Wragge Lawrence Graham and Co held its annual Brands & Designs Seminar in London on 25 June 2015. As you would expect, the Seminar was extremely informative and interesting, and well attended!

Kate Swaine kicked off proceedings by discussing the rise in passing off cases throughout the last year. Kate posed the question as to whether the recent increase in passing off cases was highlighting a new trend. She asked whether this was due to misrepresentation seemingly being easier to define than likelihood of confusion, the fact that a brand has now expanded considerably further than just a ‘name’ and celebrities are more conscious of their own brand power, as well as the apparent constraints of a trade mark registration, making passing off a more attractive option.

During the talk, it quickly became apparent that the increase in passing off cases is unlikely to be an on-going trend. In this regard, the definition of misrepresentation appears to be similar to the definition of likelihood of confusion. The Moroccanoil case^[1] suggested that goodwill consists in the name only, and not the get up of a product, which is not entirely realistic. Further, whilst Rihanna was successful in her action against Topshop^[2], this was due to the facts of the case and not a change in the recognition of image rights, which are not valid rights in the UK. The NOW case^[3] also highlighted the fact that an international reputation is not sufficient to find goodwill in the UK if the mark is not effectively in use in the UK. The concept of goodwill remains territorial, at least for practical reasons.

The next topic was presented by Dr Alex Bayer and considered the possible legal issues of protecting slogans. The issues of distinctiveness and descriptiveness were discussed, including obtaining protection through acquired distinctiveness. Alex concluded that whilst registering a slogan may be difficult, it is not impossible.

John Coldham reviewed the G-Star v Rhodi design case which concerned twisted jeans. Some of John’s key points were that it is always important to remember that infringement can be found in part of a design – it does not have to be the design as a whole – and to ensure that documents and evidence relating to the design of a product are carefully maintained is vital. Being able to prove the design process is extremely important and it helps to refresh memories in future actions.

George Sevier considered online infringement matters and how to deal with these. In particular, George discussed domain name complaints, take down requests via eBay, Amazon etc, search engine delisting, payment method blocks, Police IP Crime Unit (PIPCU) notifications, website take downs and ISP blocking injunctions.

It was noted that ISP blocking injunctions may no longer be restricted to copyright matters, but also trade mark infringement matters after the Cartier v B Sky B case. Whilst this case is being appealed, it is hoped that this finding will stick as it would be a very useful tool.

A useful tip George provided was that if a client intends to allow a third party to use a domain name containing its trade marks, it is best to have the client register the domain name in their own name and then licence use, rather than to allow the third party to register the domain name. This is because, at least under the Uniform Domain Name Dispute Resolution Policy (UDRP), a domain name can only be retrieved it if was originally filed in bad faith. If a client has allowed a third party to register a domain name with their consent, this cannot constitute bad faith.

Finally, Alex Brodie provided her practical tips for winning cases and looked at general developments over the last year.

The practical tips included considering the legal arguments and evidence carefully, the average consumer and their location (noting that the average consumer is different to the majority consumer) and including all evidence from social media and search engines. Alex also stressed that in some cases only a minimal amount of confusion is required and therefore any evidence of confusion should always be pleaded.

With regard to the general developments, Alex noted that there are some interesting points of law that have not yet been settled, namely initial interest confusion, due cause and own name defence, and the geographical scope of relief. Whether these points of law will be settled by the next talk remains to be seen.

Charlotte Blakey 30 June 2015

[1] Moroccanoil Israel Limited v Aldi Stores Limited

[2] Fenty & Others v Arcadia Group Brands Ltd & Another

[3] Starbucks (HK) Ltd v British Broadcasting Group Plc