Overview of United Kingdom Trade Mark Cases 2021

Abstract

This report summarises important UK trade mark decisions handed down in 2021. The first decision comes from the very end of 2020 and features the return of a David vs. Goliath trade mark infringement case which saw Bentley (a local clothing company) face off against Bentley (the luxury car manufacturer) in the Court of Appeal decision for Bentley Motors v. Bentley 1962. Into 2021, the High Court dealt with a case which was noted as “not a normal case of trade mark infringement” in Lifestyle Equities v. Amazon. The e-commerce giant was found not to have infringed the claimants’ trade marks as the claimants’ goods offered on Amazon.com were not targeted at UK/EU customers. It was then “One more thing” once again for Apple as the High Court upheld an appeal in Swatch AG v. Apple Inc. Whilst the technology company was successful in opposing the trade mark applications filed by the watch maker, the High Court found that the Hearing Officer had been wrong to uphold the opposition on the basis of bad faith. The case shows the importance of getting pleadings right from the outset, and the high bar to successfully advance the bad faith argument.

Wirex Ltd v. Cryptocarbon Global dealt with neologisms as trade marks and whether a newly invented, coined term could still be descriptive. Oatly AB v. Glebe Farm Foods Limited discussed the scope of protection of a trade mark registration in the context of a rebrand. Staying in the IPEC in Stone v. Wenman, the defendant showed that small businesses can accrue goodwill and succeed in a passing off claim. HHJ Clarke introduced the decision of Fox v. Teleta as a “cautionary tale” with a “simple and seemingly obvious” moral to the trade mark infringement story – know your rights and be careful of making unjustified threats. Lyle & Scott Ltd v. American Eagle Outfitters, Inc is another passing off claim to pass through the High Court but focussed on an appeal against the decision to grant permission to serve the claim outside of the jurisdiction. Finally, Combe International LLC v. Dr August Wolff GmbH & Co. KG Arzneimittel contains an important development in the defence of statutory acquiescence, and an interesting analysis of some significant evidence of actual confusion.