14 February 2023: Hermès Handed Victory in Landmark Trademark Suit
Last week a New York jury handed Hermès a victory in a landmark trademark suit against MetaBirkin NFT creator Mason Rothschild.
In a welcome win for brand owners, the jury found that Rothschild had unfairly used the Birkin mark to promote his NFTs – digital artworks that mirrored the design of the famous Hermès Birkin bag bearing the name MetaBirkins.
Dismissing the argument that his work was simply an artistic expression, the decision itself will no doubt have a significant impact on Intellectual Property in the metaverse and across the world of NFTs, with jurors finding that the MetaBirkins did not qualify as protected art and were more akin to regular consumer products that infringed the luxury house’s trademarks.
Learn more about this case in The Business of Fashion’s article.
9 February 2023: WTR 1000 Rankings Released
We are pleased to share that HLK has once again been recognised in WTR 1000. HLK has been recommended in prosecution and strategy as well as enforcement and litigation. This recognition is testament to the hard work of the entire Trade Mark team at HLK, who are one of the most active UK and EU trade mark filers.
Thank you to our clients for such brilliant feedback:
“Chris is an excellent attorney who provides exceptional and timely advice to his clients.”
“Amanda knows her clients’ businesses inside out and acts as an extension of their in-house legal team. She provides business-focused, straightforward advice regarding all aspects of international brand protection.”
“Jason is very responsive and commercially minded. His prices are also reasonable.”
“Richard is exceptional in prosecution and enforcement matters. His advice is always clear, concise and commercial, and he takes the time to fully understand his clients’ businesses. Richard is also great at minimising costs and at coming up with creative solutions.”
“Michael is an excellent attorney and can handle matters in the United Kingdom and European Union. He is very knowledgeable, strategic, clear and well rounded with options, pricing and recommendations.”
“Martin is a very savvy attorney who always thinks a few steps ahead. He has a great understanding of the US market and is able to easily handle complex trademark issues.”
30 January 2023: A Meatless Monopoly
As we near the end of Veganuary it’s clear that demand for plant-based foods is on the rise, with more people and businesses than ever taking part in the campaign. It’s therefore no surprise that disputes over trade marks and branding used on plant-based products are on the rise too.
In a recent opposition decision issued by the United Kingdom Intellectual Property Office (“UK IPO”) involving the marks MEATLESS KITCHEN and MEATLESS FARM, the Hearing Officer decided that consumers would not see MEATLESS as playing an independent and distinctive role within each mark. Instead, it would simply be seen as a common descriptor, being “not so strikingly distinctive (either inherently or through unsubstantiated use) that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark at all”.
As a result, despite the identity of the goods at issue and shared MEATLESS element in the marks, the Hearing Officer found that there was no likelihood of confusion. In particular, they stated “I do not consider it likely that when encountering the mark MEATLESS FARM whilst picking up a packet of frozen prepared entrees consisting primarily of meat substitutes, the average consumer would misremember a previous mark they had seen on identical goods and assume they are provided by the same or economically linked undertaking simply because they both contain the entirely descriptive word MEATLESS. This is especially so for the vegan and vegetarian consumer who displays a heightened degree of attention, as they are more likely to notice the differences between the marks”.
The decision serves as a reminder that descriptive and non-distinctive elements are given less weight when comparing marks. Evidence of enhanced distinctiveness or reputation for an earlier mark (which was not filed in this UK IPO opposition case) may assist in achieving a finding of confusion. However, in the absence of such evidence, where the similarity between marks lies exclusively in a shared descriptive or non-distinctive element, this may go against a finding of likelihood of confusion. Businesses should consider the possible implications and challenges of adopting an arguably generic brand name before commencing use, and plan accordingly with a specialist trade mark lawyer.
The full UK IPO decision can be found at the link here.
26 January 2023: Changes to the Handling of UK Trade Marks and Designs Before the UK IPO Following MARCO POLO
On 25 January 2023, the United Kingdom (UK) Intellectual Property Office (IPO) released its long-awaited Tribunal Practice Notice (TPN) on the effective service of official documents for trade marks and design registrations that do not have a valid UK address for service (AFS).
The guidance follows the Appointed Person’s decision in Tradeix Ltd v New Holland Ventures Pty Ltd (MARCO POLO), whereby it was held that the UK IPO has no automatic power to serve proceedings outside of the UK, and cannot validly effect service without having first obtained a valid UK AFS for a challenged registration.
