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When I think of Frank Sinatra's "My Way," I see a connection to the main ideas behind intellectual property law. "My Way" embodies personal expression and an individual's journey through life, which parallels the concept of the ideas-expressions dichotomy in copyright law. It echoes the principle that music, literature, or art can be copyrighted while allowing others to explore the same ideas without infringing upon that particular expression. Sinatra's anthem also celebrates uniqueness, which is reflected in the definitions of all of the varying types of intellectual property.

The Purpose of This Blog

The articles on this blog are all written, reviewed, and edited by me, Mr Peter Adediran, the Digital Media and Intellectual Property Solicitor at PAIL Solicitors. They are intended to empower the new generation of business executives, professionals, business owners and creatives who want to keep up with intellectual property, digital media and entertainment law in the digital age. Most importantly, empower the community of creatives who want to create works "their way". In today's rapidly evolving digital landscape, staying informed and increasing knowledge in specialised legal services is crucial for e-commerce and digital technology businesses. At PAIL® Solicitors, we understand the unique challenges start-ups, business owners, professionals, business executives, creatives, writers and talent face in protecting their intellectual property and navigating legal complexities. By reading this blog and engaging us as your legal representatives you can safeguard yours and your company's reputations, make informed financial decisions, and confidently expand into new markets by focusing on continuous learning and expertise in these areas.

This blog contains articles on the following themes:

  • Advice on Protecting Digital Content

Encouragement to Stay Informed and Protected

For creatives and businesses alike, staying informed about legal issues surrounding intellectual property is critical. Knowledge is a powerful tool for safeguarding one’s work from infringement or misuse. We encourage individuals to engage with our resources, participate in discussions, and keep abreast of developments in IP law. 

International online marketing

 

International online marketing, the Sofa Workshop Case

International online marketing received some much needed clarification in the Sofa Workshop Case. Last Monday the 29 June 2015, his honour Judge Hacon handed down judgment in the Intellectual Property Enterprise Court that should send reverberations right across the online marketing stratosphere.

The case is Sofa Workshop (C) -and- Sofaworks (D) [2015] EWHC 1773 (IPEC). Briefly, the C and D were competitors in furniture retail. C sued D for community trademark infringements (CTMs) and passing off. D denied it. D counterclaimed for revocation of the CTMs for non-use and a declaration that the CTMs are invalid as devoid of any distinctive character and consisting of an indication in the trade of a characteristic of the goods or service.

The judgment gave rise to certain important points in trade mark law particularly regarding national and community trade marks but it also touched on online marketing. Some of the issues it considered are very helpful for online marketers in understanding the legal pitfalls of trade mark use and how maintaining a professional approach particularly involving keyword manipulation can help to protect the reputation of their clients and clients’ businesses.

International Online Marketing

1. Referring to L’Oreal SA v eBay International AG (c-324109) [2011] E.C.R 1-6011; [2011] R.P.C. 27 Judge Hacon reiterated that in the context of online marketing, a trade mark will be used in a particular member state if the offer for sale of the relevant good or services bearing the trade mark is targeted at consumers in that member state, as opposed to the website being merely accessible in the member state. This is nothing new but it is useful to have Judge Hacon reaffirm its importance. “In the course of trade” means actual buying and selling of goods or services within that geographical area. Merely advertising or marketing in the relevant geographical area will not amount to actual trade. The case of Euromarket Designs Inc v Peters [2000] E.T.M.R 1025; [2001] F.S.R was cited.

2. Although there is nothing commercially improper about keyword manipulation Judge Hacon pointed out the risk if you were going to rely on Google search evidence in a trade mark infringement action. There is a risk for the claimant in a trademark and/or passing off action that any online confusion which might potentially be very reliable evidence of confusion will be effectively offset because of the impossibility of distinguishing the “likelihood of confusion including the likelihood of association” test in art 9(1)(b) from confusion as a result of the manipulation of search engine results using keywords.

3. Lastly, it was mentioned that a strategy where Sofa workshop’s advertisement was “Sofaworks Sofa Workshops” for 5 weeks in a row was overly aggressive.

Trade marks and Passing off

There were other issues raised.

Sofa workshop, although conceding that there should be partial revocations of their CTMs for non-use, denied that the marks were descriptive. They argued that the specification could be narrowed and if necessary their registration should be converted to a national UK trade mark as a fall-back position.

The following issues were set down by Judge Hacon as being pertinent:

Trade mark Infringement

* The extent to which each of the CTMs should be invalid for non-use
* The amendments which should be made
* Whether either CTM was invalidly registered
* if so, whether either CTM has acquired distinctive character
* Whether Sofa works has infringed either CTM
* Conversion of either CTM to a UK national application

Passing off

* Whether Sofa workshop owns goodwill in its business associated with its trade mark
* Whether Sofa works use of its trade name constitutes a misrepresentation
* If so, whether as a consequence Sofa workshop has suffered or is likely to suffer damage

Non-use of the CTMs

Crucially the court held that “genuine use” of a CTM depended on the geographical extent of the use. You cannot use a trade mark in only one member state without extending its use to the other member states for the 5 years of its registration without running the risk of having to convert it to a national mark. The key cases cited were Leno Merken BV V Hagelkruis Beheer BV (C-149/11) [2013] E.T.M.R 16; Ansul [2003] E.T.M.R 85 and Sunrider [2006] E.C.R I-4237; La Mer Technology [2004] E.T.M.R; and PAGO International GMBH v Tirolmilch registrierte Genossenschaft mbH (c-301/07) [2010] E.T.M.R 5.

Conclusion

In conclusion the use of the CTMs did not constitute genuine use and should be revoked because distribution of goods and services was shown in the UK but not anywhere else within the community. Additionally, use of Sofa workshop was not distinctive because it simply describes a characteristic of some of the goods for which the mark was registered, namely sofas being custom made in workshops which was commonplace in the trade. There was nothing distinctive about the sofa being made in a workshop. The Judge used the comparison of the words POST OFFICE. there was nothing distinctive about stationery bought from the POST OFFICE and stationery bought from any other stationers.

Notwithstanding, the Judge found that there was confusion, so Sofa workshop succeeded on passing off but its CTMs were invalidly registered and liable to be revoked for non-use.

All in all an interesting case for trade mark practitioners and international online marketing.

If you like this article then you might like our articles on:

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Parallel Importer

Digital Media Lawyer

INTELLECTUAL PROPERTY LAWYER FOR SMALL BUSINESS

Trademark Legal Advice

To obtain a quotation, please contact us at (020) 7305-7491 or at peter@pailsolicitors.co.uk. We would be delighted to assist you. Mr Peter Adediran is the owner and principal solicitor at PAIL® Solicitors.  Subscribe to our newsletter to get blog post updates and other information about the firm straight to your inbox.

Meet The Team: Peter Adediran; Maya El Husseini; Gabrielle Felix; Poppy Harston