Overview of United Kingdom Trade Mark and Designs Cases 2020

This report is a summary of important UK trade mark and design decisions that were rendered in 2020 (including a late 2019 case). First, the CJEU decision in Sky v. Skykick was finally handed down and the UK High Court took on board its ruling, which is very interesting bearing in mind the UK is now officially out of the EU. The claimant was successful on the ground of reputation and unfair advantage in Red Bull GmbH v. Big Horn Limited, which will be useful for owners of well-known brands who are trying to prevent lookalike products from being sold. Planetart LLC v. Photobox Ltd & Anor is a good reminder of the relevant law in trade mark infringement and passing off but is also a useful guide regarding the application of trade mark law in the field of mobile apps. Another classic infringement case is Sazerac Brands, LLC v. Liverpool Gin Distillery Limited where expert evidence was accorded significant weight and was key in the outcome of the case. Similarly, Merck KGaA v. Merck Sharp & Dohme relates to an infringement case but with a peculiarity: the rise of the internet which rendered the co-existence agreement in place between the parties no longer fit for purpose. Whilst 2020 was not rich in design court cases, it was certainly the year of non-conventional marks and other IP rights including collective marks and PDOs. Indeed, in Fromageries Bel SA v. J Sainsbury plc, a UK 3D mark accompanied by a colour description was cancelled due to the fact that the description was too broad, which is consistent with the Cadbury purple colour case. Another shape mark was cancelled in Jaguar Land Rover Limited v. Ineos Industries Holdings Limited, but this time because the mark had not departed significantly from the norms and customs of the sector and had not acquired distinctiveness through use. Moving away from shape marks, the UK High Court interpreted the scope of an EU Collective mark (probably for the last time) in Foundation for the protection of the traditional cheese of Cyprus named Halloumi v. Babel Sajt Kft and reminded us that the test for distinctiveness and confusion is not the same as for “normal” trade marks. The decision in Les Grands Chais De France SAS v. Consorzio Di Tutela Della Denominazione Di Origine Controllata Prosecco concerns the enforcement of a PDO and confirms the level of protection afforded by this IP right. Last but not least, Glencairn v. Product Specialities Inc does not discuss a specific IP issue but still concerns IP litigators and practitioners. This case addresses the issues of conflicts of interest, confidentiality and information barriers when a firm of solicitors acts for two unrelated parties in separate litigation with similar facts against a third party, where the first case is settled on confidential terms.