In an article published in the International Review of Intellectual Property and Competition Law, Julius Stobbs, Yana Zhou and Russ Munro look at key UK trade mark and design decisions from the past year that may be of particular interest to comparative lawyers. These decisions will serve as a useful reminder, especially in light of yesterday’s vote for UK Prime Minister, Boris Johnson.

To summarise just some of the maindecisions featured in 2018:

• Sky v Skykick may fundamentally change the approach to filings and enforcement within the EU system, and is a very interesting case to follow in view of Brexit.
• W3 Limited v easyGroup Limited and another serves as useful guidance in respect of the threats provisions and highlights the difficulty and high bar involved in demonstrating acquired distinctiveness.
• Glaxo v Sandoz reminds us of the need to strike a balance between the substantial costs involved in gathering survey evidence with the benefit it can bring to the Court.  
• In relation to online matters, Argos Ltd v Argos Systems Inc highlights another development in the UK courts’ approach to trade marks online, whilst Student Union Lettings Limited v Essex Student Lets Limited (SULETS) concerned the application of the section 11(3) Trade Marks Act 1994 defence.
• Walton International Limited and Giordano (Hong Kong) UK Limited v Verweij Fashion BV was of note because it showed a level of discretion observed by the English courts with regards to the conduct of legal proceedings.
• Massimo Osti SRL v Global Design and Innovation Ltd raises important questions as to whether claims should be issued at the High Court or at IPEC.
• Henry Martinez t/a Prick & Another v Prick Me Baby One More Time Ltd & Another highlights that, whilst localised goodwill can indeed exist, showing evidence of deception or confusion is crucial to be successful within a passing off case.
• In the designs sphere, L’Oréal Société Anonyme & L’Oréal (UK) Limited v RN Ventures Limited served as a useful reminder of the law on Registered Community Designs and the infringement assessment.

The freshly elected Boris Johnson has out rightly stated that the UK will leave the EU with or without a deal on the current exit deadline of 31 October 2019. Prior to yesterday’s vote, we set out our views in the Kluwer Trademark Blog on what a vote for Boris as PM might mean for IP. Whilst there may be little clarity in this regard, 2018 was an interesting year for brands, especially in view of the continual uncertainty surrounding Brexit. The decisions highlighted above have been useful in allowing us to obtain some clarity on key issues such as trade mark distinctive character, whilst we await CJEU guidance on further issues such as the clarity and precision required for terms in a specification list and whether it is bad faith to file for a trade mark without any intention to use it.

Interestingly, Brexit was always anticipated to be about the UK moving away from the EU, and one of the key principles was about taking back control of our laws. However, the UK implemented the EU Trade Marks Directive on 14 January 2019 which has the aim of further harmonising the national trade mark laws of EU member states. Moreover, if Skykick goes the way the UK Courts would like, then a UK approach to broad specifications and bad faith could make its way into and thereby influence EU case law.