Overview of United Kingdom Trade Marks and Design Decisions 2016

Abstract

This report highlights key UK trade mark and design decisions from the past year that may be of particular interest to comparative lawyers, especially in view of Brexit: the High Court handed down the decision in the “4 bar KitKat” decision, and despite the CJEU’s preliminary ruling, Arnold J supported the original UKIPO Hearing Officer’s decision, which used a slightly different test in relation to acquired distinctive character. In the Glaxo “purple inhaler mark” case, bound by previous UK case law, the UK courts found the mark in question to be invalid, although it is questionable whether the EUIPO would have come to the same conclusion. Following the reasoning in the four bar KitKat decision, the High Court comes to a similar conclusion in the Metrocab taxi shape mark case, highlighting the difficulties brand owners face in obtaining rights in and enforcing 3D trade marks in the current UK landscape. In 2016, Cadbury was dealt a blow when it attempted to delete the invalid wording in its description and this was refused by the UKIPO. The interplay between UK and EU law came to light again in the Court of Appeal’s decision in Comic Enterprises Ltd, where it was held that the UK series mark provision is compatible with EU law. Declarations of non-infringement featured in two cases whilst the jurisdiction of the courts to overturn the decision of a UDRP panliest was a topic of concern in 2015 and revised in 2016. George East Housewares was an unsuccessful “get up only” passing off claim, despite use since 1934, and on the designs front, the Supreme Court handed down its judgement in relation to a RCD between the makers of Trunki and Kiddee suitcases.