Thomas Pink Ltd v Victoria’s Secret UK Ltd  EWHC 2631 (Ch)
Two particular points for brand owners to take away from the decision:
- If faced with an invalidity challenge on the grounds of s3(1)(b) or (c) of the Trade Marks Act 1994 (“TMA”) i.e. the mark is devoid of distinctive character and/or for example it designates a characteristic of the goods, you can assert acquired distinctiveness even if you are using your mark in a form different to the registered form, so long as the use does not differ in relation to the distinctive elements of the mark. This ruling in effect re-writes the statute, giving brand owners the same get out of jail free card for use of registered marks in an altered form as provided for explicitly in the statute in relation to revocation under s46(2) TMA.
- If you are trying to prove actual confusion in relation to a trade mark infringement action – think about obtaining consumer evidence. While it may not be accepted as positively proving actual confusion it can play an important role in preventing a defendant arguing that there was no evidence of actual confusion. Other issues the case touches on include series marks, trade mark classification and specifications, the “without due cause” element of the 10(3)TMA, slogans and use of part of a mark, the list goes on.
The case is well worth a read.
New IP Crime Report Released by the IP Crime Group
Hot off the press this October is the annual IP Crime Report for 2013/2014, published by the UK Intellectual Property Office on behalf of the UK IP Crime Group.
The report contains some eye watering but unsurprising figures as to the scale of the issue of counterfeit goods, noting that an estimated 10% of global trade relates to counterfeit goods. What is clear from the report is that the joined up approach being adopted by the agencies and organizations working to tackle IP crime is working. In 2013, a reported $174 million of counterfeit items were seized globally, UK Customs officials are reported to have detained more than 21,000 consignments of ‘IP infringing’ goods at UK borders and the Police IP Crime Unit is reported to have investigated more than £29 million worth of IP crime and suspended 2,359 domain names.
Interestingly the report notes a change in the landscape of online IP infringement. It provide statistics to indicate that infringers are moving away from auction sites and websites and increasingly using social media to make sales. So much so in fact that the report asserts: “this is now a lead location for investigating IP crime, particularly for Trading Standards. In 2013/14", reporting that:
- Sale of counterfeit goods via social media rose 15%
- Sale of counterfeit goods via online auction sites rose 2%
- 69% of local authorities investigating IP crime used social media to do so
- 65% of local authorities investigated auction sites and 61% on other websites
The report provides a comprehensive overview of the challenges faced, including details of a survey from Trading Standards giving a flavor of the types of goods investigated; the most commonly investigated items being clothing, closely followed by cigarettes and tobacco.
The report also sets out some of the tactics being adopted, for example in relation to the online sphere:
- Deregistering domain names so that infringers are no longer available to advertise counterfeit goods;
- Removing payment services from a website so that they cannot take payment for such goods;
- Working with advertising agencies to stop adverts appearing on illegal sites thereby removing income streams and the provision of legitimacy that third party advertising can provide;
- Obtaining court blocking orders compelling Internet Service Providers to stop their customers gaining access to illegal websites, and arresting and charging those who are responsible.
- Screening website content with software in order to identify illegal content; and
- Seeking Google’s support in removing URLs from their indexing to clean up search results.
Brand owners that are plagued by online counterfeiters may want to consider whether any of these tactics can be taken up in their own fight against counterfeit goods.