Intellectual property

Salone del Mobile: Protecting the IP in design inspiration

Thu, 23 Apr 2026 00:00:00 +0100

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Salone del Mobile: Protecting the IP in design inspiration

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This week marks Salone del Mobile, when the global design world gathers in Milan for the annual design and furniture fair.

Published: 23 April 2026
Authors: Rob Sandercombe

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Salone is a celebration of design, creativity and manufacturing, showcasing some exciting collaborations. The main Fiera encompasses more than 1,900 exhibitors from 32 countries, while the wider city hosts an array of different events, exhibitions and presentations from global brands and independent designers alike. In this article, we consider what intellectual property protection is available to designers and brands and discuss some of the issues they should consider when entering into collaborations.

What should designers and brands protect — and how?

For designers and brands in the UK, the following intellectual property protection (which sits across four overlapping regimes) may be relevant:

unregistered design rights (UK): which arise automatically, do not require registration, and post-Brexit, fall into 2 main categories:
- UK Unregistered Design Rights (UDRs): are created under the Copyright, Designs and Patents Act 1988 (CDPA 1988) and protect the shape and configuration of 3D articles (including internal or structural features), but do not protect surface decoration or ornamentation. Protection lasts for the earlier of 10 years from first marketing or 15 years from creation. Importantly though, whichever term applies, in the final five years the right becomes subject to a “licence of right”, meaning the owner must allow licences on fair and reasonable terms; and
- Supplementary Unregistered Designs (SUDs): protect the appearance of all or part of a product, including lines, contours, colours, shape, texture, materials and ornamentation (in both 2D and 3D). Protection lasts for three years but is established only by first disclosure in the UK (which, as discussed below, can prove problematic if the first unveiling of a design takes place at Salone).
registered design rights (UK): protect the appearance of the whole or part of a product, resulting from its lines, contours, colours, shape, texture, materials or ornamentation. To qualify for registration, a design must be new and have individual character. An application must generally be made within a 12‑month grace period following first disclosure, regardless of where the first disclosure takes place (so a first unveiling at Salone can still be followed by a UK application within 12 months). Protection lasts for five years from registration and can be renewed every five years, up to a maximum term of 25 years. In practice, registered designs are typically stronger and easier to enforce than unregistered rights and are therefore recommended as a front-line protection for brands and designers when a design has long‑term commercial potential.

copyright: where a design is determined to be a work of artistic craftsmanship, it may qualify for copyright protection lasting 70 years after the author or designer’s death. However, because copyright is not a registrable right, its existence is ultimately determined by the courts based on the specific facts of the case. A notable example where copyright was recognised is the Eames DSW chair, following the CJEU’s decision in Kwantum v Vitra (24 October 2024). By contrast, the WaterRower decision (WaterRower Ltd v Liking Ltd (t/a Topiom) [2024] EWHC 2806 (IPEC)) illustrates the limits of copyright in design where, despite its aesthetic appeal, the WaterRower was held to not qualify as a work of artistic craftsmanship and therefore did not benefit from copyright protection under UK law.

patents: protect technical inventions (how something works, rather than how it looks) and can offer protection for up to 20 years from filing, subject to annual renewal fees. Because patent applications generally must be filed before first disclosure, they require planning well in advance of any public launch. Notable examples where patent protection has played a role include Anglepoise, whose original spring‑balance mechanism was protected by patents, and Achille and Pier Giacomo Castiglioni’s Arco lamp, which was initially protected by patents before later being recognised as capable of benefiting from copyright protection following Flos v Semeraro (CJEU, 2011).

Designers should also consider registering their name, or studio name, as a trade mark. This is commonplace in the fashion industry but perhaps less well appreciated in the design community. A designer’s name, or studio name, is their brand, and registration protects their position. It also provides designers with a clear legal footing when entering into collaborations, as well as offering certainty to brands.

Collaborations

Eagerly anticipated collaborations this Salone include the launch of The Eames Pavilion System developed by the Eames Office in collaboration with Kettal and exhibited at Triennale Milano from 20 April to 10 May; the Radical Home by Italian Radical Design, which combines reissues from Gufram and Memphis with new designs by Faye Toogood and Objects of Common Interest for Meritalia; and Philippe Malouin’s reimagining of Alessi’s iconic moka coffee maker.

The best collaborations are greater than the sum of their parts, enabling brands to benefit from cutting‑edge designs and the creative direction and positioning of star designers, while designers benefit from the prestige of working with globally recognised brands, access to specialist materials and production expertise, and a platform to present their creations to a global audience.

However, each collaboration raises a familiar, but often under-examined, set of questions: what each party brings to the table (their “background IP”); who owns any intellectual property created through the collaboration (the “foreground IP”); how the designer is credited; who can use what, where and for how long; and how the commercial value of the collaboration is shared between the parties.

From the designer’s perspective, it is essential that their pre-existing design language, aesthetic approach and underlying design know-how are protected, and that they are adequately paid, not only for the initial work, but also for the promotion and commercialisation of the collaborative designs. This is where the agreement should strike an optimal balance of upfront fees and ongoing royalties, as part of a long‑term strategy to consolidate and accumulate value across a broader portfolio of work.

From the brand’s perspective, it is equally important that its brand identity, brand codes, iconic styles, logos, emblems and colourways are protected, and that it secures the rights necessary to market the collaborative creation for a sufficient term, territory and scope of use to support a sustainable long-term business model.

Working positively together, designers and brands can focus and invest in a smaller number of partnerships that offer greater creative and strategic alignment and create more long-term value as a result. However, this requires planning and foresight, not only to identify the right partners, but also to ensure that commercial terms and IP ownership are agreed at the outset, and that the contract is signed before work commences. This is particularly important as, absent an agreement to the contrary, copyright law provides that commissioned work will vest in the designer rather than the commissioning brand, which could run contrary to the commercial assumptions on which the collaboration is based.

Conclusion

Salone offers designers and brands a unique opportunity to showcase their designs to a growing worldwide audience. However, to make the most of this opportunity, we recommend considering the following key points:

create evidence packs for designs so that you can demonstrate when a design existed and what it comprised
consider first disclosure. SUD protection requires first disclosure in the UK, so designers and brands should consider coordinating UK-first press releases or a simultaneous UK presentation to ensure that novelty is preserved
where designs have long-term commercial potential, consider registered designs as early as possible, and in any event within the 12-month grace period following first disclosure
where designs incorporate technical innovation, consider whether patent protection may be available, remembering that patent applications generally must be filed before first disclosure
for legacy designs approaching the end of their 25-year registered design term, it may be worth assessing whether copyright could offer longer-term protection, depending on the nature of the design and how it has been created and commercialised
where product shapes or features have become so well known that they function as a badge of origin, consider whether registration as a trademark may offer an opportunity for long‑term protection, potentially lasting in perpetuity through successive, renewable 10‑year terms
ensure that agreements are in place that cover all key aspects of collaborations before the design work begins.

By addressing these questions as early as possible in the design process, designers and brands can make IP a fundamental part of their design strategy, helping them to identify complementary creative and strategic partners, reach agreements which are mutually beneficial, protect their respective intellectual property and maximise its value, and in doing so turn Salone from a once-a-year moment of exposure into a key part of a long‑term design legacy.

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Shoosmiths strengthens Intellectual Property team with Partner hire

Wed, 8 Apr 2026 00:00:00 +0100

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Press release | 2 MIN READ

Shoosmiths strengthens Intellectual Property team with Partner hire

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Shoosmiths is pleased to announce the appointment of France Delord as a partner in its Intellectual Property team in London.

Published: 8 April 2026

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France joins from Taylor Wessing, where she built a strong reputation advising major international brands on complex, cross-border IP matters. Dual qualified in UK and French law, France brings extensive experience in managing large, international trade mark portfolios and commercially driven IP strategies, from the prosecution of trade mark registrations to infringement actions.

France’s arrival further bolsters Shoosmiths’ leading trade mark and brand practice and strengthens the firm’s capabilities across its key sectors, including Consumer & Retail, Automotive and Technology. France is particularly well known for managing large-scale international trade mark portfolios across multiple jurisdictions.

Robin Webb, Head of Commercial at Shoosmiths, said: “We are thrilled to welcome France to the firm and our growing IP team. Her cross-border and deep sector expertise, strong relationships and collaborative approach will support us as we help our clients navigate increasingly complex international IP landscapes. Her appointment also reflects our commitment to investing in the firm’s client offering and the delivery of our 2030 growth ambition.”

Andrew Brennan, Head of Intellectual Property at Shoosmiths, said: “France’s appointment, following our strategic recruitment of a specialist brands team from Locke Lord last year led by Dominic Farnsworth and Leigh Smith, marks another important step in the evolution of our brands offerings in the UK and across Europe. The team already provides a full range of brand services to some of the world’s most recognisable technology and consumer brands, and France further strengthens our ability to deliver this work at scale, reflecting our ambition to be the go‑to adviser for sophisticated brand owners.”

France Delord said: “I am delighted to be joining Shoosmiths at such an exciting time in its journey. The firm’s focus on innovation, and its use of technology and data to deliver efficient, high‑quality outcomes for clients, closely aligns with my own approach. I am looking forward to working with colleagues across Shoosmiths to help national and international clients manage and protect their brands effectively.”

France has been recognised as an ‘IP Star’ by Managing Intellectual Property every year since 2023 and featured in Who’s Who Legal: IP 2023. She has also been recognised for championing innovation in legal service delivery for brands, including leveraging AI platforms, and for leading initiatives in diversity and inclusion.

France’s addition continues strong growth momentum in London, with the firm adding 18 lateral partners since April 2025 as it continues to deliver on its dynamic 2030 strategy. These additions, which include banking and finance lawyers John Dawson and Graham Knight, technology lawyer Sarah Reynolds, real estate finance lawyer James Salford and real estate development lawyer Jasvinder Sahotay, deepen capabilities across Shoosmiths’ three core practices in Corporate, Litigation and Real Estate and underline the firm’s strength in key sectors.

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From Kitchen to Cask: Why TV chef James Martin’s trade mark bid fell flat

Mon, 30 Mar 2026 00:00:00 +0100

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Why James Martin’s trade mark bid failed

A look at the TV chef’s attempt to protect the ‘From Kitchen to Cask’ brand, and the key legal reasons his trade mark application was rejected.

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Decision: Macdonald & Muir Limited v James Martin (Series of Two) (BL O/1200/25) Court: UK Intellectual Property Office (Trade marks)
Hearing officer: L. Nicholas
Decision link: https://www.ipo.gov.uk/t-challenge-decision-results/o120025.pdf
Key issues: Identity of marks, likelihood of confusion, distinctiveness of earlier mark, evidence of genuine use and specification clarity

Contested marks

JAMES MARTIN

JAMES MARTIN'S

(SERIES OF 2)

Earlier marks

(The first earlier registration)

JAMES MARTIN's
(The second earlier registration)

JAMES MARTIN

Published: 30 March 2026
Authors: Anastasia Fowle

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Introduction

Celebrity chef James Martin tried to expand his brand from TV and cookbooks into the drinks market. To do that, he applied to trade mark the names “James Martin” and “James Martin’s” for a range of alcoholic and non alcoholic beverages. This made commercial sense given his existing wine ventures, but it placed him directly against an established whisky brand that had been using “James Martin’s” for well over a century.

That brand belongs to Macdonald & Muir, the company behind Glenmorangie and Ardbeg. Not only does their “James Martin’s” whisky date back to the 19th century, but they also hold registered trade mark rights dating from 1998 and were able to show that the whisky is still very much in ongoing commercial use.

Why was the application opposed?

Macdonald & Muir argued that:

They already owned the mark “James Martin’s” for whisky.
The chef’s proposed marks were identical to theirs.
Allowing his trade marks would confuse consumers, especially because both parties operate in the drinks sector.
Their brand still has a real presence in the market which was shown through detailed bottling records, invoices and export evidence confirming more than 11,000 bottles produced and sold between 2017 and 2022.

In short, they showed that this wasn’t just a “historic” brand but an actively used one.

What the IPO decided

After a full hearing in January 2025, the UK IPO ruled in favour of Macdonald & Muir.

The decision came down to a few key findings:

1. the marks were identical (word for word).

2. the earlier whisky brand had inherent distinctiveness, strengthened by its long commercial history.

3. even though James Martin had applied for a wider range of drinks, many were similar enough to whisky to matter.

4. because the marks were identical, the likelihood of confusion was high and consumers could very easily assume that James Martin’s drinks came from or were related to the whisky brand.

As a result, the IPO refused the chef’s application and ordered him to pay £1,900 towards the opponent’s legal costs.

Why heritage matters in the drinks industry

One important element of the ruling was the strength of Macdonald & Muir’s legacy brand. Although whisky production often involves small batch releases and long ageing periods, the IPO accepted that lower volumes do not undermine continued commercial activity. What matters is whether the brand remains present in the market and recognisable to consumers.

This case illustrates a broader point: heritage spirits brands carry significant legal protection, even when production levels are modest.

Why broad specifications can backfire

In this case, the applicant’s specification covered a very wide range of beverages which included alcoholic, non alcoholic, low alcohol, spirits, beers, wines, and cocktails. Because the list was so broad, the Hearing Officer was required to:

compare the applicant’s long list of goods against the opponent’s single item (“whisky”);
find similarity even where it was low, simply because the goods fell within the wider drinks market.
conclude that identical marks even low similarity was enough to refuse registration.

A wide, catch all specification increases the chance of overlap with earlier rights which includes overlap that may only be “low similarity” but still sufficient to cause refusal. Had the specification been narrower, more commercially focused, and properly delimited, the conflict with the opponent’s whisky mark might have been reduced or avoided.

