CMA Moves to Investigate ‘Green’ Claims

On 2 November 2020, the UK Competition and Markets Authority (CMA) announced that it will be investigating descriptions and labels used to promote products and services claiming to be ‘eco-friendly’ and whether they could mislead consumers.

The concern for the CMA is that an increase in demand for sustainability could lead to businesses making misleading, vague or false claims about the environmental impact of the goods or services.

The CMA has specified that misleading behaviour could include:

  • Exaggerating the positive environmental impact of a product or service
  • Using complex or jargon-heavy language
  • Implying that items are eco-friendly through packaging and logos, when this is not true.

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Ferrari Loses Race for 250 GTO Trademark: Risks Arising From Non-Use of Registered Trademarks

A gavel and a law book - European unionFerrari 250 GTO, often hailed as the most expensive car in the world, was initially introduced by Ferrari in 1962. Only 36 models of 250 GTO were exclusively produced between 1962 and 1964. The fact that each buyer had to be personally approved by Enzo Ferrari only added to the exclusivity of this particular car model. Because of their exclusivity and the fact, that the existing models are still running, these models became something of a status symbol. One of these models was famously sold at Sotheby’s auction for $48.4 million in 2018, setting the world record for the most expensive car ever sold at auction. A different model of 250 GTO was allegedly sold privately in the same year for a whopping $70 million. Continue Reading

VAT on Compensation Payments in Intellectual Property Settlements

This blog is a follow-up to our recent blog on HMRC’s surprising Changes to VAT and Early Termination Payments. As we noted, HMRC’s updated guidance is proving to be highly controversial.

What’s happened? Folks are unhappy because the updated guidance treats contract termination payments (including for breach or withdrawal or under liquidated damages clauses) as supplies for VAT (i.e. taxable), when they were previously treated as outside the scope of VAT. Continue Reading

Brexit Impacts on Trade: Relief for Pharmaceuticals and Advice for Contracting

Brexit flags of Europe and UKBrexit threatens to have a significant impact on import to and export from the UK of both goods and services. Recent legislative measures have provided more time for  implementing medicines regulation in Northern Ireland, so that business can prepare in relation to batch testing, importation and Falsified Medicines Directive requirements, as reported by Adrian Spooner in our Triage Health Law blog here. But as explained in guidance from Simon Jones, as noted in our Brexit Legal blog here, a myriad of issues — from tariffs and customs to tax and enforcement — need to be addressed in the contracts of all businesses who serve as a buyer of goods and services from suppliers in the EU or a seller of goods and services to customers in the EU.

Is a Tattoo Protected by Copyright? Is it Infringed if it Appears in a Computer Game?

We previously blogged on a New York case that considered these thorny issues. In a new blog published in our Sports Shorts blog, we look again at this issue as very recently adjudicated by an Illinois court.

Were these issues to be litigated in the UK, a similar result would likely arise. Namely, a tattoo will be protected by copyright as an artistic work, as long as the design is the author’s own intellectual creation (and not slavishly copied from a previous work). However, there are notable differences to the approach under English law. For example, the UK has no system of copyright registration, so proof of ownership of copyrights is usually a matter of demonstrating authorship and (if relevant) a valid assignment – i.e. being able to prove chain of title. Continue Reading

Messi Scores Goal in Trade Mark Dispute: Registering Celebrity Names as Trade Marks

The Court of Justice of the European Union (“CJEU”) has ruled that, after a decade-long legal battle, football ace Lionel Messi has the right to register his name as a trade mark.

This interesting case confirms that celebrity names are registrable as trade marks. However, whilst there are some advantages to seeking such protection, there are also some risks that need to be taken into account.

The Messi Decision

Background

The full judgment of the CJEU is currently only available in Spanish and French, but there is an official summary which is available in English. We highlight the most interesting aspects as follows:

Back in August 2011, Barcelona FC player Messi applied to the EUIPO to register his name, MESSI, as an EU trade mark in relation to sportswear. The application was opposed by a Spanish cycling company, which owned an earlier EU trade mark for the word MASSI, also registered for sportswear.

Initially, the EUIPO upheld the opposition, finding that there was likelihood of confusion between the trade mark MASSI and the word MESSI. The footballer had more success on appeal to the EU General Court, which said that Messi’s reputation counteracted the risk of any real confusion.

Dissatisfied, the EUIPO and the cycling company appealed to the CJEU. The CJEU has recently dismissed both appeals.

The CJEU’s Decision

The CJEU held that:

  • Messi’s reputation can be taken into account when assessing the likelihood of confusion between the existing MASSI mark, and the MESSI mark he had applied for.
  • It is clear that Messi is a very well-known public figure. The public therefore would not confuse sportswear branded MASSI, with sportswear labelled with Messi’s trade mark.