In MARCO POLO, the UK IPO served an application for invalidity filed against the UK designation of International trade mark registration on the proprietor by registered post at its address in Australia, setting a two-month deadline both for defending the invalidity action and appointing a UK AFS. The Appointed Person ruled that, in doing so, the UK IPO had not followed the correct procedure since it did not first invite the holder to appoint a UK address before attempting service of the documents. The new TPN establishes the procedure the UK IPO will now follow in comparable circumstances, which imposes an even shorter one-month deadline for a proprietor to react following notice of an incoming challenge to its rights.
Read our summary of the key points outlined in the TPN here.
5 January 2023: Webinar on UK & EU trade marks - Essential lessons for 2023
On 8 February 2023, Trade Marks specialists, Michael Conway, Amanda Mallon, Nicole Ockl and Rachel Hearson will be coming together to delve into UK & EU Trade Marks. They will explore some essential lessons for 2023 including bad faith, developments on address for service and the interface between UK and EU proceedings, and 3D trade marks.
28 April 2022 - International Trademark Association 2022 Annual Meeting
From 30 April to 4 May, the International Trademark Association (INTA) are holding their Annual Meeting which, this year, is bridging the physical and digital divide with their event.
HLK Attorneys Jason Dainty, Nicole Ockl, Simon Rees, Amanda Mallon, Chris Morris, Michael Conway, Daniel Chew and Sanjeet Plaha will be travelling to Washington, D.C. to attend the event, and look forward to meeting with new and old contacts face-to-face.
9 November 2021 - Winning the battle for the UK Trade Mark register - essential insights for opposition success
Following Brexit, in view of the fact that UK trade mark applications are up 57% to the end of September 2021 compared to the same period last year, and because the UK IPO leaves it to trade mark owners to object to new conflicting trade mark applications, it is now more important than ever for brand owners to understand the features and quirks of the UK opposition system, and what strategies might be employed for successful and cost-effective results.
HLK co-hosted jointly with WTR a digital event focusing on the UK trade mark oppositions process. HLK Trade Mark Partners Jason Dainty, Michael Conway and Amanda Mallon, together with HLK Litigation partner Dr. Brian Whitehead, (also a Deputy District Judge and Trade Marks Appointed Person (who hears appeals from the UKIPO in relation to trade mark oppositions)), engaged in a lively discussion on opposition strategy and took questions from the audience.
The event, chaired by Jason Dainty, followed a panel discussion format, and attracted an audience of IP professionals from across the Globe, representing both in-house and private practice. The numbers attending and the content of the debate attested to the importance of defending your interests in the UK trade mark register in the post-Brexit era.
We would like to thank everyone who joined the discussions and are pleased to offer the recording of the event for those who could not attend.
24 June 2021 - (More) Opposition Oddities
We have identified a divergence in approach between how the EU IPO and UKIPO deal with earlier rights in trade mark disputes which pre-date the end of the Brexit transition period, i.e. before 31 December 2020.
We have spotted an anomaly relating to UK opposition proceedings filed before 31 December 2020 and pending at the end of the transition period. Those proceedings that are based on earlier EU trade mark rights are unaffected by Brexit. Despite the fact that the earlier EUTM no longer extends to the UK, the UKIPO has determined not to amend the basis of the opposition by replacing it with the cloned UK equivalent right. Whilst this should have little impact on the outcome of most ongoing proceedings, if the applicant has a prior unregistered local right in the UK, which pre-dates the opponent’s EUTM, the applicant can no longer rely on that local right to counter-attack the opponent’s EUTM and defeat the UK opposition – that earlier local UK right is no longer a valid earlier right in the EU and cannot form the basis of a cancellation action.
What do you need to do?
We have brought this divergence in approach to the attention of the UKIPO. We have been informed that the UKIPO are in the process of drafting guidance setting out how the relevant UK Tribunal proceedings should be managed. Until this guidance is published, the impacted party may request a stay of any relevant UK proceedings. Watch this space for future updates!
