Brands Forum 2022

Covering the latest law and issues relating to brands

Highlights from our brands conference 

2022 marked our 17th annual Brands Forum conference, where our international experts come together to discuss the latest legal and commercial issues relevant to brands. 

With a theme of brands in the metaverse, this year we were joined by guest speakers Her Honour Judge Melissa Clarke, Senior Circuit Judge for IP cases in the county courts, and Luke Franks, TV presenter and host of the 'Welcome to the Metaverse' podcast, who shared their expertise in protecting brands both in the real world and the virtual world.

Recordings of each session are available to watch on demand below.   

Session videos 

Introduction by Judge Melissa Clarke

Key takeaways:

  • The IPEC small claims track provides a platform for intellectual property (IP) claims with a low financial value to be decided. An advantage is that the mere issuing of a claim can prompt a defendant to settle, while a disadvantage is that cases often cannot be prepared within the cost caps, leaving even successful parties out of pocket.
  • Many lessons can be learnt from IPEC and can be applied to non-IPEC cases. For example, identifying and agreeing issues at an early stage. Additionally, time limited trials forced shorter and more focused cross-examination. 
  • Three cases that illustrate how trade mark litigation can go well, or not so well, are DC Comics (Partnership) v Unilever Global IP Limited, Match Group LLC v Muzmatch Ltd and Equisafety Ltd v Battle, Hayward And Bower, Ltd & Anor.
 

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Metaverse and brands: IP protection in a virtual world

Key takeaways:

  • NFTs and IP – owning an NFT does not mean that you necessarily own all of the IP rights associated with the underlying image. 
  • NFTs as collectibles – NFTs provide digital scarcity and simple trading. 
  • NFTs as digital identities in the metaverse – individuals can show their social status through NFTs.
  • A variety of brands, such as William Grant & Sons, Glenfiddich, Burberry, and Blankos Block Party, all have a presence in the metaverse.  
  • There are several issues that arise in relation to trade mark infringement in the metaverse - eg questions surrounding offering goods and services under a third party trade mark.
 

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Reputation management: myth busting!

Key takeaways:

  • Under s.1(2) Defamation Act 2013, a company trading for profit must show it has suffered, or is likely to suffer, serious financial loss as a result of the publication/broadcast. For large companies, this may be difficult to prove. 
  • If the issue is complicated and the desire is to apply pressure editorially and legally to try to shape the coverage and limit a damaging story, there a several options companies have for escalation. For instance, an email could be sent from a PR or a more formal letter could be sent by a lawyer.
  • After publication, there are several legal and regulatory options companies have at their disposal to protect their brands. For example, a letter before action could be prepared or a regulatory complaint with Ofcom could be considered. In some cases, it may be beneficial to pursue the regulatory route, as it means that the information is less likely to enter the public domain.
 

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European panel: how to tackle descriptive marks and acquire distinctiveness

Key takeaways:

  • The French, German and Benelux IP offices take a strict approach when it comes to descriptive marks. In France, it helps if there is a figurative element, however if needs to be the dominant part of the mark. In Germany, the office tends not to accept slogans, which are not considered distinctive, and in the Benelux office lacks consistency and is more unpredictable, however it is more likely to accept descriptive marks if they incorporate wordplay or humour. 
  • The UKIPO is more likely to accept descriptive words which have fallen out of common use, but this will depend on the context and goods and services.
  • For English words in foreign jurisdictions, the offices in Benelux, Germany and France tend to recognise English words as descriptive given the high level of understanding of the English language in those jurisdictions.
  • In Germany, France and Benelux, demonstrating acquired distinctiveness is the main way to get around objections due to descriptiveness. Survey evidence can be particularly useful in this respect.
 

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IP issues in advertising

Key takeaways:

  • There can be numerous IP issues in advertising including trade mark infringement, copyright infringement, ambush marketing, false endorsement and data protection issues.
  • Copyright can protect many aspects of advertising, including creative material such as storylines, scripts, characters, set design and music.
  • In order to rely on a parody defence for an advert that uses copyright works, the use must be an expression of opinion, the work must be used for the purpose of parody, it must be different enough to the copyright work not to replace demand for it, and it must only take a limited amount of source material.
  • To rely on incidental inclusion as a defence of use of a copyright work in an ad, the copyright works cannot be used as a means of making the goods or services more attractive to prospective customers.
 

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Environmental marketing claims: an update

Key takeaways:

  • Marketers must base any environmental claims on the full life cycle of the product, unless they specify otherwise.
  • Any qualifications to the environmental claim must be made really clear in the ad.
  • Marketers must not imply the whole company is producing a positive environmental benefit if they do not hold evidence that proves this.
  • Any comparative claims must be made clear in terms of what the comparison relates to, and evidence must be held which shows how the advertised product has greater environmental benefits than the comparator product.
 

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In case you missed it! Key legal developments from the last year

Key takeaways:

  • Expeditious enforcement of rights is important to avoid acquiescence, which can result in parties losing the right to invalidate or object to use of a trade mark.
  • Bad faith issues are becoming more prevalent in trade mark disputes, but are still difficult to prove.
  • Genuine use of a trade mark can include advertising, use in combination with other word and figurative elements, and minimal use.
  • The Retained EU Law (Revocation and Reform) Bill will automatically revoke around 4,000 pieces of EU legislation by the end of 2023 and make it easier for UK courts to depart from EU case law.
 

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