IP insights: October 2024

Welcome to our round up of the most important news and insights in intellectual property.

About our IP team

Our award-winning intellectual property lawyers across the UK and Ireland advise on the full range of rights from patents, confidential information and designs to trade marks and copyright. Our team is ranked by World Trademark Review, Managing Intellectual Property and IAM Patent 1000, Chambers UK and Europe and Legal 500.

Recent accreditations and awards

• Legal 500 rank Browne Jacobson in Tier 1 for Intellectual Property. In addition to two Tier 1 rankings, the practice also received Tier 3 and two Tier 4 rankings across the UK and Ireland.
• Ranked in IP Stars 2024. Browne Jacobson was ranked for Trade Mark disputes and IP Transactions. Mark Daniels, Declan Cushley and Giles Parsons have been ranked as “IP Stars” and Nick Smee, Faye McConnell and Hayley Smith have been ranked as “Rising Stars”.
• Jeanne Kelly was featured in the Business Posts Top 100 lawyers.
• Giles Parsons has been appointed chair of the Law Society’s IP Committee.

Lookalike disputes: A practical guide

Bonita Trimmer, Giles Parsons and Nirmal Trivedy have written a guide to help businesses navigate lookalike disputes over copycat products (or referential packaging) which has been published in Practical Law Magazine. The guide provides a background to lookalike disputes in the UK, summarises the legal claims which are likely to be available in lookalike disputes (together with some possible forthcoming legal developments) and sets out some practical steps that a business might want to take if they want to keep selling lookalikes or, conversely, want to prevent their sales.

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Court of Appeal declares that Panasonic’s refusal to grant an interim licence is not FRAND 

Lord Justice Arnold in the Court of Appeal has declared that Panasonic’s refusal to grant an interim licence to Xiaomi is not FRAND. Panasonic sued Xiaomi in England. Both parties agreed the English Courts would determine FRAND terms for a global licence. Panasonic nevertheless continued to pursue proceedings in Germany and before the UPC. The Court of Appeal held that Panasonic’s conduct was “indefensible” and not FRAND

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EasyGroup proceedings defeated by jurisdictional challenge

In 2023 EasyGroup issued proceedings against our Cyprus based clients, Easy Forex Trading Limited and Blue Capital Markets Limited (trading as easyMarkets), alleging trade mark infringement and passing off. While Ireland was easyGroup’s designated jurisdiction to pursue this claim, we successfully challenged EasyGroup’s entitlement to issue proceedings against our clients in Ireland. Mr Justice Twomey delivered his judgment on 16 October 2024, finding that there had been no targeting by our clients of Ireland for the purposes of online activities and therefore our clients could not be sued in Ireland for the alleged passing off or alleged infringements of EasyGroup’s trade marks. 

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EVs are on the ASA’s agenda

In response to the increasing number of electric (EVs) and hybrid (HEVs) vehicles available in the UK market, the Advertising Standards Authority (ASA) issued non-exhaustive guidance on advertising electric vehicles. The ASA’s guidance urges businesses to make it entirely clear in their advertising the given vehicle’s source(s) of power and outlining in what circumstances claims of zero emissions and environmental benefit can be made compliantly. 

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CJEU confirms that copyright law is the same for all claimants

The CJEU has confirmed that member states of the EU cannot treat claimants differently based on their nationality. Recent EU case law (such as Cofemel) has made it easier to sue for copyright infringement in Europe. This case makes it clear that claimants based outside the EU (such as UK or US companies) can still sue and benefit from the wide interpretation of rights.

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Giles speaks to the BBC about crustaceans 

Giles Parsons spoke to the BBC about Iceland’s trade mark application for “King Prawn Rings”. In the feature, Giles discussed how the marks descriptiveness would be barrier to registration, meaning that Iceland’s demand that other supermarkets ceasing selling it were unfounded (and was most likely a marketing ploy – albeit a successful one).

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Ireland: Remedies for trade mark infringement

Our recent article for Lexis Nexis outlines the civil remedies available in Ireland to the proprietors of Irish and EU trade mark registrations. The practical guidance discusses the election between damages and account of profits, statutory remedies (erasure, delivery up and disposal) and interim injunctions.

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The Guardian: My ex boss bullied me and stole my ideas

Giles Parsons spoke to Annalisa Barbieri at the Guardian about when an employee will own ideas that they shared during employment, and what action may be available if you have left a job as a result of bullying. The piece featured views from a psychologist and illuminated how talent and creativity may get you through an uncomfortable employment situation. The article was featured in the Guardian’s lifestyle section. 

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