Online Signature Lawfulness for Trademark Assignment Agreement in United Kingdom

How to eSign a document: online signature lawfulness for Trademark Assignment Agreement in United Kingdom

so this is me and you can also see me on the camera so I'm Charlotte wding and I'm a partner and charta trade-up Market Atty at Kelty and today I want to go through some of the interesting um UK and EU cases from last year specifically looking at um distinctiveness genuine use uh agreement and the like and then finally reviewing the marks and Spencer gin bottle design case um what I plan on doing is discussing each case in the topic and then looking at the key takeaways for the topic at the end um please feel free to put any questions in the chat as we go um and then I'll review these at the end of each topic um and also we can we can chat at the end as well so let's get started so the first case I'm looking at is um the EU Board of appeal case for the mark Acapulco here the eutm proprietor successfully registered the mark Acapulco for health and wellness type services in classes 41 and 44 in May 2019 however a declaration from invalidity was filed in October 2020 on the basis that amongst other grounds um The Mark was a resort in Mexico and therefore descriptive of a geographical origin and unable to be registered as part of its evidence the cancellation applicant filed a judgment from the higher region Court of ham in Germany um in which this was agreed however the eutm proprietor argued that aapco was no longer a popular tourist destination du due to the high levels of criminal activities and therefore relevant consumers would not consider this Mark to be descriptive and in its support it filed a judgment from the dorf Regional Court which confirmed this point of view so it's the opinion that even if uh relevant consumers recognize the Mark's Rel relating to um the Mexican resort there would be no positive connection and therefore it would not be descriptive so unfortunately for the eutm proprietor the cancellation um division did not agree and the invalid inval invalidation action was successful um so the eutm proprietor appealed however the board of appeal confirmed the cancellation division's decision and this was on the basis that Acapulco is still perceived as a known vacation resort on the Mexican Coast it is common knowledge that hotels and resorts also have Wellness services including those in aapco and therefore when the relevant public in the EU encounters the term aalco it will immediately assume um without further reflection that the contested Services all related to Wellness Health and Beauty care are provided in the well-known holiday location location of aapco and in particular in the hotels and resorts so the really interesting point that I picked up here is that the board of appeal stated that it is irrelevant whether or not um this perception is in ance with the reality um a trademark is descriptive and non-distinctive not only when it contains a factual statement but also if relevant um consumers perceive the sign as a factual statement in the context of the relevant goods or services so it doesn't have to be reality um which is very very interesting then I'm going to move on to a uh UK descriptiveness case um and I'm going to discuss the outcome of Stitch versus Tik Tok so Stitch applied to register the mark stitch in class 41 um Tik Tok opposed on the basis of sections 31b which is a lack of distinctiveness 31c um descriptiveness and 31 uh D customer in trade Stitch contested and argued that the Mark had acquired distinctive character through use the hearing officer found against Stitch and Stitch appealed to the high court this appeal was upheld by Sir Anthony man and the matter has been remitted for consideration by a new hearing officer on my last review um the matter is still outstanding so we don't have the result of that um however looking at the section 31c descriptiveness um ground the judge found that the hearing officer's application of the relevant principles was flawed in this regard while the hearing officer provided content for the refusal in respect of some of the services provided they did not explain how it applied specific to all of the services and said it was a blanket refusal so the judge found that in this case that was not appropriate um and that a separate uh explanation of refusal for all services individually may be required um now it is important to note that this isn't always going to be the case and sometimes a blanket refusal is acceptable um but in this case it wasn't and given that the section 31b distinctiveness ground was based on this um descriptiveness ground um um I.E the Mark was non-distinctive because it was descriptive that was not considered separately due to the overturning of this section 31c looking at section 31 uh D which is customary language um the appeal was allowed here also so whilst the hearing officer found that um Tik tok's evidence which consisted of language in patent applications for Photograph audio and video editing Technologies proved that the mark Stitch had become customary language in the editing and production environment the judge held that this decision presented the same flaws as section 31c I.E it was not clear how the finding related to each service individually so there again was a blanket refusal and it needed to be explained finally the hearing officer's decision uh not to find acquir distinctiveness in the mark Stitch was also criticized the judge found that the hearing officer did not consider the evidence provided correctly so Stitch had provided evidence in the form of a witness statement um that included online and social media information um stationary garments creative Awards press articles um which were not considered properly instead the hearing officer had focused on the lack of turnover figures um lack of Advent advertising expenditure and lack of uh website analytics the judge found that this was an incorrect