Ip 2 minute monthly – february 2016 – lexology

Shapes, inherent and acquired distinctiveness and trade marks Three shape mark cases already this year – first Kit-Kat, then London taxis, and now the Coke bottle. The EU General Court has upheld a refusal to register the shape of the “unfluted” Coca Cola bottle on the grounds that it lacked inherent distinctiveness (because it was merely a variant of the shape and packaging for the goods) and that it had not acquired distinctiveness through use. On the latter ground, surveys undertaken in 10 Member States


were held not to be representative of the entire EU. The Court also said that proof of distinctiveness through use cannot normally be established by sales figures and advertising materials alone. Hacking, security and data The BBC reported that children’s electronic learning company VTech have sought to limit its liability for third party hacks in its terms and conditions following a hack into their systems last year, said to have given access to over 6m children’s accounts. Such a clause, if effective, would not avoid their obligations under the Data Protection Act to keep data secure, which could lead to an investigation and penalties from the Information Commissioner’s Office. Groundless threats and patents A trial concerning groundless threats of infringement of a patent which had not been granted by the trial date was adjourned until after the patent had been granted (the Global Flood Defences case). Licences and trade marks A licensee of an EU trade mark is entitled to bring proceedings for infringement under their licence even though the licence has not been recorded on the EU Trade Mark Register (the Youssef Hassan case).

Confusion, misrepresentation, passing off and trade marks The Court of Appeal has ruled that “wrong way round” confusion (e. g where consumers are first aware of the infringing mark and confuse it with the original, rather than the other way round) is relevant both for trade mark infringement and passing off. However, whilst upholding the finding of trade mark infringement, there was no passing off because whilst there had been confusion between the two marks, there had been no misrepresentation by Fox in producing its Glee TV show that caused any damage to the owners of the Glee comedy clubs. This demonstrates one advantage of relying on trade marks rather than merely passing off. Likelihood of confusion, foreign words and trade marks The EU General Court confirmed there was a likelihood of confusion between two trade marks for sweets which used the words GUMMI and GUMMY respectively, because the relevant market was Spain and the Spanish public’s familiarity of English language was low. Apportionment of profits and damages The Court of Appeal ruled that it may only be possible to recover a percentage of profits made on the sale of an infringing article unless the infringing part “drove” the sale. Furthermore, an infringer could deduct a percentage of their overheads if the sale of infringing products would have been replaced with the sale of non-infringing products (Design & Display Ltd v Ooo Abbott). Non-use and trade marks Ikea have lost their trade mark for IKEA in Indonesia apparently because of non-use of the mark for 3 years. The successful challenge was made by an Indonesian rattan furniture company which had also registered the trade mark IKEA. In Europe, the non-use period before trade marks can become vulnerable is 5 years. Songs and copyright Warner Bros have now agreed to re-pay $14m in royalties it received for commercial use of the song Happy Birthday and to acknowledge that the song is in the public domain.

Names and trade marks Kylie Minogue is opposing applications in the US by Kylie Jenner, who (apparently) featured in the TV show Keeping Up With The Kardashians, to trade mark the name Kylie for beauty and fashion products. Tattoos and copyright A case is being heard in the US where tattoo artists who created tattoos on the bodies of basketball stars are suing the makers of the basketball videogame NBA 2K for reproducing those tattoos on the characters in the game. In the UK copyright can subsist provided that the work has been recorded “in writing or otherwise”. Class headings and trade marks The EUIPO announced a 6 months period in which to amend registrations which used class headings as their specifications, after which the class headings will be given their literal meaning. “Lexology is a quick and useful indicator of developments in the legal sphere. It alerts me to changes taking place in the legal environment in South Africa that I may not otherwise have spotted or had immediate access to as a company lawyer. It definitely serves as a trigger for me to investigate such changes in the legal landscape in South Africa as they may affect my work and that of my employer.

I believe that receiving Lexology provides me with a competitive advantage.” Dr Jürgen Fegbeutel Legal Services Director BMW (South Africa) (Pty) Ltd

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