Shapes, genuine use, trade marks and passing off

The High Court ruled in favour of our client, Frazer-Nash, in respect of a trade mark and passing off case. London Taxi Company, the makers of the TX series of London black cabs, lost their trade mark and passing off action against two Frazer-Nash group companies in respect of the appearance of our client’s new London taxi. The judge rejected all the infringement claims and invalidated LTC’s trade marks for the shape of its taxis in respect of cars. For further details relating to the case, see our blog “BLP successfully defends trade mark and passing off challenge against Frazer-Nash taxis”.

Summary of responses on the changes to penalties for online copyright infringement

98% of respondents to the Government’s consultation rejected a proposal to change the law so that online copyright infringement attracted the same 10 year maximum prison sentence as offline copyright infringement. However, over 90% of those were initiated by a campaign by the Open Rights Group, showing the power of lobbying since over 70% of businesses who responded were in favour.

Unitary Patent and unified patents court

The Government has published the draft Unitary Patent Statutory Instrument which sets out which sections of the Patents Act will apply to the EU-wide Unitary Patent. Once the Unitary Patent Statutory Instrument has been approved the Government will be able to ratify the UPC Agreement, which currently needs four more countries to do so following Finland’s recent ratification.

Sufficiency and patents

The High Court held that the identity of the patentee had no relevance on a question of sufficiency, which depended on an objective view of the technical disclosure alone. The Court was also critical of submissions of obviousness over common general knowledge, saying that if an invention is not obvious over the concrete prior art which is relied on, the court is entitled to be sceptical that an argument that it is nevertheless obvious over common general knowledge alone is correct (the Accord Healthcare v medac case).

Shapes and trade marks

Following the rather cryptic answers from the CJEU to questions referred to it by the High Court in the KitKat shape case (which the judge referred to as “regrettable” and “unclear”), Nestlé were unsuccessful in obtaining their trade mark for the shape of their KitKat bar. A shape mark will have acquired distinctiveness if a significant proportion of the relevant class of persons perceives the goods/services as originating from the proprietor because of the sign in question (as opposed to any other trade mark which may also be present). For the KitKat, on the evidence Nestlé could not demonstrate this, because there had not been sufficient emphasis of promoting the shape of the KitKat as a badge of origin. Brand owners will therefore need to take steps such as featuring just the shape of their products prominently in marketing materials, and ideally to use transparent  packaging so that the shape is visible at point of sale, in order to demonstrate that the shape alone acts as a source indicator to the relevant public.