assessment is the hearing officer had not considered the relevance or significance of the actual evidence provided but merely criticized what wasn't there so what are our takeaways here so um to me the EU case highlights that whilst perception may not be reality this may be considered um Irrelevant for trademark purposes so you know what a really key point to be aware of is what is the perception of your Mark um or your client's Mark that you're looking to protect or maintain um if there is one and and what is that perception in the particular territory that you're looking at as well um and then the Stitch case is a reminder that whilst it may be appropriate to lump terms in a specification together in some cases this is not always going to be the case um so you must ensure that each and every individual item is considered even if that consideration is that items are all highly similar um and that a BL blanket refusal would be suitable for example um but I think this is particularly helpful when assessing a response to an examination report um so that you can see whether um you should argue whether that blanket refusal is acceptable or not and whether that may help you get some goods and services through um rather than others and evidence of acquired distinctiveness must also be considered carefully and in relation to each piece of um evidence provided taking consideration of the facts this is also helpful not only when filing your own evidence um but when assessing third party evidence as well as examiner or hearing officer decisions in their examinations um however Sir Anthony man stated uh a judgment is not impeachable just because it does not expressly articulate each and every little step towards a conclusion so it's not expected that hearing officers um are going to um tell you every single little piece that's going on their mind um and if a blanket refusal is given that's not automatic that it will be uh overturned so it is always um as you expect um dependent on the facts moving on to genuine use so the cases I'm going to look at here are um EU Board of appeal cases but I do think that the takeaways also apply equally to UK situations so the first case I'm looking at here is uh Havana Social versus Havana um the applicant sought to register the Havana Social device on the slide um on the the top in class 43 uh this was opposed by Havana essay on the basis of its earlier H Havana device um on the the bottom of the slide um this covered class 42 which at the time of filing in 2000 incl included the provision of food and drink which is now found in in class 43 so the division um the opposition division initially rejected the opposition on the basis of a lack of use um and this was due to evidence um showing use in a single member State and more specifically in a small part of that member State um and in this case the use related to two cafeterias in Barcelona the um opposition division also argued that the turnover and sales figures provided were low including the selection of invoices provided however um this decision was dismissed by the board of appeal on the basis that the evidence of use provided was sufficient although the evidence may have been minimal to require any more evidence in this particular instance would mean that only restaurant chains for example would be able to succeed in demonstrating use throughout the EU so the nature of services must be taken into account when reviewing evidence of use um the board of appeal also also found that the sample of invoices and receipts provided were merely um meant to be taken as an example and they showed continuous use throughout the relevant period importantly the case held um that limited geographical use of a sign and the lack of objective evidence on a relevant commercial scale is counterbalanced by the fact that use of a Mark um was regular throughout the relevant period so this case was readmitted to the opposition division who found that there was a likelihood of confus Fusion and the opposition was ultimately successful the next um few slides and cases I want to look at are the tester Rosa revocation cases filed against classes 12 and 28 so um Class 12 covers um vehicles and the like and class 28 covering toys and games and um model cars so in the class 12 revocation actions whilst Ferrari excuse me whilst Ferrari did admit that it had not sold a new car in the last uh 20 plus years it provided evidence of use dating between 1985 and 2015 consisting of um internet articles magazine articles press releases news articles um some invoices images of the cars the cars technical sheet and then sales of pre-owned cars as well um and it argued that those um demonstrated sufficient use the the invalidation uh uh applicant argued that the restoration and maintenance services and the issuance of authenticity Serv certificates in relation to the historic cars provided by Ferrari was not sufficient use um as Ferrari did not offer these Services directly Ferrari had no control over the resales and in fact could not even prohibit them due to the principle of exhaustion so that is that third party selling your product can sell your products once you've put them onto the marketplace the cancellation division partially agreed and revoked all Goods in class 12 um bar automobiles however this decision was amended by the board of appeal who um also revoked automobiles that all all of Class 12 was revoked they held that whilst secondhand sales and spare parts may be considered genuine use for the Complete product the evidence submitted in this case did not sufficiently demonstrate genuine use and there's no evidence to suggest that Ferrari had been directly involved in the sales of the cars or replacement parts so there was no evidence of consent being provided um and in particular they stated that simply being aware of use is not sufficient and um finally uh reference to test Rossa on secondhand cars by Third parties is not genuine use but rather a