Fed up with patents? If so, you should have been at the AIPPI-UK Meeting on 17 September 2015: it was an "Everything Else in IP Round-Up 2015", meaning "everything that isn't patents. Generously hosted by Freshfields Bruckhaus Deringer LLP in its sumptuous London office, this was the latest talk in James Mellor QC’s ‘Jackanory’ series of IP updates. James looked at trade marks, copyright and trade secrets/confidential information.
On trade marks, James focused on recent case law. TOP Logistics and Others [2015] CJEU C-379/14 confirms the principle of Zino Davidoff SA v A & G Imports Ltd [2002] CJEU C-414/99, that goods stored in a warehouse (in this case, Bacardi rum) constitute imported goods as soon as they leave the customs arrangement. Such importation deprives the trade mark owner of the possibility of controlling the conditions of first marketing the product in the European Economic Area, which can damage the value of the mark. Examining Diageo Brands BV v Simiramida-04 EOOD [2015] C-681/13) James drew attention to the CJEU’s strict approach to countries refusing to enforce judgments from another Member State on the grounds of public policy. He then considered the publicity-friendly Société des Produits Nestlé SA v Cadbury UK Ltd [2015] C-215/14. He discussed how the Kit Kat contains three essential features: one resulting from the nature of the goods themselves (the slab shape) and two which are necessary to obtain a technical result (shape and number of grooves): essentially the case will not make the “assessment of distinctive character” any easier in trade mark infringement disputes.James then looked at the effects of co-existence in recent UK case law (IPC Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439, J. W. Spear & Sons Ltd and others v Zynga Inc [2015] EWCA Civ 290 (the SCRABBLE/SCRAMBLE case), and Maier and another v ASOS Plc and another [2015] EWCA Civ 220): if there was confusion between two trade marks or the risk of it, (i) it would have come to light, and (ii) the trade mark owner would have reacted. Looking at SCRABBLE/ SCRAMBLE, James drew attention to the fact that the first court’s refusal to find trade mark infringement was significantly affected by the length of time within which the two games had knowingly co-existed in the market together. The action was only brought after Mattel lost out in its bid to market a physical version of Zynga’s electronic Scramble game. Similarly in Assos v ASOS, ASOS successfully ran an own-name defence, which was bolstered by the marks’ six years of coexistence. As a rule of thumb, James found that the shorter the length of the coexistence, the wider the scale of the coexistence would need to be for it to be successfully relied upon. This he contrasted with the far higher threshold required to establish “peaceful co-existence” in OHIM proceedings, which to his knowledge has never yet succeeded as an argument at General Court or CJEU level.
James told us to watch out for potential reform of UK Copyright legislation, following the consultation on repeal of section 73 of the CDPA. EU reform is also on the cards in light of the Digital Single Market Strategy (May 2015) New Commission. He also flagged potential international reform as a result of the proposed WIPO Treaty on the Protection of Broadcasting Organisations, which will give “Rome +” protection.
Turning to trade secrets, James looked at the proposed new EU Directive on the protection of trade secrets; he found the drafting problematic because of uncertainty and its insufficient protection of legitimate interests. The definition of “trade secret” was not bad, he added, predicting that it will signal the demise of a whole body of built-up “breach of confidence” UK case law.
