Brand Matters

Issue 20
6987Sally Britton, Partner, Dispute Resolution

Editor's Note

Welcome to the first 2021 edition of Brand Matters.

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The EU/UK Trade and Co-operation Agreement

The EU/UK Trade and Co-operation Agreement was reached on Christmas Eve and took effect from 1 January 2021. Alongside ensuring that goods may continue to be traded between the UK and EU tariff-free, the TCA contains a number of important provisions relating to digital trade and IP rights.

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Change to the UKIPO Address for Service rules from 1 January 2021

New rules relating to address for service when filing a UK trade mark or design are now in force requiring applicants and those involved in disputes before the UKIPO to provide a UK address for service.

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Court finds infringement of registered Community design for sustainable ballerina shoe

The IPEC has found registered Community design infringement in favour of Rothy's, a sustainable shoe brand from California. Following the Supreme Court decision in 'Trunki', this case highlights the importance of accurately representing new and innovative design features when applying to register a design.

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EU Digital Services Act: Changes to regulation of online intermediary services

The European Commission has published a package of measures relating to regulation of internet intermediaries – the Digital Services Act - aimed at ensuring a 'safe and accountable online environment' through improved mechanisms for the removal of illegal content.

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No Hugz for you: copycat shapewear jeans infringe various IP rights

The IPEC's recent judgment in Freddy v Hugz is a rare case running the gamut of trade marks, designs and patent infringement, as well as contractual claims. Even more unusual is the fashion context, given that such disputes often settle before reaching the courts.

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European Court finds that CBD is not a narcotic

The European Court of Justice has ruled that a particular form of CBD, derived from industrial hemp, is not a narcotic as “it does not appear to have any psychotropic effect or any harmful effect on human health”. This judgment from the EU's highest court is undoubtedly positive for the CBD industry.

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IPEC considers infringement through 'bait and switch' selling online

The IPEC has given some helpful guidance on when bait and switch sales online - where a Defendant uses the Claimant's mark as a bait to attract the consumer's attention, and then exploits the opportunity to switch that customer's attention to its own product or service – might amount to trade mark infringement.

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CJEU confirms that sales of second hand cars and replacement parts constituted use of Ferrari's "TESTAROSSA" trade mark

EU and UK trade marks are liable to be revoked if "genuine use" cannot be proven for a continuous five year period. A recent CJEU decision confirms that second-hand sales of luxury sports cars, as well as replacement and accessory parts, may constitute genuine use.

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Claim of joint authorship in Florence Foster Jenkins screenplay succeeds in High Court retrial

Following a retrial, the IPEC has upheld a claim to joint authorship in the screenplay for the 2016 film Florence Foster Jenkins. This outcome comes as no surprise given the findings of the Court of Appeal which overturned the original IPEC decision.

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