descriptive use in the context of um exhaustion or fair use moving on to the class 28 revocation action here Ferrari provided evidence of use on model cars via um a Wikipedia page there was various catalogues from 2011 2015 invoices license agreements for the model cars pictures of the model cars and posters um and I've included some examples of those on the on the slide again um the the cancellation applicant argued that the evidence provided was not sufficient the mark test Soso wouldn't be seen as the brand of the class 28 Goods but just a reference to the car it was modeled on um and here they relied on the opal case which held that the um relevant consumer would merely regard the opal Blitz device fixed to the defendant's model car as an exact copy of the mark that the original car had a fixed on exactly the same space and not as reference to origin of the toy car however again um the cancellation division did not entirely agree with the cancellation applicant and partially revoked the mark for all Goods bar scale toy land Motor Vehicles it will come as no surprise um that this also ended up with a board of appeal who disagreed and they roked to the mark for all class 28 Goods in this case it held that the relevant consumer does not expect car producers to manufacture their own car uh their own toy cars um Ferrari had not demonstrated sufficient consent for others to do so as the contractual relationships evidenced and referred to were unclear um which will tie nicely into the uh takeaways from the agreement section shortly um interestingly the board of appeal also stated that given the number of Manufacturers use of the same trademark for the same product I.E the model cars of widely differing quality and produced by different companies would actually undermine the function of the trademark so letting third parties um use your mark may not be enough to maintain use particularly if you can't um cannot demonstrate sufficient consent to do so or even if a number of third parties are able to use the mark and therefore effectively dilute it moving on to our last genuine use case um which is a very very quick overview but I found it um particularly um interesting as it concerns falsified evidence um so in this regard the the board of appeal held that key documents submitted by the eutm proprietor were inaccurate and unreliable so this then meant that none of the evidence could be considered accurate even if it were the case that they were indeed correct so here there are a number of inconsistencies um but the key one was an invoice and catalog which referred to a product that had not been launched um and was not on sale at that that time of the um invoicing catalog therefore it just could not have been correct um and so the board of appeal considered it to be um bad faith and no evidence of use regardless of whether any of the other evidence was sufficient so what are our takeaways here um so firstly limited use geographically or in turnover may be sufficient to demonstrate use throughout the EU um the key consideration is the relevant sector and I would expect this apply to apply to the UK also so limited use in in one county or city May well be sufficient depending on the the goods or services applied for or covered it is up to the trademark proprietor to organize and present evidence as to its case um this appears to be obvious um but previous cases have had to highlight this also um so for example in um a relatively recent case um with McDonald's the last few years they were effectively told off for not providing sufficient evidence to demonstrate reputation so even if you are a well-known brand and it is assumed that everyone you know must know who you are you do actually have to provide that evidence um seems Seems obvious but but may not always be to to well-known Brands but you do need to to provide that use of a mark with a proprietor's consent must be clearly documented and evidenced um but then that said in some cases if you're allowing a number of manufacturers of varying different qu quality um to use your your mark that may appear to be detrimental Al um also use of a mark by a third party does not automatically mean genuine use by the proprietor so that use must be with consent of the proprietor and that must be evidenced then finally pretty obvious one um but from the the recent case it seems like some may need uh reminding but do not alter or um amend evidence you have it's clearly bad faith and it will jeopardize any valid evidence you may have that may have been sufficient to prove your case right moving on to our review of cases concerning agreements uh licenses and the like so our first case um is a UK case which concerns an appeal by marott against the decision of the hearing officer dated 31st January 2022 in which marot's Mark Delta was invalidated for selected services in class 35 and 43 um specifically relating to Retail Services Customer Loyalty services Hotel services and restaurant Services as you can see on the slide whilst a large proportion of the services were maintained and award of cost was given to marott uh they were not happy with the ultimate result so they appealed so in the initial action Delta Airlines sought to revoke marot's registration for Delta on the basis of um section 52a which is a likelihood of confusion section 53 reputation and section 54a which is passing off um so essentially unregistered rights the um unregistered rights ground was not actually considered in the end um because it was held that it did not add to the argument under um section 52a a likelihood of confusion um which is which is not uncommon Marriott relied upon section 55 which states that nothing prevents the registration of a trademark where the proprietor of the earlier trademark or other right consents to registration so in this action Delta Airlines relied on its earlier Delta trademarks um these covered air transportation services and the like in class 39 um these were put to