the General Court (GC) ruled on the nature of MHCS’ orange rectangular mark (shown opposite), finding that the EUIPO had the power to reclassify marks on its own motion – in this instance, from a figurative mark to a colour mark.
ART
BACKGROUND
In 1998, SA Veuve Clicquot Ponsardin (the legal predecessor of the Applicant, MHCS) applied to register the EU trade mark shown opposite in class 33 (champagne wines), claiming protection under the heading “colour claimed”. PRODUCTION CLIENT
36 | CASE COMMENT
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The scientific definition of the claimed colour was: “trichromatic co-ordinates/ colour characteristics: x=0.520, y=0.428; diffuse reflectance: 42.3%; dominant wavelength: 586.5mm; excitation purity: 0.860; colorimetric purity: 0.894”. In addition, the Applicant had ticked the box “figurative mark” in the application form. The application was refused on the ground that it was devoid of any distinctive character under Article 7(1)(b) EUTMR. The examiner also claimed that, as the application claimed a specific colour mark, the Applicant had erroneously ticked the “figurative mark” box rather than the correct box, “Other”. The Applicant appealed twice from the examiner’s decisions. The Second Board of Appeal initially ruled that the application must be viewed as being for a colour mark, and subsequently that the mark had acquired distinctiveness through use. Although the Second Board of Appeal acknowledged that colour marks are difficult to register in practice because the public is not used to seeing colour as an identification of commercial origin, the mark nevertheless proceeded to register as a figurative mark in 2007 as No. 747949. In 2010, that EU registration was then assigned to MHCS. In 2015, Lidl Stiftung & Co. KG
MHCS, 1
(Lidl) filed an application for a declaration of invalidity against the mark, on the basis that specifying the colour shade using a scientific definition was not sufficient and that the mark lacked distinctive character. The Cancellation Division dismissed Lidl’s invalidity claim, following the Second Board of Appeal in treating the orange mark as a colour mark per se (despite the “figurative” registration) and finding that MHCS had submitted adequate proof that the orange mark enjoyed widespread recognition
The choice of the type of mark was for the applicant to decide throughout Europe in relation to champagne. This decision was overturned in 2020 by the First Board of Appeal and the case was remitted back to the Cancellation Division. The First Board of Appeal considered the issue of the nature of the mark in dispute (ie, whether it was a colour mark or a figurative mark). In particular, it found that the choice of the type of mark was for the applicant to decide and could not be considered a “manifest error” in the present case. Further, the Second Board of Appeal had not been empowered to reclassify ex officio the contested figurative mark as a colour mark. AT THE GC
MHCS subsequently appealed to the GC on the grounds that: • The nature of the contested mark was not an issue that had been raised by the parties, and as such the First Board of Appeal went beyond its jurisdiction under Article 95(1) of Regulation 2017/1001; • The First Board of Appeal incorrectly reclassified the colour mark at issue as a figurative mark; • The principles of the protection of legitimate expectations and legal certainty had been infringed; and • By raising the issue on its own motion, the First Board of Appeal had infringed the principle of sound administration, and MHCS’ right of defence guaranteed under Article 94 EUTMR and Article 41(2) of the Charter of Fundamental Rights of the European Union. The GC upheld the appeal. It considered that the question of the nature of the contested mark had not been submitted by the parties before the First Board of Appeal. It found that the examiner had wrongly citma.org.uk January/February 2022
KEY POINTS
failed to rectify the registration of the contested mark as “another mark” or a “colour mark” instead of as a “figurative mark”, but nevertheless this question did not concern a relevant fact or essential procedural requirement. Accordingly, the First Board of Appeal had exceeded its jurisdiction by addressing facts and issues which had not been raised by the parties. Further, Article 94(1) EUTMR states that decisions of the EUIPO “shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments”. The GC reiterated that the right to a defence is a general principle of EU law, and it was clear from the case documents that the First Board of Appeal had not raised with the parties the question of the nature of the contested mark. In so doing, it had infringed the Applicant’s rights of defence. As a result of the above findings, the GC annulled the decision. According to the GC, the EUIPO had the power to, and indeed should have, reclassified the orange mark from a figurative mark to a colour mark on its own motion. It is unclear whether the power of the EUIPO to reclassify a mark should be interpreted as limited to the specific facts of this case, or whether it should be applied more widely. It is also difficult to reconcile this decision with the principle that the EUIPO should intervene ex officio only where a “manifest error” has taken place and not when the applicant had made a conscious decision (ie, intentionally ticking the figurative mark box as opposed to a different box). The fact that the Applicant never requested that the contested mark be reclassified as a colour mark in the EUIPO’s database is further indication that the election of a “figurative mark” had not been made in error. Finally, the question of whether the scientific definition claiming a specific orange shade was sufficiently objective to register a colour mark has not been addressed by the court. Trade mark owners are aware of the many difficulties and complications of securing a colour mark registration. In a twist to this experience, MHCS is now the owner of a colour mark without having ever actually applied for one.
