5SOS, Hush Puppies, Cristal, CCs, Guru Denim and much much more – trade mark case law in Australia, New Zealand and the UK – 2015 highlights

Well, what a year it has been, with so much more in store for 2016.

Here at IP Whiteboard we thought we would run a highlights reel of some key trade mark decisions reported on “arguably the world’s favourite IP blog” during 2015.

Kimye eat your heart out

• 2015 got off to a flying start with the trade mark case that nearly BROKE the internet** (reported here). Mildly popular boy band 5 Seconds of Summer applied to register 5SOS as a trade mark in Australia, but the application was rejected based on earlier SOS marks. I can’t even.

** If “the internet” = KWM’s server.

 Combined marks – Arnold J provides some guidance

• A tonic for those that look at the CJEU’s Medion decision with bewilderment / belligerence, we considered the decision of Arnold J of the UK’s High Court in Whyte & McKay, including Arnold J’s assessment of whether ORIGIN played an independent distinctive role in the mark JURA ORIGIN. Spoiler alert: it didn’t. Our case note here.

Diminutives – CRISTALINO infringes CRISTAL

• Another UK High Court case in which social media played a role, the famed champagne house Louis Roederer sued J Garcia Carrion SA in respect of the use of CRISTALINO. The infringement claims were upheld (case note here). Our note discussed the impact of reputation evidence in the CRISTALINO case, as a factor increasing the risk of confusion, and contrasted that with the recent decision of Australia’s Federal Court in which the reputation in the earlier mark MALTESERS was a factor that decreased the risk of confusion against the later mark MALTITOS applied for by Delfi. The Delfi decision is discussed in further detail here.

Kit Kat shape mark – a new hope?

• The CJEU gave its answers (sort of) to questions referred by Arnold J in the Kit Kat 4 finger shape mark. Published opinions were quite drastically divided as to whether the CJEU’s answers were good or bad news for Nestlé. Our views here.

Passing off comes to the fore, and the benefits of national registrations alongside CTMs in the EU

• The UK’s Intellectual Property Enterprise Court (IPEC) issued two decisions in which trade mark infringement claims were denied, but the applicant won the day based on passing off (Duelling Ukuleles and Sofa Workshops – recent cases highlight advantages of national protection alongside CTM registrations, and the continued importance of passing off: here). The case also highlighted the potential advantages in holding national registrations alongside a CTM.
• The UK Supreme Court considered passing off for the first time since the Jif Lemon case in PCCW v Sky, adopting a ‘hardline’ approach in requiring goodwill in the form of customers in the jurisdiction (as opposed to mere reputation) and rejecting PCCW’s claims. Our London office noted the decision here (NB: KWM’s London office acted for Sky).

Directionality / reverse confusion … confusion

• In yet another monster judgment, Arnold J upheld infringement claims by Enterprise against Europcar in a battle of “e” logos (our note here). This included consideration of the potential relevance of “wrong way round” confusion and the earlier decision in Glee.
• TomTom the navigation device company emerged victorious before Assistant Commissioner Glover in New Zealand in defending oppositions by an earlier user of Tom Tom in respect of marketing services. While there was confusion, it was not relevant confusion (our note here). Each of the Enterprise and Glee cases were referenced in coming to this finding.

Orientation confusion? Anchored marks

• Guru Denim successfully defended an opposition in NZ’s High Court (our note here). The differences between the respective marks (shown below) outweighed the similarities. The fact that Omega’s mark would be seen as the Greek letter “”anchors” is orientation”.

Distinct approaches from OHIM’s Board of Appeal in absolute grounds cases?

• The somewhat different approaches of the 4^th and 5^th Boards of Appeal at OHIM as regards toy marks were noted in our article here (an edited version of this article was first published on the renowned IPKat blog).

Parody of a parody refused registration – TARJAY blocked by TARGET

• An application for the mark TARJAY in Australia was rejected by a Hearing Officer on opposition by Target. The mark TARJAY mimicked the Target mark pronounced “with a fake french accent to make it sound more upscale than it is”. Our article here.

Defending non-use actions based on immaterially different / dominant use

• The Hush Puppies logo survived a non-use scare before OHIM’s 2^nd Board of Appeal, see our note here. The case highlighted the differences in the effort that a brand owner must go to in defending a CTM registration as opposed to the rather lower standard applied in Australia.

Protecting your brand in China

• We gave brand owners some proactive tips on brand protection strategies in China. Our note here and Scott Bouvier’s helpful video here.

Google re-branded!

• That’s right, one of the world’s most famous brands decided … to change its brand. Well, only a little bit. But even this can make a big difference from a portfolio perspective. We discussed the potential implications here.

2016 – what’s next?

• If 2015 was anything to go by, we have quite a lot of case law in store in 2016. We await decisions from the UK Court of Appeal on the battle over GLEE, among many other key cases. Stay tuned.