proof of use and the hearing officer found use in relation to air transportation services so that's the specification of the EU registration and part of the specification of the UK um registration the remainder of the services um were not found to be in use so that's the remainder of the UK specification if we look at the likelihood of confusion ground um given the identity of the marks the key Focus was on the similarity of the services so it was found that there was no similarity between the class 35 services and only some similarity to Hotel services and the like in class 43 to a fairly low degree that was on the basis of complimentary Services um and it was noticed that noted that Delta Airlines that acquired distinctiveness for Delta in relation to air transportation services and then some enhanced distinctiveness for passenger airline services if we move on to the reputation ground the hearing officer found that there was a potential link for hotel Services uh Resort lodgings and reservations for hotel accommodations and this was because the average consumer encountering services at an airport which offered retail restaurant bar and lounge Services um may think that these were offered by Delta Airlines or a connection to Delta Airlines so this could also include Customer Loyalty services so therefore this was a uh there was a link for these Services however there was not a link for the remaining services so the the ground failed for those remaining services in terms of due cause maret argued that Delta Airline had provided consent due to a Hong Kong agreement between Marriott's predecessor and Delta Airlines so that's why they were relying on Section 5 there um the consent to registration um so marott didn't expressly say there was consent but they did rely on its agreement in its submissions um the hearing officer rejected this uh as the agreement did not refer to the UK and therefore found that the um agreement did not amount to consent in the UK so in terms of the appeals um the first ground of appeal concerned section 52a the likelihood of confusion ground um Marriott submitted that the likelihood of confusion test was misapplied and the hearing officer was wrong to find that the services Hotel Services Resort lodgings reservation for hotel accommodations in class 43 had a fairly low degree of similarity marott did not consider there to be any similarity indeed it argued that if you could not find um a likelihood of confusion with that it argued that you couldn't find the likelihood of confusion with solely complimentary Services um as the finding that such services are common sold through the same tra trade channels did not mean that any of the services are indispensable or important um for the use of air transportation services as the test requires marott admitted that the complimentary test requires more than consumers to think that their um goods or services could be used together items could be compliment in the ordinary meaning of the word but not in a trademark sense further the hearing officer's finding on similarity led to a tension that Delta would remain registered in class certifi for franchise Services namely offering business management assistance in the establishment and operation of hotels but invalidated for hotel services in class 43 um they argued then that a hotel could display that it was franchised under Delta but not call itself Delta um Delta airlin submitted that complimentarity may be the sole basis of uh finding of similarity and that the finding of similarity was due to several matters not just having complimentary services in any case they also argued that the um result did not lead to any tensions or inconsistent findings in particular because there was no overlap between franchise and hotel services so the appeal against uh section 52a decision was dismissed essentially there was no error in principle in the hearing officer's decision they applied the correct test and came to a reasonable conclusion on the basis of that test um and a finding of complimentarity is sufficient when considering all aspects of likelihood of confusion test also the hearing officer is able to make its own conclusion on experience if evidence from parties as to how the services are sold is not provided um and finally there was no tension with the remaining services with the section 53 ground um Maria argued that the hearing officer analysis ER in finding a link between some of the services in class 43 and Delta Airlines earlier marks and that marott would likely be obtaining an unfair Advantage as a result marott used much of the same arguments um as before to suggest that the services were distinguishable and so no link should be found um they also argued that had the hearing officer correctly assessed the likelihood of confusion there would be no link and there would be no unfair Advantage um further a finding of unfair Advantage um requires real not theoretical evidence of which there was none um indeed the long-standing use by both parties suggested that there was a conf there was no confusion or link unsurprisingly Delta l lines agreed with the hearing officer's findings and also pointed out that unfair Advantage can apply whether goods or services in issue are similar or dissimilar so the appeal under section 53 was also dismissed again the hearing officer applied the correct tests um in terms of the unfair Advantage this was unfairness resulting from a customer's belief that the purchased services are those of another or that economic Advantage gained by using a mark familiar to customers the third ground of appeal concerned the consent due cause and then the Hong Kong agreement so marot claimed that the agreement was worldwide and provided consent to registration so that registration was made with due cause um and whilst some Clauses were limited to Hong Kong and China the rest were worldwide um they also said there were various letters of consent between the parties concerning