Category Archives: Intellectual property

Use it or lose it!

The EU General Court has dismissed an appeal against the revocation of a trade mark registered in respect of various building materials, on the ground that the proprietor had not, in the five years since registration, demonstrated genuine use of the trade mark in the EU in relation to the goods for which it had been registered.

The invoices incorporating the trade mark produced as evidence of use were of relatively low value when compared to the proprietor’s overall volume of sales of the goods concerned. It followed from case law that the smaller the commercial volume of the exploitation of a mark, the greater the need for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use.

However, the additional evidence produced by the proprietor in no way adequately compensated for the low sales volume represented by the invoices bearing the mark. In particular, the mark did not appear on the extracts from the proprietor’s website and the catalogues produced did not allow the conclusion to be drawn that the goods appearing in them had been marketed under the contested mark during the relevant period

Amendments to Registered Designs Act 1949

The government intends to amend UK designs legislation to provide registered design owners with the option of giving constructive notice of registered design rights by marking products with a website address at which the details of the registration would be published.

The government confirmed that it had no plans to extend the concept of constructive notice to unregistered design rights.

Increased penalties for online copyright infringement

The government is consulting on increasing the maximum custodial sentence for online  copyright infringement to ten years (in line with physical copyright infringement).

This was first recommended in 2006 and is supported by the current government following recommendations by the Intellectual Property Office in March this year.

The government considers that on-line infringement has become more significant and that there is no good reason for treating online infringement any differently to physical infringement, particularly given that there are links between online infringement and other criminal behaviour.

The consultation closes on 17 August 2015.

Copyright claim less than INNOCENT!

The High Court has granted a declaration that Fresh Trading Ltd, which ran the INNOCENT smoothie business, was the owner of copyright in its main brand logo. The facts of the case are particularly interesting.

The design agency from whom Fresh Trading commissioned the logo under a consultancy agreement had gone into liquidation. Its purported interest in rights in the logo and other works produced under the agreement had been purchased by a third party which had, in turn, assigned that interest to a holding company. The holding company subsequently obtained a declaration of invalidity of Fresh Trading’s Community trade mark registration of the logo, based on its own purported ownership of copyright in it.

As neither party to the proceedings had been able to produce a copy of the signed agreement, and there was no mention of any such copy in contemporaneous emails, the judge decided that there had been no effective legal assignment of the copyright.

However, as the agreement provided that copyright ownership would pass on approval of any designs by Fresh Trading and such approval had undoubtedly occurred, he found that there had been an equitable assignment.

The fact that the design agency had not received the remuneration (in the form of shares) provided for in the agreement did not negate the assignment. The judge added that, even if he had not found an express assignment on the facts, he would have found that there was an implied assignment of the copyright, as this was the only arrangement that made commercial sense. Furthermore, even if Fresh Trading had not owned the copyright, the holding company would have been estopped from enforcing its copyright at such a late stage after Fresh Trading had built up a substantial business based on the logo.

Phrase too banal to register as trade mark

The EU General Court has confirmed a decision that “INVESTING FOR A NEW WORLD” was devoid of distinctive character and could not be registered as a Community Trade Mark (CTM).

The court said that the combination of common words was a banal expression which the relevant public did not need to analyse for it to be understood. The mark did not constitute a play on words or include any imaginative, surprising or unexpected elements capable of conferring distinctive character on it in the mind of the relevant public.

In addition, the applicant had not put forward any evidence demonstrating that the mark had acquired a reputation.