How this compares with Jo Malone and Elizabeth Emanuel

The outcome in James Martin’s case sits interestingly beside disputes involving designers such as Jo Malone and Elizabeth Emanuel, both of which turn on the commercialisation of personal names.

In those cases, the courts looked at what happens when a brand that uses someone’s name has been sold or transferred, and whether the original creator is still allowed to use their own name without infringing the brand they once helped to build.

Jo Malone was prevented from using “Jo Malone” for new fragrance ventures after selling her business to Estée Lauder, because the name had become a trade mark owned by the purchaser. This issue has raised its head again in only the last few days as it appears that Estee Lauder has issued proceedings against Ms Malone for use of her name;
Elizabeth Emanuel, the designer behind Princess Diana’s wedding dress, similarly lost the ability to trade under “Elizabeth Emanuel” once the brand and goodwill were sold.

These cases highlight a principle: personal names can become commercial assets entirely separate from the individual.

By contrast, James Martin’s dispute arose at the registration stage, not following a sale of goodwill. Jo Malone and Emanuel often appear as defences to infringement raised by individuals seeking to justify continued use of their own name. They are not typically deployed as a basis for obtaining a new registration.

Here, the obstacle was more fundamental: Macdonald & Muir already owned “James Martin’s” as a longstanding whisky brand. The chef’s mark was legally identical to an earlier right, leaving no room for successful registration.

Key lessons for brand owners

1. A famous name isn’t a free pass

Even celebrities cannot override pre-existing rights. Earlier trade marks in particular historic ones will always carry significant weight.

2. Evidence is everything

Invoices, bottling records, export logs and photographs were central to Macdonald & Muir’s success. In trade mark disputes, good evidence wins cases.

3. Confusion is assessed holistically

Where marks are identical, the threshold for similarity of goods is lower. Distinctiveness and legacy strengthen the opponent’s position.

4. Draft carefully and completely

Missing schedules or vague specifications can undermine an otherwise strong application.

Conclusion

James Martin’s failed bid to trade mark his name serves as a clear reminder that heritage brands carry serious legal weight, especially in sectors built on long standing identity and consumer recognition.

For any business expanding into a new market:

carry out thorough clearance searches,
gather strong evidence of use where relevant, and
ensure trade mark specifications are drafted with absolute clarity.

In industries driven by history and reputation, a brand’s past isn’t just part of its story, it’s a major legal advantage.

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Clarks v Trek: The co‑existence agreement that went off‑road

Mon, 30 Mar 2026 00:00:00 +0100

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Clarks v Trek: The co‑existence agreement that went off‑road

The High Court has considered the scope & effect of a long standing trade mark co-existence agreement

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Decision: C. & J. Clark International Ltd v Trek Bicycle Corp[2026] EWHC 659 (ChD) Court: High Court, Intellectual Property List
Judge: Ian Karet OBE
Decision: Here
Issue: Registered Trade Mark Co-Existence Agreements

Published: 13 April 2026
Authors: Eloise Ryan

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Introduction

In C. & J. Clark International Ltd v Trek Bicycle Corp, the High Court has considered the scope and effect of a long‑standing trade mark co-existence agreement and its interaction with claims for trade mark infringement, invalidity and non‑use, in the context of the parties’ evolving commercial activities in footwear and sports goods. The case provides detailed guidance on contractual construction in trade mark co-existence agreements.

Background

Clarks is a well‑known UK footwear manufacturer, having sold shoes under its TREK mark, including DESERT TREK, for over fifty years. Trek is best known for bicycles and cycling equipment, having used its TREK mark in relation to cycling clothing for decades.

The dispute centred on a global co-existence agreement entered into in 2001. The agreement was intended to preserve the status quo between the parties, its key features including:

Trek was permitted to use TREK for cycling‑related clothing, “but not including footwear” (clause 6 of the agreement)
Clarks was permitted to use and register TREK for footwear, clothing and headgear, provided it did not use the mark on goods” adapted for wear when cycling, commemorating cycling events or participating in sports or fitness’” (clause 3 of the agreement)
each party agreed that the agreement should “bind and shall inure to the benefit of the respective affiliates, licencees, assigns and successors in business of the parties hereto” (clause 14)
each party agreed not to challenge the other’s registrations within the agreed fields (clauses 1, 2, 4 and 5 of the agreement)
the agreement was worldwide, unlimited in time, and binding on affiliates and licensees (clauses 11 and 14 of the agreement)

Issues

Since the agreement was concluded, each party had gradually encroached into the other’s field. By trial, the court identified the following principal issues to be determined:

whether Trek breached clause 6 of the agreement and infringed Clarks’ registered trade marks under sections 10(1), 10(2) and 10(3) Trade Marks Act (“TMA”) by selling TREK‑branded cycling shoes and insoles
whether Clarks breached clause 3 of the agreement by selling TREK‑branded footwear adapted for sports or fitness
whether Clarks consented to or waived its rights in relation to Trek’s conduct in discussions between the parties in 2018
whether Trek was in breach of clause 6 of the agreement as a result of Lidl’s sale of LIDL-TREK shoes
whether Trek’s UK trade marks covering footwear were invalid under sections 47 TMA
whether Clarks’ TREK registrations should be partially revoked for non‑use under section 46 TMA

Decision

Applying Wood v Capita [2017] UKSC 24 and Sara & Hossein Holdings v Blacks Outdoor [2023] UKSC 2, the judge emphasised that co-existence agreements must be interpreted objectively and as a whole. The purpose of the agreement was to preserve a clear commercial divide between the parties’ footwear and cycling businesses. Addressing each of the issues above:

the court rejected Trek’s argument that the phrase “but not including footwear” did not prohibit sales of shoes. “Footwear” was given its ordinary meaning, covering shoes and boots, including specialist cycling shoes. The agreement did not distinguish between different categories of shoes. It followed that the court held that Trek infringed Clarks’ registered TREK marks by selling cycling shoes under section 10(1) and 10(2) TMA. On section 10(3), although Clarks’ marks were found to have a reputation, the court held there was no unfair advantage, dilution or tarnishment. Trek was developing its own cycling brand rather than riding on Clarks’ coat‑tails
the court held that the phrase “adapted for wear when cycling, commemorating cycling events or participating in sports or fitness” in clause 3 of the agreement meant “suitable for”, without requiring specialist technical adaptations. Whether footwear fell within that description depended on factors such as marketing, design briefs, materials, appearance and consumer messaging
as to consent or waiver, Trek argued that a 2018 meeting amounted to Clarks consenting to Trek’s use of TREK on cycling shoes. The court rejected this: at most Clarks’ representative had suggested that the issue “should not be a problem”, which fell short of clear consent, particularly in light of the contract’s formality and global scope
with regard to Lidl’s sale of “Lidl‑Trek” trainers and slippers (in connection with the professional cycling team it sponsored with Trek), although Trek argued these were third‑party acts, the court held that Lidl was a licensee for the purposes of the agreement. As clause 14 of the agreement rendered Trek responsible for licensees’ acts, sales of Lidl‑Trek footwear therefore breached the agreement
turning to Trek’s allegation that Clarks breached the agreement by expanding the TREK brand into sports and fitness footwear, while the court conducted that legacy outdoor shoes such as Wave Trek were permitted, several newer “ATL TREK” models were found to be adapted for sports or fitness and therefore in breach. The court placed significant weight on Clarks’ internal product documents, marketing language and categorisation of shoes as “sports” or “sport active”
on validity and revocation of the trade marks, Trek’s counterclaim for partial revocation of Clarks’ TREK marks for non‑use failed. Clarks’ use on a wide range of footwear, including sports and fitness‑suitable shoes, was sufficient. Several Trek registrations covering footwear were declared invalid under section 47 TMA due to conflict with Clarks’ earlier marks. However, bad faith allegations against Trek were rejected. Filing applications covering footwear was not inconsistent with the agreement and did not fall within recognised categories of bad faith
Defences of consent, honest concurrent use and statutory acquiescence failed

Conclusion

Overall, the court concluded that:

Trek infringed Clarks’ trade marks under sections 10(1) and 10(2) TMA by selling TREK‑branded cycling shoes and insoles, but not section 10(3) as there was no unfair advantage, dilution or tarnishment
Trek breached the co-existence agreement both by selling TREK‑branded cycling shoes and through Lidl’s sales of team‑branded footwear
Clarks also breached the agreement by selling certain TREK shoes adapted for sports or fitness
Trek’s UK registrations covering footwear were invalid, while Clarks’ trade marks remained intact

Comment

The judgment provides three practical takeaways for those drafting co‑existence agreements:

define your “no‑go zone” precisely. “Sports,” “fitness,” and “footwear” sound obvious until the market evolves and athleisure makes everything “multi‑purpose.”
put variations in writing. If your position is “we agreed it over coffee in 2018,” expect the court to ask for the document trail.
don’t forget about licensees. If the agreement binds affiliates/licensees, your partner’s promotions can become your problem.

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Hadid enough: How to terminate a licence

Wed, 25 Mar 2026 00:00:00 GMT

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Hadid enough: How to terminate a licence

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Decision: Zaha Hadid Limited v The Zaha Hadid Foundation [2026] EWCA Civ 192
Court: Court of Appeal
Judge: Sir Colin Birss C. (Jackson LJ and Popplewell LJ agreeing)
Decision: Here
Issue: Implied rights of termination in trade mark licences

Published: 25 March 2026
Authors: Dominic Farnsworth

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Introduction

In Zaha Hadid Ltd v The Zaha Hadid Foundation, the Court of Appeal has considered when it is appropriate to imply a mutual right of termination on reasonable notice in a trade mark licence. The court drew a distinction between a perpetual contract and an indefinite contract, with the latter potentially being terminable. The judgment is essential reading for those involved in the drafting and licensing of trade marks.

Background

Dame Zaha Hadid was an internationally renowned architect. Her practice was named Zaha Hadid Limited (‘Company’). She also established the Zaha Hadid Foundation (‘Foundation’) to preserve her work and legacy. After her departure from the Company, the Company continued to use various trade mark registrations for ZAHA HADID (‘Registrations’) under the terms of a trade mark licence (‘Licence’) with Dame Zaha, and following her death in 2016, the Foundation.

The core of the issue to be determined was that, whilst the Company wished to continue to use the Registrations, it also wanted to renegotiate the level of licence fee which it considered to be excessive. To do this, the Company needed to be able to terminate the Licence on reasonable notice, if needed. The Foundation asserted that the Company was prevented from terminating under the terms of the Licence.

The key contractual clauses were the following:

Clause 6.1 required the Company to pay to the Foundation a royalty of 6% of ‘Net Income’ for the ‘Licensed Services’, a term drafted so widely that it covered all the Company’s services, whether it used the Registrations or not;
Clause 12.1 stated that ‘This agreement shall commence on the Effective Date and shall continue indefinitely, unless terminated earlier in accordance with this clause 12’ (our emphasis). Clause 12.2 onwards then only provided the Foundation with the right to terminate on three months’ notice.

Therefore, whilst the Licence provided that the Foundation was able to terminate on 3 months’ notice, there were no express terms conferring such rights of termination on the Company.

At first instance, Adam Johnson J held in his decision of 20 December 2024 that the terms of the Licence did not permit the Company to unilaterally terminate it and that the Company was locked into the contract. The Company appealed the decision, arguing that an implied right of termination on reasonable notice should be included for both parties and, if not, the contract should be found void for constituting an unreasonable restraint on trade.

Court of Appeal decision

The Court of Appeal overturned the first instance decision. The court adopted the two stage test in Winter Garden Theatre (London) Limited v Millenium Productions Ltd [1948] AC 173, which requires the examination of whether the parties intended the Licence to be perpetual in nature or indefinite. If indefinite, the circumstances of the individual case may be such that there was an understanding that the Licence could be terminable at some point.

Considering the Licence as a whole and its commercial context, the Court of Appeal held that the Licence was indefinite (not perpetual) and that there was an implied right for both parties to be able to terminate the contract on reasonable notice. The Court pointed to the following factors:

the use in clause 12 of ‘indefinitely’ suggested that the contract was indefinite, not perpetual;
Dame Zaha had anticipated that the Company may become independent and, if so, may want to change its name;
there were good reasons why the Company might reasonably want to change its name at some point in the future (for example, if structural deficiencies were detected in buildings that had been designed by Hadid, and the Company then wished to change name to reduce its association with her).

Notably, the Court of Appeal concluded that the fact that the Licence expressly provided unilateral rights of termination to the Foundation did not negate implied rights of termination. In particular, the Court of Appeal explained that the nature of a trade mark was that a Licensor would always want to have an express right of termination to address misuse of the trade mark, but this did not preclude the licensee being able to terminate as well.

Comment

The judgment is an important reminder that ‘perpetual’ and ‘indefinite’ are not synonyms and that, in some instances, the Court is prepared to go behind the express wording of an agreement and will imply terms to give the agreement commercial efficacy. An interesting point is that as an indefinite agreement terminable by either party on reasonable notice, the Foundation could terminate on either on 3 months’ notice or reasonable notice, and one may well be shorter that the other.

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Lease & desist: Landlords in the dock for counterfeit stock

Mon, 16 Mar 2026 00:00:00 GMT

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Lease & desist: Landlords in the dock for counterfeit stock

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While the shift towards online selling is undeniable, it is important to recognise that traditional brick-and-mortar shops continue to play a valuable role in retail. Ten years on we look at the important decision in Tommy Hilfiger Licensing LLC and Others v Delta Center a.s. (C 494/15) and its implications for landlords of tenants who infringe intellectual property.

