Overview of United Kingdom Trade Mark and Designs Cases 2018

Abstract

This report highlights key UK trade mark and design decisions from the past year that may be of particular interest to comparative lawyers. Sky v. Skykick may fundamentally change the approach to filings and enforcement within the EU system, and is a very interesting case to follow in view of Brexit. W3 Limited v. easyGroup Limited and another serves as useful guidance in respect of the threats provisions and highlights the difficulty and high bar involved in demonstrating acquired distinctiveness. Glaxo v. Sandoz reminds us of the need to strike a balance between the substantial costs involved in gathering survey evidence with the benefit it can bring to the Court. In relation to online matters, Argos Ltd v. Argos Systems Inc highlights another development in the UK courts’ approach to trade marks online, whilst Student Union Lettings Limited v. Essex Student Lets Limited (SULETS) concerned the application of the Sec. 11(3) Trade Marks Act 1994 defence. Walton International Limited and Giordano (Hong Kong) UK Limited v. Verweij Fashion BV was of note because it showed a level of discretion observed by the English courts with regards to the conduct of legal proceedings, and Massimo Osti SRL v. Global Design and Innovation Ltd raises important questions as to whether claims should be issued at the High Court or at IPEC. Henry Martinez t/a Prick & Another v. Prick Me Baby One More Time Ltd & Another highlights that, whilst localised goodwill can indeed exist, showing evidence of deception or confusion is crucial to be successful within a passing off case. In the designs space, L’Oréal Société Anonyme & L’Oréal (UK) Limited v. RN Ventures Limited served as a useful reminder of the law on Registered Community Designs and the infringement assessment.