27 May 2021 - UK IPO Transformation Plan
We are excited by the UKIPO’s recent announcement of plans to entirely transform their processes and services, creating a single integrated online system for patents, trade marks and designs. UKIPO’s aim is that in 5 years’ time they will have designed and introduced a fully digital service through which all IP rights can be protected, managed and researched in one place. As the demand for UK trade marks and designs continues to increase following Brexit, we are pleased to know that steps are in place to develop a leading digital IPO system in the UK which will (hopefully) surpass even the EUIPO system to allow easier management of trade mark and design matters in the future. We will be keeping a close eye on developments so look out for future reports…
12 April 2021 – UKIPO confirms expected rise in demand for UK trade marks post-Brexit
Speaking at the recent Chartered Institute of Trade Mark Attorneys Spring Conference, the UKIPO confirmed that the predicted surge in UK trade mark applications post-Brexit has, indeed, happened.
The Office compared stats from January 2020 and 2021, which showed a near-50% increase in UK trade mark applications, and a 150% increase in design applications. This certainly reflects what we at HLK have seen in terms of UK filing instructions since the new year.
Another trend spotted by the UKIPO (and HLK) is that the number of opt-in refilings is not as high as expected. These are cloned rights filed, based on EU marks which were pending on 31 December (“Brexit day”). Because there is an extended window in which to file these marks and still benefit from the EU filing date- the deadline is 30 September 2021– then, anecdotally, they are not being prioritised by applicants. The UKIPO is actively encouraging applicants not to wait and we at HLK echo that recommendation.
While the UKIPO has recruited and upskilled in anticipation of increased workloads, delays in examination are occurring; examination reports are taking up to 40 working days, rather than the usual 10. Undoubtedly, business as usual will return in due course but, in order to obtain registered and enforceable trade mark and design protection at the earliest opportunity, we encourage applicants to instruct their opt-in filings as soon as possible.
24 March 2021 – Customs notices post-Brexit for owners of EU registered trade marks and designs
Since the start of January, with the end of the Brexit transition period, we have become used to UK cloned trade mark and design registrations of equivalent EU registrations and having to file separate UK applications for new trade marks and designs. But what of customs notices?
The good news is that this important tool in the battle against infringers, and counterfeiters in particular, is still available in the UK. While there are many similarities with the EU system, it is important to be aware of the important differences, principal of which is that all new applications must be based on UK rights.
For EU customs notices that were in place at the start of the year, if the application was filed in the UK prior to the end of the transition period, it will continue to have effect in the UK but only until the notice’s renewal date. At this point, it will be necessary to file a new UK application. For notices filed elsewhere in the EU before the end of the transition period, these have ceased to have effect in the UK and need to be re-filed.
The filing requirements are somewhat different to those of EU customs notices but we can guide you on the procedures that apply in the UK and the associated costs of filing an application in this country. It is also worth noting that, according to UK Customs guidelines, the monitoring period will start about 30 days after an application has been filed, so we recommend that applications are filed promptly.
17 March 2021 – Beware the Phantom Clones
We are seeing cases where the UK IPO is creating Phantom Clones. No, this is not a collaboration with George Lucas, but rather it seems that the UK IPO were creating registered UK cloned trade marks from EUTMs that were merely pending as at 31 December 2020.
We’ve been liaising closely with the UK IPO, which has confirmed that there have been a number phantom clones created in error which will be removed from the system by the IPO’s IT Department. We have indicated to them that there are multiple cases with this issue, and their IT Department is currently working on identifying the root cause, so that any erroneously created clones can be removed and do not give rise to further issues in the future.
Our advice in all cases, is not to rely on the Phantom Clones as they are invalid, but to instead refile in the UK if protection is needed for any rights that were pending at the EUIPO as at 1 January 2021.
11 March 2021 – Confusion as to Registration Date of cloned EU designations of IRs
In an update to our earlier blog on 4 February 2021, we’ve had some good news today from the IPO.
We’ve been corresponding with the UK IPO at a senior level in order to deal with the issue we discussed below, which was that there appeared to be an error in the registration date published by the UK IPO for clones derived from EU designations of International Registrations.
Following our enquiry, the IPO investigated the matter from an IT perspective, and is rolling out its first batch of corrections tomorrow. They tell us that the whole job (affecting all of the cases), will be finalised within a couple of weeks.
28 February 2021 – Designs with deferred publication
Many owners of EU designs have used deferred publication to keep their designs confidential, and EU law allows for deferment of publication of up to 30 months.
