IP Disputes – lessons for 2020 and beyond
The decorations are down, everyone has to get used to new digits when writing the date, and we are clinging to the optimism of new resolutions. But as we leave behind 2019, which IP disputes hit the headlines and what insights do they offer for 2020 and beyond.
USE IT OR LOSE IT
At the beginning of 2019, Irish fast-food chain Supermac’s Ireland Limited won a “David and Goliath” style legal battle against McDonald’s Corporation forcing the multinational to relinquish its “big mac” trade mark in Europe. The mark “big mac” was registered by McDonald’s in Europe both as a food and under a trade mark class for restaurant names. This meant that McDonald’s could call a restaurant “big mac” and may argue that, if the Supermac’s name was trade marked, it could cause confusion for customers. This prevented Supermac’s from expanding from Ireland (where it had trade mark protection) into the UK and the rest of Europe and therefore had serious consequences for the business. Supermac made an application to the European Union Intellectual Property Office (“EUIPO”) for the revocation of McDonald’s “big mac” trade mark and argued that the mark had not been put to genuine use in the EU for the goods or services for which it is registered . The EUIPO agreed with Supermac and found that McDonald’s had not proven genuine use of the contested trade mark as a burger or a restaurant name resulting in its revocation. Under both the UK and EU regimes for trade marks, non-use of a trade mark can lead to its revocation.
Supermac’s enjoyed a further win against McDonald’s in August when, following a complaint lodged by it to the EUIPO, the EUIPO partially cancelled McDonald’s automatic trade mark rights to the use of “Mc” across the EU in respect of a range of foods on the basis that it had not proved genuine use of the “Mc” prefix on some of the products it trade marked.
Aside from reiterating the importance of genuine use in order to avoid potential revocation, these rulings are significant in that they highlight the ability of small businesses to successfully protect their intellectual property against multinationals under the European regime for the protection of trade marks. While NI companies will continue to enjoy protection of the European Courts in respect of their European trade marks (“EUTMs”) post-Brexit, after Brexit, EUTMs will no longer protect trade marks in the UK. On exit day, the Intellectual Property Office will create a comparable UK trade mark for all right holders with an existing EU trade mark. It is hoped that an equally robust approach will be adopted by the UK Courts in respect of UK trade marks.
While adidas has trade mark protection for its slanted three-stripe logo, the sportswear manufacturing giant tried to establish a wider trade mark for “three parallel equidistant stripes of equal width applied to the product in whichever direction”. This was successfully challenged by Belgian company, Shoe Branding Europe BVBA. In June 2019, the General Court of the European Union (“EGC”) upheld the decision of the European Intellectual Property Office to invalidate the trade mark registration, with the EGC ruling that it was not “distinctive” enough. The Court found that adidas did not “prove that that mark has acquired, throughout the territory of the EU, distinctive character following the use which had been made of it”. Both the UK and EU legislation prohibits the registration of marks that are devoid of any distinctive character.
The lesson from this ruling is that the scope for relying on trade mark variants will be narrow, particularly where, as in this case, the mark is simple in form. It is also another example of the EU Courts’ willingness to curb the often predatory advances of multinationals in the field of intellectual property. As noted above, it is hoped that NI companies will enjoy equivalent protections of their UK trade marks post-Brexit.
BRANDS V BANDS
At the end of the year, the famous fashion brand Marc Jacobs International LLC countersued Nirvana LLC after it was sued by the iconic band for trade mark infringement and breach of copyright of its smiley face logo and signature font in a t-shirt design. Marc Jacobs is demanding that Nirvana’s copyright claim to the logo be removed and is seeking to advance several arguments, the most significant of which is that it is not clear who designed the logo and therefore Nirvana does not have valid copyright.
The question of who designed the logo is important as copyright is generally owned by the person(s) who created the works of expression. The case is ongoing in the United States District Court for the Central District of California.
Even though this is a US case, in a time when celebrity-branded fashion is so lucrative, it has potential significance worldwide for the relationship between music artists and brands in terms of copyright ownership and intellectual property rights generally.
Tughans’ Dispute Resolution team has extensive experience in strategising, pursuing and defending IP disputes including, disputes regarding misappropriation, infringement, validity, ownership and rights of use of all forms of IP rights across a wide range of industries. The team works with reputable IP lawyers in other jurisdictions to ensure claims are pursued in the most appropriate forums.
For further advice or assistance in navigating any of the above, please contact me or connect with me on LinkedIn.
While great care has been taken in the preparation of the content of this article, it does not purport to be a comprehensive statement of the relevant law and full professional advice should be taken before any action is taken in reliance on any item covered.