Retail sales have been steadily shifting online since web browsers were first created in the 1990s. Data from the UK’s Office for National Statistics shows us that “Internet sales as a percentage of total retail sales” increased from 6.8% in February 2010, to 11.7% in February 2015, to 19.1% in February 2020. With the COVID-19 pandemic forcing the UK into various stages of lockdown since March 2020, internet sales ballooned to a record 36.2% of all retail sales in November 2020.
Insights: Branding & Design
The UK has now left the EU, following a transition period that ended on 31 December 2020. In contrast to the position in a number of industries, the position in relation to IP rights has been relatively smooth. The UK Intellectual Property Office (UKIPO) has created and entered into its database the comparable rights based on EU trade mark and design registrations which were all in place as of Exit Day. The Office is continuing to work on comparable rights created from EU designations filed via the Madrid or Hague systems and appears to be making good progress. The UKIPO should be commended for this, particularly in view of the current working conditions.
In 2001 an experimental alternative to the NFL was launched by Vince McMahon: the XFL. The XFL hosted fewer teams, promising quicker games and greater entertainment. The XFL lasted just one season before collapsing due to significant financial losses. In 2018, McMahon revived the league with a planned restart date in 2020. Fast forward to January 2021 and the picture for the XFL remains bleak, it having lasted only 5 weeks before collapsing due to financial pressures linked to COVID 19. Dwayne Johnson and his associates now own the league and another restart is scheduled for the 2022 season.
Colours and colour combinations play an important role in branding. In a crowded sector colours have the capacity to function as a powerful visual key, enabling consumers to easily distinguish between different products and brands. Trade mark rights granted for specific colours, or combinations of colours, are, therefore, powerful IP rights. The uncertainty surrounding how similar a colour must be to infringe a colour mark registration works in the favour of the owners of colour trade mark registrations – in extreme cases a colour mark registration may deter competitors from using all shades of that colour on/in relation to the same goods/services. Little surprise then that for some trade mark owners securing registered rights in colour marks has become a key strategic objective.
The CJEU have recently issued a judgment in Case C-456/19, referred from the Swedish Patent and Market Court of Appeal. The case centred on whether a trade mark consisting of colour combinations, intended to be systematically affixed to goods used to deliver the services covered by an application, must depart significantly from the norms and customs of the commercial sector in order for the trade mark to have distinctive character. This is a test which has been applied in relation to 3D trade marks but we have not seen it applied to these type of colour combination marks before.
The rules governing address for service for intellectual property rights in the United Kingdom will change after the UK exits the European Union on 1 January 2020. Subject to legislative implementation, which is expected this week, from 1 January 2021 the UKIPO will no longer accept addresses in the EEA as a valid address for service. As a result, any party wishing to file an application for a trade mark, patent or registered design will need to appoint an address for service within the UK, Gibraltar or the Channel Islands.
The Court of Justice of the European Union (“the CJEU”) has recently issued a judgement concerning the genuine use of Ferrari’s German TESTAROSSA trade mark registrations. This judgement was a positive outcome for Ferrari, and is particularly beneficial to owners of legacy and heritage brands.
In March 2013 the mark was granted registration under EUTM No 010914836 in Classes 9, 20 and 35. The protected goods included “Smart phones, Mobile computing devices, tablets” and “Furniture”, while the services included the retailing, wholesaling and mail order of these and other goods. On 29 February 2016, Samsung Electronics GmbH (“Samsung”) applied for a declaration that the registration was invalid on the basis that the mark was non-distinctive and descriptive in relation to all of the protected goods and services. However, the Cancellation Division rejected Samsung’s application and the registration was maintained. The Cancellation Division found that the term “SMART THINGS” was descriptive, and noted that the figurative element “:)” (“the emoticon”) is ubiquitously used as a smiley in society at large, including in business, and has positive connotations. However, the Cancellation Division held that the emoticon endowed the mark with at least a minimum of distinctive character and meant that the mark as a whole was not purely descriptive.