A less well-known consequence of Brexit is that EU designs with deferred publication as at 31st December 2020 were treated as pending, rather than registered, by the UKIPO and not automatically cloned onto the UK register.
Re-filings are therefore needed to extend these designs the UK.
If such designs should remain secret, it is important to be aware that the UK allows for a shorter period of deferment of 12 months. Under the transitional provisions following the UK’s Exit Date, any UK re-filings can be deferred for a maximum of either 12 months from the date of re-filing or to the end of the EU deferment period, whichever is sooner.
So, if there is plenty of time left to run on the 30-month period of deferment in the EU, it could be worth delaying re-filing in the UK until closer to the deadline of 30 September 2021, to maximise the use of the 12-month deferment period in the UK.
Finally, the UK design registration system allows applicants to combine up to 50 re-filed designs in a single multiple design application, resulting in substantial savings on the filing fees. As long as the included designs belong to the same applicant, they can be combined in a multiple application in the UK, regardless of how they were combined or when they were originally filed in the EU.
10 February 2021 – UK Re-filings of Pending EUTMs – what goods/services to file?
The deadline for refiling in the UK pending EUTM and EU Design applications as at 1 January 2020, is 30 September 2021, and we’re advising clients that in most cases, its better to refile sooner rather than later. But, what goods and services should you file? It sounds like a simple question, but its not at all clear cut. Do you file the goods as they were in existence at 31 December 2021, or as they were originally filed, or as they are subsequently narrowed?
As you may know, Article 59 of the Withdrawal Agreement states that:
After some debate (and previously conflicting advice), the UK IPO have now confirmed to us that this will be interpreted as meaning that it is possible to use the same specification as was originally filed in the EUTM, even if it has been subsequently narrowed by the time the UK refiling is made.
However, we are also aware that if a specification is narrowed, it is usually done for good reasons (perhaps because of an agreement with a third party). Therefore, you have a choice. You can file for the goods/services as originally filed, or for any narrower specification.
Out of an abundance of caution, we’re also of the view that it is best practice to file a separate application for any additional goods/services.
Please also bear in mind that when we are re-filing EUTMs in the UK, Applicants are still required to state specifically if we are carrying over any claims to Convention Priority from the EUTM, or if we wish to continue to take advantage of any seniority claims deriving from the UK.
4 February 2021 – Incorrect Registration Dates showing at UK IPO for clones from EU Designations of IRs
One of our trusted European partner firms spotted that the cloning process at the UK IPO may have introduced an error for certain types of trade mark cases. It seems that the registration date for UK clones derived from EU designations of IRs had incorrectly been taken from the “EU Designation Date”, i.e. the date on which protection of the mark was applied for, and not the date protection was granted.
As trade mark professionals will know, this has implications for calculating the five year use period, as it seemed to us that any interested parties may look at the UK register and incorrectly believe that the relevant “five year use period” for a mark expires sooner than it actually does, and in particular for UK clones derived from EU designations of International Registrations.
When protection of a mark is applied for via an EU designation of an international registration, the effective registration date in the EU is the date on which the second republication takes place in Part M.3.1 of the EUTM Bulletin. (More information can be found regarding this date on page 31 of the EUIPO guidelines for international marks HERE)
The “second republication” date is the starting point for the five year use period, after which third parties can apply to revoke a mark on grounds of non-use.
One of our Partners, Simon Rees, current Chair of FICPI UK has raised this with the UK IPO and we hope to hear of a possible solution soon.
01 February 2021 – Opposition Oddities
It’s important to be aware that when opposing a UK trade mark application, the filing date of the application may dictate which rights the Opponent should rely on. If the application was filed before 01 January 2021, a cloned UK right cannot be relied on as a basis for the opposition. Instead, the Opponent will need to rely on their earlier EU trade mark right.
There are different UKIPO opposition forms to use depending on whether the application was filed before or after the end of the transition period.
15 January 2021 – UKIPO Address for Service
The UKIPO brought in a temporary service to process any high-volume requests to appoint a UK address for service for cloned UK trade mark and design rights.
This “Bulk Representative Update” service was due to finish at the end of this month, but has now been extended until 30 September 2021. We think this is great news for owners of UK cloned rights who now have more time to use this efficient means of appointing a UK representative for their rights, ensuring any official UKIPO correspondence is actioned efficiently and in accordance with correct UK practices.