Published: 16 March 2026
Authors: Eloise Di Pasqua & Shojibur Rahman

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Decision: Tommy Hilfiger Licensing LLC and Others v Delta Center a.s. (C 494/15)
Court: Court of Justice of the European Union
Judgment Date: 7 July 2016
Decision: Here
Key Issues: Intermediary liability, trade mark enforcement, counterfeit goods, scope of injunctions, responsibility of marketplace operators

Background

The dispute focused on the Pražská tržnice market in Prague, where independent traders were repeatedly caught selling counterfeit branded goods. The landlord, Delta Center, managed the market by leasing stall spaces, but did not participate directly in the sale of any goods.

Luxury brands such as Tommy Hilfiger, Lacoste, and Burberry made the bold decision to target the landlord of the sprawling Prague market. Their intent was to challenge whether a landlord facilitating trading could be compelled to help prevent ongoing trade mark violations. In doing so, they challenged the status quo of intellectual property enforcement, raising a question that remains highly relevant: can landlords be held responsible when their premises are used for the sale of counterfeit goods?

The issue ultimately came before the Court of Justice of the European Union, which was asked to decide if a landlord of a physical market could be subject to injunctions requiring them to help prevent trade mark infringement by their tenants. In particular, could a landlord providing the infrastructure for infringement be classified as an ‘intermediary’ under EU intellectual property law?

Why was the landlord challenged?

The brand owners chose to focus on the landlord, not the individual traders, for several reasons:

counterfeit goods were being sold repeatedly within the marketplace;
the landlord was providing the commercial infrastructure that enabled these sales;
enforcement against individual traders was largely ineffective, as sellers could easily vanish or return under new identities.

The argument was that landlords were in a unique position to implement reasonable, proportionate safeguards, such as enhanced contractual controls or oversight, to curb the sale of counterfeit goods. The crucial legal question was whether a landlord, even without directly selling infringing products, could be required to act when their marketplace was repeatedly used for trade mark infringement.

Decision

The Court of Justice delivered a landmark ruling: operators of physical marketplaces can indeed be treated as intermediaries if their facilities are used by others to infringe intellectual property rights. This decision established that the same enforcement principles applying to online platforms also apply to traditional markets.

The ruling was based on several key findings:

leasing trading space is a commercial service enabling sales to the public;
intermediaries may be subject to injunctions requiring them to help prevent infringements;
physical and online marketplaces are treated alike for enforcement purposes;
crucially, the Court stressed that injunctions must be proportionate, and landlords cannot be obliged to constantly monitor all traders.

Commentary

This judgment aligned physical marketplace landlords with the established doctrine of intermediary liability, previously focused on online platforms. By confirming landlords as intermediaries, the Court expanded the options for brand owners seeking effective action against persistent counterfeiting.

Landlords are required to take proportionate, reasonable steps once they become aware of infringement, striking a balance between protecting trade marks and recognising market operators’ practical limits.

For landlords and market organisers, this serves as a lasting reminder: providing commercial space is not a neutral act when it is used for illegal trade. Awareness and inaction can trigger court-ordered obligations, even if the landlord is not directly involved in selling infringing goods.

The Court’s decision confirmed that enforcement can focus on the landlord who enables infringement, broadening the toolkit for trade mark owners. This significantly strengthened practical enforcement options for trade mark owners.

Key lessons for landlords

This ten-year-old ruling still sends a clear message to businesses providing commercial infrastructure:

you may be required to act even if you are not the infringer. Leasing stalls to traders who use them for counterfeit sales can trigger court-ordered obligations;
passivity is risky. Repeated problems demand reasonable, proportionate steps, such as improved trader vetting or clearer contracts;
physical markets are aligned with online platforms so that the same principles apply to both;
landlords are not automatically liable for damages, but they cannot remain passive when their premises are used for illegal trade.

Key lessons for brand owners

intermediaries are integral to enforcement. Platforms and market operators may face obligations when their services enable infringement;
physical and digital markets are treated alike. The same enforcement principles apply in both environments;
injunctions are effective tools and the courts can require intermediaries to take proportionate preventative steps;
targeting landlords can be more efficient. Acting against the landlord is often more practical than pursuing individual sellers.

Conclusion

Ten years on, Tommy Hilfiger Licensing LLC and Others v Delta Center a.s. stands as a reminder: landlords cannot avoid responsibility merely because they do not personally sell counterfeit goods. If their services enable infringement, courts can require them to act.

For brand owners, this strengthened enforcement tools. For operators, it highlights that providing commercial space carries legal responsibilities. As the distinction between online and physical marketplaces continues to blur, the law treats them consistently - a lesson that remains as relevant as ever.

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From orchard to courtroom: A trade mark dispute unpacked

Fri, 6 Mar 2026 00:00:00 GMT

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From orchard to courtroom

A trade mark dispute unpacked

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Decision: Wang Zeng International Ltd v Bing Bing Foods Ltd & Ors [2026] EWHC 360 (IPEC)
Court: Intellectual Property Enterprise Court
Judge: Her Honour Judge Melissa Clarke
Judgment: Here
Issues: Descriptiveness, distinctiveness, genericism, bad faith

Published: 6 March 2026
Authors: Richard Blatchly

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Introduction

Following the Intellectual Property Enterprise Court’s decision Dryrobe v Caesr, the court has again considered issues of descriptiveness, distinctiveness and genericism.

Here, Wang Zeng alleged that Bing Bing infringed its trade marks for MOUNTAIN PEAR and YU LU FRAGRANT PEAR for Asian pears sold in the UK. Bing Bing denied infringement and counterclaimed that the trade marks were invalid on the basis, among other things, that the marks were devoid of distinctive character, descriptive, and had become generic.

The trade marks & alleged infringements

Wang Zeng relied on four trade marks covering fresh fruit and related retail services. These included the English-language terms "MOUNTAIN PEAR" and "YU LU FRAGRANT PEAR" as well as their Chinese character equivalents. It was accepted that both Chinese-language signs translated directly into the corresponding English terms. Bing Bing was using those terms on packaging for its pears.

The defences & counterclaims

Bing Bing asserted that the pear names, MOUNTAIN PEAR and YU LU FRAGRANT PEAR were the variety names of the pear. It argued, therefore, that the use of the signs did not affect the “essential functions” of the trade marks and their use was descriptive of their kind and quality and in accordance with honest commercial practices in accordance with s. 11(2) of the Trade Marks Act 1994 (TMA).

Bing Bing also sought to invalidate and revoke all four marks on the following grounds:

s.3(1)(b), TMA: Devoid of distinctive character
s.3(1)(c), TMA: Descriptive of kind, quality or characteristics
s.3(1)(d), TMA: Customary in current language or established trade practice
s.3(6), TMA: Applications made in bad faith
s.46(1)(c), TMA: Marks had become generic in consequence of acts or inaction of the proprietor

Issues

Broadly, the issues to be determined fell into the following principal groups:

Descriptiveness & distinctiveness

Here, HHJ Clarke rejected the defendants’ primary contention that MOUNTAIN PEAR and YU LU FRAGRANT PEAR were varietal names:

for MOUNTAIN PEAR, the judge accepted unchallenged evidence that Wang Zeng had coined the term in 2019 as a brand for Gong pears newly introduced to the UK
for YU LU FRAGRANT PEAR, although the Chinese characters referred to a known hybrid cultivar in China, the court held that there was no evidence this name was known in the UK at the relevant date

Genericism

HHJ Clarke was not convinced by the defendants’ evidence, which largely consisted of:

screenshots from websites dated after the relevant dates
documents from outside the UK with no evidence of UK consumer exposure
testimony the judge found unreliable or contradictory

By contrast, Wang Zeng showed consistent use of the trade marks with ® symbols on packaging and active enforcement against unauthorised use. As a result, the counterclaim for revocation on grounds of genericism therefore failed.

Bad faith

The allegation that Wang Zeng sought an illegitimate monopoly over generic pear names was dismissed:

the judge accepted Wang Zeng’s unchallenged evidence that the founder did not believe the terms were generic when the applications were filed
evidence of other trade mark filings by Wang Zeng did not demonstrate a pattern of bad-faith conduct

Accordingly, all claims of invalidity were rejected, and Wang Zeng’s trade marks were found to be infringed.

Key issues considered

Descriptiveness & distinctiveness

The court rejected Bing Bing’s argument that the terms were varietal names:

MOUNTAIN PEAR: The evidence showed that Wang Zeng had created the term in 2019 as branding for Gong pears when introducing them to the UK.
YU LU FRAGRANT PEAR: Although this term was known in China as a hybrid cultivar name, there was no evidence that UK consumers were familiar with it at the relevant date.

Commentary

The case raises a number of interesting points:

while pears are often grown near mountainous regions, the decision suggests that the threshold for distinctiveness in such contexts may be relatively low
even though the Chinese characters for YU LU FRAGRANT PEAR described a known cultivar, the ability to register the English transliteration indicates that importers of new varieties may be able to obtain enforceable trade mark rights over names with descriptive origins, provided they are not familiar to UK consumers

Conclusion

The decision is a sharp reminder that in a crowded and competitive marketplace, brand protection is not a luxury, it is a commercial necessity.

At the core of the judgment is a clear and robust affirmation of fundamental trade mark principles, principles that remain as relevant to everyday goods as they are to high profile brands. Most importantly: registration matters. Wang Zeng’s registered rights provided a solid foundation for enforcement.

The case is particularly significant because it confirms that meaningful trade mark protection is not limited to premium or high-profile brands. Even everyday products (such as fresh produce) can attract robust protection. Distinctiveness does not require creativity or complexity, it simply requires a mark to distinguish one trader’s goods from those of another. When it does, it becomes a valuable commercial asset the courts are willing to defend.

For brand owners, the judgment offers several clear, practical lessons:

register early: proactive trade mark registration delivers powerful enforcement rights and significantly strengthens your position if disputes arise
be consistent: regular, consistent use of branding builds distinctiveness, goodwill and reputation - all critical in infringement claims
monitor the market: early detection of infringing activity allows swift, proportionate action before commercial or reputational harm escalates

The decision also highlights the appeal of IPEC as a forum increasingly favoured by businesses seeking efficient and cost effective resolution of intellectual property disputes. With active case management and capped recoverable costs, it offers a pragmatic and accessible route to enforcement for businesses of all sizes, not just household names.

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Oatlawed: The verdict on ‘Post Milk Generation’

Wed, 25 Feb 2026 00:00:00 GMT

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Oatlawed: The verdict on ‘Post Milk Generation’

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Decision: Dairy UK Ltd v Oatly AB [2026] UKSC 4
Court: Supreme Court
Judges: Hamblen L, Burrows, L, Hodge, L, Briggs L, Stephens L
Judgment: Here
Issue: S 3(4) of the Trade Marks Act 1994

Published: 25 February 2026
Author: Irem Alici

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Background

The Supreme Court’s decision in Dairy UK Ltd v Oatly AB brings a long running trade mark dispute to an end and is an important ruling for the fast growing alternative food and drinks sector.

The dispute arose from Oatly’s registration in April 2021 of the trade mark “POST MILK GENERATION”. The mark was registered for oat‑based food and drink products in classes 29, 30 and 32, as well as for T‑shirts in class 25.

Dairy UK, the trade association representing the UK dairy industry, applied to invalidate the mark under section 3(4) of the Trade Marks Act 1994 which states that:

“A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law other than law relating to trade marks.”

It argued that use of the mark was prohibited by Regulation (EU) No 1308/2013, legislation designed to help harmonise the market in agricultural products. In particular, Art 78 of the Regulation explains that certain “designations” should only be used for certain products. These “designations” are listed in Annex VII which includes (subject to certain exceptions) the “designation” MILK for milk and milk products intended for human consumption.

The United Kingdom Intellectual Property Office Hearing Officer agreed with Dairy UK in relation to the oat‑based food and drink products, but not the T‑shirts. That decision was overturned by the High Court, which held that the mark did not “designate” milk because it was not used as the name of a product. The Court of Appeal disagreed, finding that the use of “milk” within the mark fell within the regulatory prohibition. Oatly then appealed to the Supreme Court.

Issues

The appeal raised two main questions of statutory interpretation.

The first concerned the meaning of “designation” in Art. 78. Oatly argued that “designation” referred only to the name of a product. On that basis, “POST MILK GENERATION” did not infringe the prohibition, because it did not describe or name oat‑based food or drink as “milk”. Dairy UK argued for a broader interpretation, submitting that “designation” covers any use of a protected dairy term in relation to a product, whether or not it is used as the product name.

The second issue concerned the exception in Annex VII, which allows otherwise prohibited designations where they are “clearly used to describe a characteristic quality of the product”. Oatly argued that “POST MILK GENERATION” clearly conveyed that the products were milk‑free. Dairy UK disagreed, contending that the phrase was ambiguous and consumer‑focused, referring to a group of consumers rather than a characteristic of the products themselves.

In addressing both issues, the Supreme Court applied ordinary principles of domestic statutory interpretation, while recognising the EU origin and purpose of the legislation. The Court stressed that the regulatory regime is concerned not only with avoiding consumer confusion, but also with maintaining fair conditions of competition in agricultural markets.

Decision

The Supreme Court unanimously dismissed Oatly’s appeal.

On the first issue, the Court rejected the narrow interpretation of “designation”. It held that, in context, the term is deliberately broader than “name” or “sales description” and covers the use of protected dairy terms in relation to products generally. As a result, the inclusion of the word “milk” within the composite mark “POST MILK GENERATION” amounted to the use of a prohibited designation in relation to non‑dairy food and drink.

The Court also confirmed that the prohibition applies regardless of whether consumers are likely to be misled. The aim of the legislation is not limited to preventing confusion, but also includes protecting dairy terms and preserving the competitive framework established by the Regulation.