+ When assessing the distinctiveness of a mark, its classification as a colour or figurative mark is of relevance + Colour marks have no limitation in shape, whereas figurative marks have a clearly defined contour which influences the consumer’s perception and therefore has an impact on the distinctiveness of a mark + It is possible to define colour marks with a scientific definition, even where it might not be intelligible to the public at large
MARK THE MHCS MARK
Anna Caruso is an Associate at Lewis Silkin LLP anna.caruso@lewissilkin.com CASE COMMENT | 37
91CITJUL22119.pgs 13.12.2021 15:23
VERSION
CASE
[2021] R 128/2021-4, Vans, Inc. v Paredes Holding Center, SL, EUIPO, 16th July 2021
REPRO OP
A difficulty of position
SUBS
Could a change in orientation be enough to differentiate between marks, asks Lisa Ormrod
ART PRODUCTION CLIENT
This case demonstrates the difficulties involved in protecting and enforcing position marks and also provides a clear reminder of the essential elements needed to establish a likelihood of confusion: similarity between the marks and similarity between the goods/ services. Without one of these, an opposition under Article 8(1)(b) EUTMR must fail. Paredes Holding Center, SL (Paredes) filed an EU trade mark (EUTM) application on 26th March 2019 for the mark shown opposite (the Contested Sign), covering “safety and protective footwear for work” in class 9 and “footwear including boots, shoes and slippers” in class 25. The application was opposed by Vans, Inc. (Vans) on the basis of Article 8(1)(b), a likelihood of confusion with its two earlier EUTM registrations for the marks shown opposite. Both Earlier Marks cover inter alia “clothing, footwear, headgear; belts; gloves” in class 25.
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The opposition was rejected in its entirety on 20th November 2020. A summary of the key grounds for that decision is as follows: • The overlapping goods are directed at the public at large (class 25) and at business customers (class 9). Their degree of attention may vary from average to high depending on the specialised nature of the goods, the frequency of purchase and their price. • Visually, Earlier Marks 1 and 2 are not similar to the Contested Sign. • Aurally, Earlier Marks 1 and 2 cannot be pronounced and so cannot be compared to the Contested Sign. • Conceptually, the signs are not similar. • The representation of a shoe in Earlier Mark 1 has weak distinctive character, but the remaining graphical appearance has a normal degree of distinctiveness. Earlier Mark 2 has a normal degree of distinctiveness.
January/February 2022 citma.org.uk
Vans, 1
When proof of use is not involved, the analysis is of the marks as they are filed, not on the basis of their potential use • Since the marks are dissimilar, one of the necessary conditions of Article 8(1)(b) is not fulfilled and so there can be no likelihood of confusion.