use in other jurisdictions Delta Airlines claimed that the arguments on the agreement were provided um claimed that the um the reliance in the agreement were provided late in the proceedings and not properly argued um however marot counted that by submitting that the agreement was referred to in the tm8 which is the counter statement now this third ground was also dismissed and that was on the basis that the agreement referred to did not suggest it was worldwide but in fact that it related to Hong Kong and China only um and with regard to uh Delta Airlines argument that the agreement shouldn't have even been considered um this was dismissed as it was correct directly included right moving on to um virgin Aviation versus Alaska Airlines here the claimants are virgin Aviation TM limited and virgin Enterprises limited which will be collectively known as virgin um the defendant is Alaska Airlines who was the legal successor to um Virgin America um Incorporated so just to be nice and confusing lots of um virgin names in there uh the proceedings concerned a trademark license agreement which granted Virgin America the um right to use certain virgin marks this license set out that Virgin America would use the Virgin brand in connection with its Airline and associated in activities in the US Canada Mexico and the Caribbean the license stated that Virgin America would pay virgin either an annual royalty based on gross sales or a minimum royalty depending on which was the greater um so in the final version of the agreement the minimum royalty was defined as um 0.7% of 80% of Virgin America 2013 revenues for 25 years long period of time um and that that amount was payable by virgin um America and it would be adjusted for inflation so there were several versions of um the license and it took many years of redlining to get to that point but that was the final final version in December 2016 Virgin America was acquired by Alaska Air Group Incorporated which is Alaska Airlines parent company and in March 2017 um Alaska group announced that it would be winding down its use of the Virgin brand flights continued to operate under the Virgin brand until April 2018 when Alaska group merged Virgin America and Alaska Airlines and it was at that point that Alaska Airlines assumed virgin America's rights and obligations under the contract by May 2009 19 Alaska Airlines had phased out use of the Virgin brand and moved to its own branding um and it was at that point uh that it stopped paying royalties to Virgin so the last payment to Virgin was made in July 2019 um virgin claimed that the express wording of the license agreement stated that Alaska Airlines would have to pay at least the minimum royalty rate to Virgin regardless of whether it was using the Virgin brand Alaska Airlines argued that it was only required to pay royalties if it had used the Virgin brand on its aircraft and since it had stopped using it entirely it argued that it was not required to pay any royalties to Virgin um so what did the judge say so Christopher hanock casc concluded that on proper construction of the agreement it was clear that the minimum royalty term had uh the minimum royalty had a set term so the payment was a set sum which was payable for the duration of that set term so that's that 25 years so as a result even if no royalties were being earned the minimum royalty was a flat fee payable for Alaska Airlines right to use the Virgin brand whether or not they exercised that right the judge held that this decision was supported by a change of ownership within Virgin America that occurred before the company was acquired by Alaska group and changes to the contract um under which virgin lost a subst substantial number of Rights um of control of the brand so as a result there was an enhanced risk of debrand of Virgin um and the judge held that it was a reasonable commercial conclusion clusion that virgin meant the minimum royalty term to act as a guaranteed source of income for the future so this is a reminder to ensure that Agreements are carefully and clearly worded um there were years of back and forth as mentioned which led to a lot of analysis um of the varying versions um during the um the case it's makes for a a long readed of the decision but very interesting this case is in the process of being appealed um so we'll see whether the decision is overturned in the near future um and then finally on this topic I want to look at the uh the recent EU invalidation action between uh Union cyclist International um the world governing body for sports cycling and uh Richie Design Incorporated uh by schore manufacturer so the action was filed on the basis of bad faith but I think it has relevance with this topic as it does concern a coexistence agreement um which was was entered into by both parties um so in this case uh Richie filed and registered for the mark on the top of the slide um the WCS with the uh rainbow stripe and the um applicant UCI sought to invalidate um this on both bad faith and its earlier EU designation for the rainbow stripes on the bottom um as I say there are a few aspects of this case but I'm going to focus on the agreement element here so the applicant uh claimed it had owned and used the earlier rainbow Stripes since 1927 when it became the official emblem of the uh world champion and it became its own official logo in 1994 so it licenses use uh to organizers of world championships under specific regulations and the world champion winner receives a rainbow jersey with a medal um where failure to wear the jersey in certain uh situations or events carries a penalty the applicant claims that the uh use of the rainbow Stripes is limited to the UCI family and only allowed to be used by the approved Partners or sponsors um where strip the stripes uh are sold to the public this is through a license with Santini I.E not uh Richie the eutm proprietor and in the past few years the applicant has given uh exclusive rights to use rainbow