On the second issue, the Court found that the mark was not saved by the exception for designations describing a characteristic quality. “POST MILK GENERATION” was held to convey a generational or ideological message directed at consumers, rather than clearly describing a product attribute such as being milk‑free. Even if some consumers might draw that inference, it was indirect and insufficiently clear to meet the statutory test.

The appeal was therefore dismissed. The trade mark remains invalid for oat‑based food and drink products, but valid for T‑shirts.

Commentary

While ostensibly a narrow trade mark issue, this could have wider implications for the alternative food and drinks sector. In particular, Regulation (EU) No 1308/2013 also applies to certain “designations” for: beef and veal; wine; poultry; spreadable fats; olive oils and table oils. Those businesses supplying alternatives for these products may expect increased scrutiny on their trade mark filings.

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From brand to byword? Stopping the slide to genericide

Tue, 24 Feb 2026 00:00:00 GMT

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From brand to byword?

Stopping the slide to genericide

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As brands grow, cultural fame can become legal risk. Genericide is rising, and every category‑defining business must act now to protect what makes its trade mark distinctive.

Published: 24 February 2026
Authors: Antony Craggs

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When a brand achieves substantial commercial success and cultural significance, the trade mark may be used by the public as shorthand for the product category itself. Over time, this transformation from a distinctive indicator to a generic term can lead to revocation of the trade mark.

From BJORNEKULLA, KORNSPITZ, SPAMBUSTER to DRYROBE, there has been a long line of cases addressing genericism. In the latter, Dryrobe successfully defended its DRYROBE mark against claims of genericide, but the case underscores a wider tension: distinctiveness is both the foundation of trade mark protection and the attribute most vulnerable to erosion through linguistic drift.

This article outlines the legal framework governing genericide, highlights key authorities, and offers practical steps for brand owners to prevent their marks from sliding into the generic.

What is genericide?

Genericide describes the process by which a once‑distinctive trade mark becomes the common name in the trade for the goods or services it is registered. The statutory mechanism is found in s.46(1)(c) Trade Marks Act 1994, which provides that a trade mark may be revoked if, after registration: “…in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered.”

Its rationale is clearly articulated in Kerly’s: the register must not be cluttered with monopolies over terms that the public and traders need to use descriptively.

While genericide is usually driven by public behaviour, it is triggered legally only where that behaviour can be attributed to the acts or omissions of the proprietor, showing how brand stewardship plays a central role in preserving distinctiveness.

“Tupperware” is the classic example of a mark walking the tightrope between fame and genericness. Although still a valid trade mark, global commentary frequently highlights how consumer vernacular threatens its distinctive character.

Other international examples include “thermos”, “aspirin”, and “escalator”. All of which lost trade mark significance in the US, which illustrates the universal risk that uncontrolled linguistic adoption by consumers can deplete even the strongest marks.

Legal test for genericide

Courts apply a fact‑sensitive “use as a mark” analysis to determine whether a sign still performs its essential function: identifying trade origin. Key factors include:

1. consumer perception

The central question is whether the average consumer uses the term to identify the trade mark owner’s product specifically, or to describe the product category more generally. Even widespread colloquial misuse is not determinative if consumers still recognise the term as a brand.

2. trade usage

If retailers, distributors or competitors adopt the term generically without correction, that weighs heavily in favour of genericism.

3. proprietor conduct

Section 46(1)(c) explicitly links revocation to the proprietor’s “acts or inactivity”. Failure to challenge misuse, educate the public, or maintain brand standards all create risk.

4. presentation of the mark

The court considers real‑world use: are the ® or ™ symbols used? Does packaging present the mark distinctively, or merely as product description?

Practical steps to prevent genericide

Brand owners can mitigate the risk of genericide through disciplined brand management:

1use the mark as an adjective, not a noun or verb: Prefer “DRYROBE® changing robe”, not “a dryrobe”. Correct employees, partners, and marketing teams who use it incorrectly.
apply ™ or ® consistently: Symbols reinforce to the public and the trade that the sign is a trade mark.
issue and enforce brand usage guidelines: Provide standard wording for press, retailers, ambassadors, and influencers. Require distributors to follow brand usage in listings and advertising.
monitor and police misuse: Monitor social media, e‑commerce platforms, and industry press. Send cease‑and‑desist letters where necessary. Challenge dictionary entries, product category labels, and retailer headings that use the sign generically.
avoid encouraging generic use through marketing: Never use the brand in lowercase if it is registered in uppercase. Avoid slogans or hashtags suggesting nounal use (e.g., “grab your dryrobe”).
educate consumers subtly: Blog posts, FAQs, and packaging can include reminders that the sign is a registered trade mark. Consider “BRAND® is the original [product type]” messaging.
maintain strong, distinctive brand presentation: Ensure packaging, logos, and website layouts highlight the mark’s “brand” function. Distinctive branding can reinforce trade origin.
document corrective efforts: If litigation arises, evidence of consistent enforcement is invaluable.

Conclusion

Genericide is a real and ongoing threat to brands, but it is not an inevitable consequence of commercial success. The Dryrobe litigation shows that the courts will protect strong, well‑managed brands, but only where proprietors actively preserve distinctiveness and resist misuse.

A trade mark is not a static property right. It depends on the perceptions of consumers, the behaviour of the trade, and the vigilance of the proprietor. With deliberate management, clear communication, and firm enforcement, even the most culturally prominent brands can avoid sliding into the generic.

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Brand interchange: Elbisco v Kerangus (BL O/0111/25)

Tue, 24 Feb 2026 00:00:00 GMT

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Brand interchange | 4 min read

Elbisco v Kerangus (BL O/0111/25)

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In Elbisco v Kerangus, the Appointed Person has upheld the Hearing Officer’s decision that Kerangus’ application for UK00003651180 (below) in classes 29 and 30 should not be registered in light of Elbisco’s earlier registration UK00003255468 (also below) in class 30.

Published 24 February 2025

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The decision provides a useful analysis of the average UK consumer’s approach to signs with Latin and non-Latin letters (in this instance Greek).

Background

On 4 June 2021, Kerangus applied for UK ‘180 in classes 29 and 30, including certain food products. Some six months later, Elbisco opposed the application relying on its earlier right, UK ‘468, registered for class 30, again including certain food products.

In response, Kerangus defended the opposition and commenced a cancellation action. Here, it challenged the validity of UK ‘468 (which includes the words απλά and APLA) on the basis of its earlier registration UK0003700115 (which includes a stylised version of απλά), depicted below. UK ‘468 was registered in classes 29 and 30 for certain food products.

In both instances, the parties relied on s. 5(2)(b) of the Trade Marks Act 1994.

Hearing Officer

The proceedings having been consolidated, the Hearing Officer concluded that:

the vast majority of average UK consumers would not understand Greek characters
as a result, the average consumer would deem Kerangus’ ‘115 mark to comprise the word element ANNA (not απλά)
further, the average consumer would consider the dominant element of ‘468 to be APLA (as απλά would not be readily articulable by the consumer)
as a result, ‘115 and ‘468 were visually and aurally similar to only a very low level and conceptually different
while the goods for which the respective marks were, in part, identical or similar, given the lack of similarity of the marks, there was no likelihood of confusion
by comparison, the Hearing Officer held that, where APLA was the dominant element of both ‘468 and ‘180, they were visually similar, aurally identical and conceptually neutral
where the goods were, in part, identical or similar, there was a likelihood of confusion
it followed that UK ‘468 remained valid, but UK ‘180 was not in relation to certain goods

Appointed Person

Kerangus appealed on several grounds, including flaws in the assessment of the overall impression of the marks, visual and aural comparison, and likelihood of confusion.

Where the grounds of appeal were primarily a submission that the Hearing Officer’s assessment was wrong in fact, not law, the Appointed Person was unwilling to deviate from the Hearing Officer’s conclusions.

In particular, the Appointed Person emphasised that an appeal is by way of review, not re-hearing. This was recently summarised by the Court of Appeal in Lidl Great Britain Ltd v Tesco Stores Ltd [2024] EWCA Civ 262, where Arnold LJ as follows:

“110. It is common ground that, in so far as the appeals challenge findings of fact made by the judge, this Court is only entitled to intervene if those findings are rationally insupportable: Volpi v Volpi [2022] EWCA Civ 464, [2022] 4 WLR 48 at [2] (v) (Lewison LJ). Equally, it is common ground that, in so far as the appeals challenge multi-factorial evaluations by the judge, this Court is only entitled to intervene if the judge erred in law or principle …”

The appropriate approach to be adopted by the appellate court was summarised in Axogen Corporation v Aviv Scientific Limited [2022] EWHC 95 (Ch):

“24. Although I was referred to numerous cases on the subject …. the approach of the appeal court to a statutory appeal under section 76(1) of the TMA is uncontroversial. I bear the following principles, relevant to the issues before me, firmly in mind:

i) The appeal is by way of a review, not a rehearing;

ii) The appeal court will allow an appeal where the decision of the lower court was “wrong” (see CPR 52.11). Neither surprise at a Hearing Officer’s conclusion, nor a belief that he or she has reached the wrong decision suffices to justify interference;

iii) The decision of the lower court will be “wrong” if the judge makes an error of law, which might involve asking the wrong question, failing to take account of relevant matters or taking into account irrelevant matters. Absent an error of law, the appellate court would be justified in concluding that the decision of the lower court was wrong if the judge’s conclusion was “outside the bounds within which reasonable disagreement is possible”;

iv) The approach required by the appeal court depends on a number of variables including the nature of the evaluation in question. There is a “spectrum of appropriate respect for the Registrar’s determination depending on the nature of the decision”, with decisions of primary fact at one end of the spectrum and multi- factorial decisions (of the type which the parties agree were made in this case by the Hearing Officer) being further along the spectrum.

v) In the case of a multifactorial assessment or evaluation, involving the weighing of different factors against each other, the appeal court should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle. Special caution is required before overturning such decisions.

vi) An error of principle is not confined to an error as to the law but extends to certain types of error in the application of a legal standard to the facts in an evaluation of those facts. The evaluative process is often a matter of degree upon which different judges can legitimately differ and an appellate court ought not to interfere unless it is satisfied that the judge’s conclusion is outside the bounds within which reasonable disagreement is possible;

vii) Another variable to be taken into account will be “the standing and experience of the fact-finding judge or tribunal”. Expert tribunals are charged with applying the law in the specialised fields and their decisions should be respected unless it is quite clear that they have misdirected themselves in law. Appellate courts should not rush to find such misdirections simply because they might have reached a different conclusion on the facts

viii) The appellate court should not treat a judgment as containing an error of principle simply because of its belief that the judgment or decision could have been better expressed; “The duty to give reasons must not be turned into an intolerable burden”. The reasons need not be elaborate. There is no duty on a judge, in giving her reasons, to deal with every argument presented by counsel in support of his case. It is sufficient if what she says shows the basis on which she has acted. The issues the resolution of which were vital to the judge’s conclusions should be identified and the manner in which she resolved them explained.

ix) In evaluating the evidence, the appellate court is entitled to assume, absent good reason to the contrary, that the first instance judge has taken all of the evidence into account.

It followed that ‘468 was valid, but ‘180 was invalid for certain goods.

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The rise & rise of the influencer

Mon, 16 Feb 2026 00:00:00 GMT

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Brand interchange | 3 min read

The rise & rise of the influencer

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Over the past few years, I’ve worked my way through a myriad of lifestyle, health and fashion “fixes.” I’ve abandoned UPFs, renounced red meat, gone organic, flirted with 0% beer, invested in a machine to grow herbs, bought a genius multitool for adventures, and succumbed to a “transformer” bag that promises to shift from backpack to briefcase “in seconds”, to make life more “efficient and enjoyable.” I have also downloaded an impressive number of apps, mostly to solve problems I didn’t know I had.

Published: 16 February 2026
Author: Andrew Brennan

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Predictably, none of this has transformed my life. I am not fitter, calmer, more stylish nor more productive. The herb machine sits idle, the multitool remains in its box, I’ve enthusiastically welcomed back red meat (and beer), organic shopping proved too expensive, and the “transformer” bag has delivered neither efficiency nor enjoyment. The only measurable differences are a lighter bank balance and the hours surrendered to social media, absorbing life advice from younger strangers - which, regrettably, accounts for much of the above.

Increasingly, this is the world we live in: one in which influencers act as guides to everything from fitness regimes to financial planning. Their recommendations shape consumer behaviour, while their faces, voices, personalities and even AI‑generated avatars have become valuable commercial assets in their own right.

Nowhere is this shift more apparent than in the recent $975 million deal involving TikTok star Khaby Lame, who has effectively licensed not just his likeness, but a full AI‑generated digital replica of himself. The transaction, which includes rights to a “digital twin” capable of mimicking his voice, expressions and online persona, signals a further shift in how image rights are understood and monetised within the creator economy.

For the purchaser, Rich Sparkle Holdings, the attraction is obvious: Lame’s AI avatar can appear in multiple languages, across multiple time zones, producing content around the clock without the constraints of human availability. Projections suggest that the digital version of Lame could help generate billions in annual revenue.

But the deal also exposes a rapidly expanding set of legal and commercial questions relating to the protection and exploitation of image rights, especially where AI is involved. Historically, image rights concerned narrower issues: the use of photographs, lookalikes in advertising or celebrity endorsements. Today, the scope is far broader.

For influencers, this raises difficult questions around control, consent and longevity. Who owns the data used to train an AI model to behave “like” them? What happens if the avatar endorses something they disagree with, continues to appear commercially long after rights have expired, or is convincingly misused in a deepfake? For lawyers, the challenge is intensifying, as legislation struggles to keep pace. Nowhere is this more evident than in the UK, which lacks a comprehensive statutory framework on image rights, leaving practitioners to stitch together passing off, data protection, privacy, copyright and contract law to address scenarios legislators never envisaged.

