Welcome to the latest edition of Brands Update. This month's feature articles include:
- Russia and Ukraine: important developments for brand owners
- Indirect Confusion: the Liverpool Gin Distillery and GIRL BOSS cases
- WHATSAPP versus Whatsabank: "whatsa" highly attentive consumer to make of this?
- Further changes to German unfair competition law
New UK guidance on rules for HFSS products published
The UK government has issued guidance on new Regulations that will restrict 'promotions and placement' of food high in fat, sugar and salt (HFSS) in retail stores and their online equivalents. The guidance clarifies products in scope, the territorial application of the Regulations, best practice, the volume price promotions that are in scope, how the location restrictions will apply, and the enforcement process. The guidance does not apply to the separate restrictions on HFSS 'advertising' in the Health and Care Bill (which received Royal Assent on 28 April 2022).
Meanwhile, the government has also announced that some of the restrictions around HFSS products in the Regulations and the Bill will not apply for a year – more on that next time.
No second "bite of the cherry" for trade mark invalidity claims
The High Court has ruled that a party bringing an unsuccessful trade mark invalidity action cannot later counter-claim that the same registration is invalid on grounds that could have been raised in the earlier invalidity action. This is so even though the earlier invalidity action was at the Registry and the later action in court (by way of a counterclaim in an infringement action).
In this case, the Defendant to an infringement action counterclaimed that the UK and EUTM registrations asserted against it were invalid based on the Defendant's prior passing off rights and bad faith. The Defendant had previously and unsuccessfully brought actions to invalidate these registrations at the UKIPO and EUIPO based on its prior UK trade mark registrations. These actions had failed as the prior UK registrations were themselves revoked for non-use.
The court held that, after successfully defending an invalidity claim, a party is entitled to rely on the finality of those proceedings and should not have to meet a further challenge on different grounds that could and should have been raised before. This conclusion could not be avoided on the basis that the disputed issue was raised by way of a defence or counterclaim rather than by initiating a claim.
The invalidity counterclaims in relation to the UK registrations were barred under the principle in Henderson v Henderson and abuse of process more generally. The invalidity counterclaims against the EUTM registration were barred on the basis that they constituted an abuse of process under domestic law. Article 60(4) EUTM Regulation (EUTMR) did not purport to set out any general principle of abuse of process and therefore the domestic procedural rules of abuse of process remained applicable under Article 129(3) EUTMR. (Note that the infringement action had been commenced prior to the end of the Brexit transition period, which is why the UK court still had jurisdiction over the EUTM infringement claim.)
Those bringing invalidity actions (including at the UKIPO and EUIPO) will need to bear in mind that they may not get a second chance to argue the case. While the law in this area is not completely clear, it is less likely that an opposition to a trade mark application would preclude a later claim for invalidity of any resulting registration.
CAP and BCAP amend UK rules on gambling adverts that appeal to under-18s
CAP has announced the introduction of new rules for gambling adverts, which clarify that advertising should not include a person or character whose example is likely to be followed or who has a strong appeal to under-18s. The CAP and BCAP codes rules on the content of gambling and lotteries advertising will be amended and guidance issued. There will be no changes to the rules around the targeting of these adverts. The new rules will come into effect on 1 October 2022. This is the outcome of a recent CAP consultation which focused on strengthening the rules to protect under-18s and vulnerable adults from gambling advertising-related harms.
ECJ rules on applicable law in RCD - and EUTM - cases
The ECJ has ruled on the law applicable to supplementary claims in Community Design infringement actions. Supplementary claims are claims for such things as damages, the provision of information and documents, the surrender of accounts, and the delivery up of infringing products. The decision arose in the context of an action for Community Design infringement under Article 82(5) of the Community Design Regulation (CDR). This is the provision which allows Claimants to bring proceedings in the courts of the member state where the act of infringement has been committed or threatened (but the action is limited to infringement in that jurisdiction - no pan-EU relief is available). There is an equivalent provision in the EUTM Regulation. The ECJ held that the court in the member state which has jurisdiction under Article 82(5) could apply its national law both to the question of infringement of the Community Design and to the supplementary claims. This means that there is a difference in approach to the law applicable to supplementary claims in Community Design (and, by analogy, EUTM) cases depending on which Article the infringement action is brought under:
- For actions for pan-EU relief under Articles 82(1), (2), (3) or (4) CDR – the law of the country in which the initial act of infringement is committed ("event giving rise to the damage") applies – see Nintendo (C-24/16).
- For actions under Article 82(5) – the law of the country which has jurisdiction under Article 82(5) applies.
Chile and Cabo Verde join Madrid Protocol
The Republic of Chile and Cabo Verde deposited their instruments of accession to the Madrid System on 4 April 2022 and 6 April 2022, becoming the 111th and 112th countries to join respectively. The Protocol will enter into force on 4 July 2022 for the Republic of Chile and 6 July 2022 for Cabo Verde. Starting from these dates, local brand owners in Chile and Cabo Verde will be able to use the Madrid System to expand their trade mark protection by filing a single international application. Similarly, foreign brand owners will be able to seek protection of their base trade marks in Chile and in Cabo Verde using the Madrid System’s straightforward designation process which now covers 128 countries.
New UK IP Counter-Infringement Strategy published
The government has recently published its IP Counter-Infringement Strategy 2022-2027, as promised in its Response to the Call for Evidence on the IP Enforcement Framework. In it, the government has committed to establishing a national centre of excellence for the development and analysis of intelligence on enforcement of IP rights, building on the role and responsibilities of the UKIPO’s Intelligence Hub and putting it at the core of all IP enforcement activity. This will include taking a central lead and coordination role of intelligence, research, public/private taskforces, training, and any pilots or projects.