colors to some companies that they um so that they can produce some specific additions of the world champions bike within um very specific limitations set out by the UCI regulations so on that basis the applicant argued that the eutm proprietor must be aware of the applicant and its rights for the purposes of bad faith um but more importantly uh UCI also stated it had been in a commercial relationship with Richie uh since 2010 I.E free the filing date which was in 2017 where both parties signed a coexistence agreement which allowed Richie to use the rainbow stripes on certain Goods in class 12 under certain conditions interestingly Richie stated that it did not takeen legal advice before signing this agreement which you know big no no so the agreement also stated that the form of use may be updated but that both parties would have to agree to those changes um so this is important as on the day of filing of the eutm and the days after Richie emailed the UCI asking for approval of the new version of The Mark um and stated that it intended to file an application to avoid and to assist in preventing counterfeit products however UCI replied that it did not consent to that use of the um of that uh new device and it did not consent to the registration either so Richie argued that UCI was in breach of that agreement as it didn't provide an explanation as to the refusal so the cancellation division disagreed and upheld the bad faith claim on the basis that the agreement was very clear um so for example there were examples of acceptable use within the schedules um this new logo was not part of that the agreement clearly stated that the rainbow Stripes belonged to UCI um there was no transfer of Ip um and there was also no provision for um Richie to file an application also importantly the email asking permission to change the logo um and file an application was actually sent on the same day as the application was filed um the reply was not received for three days and that eventual reply was no but at that stage Richie did not inform UCI that that an application had indeed been filed and it allowed it to continue despite knowing that no was the answer and continued to be the answer for days afterwards so the cancellation division found that Richie had breached the contract and therefore found bad faith now I know we're supposed to be looking at cases from last year but if you'll indulge me I just also wanted to highlight a case from 2022 um because it's one that doesn't come up that often um and I found it quite interesting which may tell you something about me um but this case concerns an assignment which was recorded at the uko but to which the original applicant argued never took place so the original applicant filed an application um in September 2019 and then in May 2021 the current proprietor um filed a a form tm16 um so that is a form which uh Records the change of ownership purportedly executed by the original proprietor to record that change in ownership so this was then recorded in June 2021 and the um the registration was now in uh free trade zones name in December 2021 the original proprietor then filed a form TM 26r to rectify the register on the grounds that he did not assign that trademark so the UK IPO invited the um current proprietor free trade zone um to respond but nothing was received um it had asked a few times for a response no response received any at any time so in July 2022 the original proprietor filed a witness statement in which he stated that whilst he authorized a free trade zone to Ed the mark he had not assigned the rights in it so the UK IPO then had a few questions to answer so number one does the original proprietor have sufficient interest to request the rectification the answer was yes um I think that was self-explanatory is this claimed error capable of being corrected by filing a form TM 26r um the UK IPO has a lot of forms um and the answer here was yes the section 641 deals with errors and emissions in the register and it is interpreted more broadly than rectifying simple clerical errors um so an accidental typo um so it can be used to resend erroneous assignments and deal with issues of disputed ownership now the ne last question was should rectification of the register follow here the answer was also yes so the information provided um on a form tm16 is taken at face value and it's not investigated um unless the recordal of change of ownership is subsequently challenged um so the the form essentially has um various points in it including the the names of the uh current owner the name of the person that's taking ownership and then you either provide evidence of that assignment or if both parties sign then that's taken as um both parties consent so that's what had happened here now free trade zone did not file any evidence or respond to the registry's correspondence so the application for rectification was treated as being uncontested um and it was allowed so in this case the original proprietor had appeared to have signed the the form tm16 hence the reason why there was no need to file um evidence of the assignment but the witness statement stated that that was not his intent um he did not agree to an assignment and in any case uh a form tm16 itself is not an assignment document um it is merely the document to record the assignment therefore the change of ownership was made without Authority and the register um was rectified and deemed ever to be been made so what are our key takeaways here um so agreements which are limited in territory and do not explicitly state that they are worldwide or UK related are likely to be considered Ed relevant um the hearing officer is entitled to make its own decisions based on its own research if the alternative is not provided by parties a likelihood of confusion may be found on the basis of complimentary services or uh Goods alone all documentation must be clear and concise so that there is no room for confusion so the Virgin agreement