The Khaby Lame deal highlights a wider reality: influencers are no longer simply creators, but global brands whose identity can be licensed, replicated and monetised across multiple channels, often at a scale once reserved for major corporations. As their economic footprint expands, so too does the case for modernising the law on image rights, particularly in the UK where calls for reform are growing louder.

And for anyone wondering how we arrived at this point, it’s worth reflecting on all those hours spent scrolling through social feeds and “life hacks.” Influencers didn’t simply rise - we invited them in, one ‘like’ at a time.

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Click, complain, complications: The perils of online takedowns

Fri, 6 Feb 2026 00:00:00 GMT

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Brand interchange | 3 min read

Click, complain, complications

The perils of online takedowns

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Court: Intellectual Property Enterprise Court
Judge: HHJ Hacon
Judgment: Here
Issue: Actionable (Groundless) Threats

Published: 6 February 2026
Author: Andrew Brennan

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Online marketplaces such as Amazon and eBay are a key route to market for many brand owners. However, with success comes imitation, with many brand owners identifying third party products on the platforms which infringe their intellectual property rights.

To address this, the online marketplaces provide a takedown service, whereby the brand owner can identify its intellectual property and the alleged infringement. If the online marketplace agrees, typically the allegedly infringing product is removed from the platform. The number of online takedowns today runs into the millions.

However, what happens if the intellectual property right asserted is invalid or the allegation of infringement without basis? In these circumstances, the alleged infringer’s product may be removed without justification, with the alleged infringer suffering loss of sales. Typically, it is very difficult for the alleged infringer to persuade the online marketplace to reverse its decision.

In the United Kingdom, this can give rise to a cause of action for actionable threats. Broadly, the takedown notice may constitute a threat of infringement proceedings. In such circumstances, the alleged infringer (a person ‘aggrieved’ by the threat) may be able to commence proceedings seeking a declaration from the court that there is no infringement and damages arising from the takedown. For simple cases, the claim can be conducted relatively cost effectively. This is often an unexplored risk for brand owners using takedown notices.

These are the allegations raised in Luxe World v Touch of Vogue. Here, Luxe World alleges that Touch of Vogue’s registered design (for an attachment to a bicycle, pictured below) used to takedown Luxe World’s bicycle products is invalid because it was prior disclosed outside the grace period. If so, it says that the takedown notice constitute a threat of infringement proceedings for which it suffered damages. As a result, it seeks certain relief from the court, including an injunction and its damages or an account of Touch of Vogue’s profits (typical remedies for a claim of intellectual property infringement).

There are, however, limitations to such a claim. While it was common ground that Luxe World was entitled to seek its damages (if any), at the Case Management Conference of the claim, His Honour Judge Hacon was asked to consider whether Luxe World was entitled to seek an account of Touch of Vogue’s profits.

Here, HHJ Hacon concluded that such relief was not available. The legislation addressing actionable threats (s. 26C of the Registered Designs Act 1949) only makes provision for damages. This is distinct to the legislation which addresses infringement (24A(2) of the Registered Designs Act 1949). Further, he held that he was bound by the reasoning in Devenish Nutrition Ltd v Sanofi-Aventis SA [2009] Ch 360 (CA) that restitutionary remedies such as an account of profits are not available in respect of non‑proprietary torts (such as unjustified threats).

Notably, it followed that, as Luxe World was only entitled to seek damages the Court held it should quantify those damages and pay the appropriate court fee (typically a claimant only has to pay the court fee for the injunction, with the court fee for damages/account of profits payable when these are determined at a subsequent inquiry/account of profits).

Ultimately, the claim serves as a timely reminder that online takedown tools, while powerful, are not without legal risk. Brand owners who rely on these mechanisms must ensure their rights are valid and their allegations well‑founded, or risk finding themselves on the receiving end of an actionable threats claim.

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Brand interchange: Blockbusters, biopics & breakouts

Mon, 2 Feb 2026 00:00:00 GMT

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Brand interchange | 4 min read

Blockbusters, biopics & breakouts

The top 10 films where the plot turns on intellectual property

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Intellectual property might not sound like the stuff of cinematic thrills, but Hollywood has quietly built an impressive filmography around patents, trade marks, trade secrets and licensing deals.

Published: 2 February 2026
Author: Andrew Brennan

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Intellectual property might not sound like the stuff of cinematic thrills, but Hollywood has quietly built an impressive filmography around patents, trade marks, trade secrets and licensing deals. From dinosaurs running amok to mop‑based entrepreneurship, IP disputes have shaped some of cinema’s most memorable storylines. Here are Shoosmiths’ intellectual property team’s top ten films where the plot hinges on intellectual property (sometimes explicitly, sometimes lurking behind the chaos) plus one honourable mention that practically defines the dangers of copyright infringement.

1. Jurassic Park (1993)

IP issue: Misuse of trade secrets

The rampaging T. Rex and terrified visitors tend to overshadow the fact that the entire plot of Jurassic Park is set in motion by an attempt to misappropriate trade secrets. Dennis Nedry, disgruntled system architect, attempts to steal InGen’s closely guarded trade secrets (including the embryo storage system and genetic engineering know‑how). His industrial espionage triggers a catastrophic systems failure, freeing the dinosaurs and reminding employers everywhere that cybersecurity matters almost as much as fencing.

2. Tetris (2023)

IP issue: Copyright licensing

You wouldn’t expect a film about a falling‑blocks puzzle game to be a corporate thriller, yet Tetris turns the battle for video game licensing rights into a Cold War‑era caper. The film follows Henk Rogers as he navigates Soviet bureaucracy, corporate rivals, and fragile geopolitical tensions to secure handheld rights for Nintendo’s Game Boy. It’s a sharp, fascinating demonstration that IP negotiations can be every bit as gripping as a spy movie.

3. Zootropolis 2 (2025)

IP issue: Patent entitlement

While animated blockbusters rarely dabble in patent law, Zootropolis 2 stands out as the first (and possibly last) children’s film ever to feature a dispute over patent entitlement as a central plot device. Agnes the pit viper is revealed to be the true inventor of the weather walls, with business-lynx, Ebenezer Lynxley, falsely claiming he was the inventor and seeking the patent for it. Murder, the framing of the true inventor and the creation of a multi-generational business empire ensue. It’s IP law with fur. Zootropolis 2 receives bonus points because (it is alleged) Disney could not use Zootopia (the name in its home market) in the United Kingdom and some other markets because of trade mark issues.

4. The Founder (2016)

IP issue: Trade marks and brand control

Part rise‑and‑rise tale, part cautionary story, The Founder follows Ray Kroc’s transformation of McDonald’s from a local diner into a global empire. The real IP twist? Kroc recognises that the true value of the business isn’t in its burgers but in its brand (the McDonald’s name and the Golden Arches). By securing control of the branding, he effectively sidelines the original founders from their own creation, illustrating the formidable power (and peril) of having control over one’s trade marks.

5. The Social Network (2010)

IP issue: Copyright infringement and misuse of confidential information

David Fincher’s taut drama about the birth of Facebook is fuelled by allegations from the Winklevoss twins that Mark Zuckerberg took their idea (and elements of their original code) for a Harvard social network. The legal battle highlights the blurred lines between inspiration, collaboration, and misappropriation in the tech world.

6. Duplicity (2009)

IP issue: Misuse of trade secrets

Julia Roberts and Clive Owen star as former spies entangled in a high‑gloss battle between two rival corporations. Their mission? Steal a secret formula for a revolutionary new product. Duplicity is a witty, twist‑filled example of trade secret theft at its most glamorous: secure labs, corporate paranoia and double‑crosses served with champagne all culminating in an epic gun fight at the Gugenheim (an average Tuesday afternoon for an IP lawyer).

7. Flash of Genius (2008)

IP issue: Patent infringement

This biographical drama tells the story of Robert Kearns, a college professor who invented the intermittent windshield wiper and then spent decades fighting major automakers who are alleged to have used his invention without permission. The resulting legal battle, grounded in patent law, is a David v Goliath story.

8. Joy (2015)

IP issue: Invention and product protection

Jennifer Lawrence stars as Joy Mangano, the inventor of the Miracle Mop. The film follows her struggle to turn her patented innovation into a commercial success while facing copycats, manufacturing challenges and contract disputes. For any budding entrepreneur, Joy is a reminder that protecting and commercialising IP requires not only creativity, but resilience.

9. The Prestige (2006)

IP issue: Trade Secrets

An often overlooked Christopher Nolan film, few movies capture the power and peril of trade secrets as vividly as The Prestige. The rivalry between magicians Robert Angier and Alfred Borden escalates into obsession when Angier becomes consumed with uncovering the secret behind Borden’s show‑stopping illusion, The Transported Man. In a profession where a trick’s mechanics are its most valuable assets, this clandestine knowledge becomes the ultimate prize.

10. Air (2023)

IP issue: Licensing negotiations

Air centres on a high‑stakes licensing deal for Michael Jordan’s name, with Michael Jordan’s mother ultimately negotiating a royalty of sales. The film shows Nike’s efforts to secure the rights that would eventually underpin the Air Jordan empire.

Honourable Mention: Nosferatu (1922)

IP issue: Copyright infringement

Not a film about IP, but itself a major IP landmark. Nosferatu was an unauthorised adaptation of Bram Stoker’s Dracula. Bram Stoker’s estate promptly sued for copyright infringement, being awarded an injunction and destruction of all copies of the film. Thankfully for horror fans, some survived. It remains a testament to the enduring risks of disregarding copyright.

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Shoosmiths contributes to Legal 500 global IP guide

Wed, 17 Sep 2025 00:00:00 +0100

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Article | 2 min read

Shoosmiths contributes to Legal 500 global IP guide

Firm shares expert insights on international developments in Intellectual Property law

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Navigating IP law across borders is complex. The Legal 500 Comparative Guide offers expert insights from top firms worldwide, helping legal teams benchmark key IP issues across jurisdictions quickly, clearly, and with confidence.

Published 17 September 2025

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Intellectual Property Guide

The UK chapter of the Legal 500 Country Comparative Guide: Intellectual Property Law has been authored by Shoosmiths experts comprising partners Graham Burnett-Hall, Andrew Brennan, Gary Assim, and Dominic Murphy, alongside legal director Nikki Jenkins and principal associate Eloise Di Pascua, offering a pragmatic overview of the full spectrum of intellectual property rights, from registration and duration through to enforcement and licensing.

UK Chapter highlights

Key topics include:

scope of rights: patents (including SPCs), trade secrets, trade marks & passing off, certification/collective marks, designs, copyright, database rights, plant varieties and semiconductor topographies
durations & renewals: patents up to 20 years; trade marks renewable every 10 years; registered designs up to 25 years; supplementary unregistered design 3 years; copyright life + 70 years
registration timelines: trade marks and designs ~4–6 months; patents commonly 4.5 years (with accelerated options available)
enforcement routes: IPEC and High Court actions, customs Applications for Action, criminal sanctions for counterfeits, UDRP domain disputes, and ADR (mediation/arbitration)
post-Brexit changes: continuity of pre-2021 plant variety rights, alongside UK-specific filing rules

Read the Intellectual Property guide: United Kingdom: Intellectual Property – Country Comparative Guides

These guides reflect Shoosmiths’ commitment to providing clear, practical insight across the full landscape of intellectual property law. As innovation continues to reshape how IP is created, protected and commercialised, our team helps clients stay on top of what matters now and ready for what’s coming next.

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AI, Copyright & the EU Act

Thu, 17 Jul 2025 00:00:00 +0100

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Article | 9 MIN READ

AI, copyright & the EU Act

Litigation risks rise as transparency grows

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As AI development accelerates, copyright tensions are reaching a tipping point. The EU AI Act’s new transparency rules—effective August 2025—could expose developers to litigation across jurisdictions, especially where data mining exemptions don’t apply. With Getty v. Stability AI poised to set precedent, the legal landscape for training data is shifting fast. This article explores what’s at stake, who’s exposed, and what action ambitious clients should take now.

Published 17 July 2025

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Summary

The use of copyright works to train models for AI is a vexed subject. In the last six months in the UK alone we’ve seen national newspapers campaign against the technology, more than 1,000 musicians release a silent album in protest, and a government consultation which received 11,500 responses.

Over the course of the next two months there are likely to be two significant further developments which may finally tip matters into litigation between copyright owners and AI developers, at least in the UK: the implementation of aspects of the EU AI Act and judgment in Getty Images v. Stability AI.

This could be a source of revenue for copyright owners, has the potential to reshape the practices of AI developers and could have a chilling effect on AI development in certain jurisdictions. Here we explore the factors that are aligning and the practical implications.

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Background

To date, many copyright and database right holders do not know whether their intellectual property has been used to train models used by developers of AI. Put simply, there is no public record of which copyright and database right works have been used.

This is a problem for rights holders in the EU. While the EU has a data mining exemption for commercial use (Art. 4 Directive 2019/790)1, this is subject to an opt-out. Rights holders do not know if the opt-out is being respected.

The EU AI Act seeks to remedy this. It does so by imposing an obligation on developers of models for General Purpose AI2 to publicly share a summary of the data used for training the model (Art. 53(1)(d) Regulation (EU) 2024/1689) and to put in place a policy to comply with copyright including the opt-out (Art. 53(1)(c)). This comes into force on 2 August 2025.

On its face, this is sensible. AI developers in the EU would only have an issue if they had been mining data which is the subject of an opt-out, in breach of the data mining exemption. However, this may inadvertently expose those developers outside of the EU (in jurisdictions which do not have a data mining exemption) to litigation.

