What’s behind the UK trade mark litigation boom?
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

What’s behind the UK trade mark litigation boom?

Almost every week seems to bring a new trade mark decision in the UK. Here are five reasons why litigation over brands may be increasing

Kit-Kat

There were some striking statistics presented at a recent seminar held at King & Wood Mallesons SJ Berwin in London. Partner David Rose, or one of his team, had added up substantive decisions concerning brands in 2013 and concluded that there were five appeals (compared to one in 2012) and 12 substantive trials (up from five in 2012) in the High Court, plus seven trials in the IP Enterprise Court (formerly Patents County Court).

One month in to 2014, the boom seems to be continuing. We have already seen one brand-related decision from the Court of Appeal (the FAGE v Chobani Greek yoghurt case) and another one (Cosmetic Warriors v Amazon) is expected this week. In the meantime, the Court has been hearing an appeal regarding survey evidence in Zee v Zeebox.

FAGE Gerek yoghurt

In the High Court, so far this year there have been decisions in cases involving Nestlé and Cadbury (concerning the shape of the Kit-Kat bar); Jack Wills and House of Fraser (the pheasant mark); and Healey Sports Cars and Jensen (the Jensen mark – discussed on the IPKat blog); as well as the latest instalment of a fight over the Queensbury boxing brand.

The figures support anecdotal evidence from lawyers that life is busy, with lots of cases – many of them big and complex.

What could be causing this rush to court? One preliminary point is that there are more trade marks registered, with the number increasing every year. Some people have even talked of the “cluttering” of trade mark registries, exacerbated by wide specifications and OHIM’s three classes-for-the-price-of-one policy. That may be true but, based on discussions with trade mark practitioners, here are a few other possible explanations:

Scramble

1. The economy. It’s a truism that companies are more likely to fight over disputes when there’s a downturn, and their normal revenues are under pressure. That may explain some of the activity in the confectionery sector, for instance. Companies may also look to resurrect old brands – the Jensen case involved a trade mark bought out of a bankruptcy while the Queensbury and Scrabble brands have both been around for a long time. But such links are difficult to prove. As Chris McLeod of Squire Sanders put it: “A more positive view is that the upturn is beginning and people have got more money to spend.”

2. Cost and speed: London lawyers will tell you that the UK courts have become a cheaper, quicker place to bring disputes over the past few years, and this must be attractive to parties in trade mark cases, especially where product life cycles are short. The IPEC (led by then Judge Birss) has led the way in this, with a strictly enforced costs cap and abbreviated hearings.

Jack Wills

3. Globalisation and the internet: Many recent disputes have arisen from online trading or new technologies. The extensive Interflora litigation concerned Google AdWords; the Scrabble/Scramble case was partly about an app; while Sky has been involved in two cases, one concerning cloud services and one relating to cross-border TV broadcasts. Meanwhile, globalisation means that disputes that were once confined to one jurisdiction may now take place in dozens, with parties playing “tit-for-tat” or, as one lawyer put it: “If you wave your CTM at me, I’ll obliterate your portfolio in South America!”

4. Novel marks: Do many of the disputes arise from attempts to push the boundaries of trade marks, through novel types of marks? You could say that is true of the Nestlé-Cadbury fights over the colour purple and the shape of chocolate bars (the latter has led to questions being referred to the CJEU), while one aspect of the Scrabble battle concerns a mark for the shape of a tile. In Spain, the Supreme Court recently ruled against Orange’s trade mark application for the colour orange (see IPKat report). Overall, though, it remains surprising both how few non-traditional trade marks are applied for and also how rarely they are enforced. As one lawyer told me: “Many clients go to a lot of trouble to get these marks but then never enforce them – probably because they don’t want to get into a battle over validity.”

Jensen

5. Basic marks: However, despite point (4), quite a lot of the recent UK cases involve disputes featuring simple and often commonplace words – such as Now, Sky, History and Fine. How do you explain that? One suggestion, bearing in mind (3) above is that companies are increasingly using short, simple and even descriptive words to attract traffic online and build a memorable global brand that spans cultures and languages. That may work for websites (and there may be more opportunities thanks to the new gTLD programme being rolled out) but it can bring problems for trade marks. If that is a trend, then it suggests litigation over trade marks is going to keep on increasing.


That’s just a few thoughts. I’d love to know what readers think, though, especially in other jurisdictions. Are you seeing more trade mark litigation and if so what do you attribute it to?

more from across site and ros bottom lb

More from across our site

The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Managing IP’s Max Walters appeared on the latest episode of ‘Two IPs in a pod’, a regular podcast hosted by the UK patent attorney body, to discuss AI, awards and more
Sources at law firms say they have spent more than three years waiting for IP regulations and explain how the delay is affecting their business
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Managing IP will host a ceremony in London on April 11 to reveal the winners of the EMEA Awards 2024
Lawyers reveal what trends they have noticed in the Western District of Texas and the advice they have been giving clients as a result
Concerns over the EU’s proposed SEP Regulation are based on little empirical support, say Benno Buehler and Kilian Mueller of Charles River Associates
Gift this article