had several years of constant back and forth um and redlining as mentioned and you know therefore there there was confusion um and to take proper legal advice before entering into any formal settlements or agreements um as well as uh taking advice if looking to change those terms then if we look UK specific um assigned for form tm16 will not be reviewed or investigated unless challenged and this can only be challenged once the change of ownership has been recorded So in this case it took almost eight months for the register to be rectified and corrected um and although the registry will proceed with a recordal of change of ownership without contacting the assign or separately to verify the claim um as as mentioned if they sign the form it's assumed that signature is valid um it will not rectify the register without liasing with the current proprietor and giving them a chance to um explain the situation now in our case the other side did not do that but I do actually wonder if the the um not necessarily the outcome would be different but if there may have been um a response from the uh the propri well the the later proprietor um if there had uh been the requirement for a UK address for service that we now have um so we did not didn't have that at the time so it may have been that they simply didn't get the correspondence to respond to or it may have just been that they did and they just didn't reply um but but that's that case right and now I'm going to look at our final case which is a designs case um I had hoped that there' be a few more interesting design cases when I started reviewing them but but it seems not if anyone is aware of any um that I've missed please let me know but but I found this one interesting um so in this case the claimant is Marks and Spencers and the defendant is Ali and the matter concerns light up gin bottles so as you can see in in Autumn 2020 uh Mark Spencer launched its gin based lures which included gold flakes and a light up bottle um UK register designs were filed with a priority date of December 2020 and in November TW uh November 21 Audi launched its own light up gym bottles containing goldf flakes so the M&S designs are on the left and the Audi B bottles on the right M&S claimed infringement of its designs um bar the bottom wintry scene the relevant law to be considered um can be found in cantel medical and that is namely um in which sector do the products belong who is the informed user and what is the awareness of the prior art and level of uh attention what is the designer's degree of freedom and then finally comparing the registered design and the contested design so to do this you need to look at the overall Impressions produced by the designs on the informed user um and bear in mind they will have um in their own mind any earlier designs which have been made available to the public um you look at any features of the designs which are solely dictated by technical function um and they are to be ignored um and also to bear in mind that the informed user in some cases May discriminate between elements of the respective designs attaching different degrees of importance or similarities um or differences um and this can depend on the uh practical significance of the relevant part of the product um to the extent that it would be seen in use or any other matters so what's the relevant sector here um so M&S argued uh a highly specific relevant sector um of Christmas lure in the UK whereas Ali suggested it was more General um spirits and lures in the UK and judge hon agreed with Ali so the informed user was then considered to be a member of the UK public who purchases and consumes spirits and the cures so the level of attention is likely to be relatively high and there is also an opportunity for direct comparison what is the designer's degree of Freedom now to assist with this assessment marks and Spence has filed a witness statement from Jennifer reer the lead product developer for beers wines and spirits who worked on uh gin Globes product uh project sorry as it was known this stated that the 2019 snow globe uh shown on the left was first put on the market in on 17th of September 2019 um with its 20120 glitter Globe first sold on the 14th of May 2020 at this stage neither contained an integrated light um and m r said that there was a vast range of bottle shapes considered um but there were two constraints so this was um that the neck of the bottle had to be sufficiently wide to inject gin lure and gold leaf um and that the bottle had to have straight sides in some part um because it provides a better service for surface for designs several Stoppers were considered and eventually a cork stopper chosen with a label on top in December 2019 Miss Ria considered whether a light could be added and then in January 2020 discussions with the gin supplier and bottle supplier started um a UK based printer developed the lights and five concepts with different bottles were created and then these were shortlisted to four bottles as shown um with the botanic shape on the left um selected but Ali Andrew uh Maxwell its buying director also provided evidence of its design process and agreed with the design constraints but added that it was also only possible to create snow effect using flakes made of gold so a previous Audi design um used uh titanium oxide flakes which are white but those were no longer considered to be acceptable um and also that it was uh costly to use more than two color two colors on a bottled design judge hon found that the designers had a considerable degree of freedom and that there were many shapes um of bottle to consider uh whilst gold gold flakes would be needed for a snow effect meaning that there would be constraints on the neck bottle there were still different shapes to consider also given the period of time in which the products were sold around Christmas um it made sense to have a winry scene but there was no limitation on what that scene should look