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Issue

By way of background, the jurisdiction of the EU AI Act is broad. In particular, it applies to: “(a) [developers] placing on the market or putting into service AI systems or placing on the market general-purpose AI models in the Union, irrespective of whether those [developers] are established or located within the Union or in a third country” (Art. 2(1)). Therefore, even if a model is trained in Australia, Canada, Japan, Singapore, South Africa, UK or USA, if it is placed on the market in the EU, it is likely to fall within the scope of the EU AI Act.

Where a commercial data mining exemption (or equivalent) exists (such as Japan, Singapore or the USA) this may not be an issue. Subject to any contractual rights, publication of a summary of the data used for training the model may not result in liability in those jurisdictions. Developers who have mined data and/or trained models in those jurisdictions may be able to rely on the national data mining exemption (or equivalent).

However, where a commercial data mining exemption (or equivalent) does not exist (such as Australia, Canada, South Africa or the United Kingdom), publication in the EU of the summary of the data used for training the model may result in the developer self-publishing: a) those rights it has been infringing; and b) the scale of that infringement, in those jurisdictions. This could result in a wave of litigation.

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Example

For example, let us take a national newspaper in the UK and assume that it has published its articles (which attract copyright) on its website for free (namely, no paywall). With the average newspaper producing over 100,000 articles a year, this is a rich repository of high-quality data.

Let us further assume that an AI developer has mined this data in the UK for the last six years to train a model for generative AI, which falls within the scope of a general-purpose AI, and which has subsequently been put on the market in the UK and EU. The copying of these articles is likely to be an act of copyright infringement. To date, the developer has avoided enforcement proceedings because the national newspaper has no evidence of the developer’s use. However, because the developer’s generative AI has been placed on the market in the EU, come 2 August 2025, it has to disclose its copying.

If infringement is established, the consequences could be severe. In addition to delivery-up/destruction, costs and adverse publicity, an injunction may be granted which covers the generative AI. Further, the developer may also have to pay damages or an account of profits. Assuming a reasonable royalty rate of, say, £1 per article (it may be significantly more) and assuming 1 million articles copied, our national newspaper may be owned £1 million.

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Jurisdiction

The above example of course adopts a simplified situation and assumes that the data mining, training and use are all in the UK. In practice, this is unlikely, with most data being mined and models being trained outside of the UK.

Here, the judgment in Getty Images v. Stability AI (due shortly) will be instructive. This is a claim by Getty Images against Stability AI, in which it is alleged that Stability AI used Getty Images’ images to train its model for Stable Diffusion (an image generator).

Initially, Getty Images alleged that the primary infringement (namely copying) took place in the UK, asserting that the data mining and model training took place in the jurisdiction. At trial, Getty Images struggled to establish this and in closing submissions, it withdrew the allegation. It explained it had taken "the pragmatic decision to pursue only the claims for … secondary infringement of copyright" explaining that while "evidence confirms that the acts complained of within this claim did occur", there was "no Stability witness ... able to provide clear evidence as to the development and training process from start to finish – only evidence that these acts occurred outside the jurisdiction".

As to secondary infringement, Getty Images relies on the following:

s. 23 Copyright, Designs & Patents Act 1988, namely that Stable Diffusion is an article that is an infringing copy of Getty Images’ copyright works which have been imported into the UK and Stability AI knows or has reason to believe that it is an infringing copy

s. 33 Copyright, Designs & Patents Act 1988, namely that Stability AI has possessed and distributed in the course of business, sold, offered, or exposed for sale, Stable Diffusion which is an article that is an infringing copy and that it knows or has reason to believe that it is an infringing copy

Liability for secondary infringement is unclear, will vary depending on the jurisdiction and is fact specific. For example, some of the issues the court will need to grapple in Getty Images are:

Does the making of a model accessible via the internet constitute an “article” being imported or dealt with in the relevant jurisdiction?

Is the AI model an infringing copy of one or more works that were used to train the model (or rather is it simple a collection of pre-trained model weights)?

Can it be said that the developer of the AI model knew or had reason to believe that the AI model was an infringing copy?

However, if Getty Images is right, it follows that any AI developer that implements its AI in the UK may be liable for the mining of and training with unauthorised works in other jurisdictions.

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Summary

Whether this comes to pass, of course, is likely to turn on the detail to be provided by the AI developer when summarising the data used for training the model.

Recital 107 of the EU AI Act says that the information should be “generally comprehensive in its scope instead of technically detailed to facilitate parties with legitimate interests, including copyright holders, to exercise and enforce their rights under Union law”. It elaborates that it should list “the main data collections or sets that went into training the model, such as large private or public databases or data archives, and [provide] a narrative explanation about other data sources used.”

The EU AI Office is supposed to provide a standard template to be used. However, with less than one month to go it has not done so.

Absent a template and with the obligation ambiguous, it may be that AI developers opt for very vague declarations in the knowledge that the EU AI Office and national supervisory authorities are unlikely to enforce the issue and, if they do, may not impose (significant) fines (although, in principle, these can be up to the higher of €10 million or 2% of the AI developer’s worldwide annual turnover). 

Without the information, copyright and database right owners’ attempts to evidence infringement may remain frustrated, at least in the short term.

Practical steps

What practical steps should AI developers be taking? AI developers should carefully consider whether their AI falls within the scope of the definition of General-Purpose AI under the EU AI Act. If not, the obligations and risks to it are likely to be less. Where an AI developer’s AI does fall within the definition it should consider the following:

if possible, licensing data for the training of content (do not mine it)

only mining data where it is publicly available (namely, not behind a pay-wall)

only mining data where there is no express provision against said scraping in the terms and conditions of the website

only mining data where there are no express opt-out signals (for example, a robot.txt)

only mining data from within jurisdictions where there is an express exemption

only training data within jurisdictions where there is an express exemption

compartmentalising the mining of the data, for example instructing a third party or establishing a specific company to mine the data

minimising the length of time the mined data is retained

storing all pre-trained model weights in a jurisdiction in which there is an exemption

ensuring that the output of the model does not reproduce in whole or substantial part the original data on which it was trained.

For copyright and database right owners, they should remain vigilant, monitoring the data summaries made by the developers of general-purpose AI following 2 August 2025. If the copyright and database right owners consider them to be inadequate, they should be raising this with the EU AI Office or national regulators.  Equally, if the data summaries disclose the unauthorised use of their copyright works, they should consider action.

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¹Although a recent European Parliamentary study recommends replacing the data mining exemption with a compulsory licensing scheme or similar.
²Namely, an AI model that displays significant generality and is capable to competently performing a wide range of distinct tasks (art. 3).

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AI, copyright & fair use

Thu, 3 Jul 2025 00:00:00 +0100

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AI, copyright & fair use

A legal turning point for developers

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A landmark US ruling has declared that using lawfully purchased books to train AI models qualifies as fair use – marking a pivotal moment for developers and rights holders alike. While the decision favours innovation, it also draws a line on piracy. UK stakeholders must now push for clarity, as the legal framework lags behind the pace of AI development.

Published 3 July 2025

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The rise of AI has sparked legal disputes over using copyrighted data for training. In the US and UK, copyright holders have sued developers. A US court recently ruled that Anthropic’s use of digitised books to train AI qualifies as fair use.

The rapid evolution of AI has led to concerns within the creative industries around the legality of using data in the form of images, text or other copyright works in training AI systems.

In the absence of firm legal guidance, a number of claims have been brought by copyright owners against AI systems developers, both in the US and UK courts.

One of these was recently the subject of a summary judgment application, with the U.S. District Court for the Northern District of California ruling in favour of AI company Anthropic PBC, by finding that its digitising of books (purchased by it in print form) and their subsequent use to train Anthropic’s large language models (LLMs), including its Claude chatbot, constituted fair use under U.S. copyright law.

The case, Bartz et al. v. Anthropic PBC, was brought by a group of authors who alleged that Anthropic had used their copyright works, some of which were purchased and others allegedly pirated, to train its AI systems without permission or compensation. The claimants argued that this amounted to large-scale copyright infringement.

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A win for AI developers – with limits

The court sided with Anthropic on two fronts. Firstly, it held that the purpose and character of using books to train LLMs was spectacularly transformative, likening the process to human learning. The judge emphasized that the AI model did not reproduce or distribute the original works, but instead analysed patterns and relationships in the text to generate new, original content. Because the outputs did not substantially replicate the claimants’ works, the court found no direct infringement.

Secondly, the court ruled that Anthropic’s digitisation of lawfully purchased print books, by scanning them for internal use, also amounted to fair use. This was seen as a form of format shifting, akin to converting a CD to MP3 for personal use, and did not involve redistribution or commercial exploitation of the scanned copies.

However, the court did not grant Anthropic a complete victory. It declined to give summary judgment against the authors’ claims regarding the use of pirated digital books to proceed to trial. The judge criticized Anthropic’s alleged effort to build a “central library of all the books in the world,” including millions of unauthorised digital copies downloaded from pirate sites. This aspect of the case remains unresolved and could still result in liability for the company.

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Implications for Copyright owners

This ruling is the first major judicial endorsement of fair use in the context of AI training and sets a powerful precedent in the U.S for how courts may treat similar claims. For copyright holders, the decision is a double-edged sword:

on one hand, it narrows the path to successful infringement claims if the AI model’s outputs do not closely mimic the original works.

on the other, it leaves open the door to litigation where pirated or unauthorized copies are used, or where outputs are substantially similar to protected content.

Despite having no binding effect in the UK, the ruling highlights the urgent need for legislative clarity for AI developers and copyright owners within the UK. As AI systems become more sophisticated and widely deployed, the legal framework governing the use of copyrighted material in training remains fragmented and uncertain, especially outside the U.S.

For authors, publishers, and other rights holders, the Anthropic decision is a wake-up call: monitoring how their works are used in AI training and advocating for clearer licensing mechanisms may be the most effective path forward.

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Getty drops primary copyright claim against stability AI

Thu, 3 Jul 2025 00:00:00 +0100

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Article | 2 min read

Getty drops primary copyright claim against stability AI

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Getty Images’ decision to drop its core copyright claim against Stability AI marks a turning point in how UK law approaches generative AI. The case reveals the limits of jurisdiction, the evolving nature of output liability and the urgent need for policy clarity. For AI developers and rights holders alike, it’s a wake-up call: enforcement must evolve as fast as the technology.

Published 3 July 2025

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In a significant turn of events in one of the UK’s most closely watched AI-related legal battles, Getty Images has dropped its primary copyright infringement claim against Stability AI.

The case, which commenced in the High Court on 9 June 2025, centred on allegations that Stability unlawfully used millions of Getty’s photographs to train its image-generating model, Stable Diffusion.

Why the claim was dropped

Getty’s decision, announced during closing arguments on 26 June 2025, was described as a “pragmatic” move. The company acknowledged the evidential and jurisdictional challenges in proving that the alleged copyright infringement occurred within the UK.

While Getty maintained that Stability had used its images without permission, it struggled to establish a clear link between the training activities themselves, and these being carried out UK territory. Most of the training reportedly took place on servers located in the United States, outside the reach of UK copyright law. Furthermore, Getty lacked a witness who could provide a comprehensive account of the training process from start to finish, further weakening its case.

Getty also dropped its output-related copyright claims, noting that Stability had implemented technical changes to prevent the generation of images using prompts that previously produced infringing content. As a result, Getty argued that the injunctive relief it sought, had already been achieved or was no longer necessary.

What claims remain?

Despite dropping the core copyright allegations, Getty is still pursuing claims for:

trademark infringement, particularly over the reproduction of Getty’s watermark in AI-generated images

passing off, arguing that the use of its branding could mislead consumers

secondary copyright infringement, based on the idea that using a model trained on infringing data could itself constitute infringement when deployed in the UK.

Implications for AI developers in the UK

This development carries important lessons for AI companies operating in or targeting the UK:

jurisdiction matters: The case highlights the difficulty of applying UK copyright law to AI training conducted abroad

output still counts: Even if training is lawful or outside jurisdiction, how the model is used in the UK—and what it produces—can still trigger legal risk. The remaining claims in this case could set precedent for secondary liability and trademark misuse

policy pressure: The case has intensified calls for the UK government to clarify how copyright law applies to AI, especially in light of ongoing consultations and proposed reforms.

As the UK navigates the legal and ethical challenges of generative AI, the Getty v. Stability AI case serves as a cautionary tale, and a potential blueprint, for how future disputes may unfold.

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From pitch to precedent: When football boots confuse the law

Wed, 25 Jun 2025 00:00:00 +0100

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From pitch to precedent

When football boots confuse the law

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The Supreme Court has clarified how trade mark confusion should be assessed—especially in real-world, post-sale scenarios. In Dream Pairs v Iconix, the Court confirmed that post-sale confusion matters, but only when backed by evidence and viewed through the lens of the average consumer. It also drew a firm line on appellate overreach, reinforcing the primacy of first-instance factual findings. For brand owners, this is a win—but one that demands precision in how cases are built.

Published 25 June 2025

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In a significant decision (full judgment linked here), the Supreme Court has reaffirmed the relevance of post-sale confusion in assessing infringement under section 10(2)(b) of the Trade Marks Act 1994 and clarified the boundaries of appellate intervention in trade mark disputes.

Background

The dispute arose between Iconix, owner of the UMBRO diamond mark (below), and Dream Pairs, which had marketed football boots in the UK bearing a logo (the DP Sign) that Iconix claimed was confusingly similar to its registered UMBRO trade marks.

At first instance, the High Court dismissed Iconix’s claim, finding only a “very low degree of similarity” between the marks and no likelihood of confusion. The trial judge emphasised the visual differences and concluded that consumers were unlikely to associate the DP Sign with UMBRO. The Court of Appeal reversed that decision. It held that the trial judge’s assessment of similarity was irrational, particularly when the DP Sign was viewed from angles other than square on. The appellate court conducted its own evaluation and found a “moderately high level of similarity” in the post-sale context, such as when a football boot is seen on someone else’s foot, and concluded that a likelihood of confusion existed.