two Earlier Marks should be considered as normal. • Earlier Marks 1 and 2 are depictions of the letter “V”, whereas the Contested Sign is a representation of the letter “S”. • The average consumer is aware that a wide range of designs are used as decoration or reinforcements of footwear. • There is no likelihood of confusion between the marks at issue when depicted in different orientations, even for identical goods. • The contested goods in class 9 should be considered different to “footwear” in class 25. APPEAL DISMISSED
Vans appealed the decision on 20th January 2021. A summary of the key grounds of appeal is as follows: • Earlier Marks 1 and 2 enjoy a high degree of distinctiveness. • The Contested Sign is visually similar to Earlier Marks 1 and 2, with only minor differences that are not sufficient to alter the overall impression, namely the angle of representation of the graphical elements and the round edge at the bottom of the Contested Sign. • The contested goods are identical to the goods covered by the two earlier EUTM registrations. • Given the above, there is a likelihood of confusion. Paredes filed observations in reply that can be summarised as follows: • Vans did not submit evidence to demonstrate that Earlier Marks 1 and 2 have acquired enhanced distinctiveness and therefore the distinctiveness of the
On 16th July 2021, the Board of Appeal (BoA) dismissed the appeal on the basis that the Opposition Division (OD) correctly found the Earlier Marks were dissimilar to the Contested Sign and so no likelihood of confusion exists. The lack of similarity between the marks at issue was fatal to Vans’ case. The BoA agreed with the OD’s findings that the relevant goods targeted the public at large (class 25) and business customers (class 9), and that their respective degrees of attentiveness will vary from average to high. The BoA went on to provide a very detailed and specific breakdown of the marks. While some of these differences might not be noticed by a customer paying an average degree of attention, given that a proportion of the relevant public for each class of goods would pay a high level of attention, a separate assessment from both perspectives would not have made a difference to the outcome of the case. Turning to the comparison of marks, the BoA noted that for Article 8(1)(b), when proof of use is not involved, the analysis is of the marks as they are filed or registered and not on the basis of their potential use or possible different angles. As a result, Vans’ claim for visual similarity when turning Earlier Marks 1 and 2 to a different angle was disregarded. During its visual comparison of the marks, the BoA noted that all three contain
KEY POINTS + Comparison of marks under Article 8(1)(b) means comparison of the marks as filed/registered and not on the basis of potential use (for instance in a different orientation) + Brand owners should consider protecting their position marks in different positions/ orientations to give them the best chance of enforcing their rights
MARKS THE CONTESTED SIGN
THE EARLIER MARK 1 (EUTM No. 10 263 895)
THE EARLIER MARK 2 (EUTM No. 10 345 403)
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Vans, 2 VERSION
CASE
[2021] R 128/2021-4, Vans, Inc. v Paredes Holding Center, S.L., EUIPO, 16th July 2021
REPRO OP
Registering a number of position marks showing a logo in different orientations may enable brand owners to enhance their protection
SUBS ART PRODUCTION CLIENT
or consist of a graphical element comprising three “beams” in changing directions. For Earlier Mark 1, differences include the representation of a shoe, the colour of the graphical element, the different lengths, directions and position of the beams, as well as the use of an edge as opposed to the curve in the Contested Sign. In comparison with Earlier Mark 2, distinctions are drawn on account of the different positions and directions of the beam and the fact Earlier Mark 2 consists of beams that are more or less the same length, whereas the Contested Sign consists of beams of varying lengths. Further, the beams of the Contested Sign are connected at the base with a curve, whereas it is an edge that connects the beams in Earlier Mark 2, making the shape of a letter “V” and ending with a beam on the upper right side. An aural and conceptual comparison was deemed impossible. The BoA disagreed with Vans’ and Paredes’ claims and reinforced the OD’s findings that the relevant public would not view the graphical elements of the Contested Sign as a letter “S” or Earlier Mark 1 as a letter “V”. However, Earlier Mark 2 was considered to depict a letter “V”. It would seem Vans’ logo loses its ability to depict a letter and is, instead, viewed as a decoration once placed on a shoe, probably due to its diagonal direction and the way it is incorporated within the shape of the shoe. The BoA agreed with the OD that there is a normal inherent distinctiveness in Earlier Marks 1 and 2, since they have no meaning in relation to the goods at issue. In relation to Vans’ claim of an increased inherent distinctiveness, it was noted that Vans is one of the best-known providers of sneakers. However, as the marks are considered dissimilar, a full assessment of enhanced distinctiveness is not necessary as it would not alter the outcome to the case (a reminder 40 | CASE COMMENT
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that reputation and distinctive character are only relevant to the assessment of a likelihood of confusion, not the similarity of marks). Following a finding of dissimilarity between the marks, the BoA bypassed an assessment of similarity of the goods and went straight to an assessment of likelihood of confusion, for which it found none. As a result, the opposition failed. This must have been a frustrating decision for Vans, who presumably hoped that the registration of Earlier Mark 2 would protect it against similar shapes in different orientations and positions on competitors’ products. However, it must be remembered that the assessment of similarity between marks for a likelihood of confusion is based on an analysis of the marks as they are filed/registered, not how they might be used, or on the basis of possible different angles. Reinforcing this view is the decision issued on 20th November 2020 by the OD in relation to an opposition to Paredes’ EUTM application for the design on its own (without the representation of the shoe) by Vans on the basis of Earlier Marks 1 and 2 (Opposition No. B 3 093 775). The OD again found there to be no similarity between the marks. That decision has been appealed. Vans’ Earlier Mark 1 was filed in 2011 and was classified as a figurative mark. In 2017, the EUIPO introduced a number of additional categories of mark that could be selected by applicants, including position marks. The theory behind this was to enable more accurate protection for these types of marks, for example by taking into account the way in which an element is placed on or affixed to the goods. Registering a number of position marks showing a logo in different orientations may enable brand owners to enhance their protection and help them succeed in future cases like this.