like um there was also no design constraint on requiring the Gin to be illuminated whilst it was likely that would there um a light would need to be in the base of the bottle that required the choice of a light in the first place so moving on to uh technical function Audi argued the following four features of designs were solely dictated by technical function um that's the distribut distribution of gold flakes I.E scattered throughout the liquid when shake the bottle was shaken and otherwise settled at the bottom when not um the use of gold flakes uh to have the snow effect leaving the upper curved portion of the bottle clear of markings and putting in integrated light source in The dimple at the base of the bottle now judge hon stated all four features are aspects or Consequences of aesthetic choices made by the designer it is true that once the decision to have a snow effect was made the inev mble consequence was the use of gold flakes and of course they settle at the bottom of the bottle if the bottle is not shaken but that does not give the gold flakes a technical function um they also looked at the relevance of branding and here The Branding was considered relevant um because the Audi bottles had the um the markings the infusionist whereas the M&S bottle did not have any wording so that was an important difference to consider now looking at the design Corpus so that's essentially what other designs for products of that type existed at the date of creation of the registered design in question so Audi sought to rely on the uh 2019 snow globe the 2020 glitter Globe mns's snow globe and then Audi's own product um however as the filing um priority date for the register designs was the 15th of December 2020 there is a a 12-month grace period in the UK so then that start started on the 15th of December 2019 so therefore only the mns's 2019 snow globe um from Ali's list was considered relevant um it was Al also pointed out that the manufacturer of ms's bottle itself had a UK registered design and that was dated the 18th of November 2015 so then that was included too um M&S had also produced a number of concept documents in uh April 2019 and December 2020 which included um illustrations of its gin competition um totaling 33 images although um there may well be several um other designs as well um these can all be seen on the slide so judge hon reviewed these in detail and found that um excluding mns's products so four bottles um contained in integrated light and they were marketed before 2020 but none of those um had the botanic shape of the registered design five members uh of the Corpus had a snow effect of some sort but again none with a bottle shape similar to that of the register register design two had a snow effect and an integrated light um but still not the same bottle shape Ali then Drew attention to the Crosby and thaten Bottles which can be seen on this slide um but here neither has a snow effect or an integrated light um so excluding the M&S designs made um public in the grace period it was only the M&S 2019 snow globe which had um both the botanic shape and the snow effect but it did not have the integrated light judge hon then moved on to the final comparison of the overall design or overall Impressions um he held that the features that the informed user would note as being in common were so the identical shape of the bottles what appear to be the identical shapes of the stoppers um a wintry scene um over the entirety of the straight portion of the side consisting in one case entirely and in the other case mostly of tree Silhouettes um in the case of two of the registered designs a snow effect and in the case of the other another two of the registered designs an integrated light um and he held that each of those similarities would appear significant to the informed user and uh communicatively they would be striking but what about the differences um were these sufficient to overcome similarities so the differences were the winter scene of the M&S designs were in white um only and features a stag and a D um the Ali's bottle uh scene was in white and a color with only trees um as mentioned Audi had The infusionist Branding um the M&S designs had none um and then the foregoing two features of the a Audi bottle give it a front and there was no front to the M&S design um the the winter scene on the Audi bottle was brighter and busier um and then the Audi Stoppers have uh what was referred to as a watch strap label um with the Audi logo on top whereas the M&S designs didn't and those Stoppers were darker in shade than those of the M&S however despite those differences these were considered to be relatively minor and the overall impression was similarity so there was infringement so to me um this case demonstrates the benefit of registered design protection particularly where a likelihood of confusion um may be difficult to demonstrate in a trademark sense so in this case The Branding element was considered relevant um it was mentioned a few times orbe it that that did not actually change the outcome here um because the designs were were too similar if it were a trademark infringement or passing off matter um it may be that proving a likelihood of confusion may be more difficult um especially if the the target market may be seen as different so for example people in a um a high-end shop versus a low-end shop so it's also an excellent reminder that minor changes to a registered design um does not protect from infringement actions um and and also um it's always worthwhile conducting design as well as trademark um search is before um using any any design or trademark so that concludes our talk today thank you very much for listening um I hope it's been helpful um and interesting um and do let me know if there's any questions please pop them in the chat or otherwise um send me an email um I will be um we have recorded the session so I will be sending um the recording round for you um thank you very much