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Supreme Court Judgment

The Supreme Court unanimously allowed Dream Pairs’ appeal, reversing the decision of the Court of Appeal, and delivered two important clarifications:

Post-sale confusion as a relevant factor

Post-sale confusion is where a consumer might be misled after the point of purchase, for example in observing a product in use. In this instance, that might be a consumer seeing football boots “in the street, on the football pitch or in the changing room”. 

The Supreme Court confirmed that post-sale confusion can be a relevant factor in the global assessment of likelihood of confusion. In particular, it held that when assessing whether signs are similar, it is permissible to consider realistic and representative post-sale circumstances (for example, the viewing angles in a post-sale environment). This is consistent with established EU and UK case law, which recognises that trade mark infringement is not to confined to the moment of sale. However, the Supreme Court emphasised that such confusion must still be assessed from the perspective of the average consumer and must be supported by evidence. 

Limits of appellate review on findings of fact

The Supreme Court held that the Court of Appeal had replaced the trial judge’s assessment of similarity and confusion with its own. It reiterated that appellate courts should not interfere with findings unless there is a clear legal error or the decision is one that no reasonable judge could have reached. The trial judge’s conclusion on the degree of similarity was deemed to be based on a careful evaluation of the evidence and was not irrational. Thus, the Supreme Court stated that the Court of Appeal should not have re-evaluated the factual findings merely because it would have reached a different conclusion. 

The Supreme Court’s decision is a significant win for brand owners, affirming that trade mark protection extends beyond the point of sale. It also clarified that courts can consider how a mark is realistically viewed in use, such as on worn footwear, when assessing similarity. This broadens the scope of trade mark enforcement and strengthens brand owners’ ability to protect their marks in real-world contexts. However, the Court also reinforced that appellate courts must respect trial judges’ evaluative findings unless there is a clear legal or logical error, emphasising the importance of building a strong case at first instance.

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Brand interchange: Momofuku: A noodle bar drama

Mon, 31 Mar 2025 00:00:00 +0100

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Brand interchange | 4 min read

Momofuku: A noodle bar drama

Nissin Foods Holdings Co., Limited v MomoIP LLC

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Case Name: Nissin Foods Holdings Co., Limited v MomoIP LLC
Citation: [2025] EWHC 561 (Ch)
Judge: Iain Purvis KC, sitting as a Deputy Judge of the Chancery Division
Decision: Here

Published 31 March 2025

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Introduction

In an appeal from the Hearing Officer to the High Court, Mr Purvis KC (sitting as a Deputy Judge) has held that MomoIP’s UK trade mark ‘558 for MOMOFUKU was not put to genuine use, providing useful guidance on the application of the law of genuine use in the United Kingdom.

Trade marks

Nissin Foods Trade Marks

Momo IP’s Trade Marks

Priority / Filing Date

ITM 1418091

26 Oct. 2017

29, 30

UKTM 906646558 (‘558)

6 Feb. 2008

UKTM 801418091

26 Oct. 2017

29, 30

UKTM 3575445

06 Jan. 2021

UKTM 3781000

25 April 2022

29, 30

ITM 1624171

22 Sept. 2021

Background

Nissin Foods is a food company founded by Momofuku Ando in 1948 in Osaka, Japan, known for the development of the world’s first instant noodles chicken ramen.

MomoIP is the holding company for the MOMOFUKU culinary brand, which was established by chef David Chang in 2004 in New York, USA. Mr Chang’s steamed bao and ‘meaty’ tasting vegetarian chickpea hozon ramen were the cuisine du jour in the 2010s. Bar a pop-up in Shoreditch, it does not have any UK restaurants.

Nissin Foods and MomoIP registered (and applied for) trade marks in the United Kingdom for MOMOFUKU in classes 29 and 30 and class 43 respectively. Nissin Foods subsequently brought three actions challenging the validity of some of MomoIP’s trade marks and MomoIP in turn brought three actions challenging the validity of some of Nissin Foods’ trade marks and applications.

On appeal only one issue remained, namely whether MomoIP’s trade UKTM ‘558 (the original registration of the six subject to the proceedings) had been put to genuine use within the United Kingdom during the relevant period.

Law

In easyGroup Ltd v Nuclei Ltd & Ors [2023] EWCA Civ 1247, Arnold LJ summarised the law relating to genuine use:

106. … the principles may be summarised as follows:

(1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark…

(2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark …

(3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin …

(4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns … Internal use by the proprietor does not suffice … Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter … But use by a non-profit making association can constitute genuine use …

(5) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d’être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark…

(6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use …

(7) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule …

(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use …

Hearing officer’s decision

The Hearing Officer concluded that UKTM ‘558 had been put to genuine use. In doing so she relied on the following during the relevant period (21 April 2017 to 20 April 2022) to support her decision:

cookbook sales: She noted that over 2,600 copies of the MOMOFUKU cookbook had been sold via Amazon.co.uk, although this was later found to be incorrect as it referred to reviews, not sales
website traffic: MomoIP’s US website received traffic from the UK, with varying numbers of visits over the years
pop-up events: MomoIP ran a 2-day MOMOFUKU pop-up restaurant in Shoreditch, London, which was sold out and served 96 customers
promotional activities: MomoIP partnered with Nike to create a special edition trainer, although there was no evidence of sales in the UK
customer base: The UK was the 4th largest customer base for MOMOFUKU’s restaurants in the USA, with many UK-based followers on Instagram and customers on its email distribution list 2021

Appeal

Mr Purvis KC, found that the Hearing Officer’s decision was vitiated by a series of errors of fact and illogical assertions not justified by the evidence before her. He reasoned as follows:

the Hearing Officer misunderstood the evidence relating to the Amazon listing of the MOMOFUKU cookbook, suggesting that thousands of copies had been sold when there was no such evidence
the Hearing Officer took into account three pop-up events when in fact there was only one relevant event in Shoreditch, with little or no evidence of promotion of the New York restaurant
the evidence of the Nike trainers should never have been relied on, as it established effectively nothing
the Hearing Officer’s attempt to link these promotional activities to the reputation of the MOMOFUKU restaurants amongst UK consumers was illogical and not justified by the evidence

The judge therefore concluded that the appeal succeeded and ‘558 had not been put to genuine use.

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Brand interchange: J&J Snack Foods v. Ralph Peters & Sons

Tue, 4 Mar 2025 00:00:00 GMT

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Brand interchange | 3 min read

J&J Snack Foods v. Ralph Peters & Sons

Trade mark infringement

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A Slush Puppie has long been a favourite for many generations of children on a hot summer’s day. The use of the brand, however, has descended into a trade mark and passing off dispute between J&J Snack Foods and Ralph Peters & Sons, culminating in a worldwide freezing order being granted in relation to up to £10 million of the latter’s assets.

Published 4 March 2025

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That order has now been discharged, with the court concluding that J&J Snack Foods had not given fair presentation when obtaining the order. The judgment is a useful reminder of the heavy burden on applicants when applying for such relief. Meanwhile, the litigation continues.

Court: High Court of Justice, Business & Property Courts, Intellectual Property List
Judge: Mr Justice Fancourt
Judgment: Here
Trade mark: [SLUSH PUPPIE]
Issue: Trade Mark Infringement

Background

Parallel proceedings have been ongoing in Ohio, USA since 2019. Around October 2024, J&J Snack Foods commenced proceedings before the English Courts. The claim is unusual in that Ralph Peters & Sons is not alleged to be a primary tortfeasor, but a joint tortfeasor with one of its group companies (unnamed in the litigation), Frozen Brothers.

The commencement of proceedings was followed by a without notice application on 3 December 2024 for, among other things, a worldwide freezing order. This was directed to £10 million of Ralph Peters & Sons’ assets and £10 million of its director and majority shareholder’s assets, including two of his homes. This was granted shortly before Christmas, with the return date listed after Christmas.

On 17 January 2025, Ralph Peters & Sons sought an order discharging, among other things, the freezing order. It argued that the partner at the law firm responsible for J&J Snack Foods’ application had failed to give full and frank disclosure (sometimes referred to as fair presentation).

Full and frank disclosure

The burden on applicants for full and frank disclosure in applications for freezing orders was summarised in Uconinvest LLC v Jysan Holding LLC [2024] EWHC 1532 (Ch) as follows:

“Applications for without notice freezing orders, whether domestic or worldwide, are now a routine part of the business of the Chancery Division and the Commercial Court. It is easy therefore to regard them as “normal”, but any hearing where only one side of the case is heard should be regarded as exceptional. Further, freezing orders that are broad in their reach are capable of having very serious consequences for a respondent. The price of obtaining such relief without notice to the respondent is a heavy responsibility to ensure that the matter is fairly presented to the court, not slanted or partial, and that the points that the respondent would wish to make were they present, so far as able to be anticipated, are fairly put before the court for consideration. That is particularly so when serious allegations are made against the absent parties.”

Reasoning

The judge concluded that the freezing order should be discharged. His reasons included, among others, as follows:

failure of full and frank disclosure: J&J Snack Foods had failed to disclose several key points during the without notice hearing:
- it did not explain why it was appropriate for the applications to be made without any notice to the Ralph Peters & Sons;
- it failed to distinguish between the ‘Phase 1’ (the use of SLUSH PUPPIE) and ‘Phase 2’ (the use of SLUSHY JACK) claims, particularly the weakness of the ‘Phase 2’ claim and its impact on the quantum of the claim;
- it did not provide solid evidence of a serious risk of Ralph Peters & Sons dissipating assets or making itself judgment-proof;
- it did not address the relevance of the passing of time from 2020 to December 2024 in relation to the risk of dissipation and the need for a without notice hearing;
- it did not explain the argument that gross profits made by Frozen Brothers was not the proper basis for the quantum of a claim against Ralph Peters & Sons
lack of real risk of Ralph Peters & Sons making itself judgment-proof: The Judge was not convinced that there was a real risk of the Ralph Peters & Sons taking steps to make itself judgment-proof. J&J Snack Foods did not provide sufficient evidence to justify this risk, especially considering the long-standing litigation in Ohio and Germany without any evidence of Ralph Peters & Sons taking such steps. The dishonesty alleged against Mr Peters did not lie at the heart of J&J Snack Foods’ claim and did not of itself give rise to a strong inference of a risk of dissipation of assets.

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Brand interchange: The “anxious pedant” and trade marks

Tue, 4 Mar 2025 00:00:00 GMT

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Brand interchange | 3 min read

The “anxious pedant” & trade marks

Babek International Ltd v Iceland Foods Ltd

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In Babek International v. Iceland, HHJ Hacon has provided a useful analysis of the law on clarity and precision for trade mark filings, applying Sieckmann, Libertel and Cadbury. It is essential reading for all those filing trade marks and managing trade mark portfolios.

Published 4 March 2025

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Case name: Babek International Ltd v Iceland Foods Ltd
Court: Intellectual Property Enterprise Court
Citation: [2025] EWHC 547 (IPEC)
Judge: His Honour Judge Hacon
Judgment: Here
Trade marks: UKTM 907527963

Mark description/limitation: “Gold oval with embossed BABEK writing. Colour Claimed: Gold, black.”

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Background

In March 2024, Babek International commenced proceedings against Iceland before the Intellectual Property Enterprise Court for trade mark infringement. Iceland accepted that it used an identical sign for identical goods, but asserted that it had the consent of the former proprietor or was under licence by a third party. It also counterclaimed that the trade mark was invalid.

Application

Iceland sought summary judgment on its counterclaim for invalidity, arguing that the registration did not satisfy the requirements of s. 1(1) and 3(1) of the Trade Marks Act 1994. In particular, it asserted that Babek International’s trade mark was ambiguous and lacked clarity and precision because of, among others, the following:

while the trade mark was described as a figurative mark, the description included the word ‘embossed’ which suggested that the sign to be protected was a 3D sign, so that the visual representation was just one image of the sign
while the trade mark showed an ellipse, the written description indicated that the trade mark could be in any oval form
the claim to the colours gold and black were not specific as to hue and many hues of gold were shown in the visual representation but black did not appear
the visual representation included colours other than gold and black, namely white, yellow, orange, beige and brown

Decision

HHJ Hacon provided a useful summary of the case law, concluding that the trade mark was validly registered and stating that Iceland’s arguments “assumed [a] degree of pedantry on the part of the competent authorities and the public which, if required in law, would make the trade mark system unworkable”. He reasoned:

there was nothing inconsistent between the trade mark’s description/limitation and the visual representation. The reader was told that it was a figurative mark and therefore a 2D mark, not a 3D mark. Accordingly, the visual representation could be and would have been understood to show a 2D mark with 3D visual effects. He saw no reason to suppose that the competent authorities and the public should be taken to consist of “anxious pedants”
the complaint that the visual representation showed an ellipse, not an oval as stated in the written description, was “fairly high grade pedantry”
in the instance of any colour per se mark, use of one or more pantone numbers or other means to specify hues is likely to be important. For other types of mark which feature one or more colours, it may or may not be. He gave the example of trade mark registrations for Coca-Cola and Tesco which claimed “the colours red, silver, white and yellow as an element of the mark’ and “the colours red and blue as an element of the mark” respectively, without specifying the pantone numbers. Citing J. Sainsbury’s PLC v Fromageries Bel SA [2019] EWHC 34354 he noted that “[t]he point about [the examples above] is that the precise hue is unlikely to play a significant role in making the mark capable of distinguishing. The hues could vary without affecting the mark’s capacity to distinguish”. He reasoned that the observation could equally be said to apply to Babek International’s trade mark
as to Iceland’s final point was that there were colours in the visual representation which are not strictly either gold or black, he acknowledged this was true, but that to his eye the impression delivered by the visual representation is of a trade mark coloured gold with shading and the shading was an approximation of black

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Brand interchange: Tapper v Beak Fried Chicken

Thu, 27 Feb 2025 00:00:00 GMT

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Brand interchange | 3 min read

Tapper v Beak Fried Chicken

Trade mark invalidity

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In Tapper v Beak Fried Chicken, the Appointed Person has provided guidance on when a party may resile from an admission, upholding Tapper’s appeal and remitting the matter to the Hearing Officer for consideration.

