This month's Brands Update includes “In case you missed it” (our round up of the key brands related developments from 2023), as well as articles on deepfakes, changes to WIPO rules and two shape mark cases. Our quick guide article covers prior company and trade names.
Here, we cover all the other key brands legal news from this month.
At the end of last year, the EU Commission published proposals to modernise the designs system at EU-wide and national level in the form of a revised Designs Regulation and Directive. The proposals would see a number of changes to the legislation, including the definition of “design” and “product” expanded to cover animated designs and virtual products (more, here).
After months of negotiations, the EU Council has now adopted its negotiating position. It broadly supports the proposals but has put forward some amendments including a further update of the definition of “design” and “product” and that the proposed new national administrative invalidity procedure be optional rather than mandatory. Once the Parliament adopts its position, further negotiations will begin, with the new laws expected to be passed in the first half of next year.
Meanwhile, WIPO is making progress in its attempt to agree a Design Law Treaty. Various meetings took place in October 2023 and Saudi Arabia has been approved to host the 2024 conference to conclude the treaty. The treaty will deal with the procedures for obtaining industrial design protection, not the substantive law (which will remain a matter for the contracting parties) (more, here).
In further changes to EU legislation, the new regulation establishing geographical indication protection for craft and industrial products has been signed and should come into force towards the end of November 2023. The new legislation will protect locally renowned products such as glass, lace and natural stones, safeguarding know-how and heritage (more, here).
On the case law side, a decision of the UK Appointed Person (AP) from earlier this year in Burton Foods v Not Guilty Food Co emphasises that evidence of actual confusion is sometimes not sufficient to establish a likelihood of confusion. The AP confirmed that, "Instances of actual confusion may point towards such a likelihood, but may not if the Hearing Officer decides that they are not representative of a reasonably circumspect and observant average consumer." The case also illustrates how difficult it is to overturn a decision of the UKIPO on appeal.
Meanwhile, the EU General Court ruling in CEDC v EUIPO (blade of grass in bottle) reminds us that action can only be taken (under Article 8(3) of the EUTM Regulation) to prevent registration of a mark on the basis that it was filed by an agent or representative of the proprietor (without the proprietor's consent) where the parties have a relationship of a kind giving rise to a fiduciary duty; an arm's length commercial relationship (such as one of manufacturer and supplier of goods) is not sufficient. This follows a similar ruling earlier this year under this provision in Zhejiang Luyao v Autowey 168.
Lastly, another reminder about upcoming changes to the address for services rules in the UK and our recommendation to appoint a UK address for service against all marks with effect in the UK (including comparable UK marks, re-registered designs and UK designations of International trade marks and designs) (more here).