Overview of 2017 UK Trade Mark and Designs Decisions

Abstract

This report highlights key UK trade mark and design decisions from the past year that may be of particular interest to comparative lawyers. The Court of Appeal upheld the High Court’s decision in the Kit Kat case, thereby confirming the rejection of the registration of the four bar Kit Kat. The decision was based on a very technical point regarding the assessment of acquired distinctiveness, and comparative lawyers will appreciate the divergence between the decisions of the UK and EU courts on this point. We are still awaiting the decision in Sky v. Skykick, where the trial judge rejected the defendant’s application for a pre-trial reference to the CJEU and refused to stay the infringement proceedings. This case concerned the application of the “own name” defence in UK trade mark infringement matters. In BMW v. Technosport, the courts addressed how use of a sign may “affect any of the functions of the trade mark”, and the case of Bhayani v. Taylor Bracewell provides further guidance around the ownership of goodwill as opposed to a mere reputation. The case of Merck v. Merck continued in 2017 and will carry on into 2018, with two pharmaceutical companies fighting over the use of the mark MERCK, particularly in cyberspace. The Court of Appeal remitted the case back to the High Court for consideration on a number of points. Caspian Pizza is a decision that will undoubtedly provide comfort to smaller businesses that have been operating within a particular locality and can establish corresponding localised goodwill. The issue of groundless threats was discussed again in 2017 in the case of Nvidia Corp v. Hardware Labs while the question about whether the sale of “grey goods” can give rise to criminal liability was discussed in R v. M, R v. C, R v. T. Online blocking injunctions were taken one step further in the Football Association Premier League case. The concept of a trade mark trolling was explored in the number of UKIPO Registry decisions involving Michael Gleissner, who sits as a director of companies that own a questionable number of trade marks and domain names. On the designs front, Neptune v. Devol Kitchens considered the scope of a UK design right following the Intellectual Property Act 2014.