Published 27 February 2025

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Court: Appointed Person
Judge: Dr Brian Whitehead
Judgment: Here
Trade mark: UK3380292, UK3120818, UK3815842, UK3849951
Issue: Trade Mark Invalidity

Tapper's earlier right 1 (UK '292)

Beak Fried Chicken's trade mark application (UK '842)

Tapper's trade mark application (UK '951)

THE BEAK BREWERY

BEAK

Classes: 7 and 11

Class: 40

Classes: 35 and 43

Class: 32 and 35

Hearing officer

The Hearing Officer heard two consolidated oppositions, Tapper’s opposition in relation to Beak Fried Chicken’s UK ‘842 and Beak Fried Chicken’s corresponding opposition in relation to Tapper’s UK ‘951.

The Hearing Officer concluded that Tapper’s opposition was successful under s. 5(2)(b) of the Trade Marks Act 1994 and so the registration proceeded only in relation to “retail services relating to stationery, namely stickers”.

As to Beak Fried Chicken’s opposition, the Hearing Officer relied on an admission by Tapper in its TM8 counterstatement that the services in class 35 were identical with those for which UK ‘951 was to be registered. He concluded that, because the marks were visually similar to a medium degree, aurally identical and conceptually similar to a high degree there was a likelihood of confusion.

As a result, he refused registration for the certain services in class 35 including: “Advertising, marketing, promotion and / or retail … of key rings, pens, books on brewing beer, beer mats, etc.”

Appointed person

Tapper appealed the Hearing Officer’s decision, arguing that the admission in its TM8 counterstatement was in respect only of the challenged services in the ‘842 mark.

The Appointed Person disagreed, finding that there was no ambiguity in the TM8 counterstatement, which read:

“The Applicant accepts that the word element is identical, however the Applicants mark has a strong and distinctive visual identity. The Applicant accepts that the services in Class 35 are identical.”

Tapper further argued that it was contrary to Registry practice and procedure for the Hearing Officer to continue on the basis of identicality when this was wrong as a point of fact.

Here, the Appointed Person disagreed with the appellants reasons, citing §4.1 of Contentious Trade Mark Registry Proceedings (2nd Edition):

“If an allegation is admitted, then that fact or matter is no longer in issue between the parties, and so (a) no evidence needs to be adduced to establish it; (b) no argument needs to be advanced to promote or defend it; and, (c) the tribunal need not trouble itself about it, as it becomes an agreed point between the parties and may be used by the tribunal as a basis for its decision”.

However, the Appointed Person found that the Hearing Officer had erred by not investigating with Tapper as to whether it wished to resile from the admission. He pointed to CPR 14.5, which explains that a Court can give permission to withdraw or qualify an admission. In doing so, the Court should consider:

“(a) the grounds for seeking to withdraw the admission;

(b) whether there is new evidence that was not available when the admission was made;

(d) any prejudice to any person if the admission is withdrawn or not permitted to be withdrawn;

(e) what stage the proceedings have reached; in particular, whether a date or period has been fixed for the trial;

(f) the prospects of success of the claim or of the part of it to which the admission relates; and

(g) the interests of the administration of justice”.

As a result, the Appointed Person remitted the matter to the Registry for consideration of whether Tapper should be permitted to resile from or qualify the admission of identicality of services made in its TM8 counterstatement.

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Brand interchange: De Longhi v Ronix

Tue, 25 Feb 2025 00:00:00 GMT

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Elbisco v Kerangus (BL O/0111/25)

Trade mark invalidity

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In De Longhi v. Ronix, the Appointed Person has upheld the Hearing Officer’s decision that Ronix’s application UK ‘463 for CHEFCHY in classes 7 and 11 was valid over De Longhi’s earlier mark, UK3438050, for CHEF in the same classes.

Published 25 February 2025

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Court: Appointed Person
Judge: Emma Himsworth KC
Judgment: Here
Trade mark: UK00003740463 (CHEFCHY)
Issue: Trade Mark Invalidity

The Earlier Right (UK '050)

The Trade Mark Application (UK '463)

CHEF

CHEFCHY

Classes: 7 and 11

Opposition

De Longhi opposed the registration on the basis of ss. 5(2)(b), 5(3) and 5(4)(a) (passing off) of the Trade Marks Act 1994.

The Hearing Officer found for Ronix, concluding as follows:

reputation and distinctiveness: The Hearing Officer found that UK ‘050 had a moderate reputation in the UK for food mixers and their attachments. However, its distinctiveness was no more than a medium level overall
similarity between the marks: The Hearing Officer concluded that there was a moderate degree of similarity between the competing marks overall
similarity of goods: The Hearing Officer found that the goods for which UK ‘050 was registered, such as electric kitchen tools and utensils, were similar to a medium to high degree to the goods for UK ‘463, such as food mixers and their attachments
overall: Taken together the differences between the marks, such as the additional letters “CHY” in the contested mark, were sufficient for the average consumer to distinguish between them and avoid confusion
section 5(3) and 5(4)(a): The Hearing Officer dismissed De Longhi’s claims under these sections, finding no evidence of unfair advantage, detriment, or passing off

The Appointed Person

The opponent appealed the Hearing Officer’s decision on several grounds:

errors in the Assessment of Reputation and Distinctiveness: The opponent claimed that the Hearing Officer overlooked certain evidence and should have found a higher degree of acquired distinctiveness for their earlier mark
errors in the Assessment of Similarity of Goods: The opponent argued that the Hearing Officer should have found the goods to be identical or highly similar, rather than just similar to a medium to high degree
errors in the Assessment of Likelihood of Confusion: The opponent contended that the Hearing Officer made errors in assessing the likelihood of confusion between the marks
errors in the Assessment of Section 5(3) and 5(4)(a): The opponent maintained that the Hearing Officer should have considered unfair advantage, detriment, and passing off

The Appointed Person reviewed the decision and found no material error in the Hearing Officer’s assessment, dismissing the appeal and upholding the Hearing Officer’s decision.

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Brand interchange: Essity Hygiene v EUIPO (T-434/23)

Thu, 20 Feb 2025 00:00:00 GMT

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Brand interchange | 1 min read

Essity Hygiene v EUIPO (T-434/23)

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In Essity Hygiene v EUIPO, the General Court has upheld the EUIPO Board of Appeal’s decision to refuse registration for a leaf.

Published 20 February 2025

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The application was for class 16, including “paper, cardboard; fine paper, writing paper”, etc. The court reasoned that the average consumer would understand a leaf to refer to the ecological characteristics of the goods or to be purely decorative or ornamental.

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Can you get an interim injunction in English intellectual property litigation?

Tue, 11 Jun 2024 00:00:00 +0100

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Article | 3 min

Interim injunction in English intellectual property litigation

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Interim (preliminary) injunctions in English intellectual property litigation are rare. Among other things the Court considers whether there will be irreparable harm to the intellectual property owner.

Published 11 June 2024

Author Antony Craggs

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Background

Here, Lenovo has alleged infringement of EP (UK) 3,646,649 B1, a standard essential patent (SEP) covering aspects of 5G. The claim itself is part of a 15 year long global licensing/cross-licensing negotiation/dispute between Lenovo and Ericsson in relation to their respective SEP portfolios, with parallel proceedings in the United States, Brazil and Colombia. In the latter two, Ericsson has been successful in obtaining injunctions against Lenovo.

Applying the conventional wisdom, interim injunctions are typically not available in SEP cases. As SEPs are under an obligation to be licensed on fair, reasonable and non-discriminatory (FRAND) terms, it follows that any harm is not irreparable; rather, it can be compensated by a retrospective licence. Nonetheless, Lenovo applied for an interim injunction, running an interesting argument.

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Anti-Suit Injunctions via the Back-Door

Lenovo sought to differentiate its position by including a caveat, namely the interim injunction would not apply if Ericsson were to elect one of the following alternatives:

To enter into a global cross-licence agreement on such FRAND terms as a court of competent jurisdiction shall determine, and not to seek or enforce any injunctive relief pending the determination of that, on the terms that Lenovo has offered Ericsson in the English FRAND proceedings currently pending in relation to another Lenovo patent under claim number HP-2023-000036; or
To enter into an interim cross-licence pending the determination of any global cross-licence, on the terms that Lenovo has offered Ericsson in HP-2023-000036; or
To enter into another agreed form of mutual regime within 14 days of the date of the order.

Lenovo explained that its motivation for applying for an interim injunction and for including the caveats was to induce Ericsson to abandon or not to enforce its injunctions in Brazil and Colombia (and any other jurisdictions); hence the text in bold (above). The effect of such an injunction would, to a degree, be akin to an anti-suit injunction. These are available in England and the court was left to speculate that Lenovo had not applied for one because it would not meet the criteria. As Mrs Justice Bacon characterised it:

"Lenovo seeks an interim injunction granted in terrorem: a sword of Damocles that will remain suspended only on the condition that Ericsson abandons the interim relief obtained in Brazil and Colombia, and its pursuit of interim relief in any other jurisdiction."

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The merits

Turning to the merits of the application, the court applied the principles for grant of interim relief set out in American Cyanamid v Ethicon [1975] AC 396 (which apply equally to SEP / FRAND cases: IPCom v Xiaomi Technology [2019] EWHC 3074 (Pat)). This meant deciding: (i) Is there a serious issue to be tried on the merits? (ii) Are damages an adequate remedy for the claimant, if the injunction is not granted but the claimant succeeds at trial? (iii) If not, are damages under the cross-undertaking in damages an adequate remedy for the defendant, if the injunction is granted but the defendant succeeds at trial? (iv) If damages are not an adequate remedy for either side, where does the balance of convenience lie?

It was broadly common ground between the parties that there was a serious issue to be tried. As to whether damages were an adequate remedy, Lenovo argued that its loss would go beyond the sum that it would have earned under a FRAND licence. It reasoned that, if an interim injunction were not granted, Ericsson would be allowed to continue to operate in the UK market while Lenovo would be shut out of the Brazilian and Colombian markets. The alternative to those injunctions was for Lenovo to agree Ericsson's licensing offer which, it asserted, was supra-FRAND. The court summarised the position as follows:

"The short and obvious point is that the maintenance of injunctions in markets which are of considerable commercial significance for Lenovo enables Ericsson to exert commercial leverage on Lenovo to take a licence on the terms offered by Ericsson, during this interim period before a FRAND rate is determined [in other proceedings] ..."

Mrs Justice Bacon recognised that there was a link between the UK proceedings and the other jurisdictions, including Brazil and Columbia, with them all forming part of the same licence negotiations. However, she concluded that any loss suffered by Lenovo in Brazil and Columbia was not causally linked to the infringement of EP (UK) 3,646,649 B1 in the United Kingdom. It followed that an interim injunction could not be granted. She reasoned:

“[Commercial leverage in licence negotiations and the potential loss] is … categorically not a basis on which an interim injunction can be granted in this jurisdiction. As I have said, the purpose of an interim injunction is the protection of the right claimed in the underlying substantive proceedings. An interim injunction in relation to one patent right cannot be used purely as a threat in order to induce the defendant to conduct itself differently in respect of a different patent right in another jurisdiction. The proper course, if there is a basis for it, would be an application for an anti-suit injunction, but that is not the basis on which this application has been brought.”

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Shoosmiths advises on IPO of Tan Delta

Mon, 25 Mar 2024 00:00:00 GMT

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Shoosmiths advises on IPO of Tan Delta

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Law firm Shoosmiths has advised on the initial public offering (IPO) of Tan Delta Systems plc (Tan Delta) whose shares were admitted to trading on AIM on 18 August with a market capitalisation of £19 million.

Published: 25 August 2023

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The IPO attracted strong support from high quality institutional shareholders, with Tan Delta raising approximately £6 million of new money via an oversubscribed placing led by Zeus Capital as nominated adviser and sole broker.

Tan Delta provides equipment monitoring technologies and solutions that use real time oil analysis to enable material reductions in maintenance costs, improve reliability and reduce carbon footprint. Tan Delta currently supplies a growing customer base of blue-chip multinationals and equipment operators.

The proceeds of the placing will enable Tan Delta to expand sales and its customer base, to increase production and invest in product development.

The deal was led by Shoosmiths equity capital markets corporate partner, Oliver Pilkington assisted by senior associate Daniela Munro. Colleagues from other Shoosmiths teams added expertise to the deal, including tax partner Dan Sharman and IP principal associate Eloise De Pasqua.

Chris Greenwood, CEO at Tan Delta, said: “We’re very proud to have achieved floatation, enabling Tan Delta to accelerate growth. We thank Shoosmiths very much for their expertise and ability to seamlessly advise from the various angles required for us to complete our IPO.”

Shoosmiths’ Oliver Pilkington said: “We are delighted to have advised Tan Delta on their IPO, a pivotal moment for the business, allowing it to grow and reach its strategic goals. With so few IPOs in London in recent months it has been a real pleasure to see such an exciting UK business successfully admitted to AIM.”

This IPO follows on from the firm recently advising Cenkos Securities and Dowgate Capital on the IPO of Onward Opportunities Limited (OOL), a Guernsey collective investment scheme.

Shoosmiths’ ECM team is a leading provider of advice to listed companies and brokers, with a deep expertise in public company offerings.

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