Brands Update

Welcome to the latest edition of Brands Update. This month's feature articles include:

In other news…

What does the "Brexit Freedoms Bill" mean for brands?

The UK government has introduced the Retained EU Law (Revocation and Reform) Bill 2022-23, also referred to as the 'Brexit Freedoms Bill', first announced in the Queen's Speech earlier this year. Under the Bill, all "EU-derived subordinate legislation" and "retained direct EU legislation" will be automatically revoked after the end of 2023, unless otherwise preserved. The same is true of all directly effective rights and obligations derived from EU Treaties and Directives and general principles of EU law – these will automatically lapse after 2023 unless expressly preserved.

While there is nothing to suggest that the government aims to amend UK trade mark or design related legislation under the Bill, it will need to be careful that this does not happen inadvertently. This is now an "opt in" rather than an "opt out" system. For example, the Community Design Regulation (6/2002, as amended by 1891/2006) and the Regulation on Customs Enforcement of IP Rights (608/2013) are both pieces of retained direct EU legislation. These will need to be expressly preserved to retain their application in the UK. Likewise, the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulation 2019 incorporated directly effective rights into the UK that will lapse if not specifically preserved.

Caselaw will also be impacted, with the Court of Appeal and Supreme Court being given greater scope to depart from retained EU case law and certain retained domestic caselaw. Interestingly for IP practitioners, lower courts and tribunals (such as the UKIPO), where bound by retained caselaw, will be given power to refer points of law on retained caselaw to the appropriate relevant appeal court where the point is of general public importance. We might see an acceleration of the departure of UK caselaw from EU caselaw under these provisions.

We will report more on the possible implications for trade mark and design owners in the next edition of Brands Update in November. In the meantime, for more on the changes introduced by the Bill, see here.

The Skykick saga heads to the Supreme Court of England & Wales

The Sky v Skykick dispute has been running since 2016 but despite some seven earlier outings before the High Court, the Court of Appeal and the ECJ, the courts have struggled to agree on the law. Are Sky’s trade mark registrations, which it is relying on in infringement proceedings against Skykick, invalid having been applied for in bad faith? That would be the case if Sky did not have a genuine intention to use the marks in relation to the goods and services covered at the time the applications were filed.

The High Court originally found several of Sky's registrations partially invalid, but this was overturned by the Court of Appeal's sweeping judgment in June 2021 (see here). Hoping to reverse this, Skykick has now succeeded in obtaining permission for a final argument, this time before the Supreme Court.

Relatively few cases of any sort involve points of law of sufficient general public importance that permission to appeal to the Supreme Court is granted. For a trade mark case to do so is very rare, though this may become more common because before Brexit many such cases were referred to the ECJ instead. This will be a valuable opportunity to provide clarity on an issue which has become increasingly contentious as the number of UK trade mark applications continues to mushroom. A final decision is expected sometime in mid to late 2023.

Overseas brand owners not (yet) prejudiced in Russia

Earlier this year, a Russian arbitration court dismissed a claim for trade mark infringement brought by Entertainment One in relation to the unlawful use of various "Peppa Pig" marks (see further here). The lawsuit was dismissed because Entertainment One is based in the UK, which has sanctioned Russia for its invasion of Ukraine. Although the only one of its kind, the decision had been a concern to right holders.

In June 2022, the Second Appeal Commercial Court in Russia overruled the earlier decision and found infringement. The Appeal Court stated that Russia must grant equal protection of IP to all foreign organisations, including those registered in the UK. It also held that the filing of a claim in itself could not be recognised as an act of bad faith under the Russian civil code - the first instance decision was based on an incorrect application of the relevant law.

Change to cancellation actions in Spain

From 14 January 2023, trade mark invalidity and revocation actions will be heard by the Spanish Patent and Trade Mark Office, as opposed to the courts. The courts will only be able to determine invalidity and revocation where they are raised by way of counterclaim in infringement proceedings. This implements the requirements of the EU trade marks directive (2015/2436).