Lisa Ormrod is a Chartered Trade Mark Attorney and Senior Associate at Boult Wade Tennant LLP lormrod@boult.com January/February 2022 citma.org.uk
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Events, 1 VERSION REPRO OP SUBS We will continue to add learning and networking opportunities throughout the year. Find the latest listings at citma.org.uk/events ART PRODUCTION
Calendar Our upcoming events for members and other IP events of interest
CLIENT
CPD HOURS
DATE
EVENT
LOCATION
1st February
CITMA Webinar Designs – When trade mark law is not enough
Online
1
9th February
CITMA Webinar LGBT History Month
Online
1
8th March
CITMA Webinar International Women’s Day
Online
1
11th March
CITMA Webinar National Careers Week: Becoming a Chartered Trade Mark Attorney
Online
1
21st April
CITMA Webinar Copyright
Online
1
YOUR INPUT IS WELCOME We have an excellent team of volunteers who organise our programme of events. However, we are always eager to hear from people who want to speak at a CITMA event, particularly overseas members, or to host one. We would also like your suggestions for event topics. Please contact us at sarah@citma.org.uk with your ideas.
citma.org.uk January/February 2022
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TM20, 1 VERSION REPRO OP
THE TRADE MARK 20 Q&A
SUBS
Gail Nicol
ART
is enjoying an indulgence
PRODUCTION CLIENT
I work as… a Trainee Trade Mark
The biggest challenge for IP is…
Attorney/Trade Mark Paralegal with Cameron Intellectual Property in Glasgow.
e-commerce IP enforcement, both in terms of difficulty and expense in obtaining effective take-downs.
Before this role… I was Head of Trade
The talent I wish I had is… to be able
Mark Renewals for a global IP annuity firm, overseeing a team that handled hundreds of renewals each month.
to sing. I love to do it but I’m fairly terrible, as anyone who has heard me will testify.
My current state of mind is… rather
I can’t live without… my husband and son. On a bad day, they are always there to pick me up, and when good things happen they are the first people I want to share it with.
blissful as I’m indulging in a delicious cinnamon hot chocolate as I answer these questions. I became interested in IP… in 1997,
when I started work in the renewals department of an independent IP firm and found it fascinating. I am most inspired by… on a
professional level, my boss Meena Murrin. She is a wonderful role model, and I’m so grateful to have the opportunity to learn from her.
I hate when decisions go against a client. I much prefer delivering good news
My ideal day would include… a walk in the Lake District with my husband and son followed by a delicious late lunch. In my pocket is… a tea tree lip balm. The best piece of advice I’ve been given is… always be yourself. Stick to
that and everything else will follow. In my role, I most enjoy… finding
On my desk is… a selection of
creative solutions to help clients get around a particular obstacle.
deliciously scented hand creams and a copy of Bently and Sherman’s Intellectual Property Law.
When I want to relax I… lose myself
My favourite place to visit on business is… Paris. I was fortunate
In the next five years I hope to…
In my role, I most dislike… when decisions go against a client and I have to deliver bad news. I much prefer delivering good news. My favourite mug says… “Gail Nicol, Awesome Paralegal”. It was a gift from my colleagues when I was named Best Trade Mark Paralegal at the National Paralegal Awards 2021. 42 | TM20
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enough to visit with a former colleague who had previously lived there and knew the city. If I were a brand I would be…
Molton Brown. Its fragrance range is fabulous.
in a good book, preferably while in a scented bubble bath.
qualify as a Chartered Trade Mark Attorney and walk the West Highland Way with one of my closest friends before we’re too old to manage it. The best thing about being a CITMA member is… having such a varied
calendar of events to choose from. January/February 2022 citma.org.uk
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