In an article soon to be published in the
International Review of Intellectual Property and Competition Law, Julius Stobbs, Geoff Weller and Yana Zhou looked at key UK trade mark and design decisions from the past year that may be of particular interest to comparative lawyers, especially in view of Brexit.
To summarise just some of the key decisions which we saw in 2016: the High Court handed down their decision in the “4 bar KitKat” case, and despite the CJEU’s preliminary ruling, Arnold J supported the original UKIPO Hearing Officer’s decision, which used a slightly different test in relation to acquired distinctive character. In the Glaxo “purple inhaler mark” case, bound by previous UK case law, the UK courts found the mark in question to be invalid, although it is questionable whether the EUIPO would have come to the same conclusion. Following the reasoning in the four bar KitKat decision, the High Court came to a similar conclusion in the Metrocab taxi shape mark case, highlighting the difficulties brand owners face in obtaining and enforcing 3D trade mark registrations in the current UK landscape.
In 2016, Cadbury was dealt a blow when it tried and failed to delete the invalid wording in the description of its purple colour mark at the UKIPO. The interplay between UK and EU law came to light again in the Court of Appeal’s decision in Comic Enterprises Ltd, where it was held that the UK series mark provision is compatible with EU law. Declarations of non-infringement featured in two cases, whilst the jurisdiction of the courts to overturn the decision of a UDRP panelist was a topic of concern in 2015 which recurred in 2016. George East Housewares was an unsuccessful “get up only” passing off claim, despite use since 1934, and on the registered designs front, the Supreme Court handed down its judgement in relation to the dispute between the makers of Trunki and Kiddee suitcases.
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