Messi is therefore entitled to register his surname as a trade mark.

Why Would a Celebrity Want to Register Their Name as a Trade Mark? UK Perspective

The commercial exploitation of ‘image rights’ (an individual’s rights in their own personality, such as their name, likeness, physical or style characteristics) generates significant sums for sports personalities, for example through the sale of merchandise, or engaging in endorsements and sponsorships.

However, UK intellectual property law does not recognise ‘image rights’ as a standalone right (the situation is different in several other key markets). Protection of those rights in the UK involves a combination of statutory and common law causes of action. Perhaps the most practical way to protect image rights is through the registered trade mark system. If a celebrity is able to register their name as a trade mark, they will have the exclusive right to exploit and profit from that asset and can prevent third parties from making unauthorised use of their registered trade mark. Messi follows a long list of other celebrities who have trade marked their name, such as David Beckham and the recently deceased, Sir Sean Connery.

Pitfalls to Keep in Mind

However, there are some problems that may arise if a celebrity trade marks their name and then for example, assigns that trade mark to a company. The case of Elizabeth Emanuel can be used to illustrate this point.

Elizabeth Emanuel is the well-known designer of Princess Diana’s wedding dress. Ms Emanuel obtained a trade mark for the name ELIZABETH EMANUEL and, as is common (for example for tax efficiency reasons) assigned the trade mark to her company. Later down the line, the company passed into 3rd party hands and Ms Emanuel was no longer involved in the business. She tried to get the trade mark back on the basis that the use of it by a business in which she had no part would be misleading to the public.

After another long legal battle, Ms Emanuel was able to show that the mark was indeed misleading in 3rd party hands, but since she had freely assigned it, the CJEU ruled that her objection to the 3rd party use must fail. The court assumed that the deception of the pubic would fade over time (e.g. as they become aware that she no longer ran the business). In practical terms, this meant that Ms Emanuel lost the ability to exploit her own name as a brand.

Commentary

Although there are some drawbacks to be aware of, it is very common for well-known individuals such as football players to seek to register their name as a trade mark, to obtain exclusive rights in their brand. However, celebrity in itself is not a guarantee for success, any application for a trade mark must meet all the requirements for registration. This includes the requirement for distinctiveness, which can be tricky if the celebrity is not normally associated with the type of goods or services for which registration is sought.

If you have any questions relating to this topic, please contact Carlton Daniel and Ailin O’Flaherty.

 

 

 

 

 

 

 

Platform to Business Regulation – Now in Force

Since 12 July 2020, the Platform to Business Regulation has been directly applicable in the UK and all EU member states. However, with Brexit worries and the COVID-19 crisis having an ongoing impact on business in the digital sector, the new rules have passed many by. Now is the time to ensure compliance.

The Regulation applies to online platforms (examples include e-commerce marketplaces, app stores, comparison websites and social media platforms) and search engines that provide their services to business and corporate users established in the EU/UK, no matter where in the world the operator of the online platform or search engine is located. Continue Reading

Ongoing Challenges for Fashion Brands in Germany – Legal Issues with Style Names Revisited

Using first names as style names to assist consumers in distinguishing between certain items, styles or washes within a collection is a widespread practice in the fashion industry. Compared to numerical identifiers, names may trigger emotions and are much easier to remember. Style names may be used in manifold ways, e.g. on labels sewn in the inside of garments, hangtags and boxes or in advertising material such as catalogues and offers on the internet. What many companies do not realize is that the use of style names involves legal risks. Many names are already registered as trademarks, which may give rise to trademark conflicts. Continue Reading

Are APJs Constitutional? The Supreme Court Will Review Arthrex

patent and related wordsOn October 13, 2020, the U.S. Supreme Court agreed to take up the question of the constitutionality of the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA).  The Supreme Court will review the decision of the Court of Appeals for the Federal Circuit in what has become well known as the Arthrex case.

Potentially thousands of PTAB decisions in the eight or so years since the AIA came into force are at stake, depending on how the Supreme Court rules on the Federal Circuit’s decision.  At minimum, a number of pending PTAB cases that have been stayed pending this appeal will be stayed for a while longer. Continue Reading

UK Begins Review of National Gambling Legislation

Soccer bet concept with football and moneyThe UK government has started its review of national gambling legislation, likely to result in the introduction of a new Gambling Act. New measures could include tighter restrictions on gambling sponsorship and advertising, such as gambling operators no longer being allowed to advertise on the shirts of sports teams or any other visible part of their kit. It is worth noting that Italy has already passed strict legislation in this area and Spain is set to follow. Details of Spain’s proposal are available in  a post published on our sister blog, Sports Shorts.

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