Welcome to the fifth edition of the Good News/Bad News blog!
Our BAD team (i.e. brand, advertising and design teams) acts as a trusted advisor to the world’s most valuable brands, helping brand owners navigate the ever-changing landscape. I wanted to share my recent experience in hopes of doing so. .
Here are some things I think you should know right now…
- Lidl v Tesco
- “Metabirkin” – A Landmark Judgment
- The King’s Coronation – Tips for Brand Owners
- Toblerone has a new look
- Sustainable fashion – key trends
- AI piracy in the US
- bad insight podcast
- Team news:
- interface
- metaverse
- Trade secret
- IP in Asia
- interface
- commendation
- Our team has won 11 awards at the upcoming MIP EMEA Awards, including Global IP Firm of the Year, European Firm of the Year Patent Disputes, various UK Firm of the Year Awards, Design, Trademark and Patent Disputes was nominated for .
- Gowling WLG’s Global IP Practice Recognized at MIP ‘IP Stars’ 2023
- Chambers Global 2023 Recognizes Gowling WLG Lawyers
- 2023 Canadian Legal Expert Directory Recognizes 211 Gowling WLG Attorneys
- Birmingham Regal Awards “National Law Firm of the Year”
Lidl vs Tesco
Lidl and Tesco have been at odds with each other since Lidl filed a lawsuit against Tesco claiming trademark infringement, passing off and copyright infringement. Lidl’s focus differs from Tesco’s similar yellow circle and blue rectangular background with a yellow circle trademark (“mark with text”) on a blue rectangular background with the word “Lidl” in the center The text (e.g. price reduction) was used in the ‘Club Card Price’ promotion launched in September 2020.
In response to Lidl’s claims, Tesco filed a counterclaim seeking a declaration of invalidity relating to the trademark registration of Lidl’s logo, but without the word “LiDL” (“Wordless Marks”). Tesco argued that the silent mark should be declared invalid on the grounds that it was not genuinely used and was registered in bad faith.
In a long-awaited ruling, the High Court ruled largely in favor of Lidl. Lidl successfully filed a trademark infringement claim on the mark with text and a claim of passing him off and copyright infringement. “Tesco took advantage of Lidl’s unique reputation,” it said. [logo] For lower (discounted) value. Tesco managed to maliciously disable some of Lidl’s Wordless Marks, but it’s clear Lidl won.
For more information on this decision and its implications, read our article Supermarket Wars – Why Brand Protection Strategies Matter.
“Metabirkin” – A Landmark Judgment
On February 8, 2023, a nine-person jury in New York United States District Court will face Hermès International in its trial against Mason Rothschild, the digital artist behind the “Metabarkin” Non-Fungible Token (“NFT”) collection. I have ruled in my favour.
As explained by Monique M. Couture, Justine Simoneau, and Kasia Donovan in their article Landmark Judgment on Trademarks in Virtual Worlds: Hermès Wins ‘Metabirkin’ NFTs Case,” this means that brands It was the first time that we took action. Unauthorized use of trademarks in virtual worlds. That ruling sparked an interesting debate about whether NFTs are creations, works of art, or just trading assets.
Given the ever-expanding digital marketplace and the growing importance of NFTs, more decisions are likely to be made in this area. Check out this space!
The King’s Coronation – Tips for Brand Owners
As His Majesty the King and Queen are celebrating their coronation as Heads of State this spring, many brands, especially those in the UK, want to celebrate this landmark moment in history. As Lucy Singer explains in this insightful article, Key Considerations for Brands Celebrating a King’s Coronation, brands can: We need to consider how to celebrate the coronation.
This article discusses the use of official emblems (created specifically for the coronation), legal rights brands should be aware of when celebrating the coronation, and practical points brands should consider. Consider.
Toblerone has a new look
For the first time in over 50 years, Mondelez is redesigning the corrugated packaging for its Toblerone product. These changes have been made in compliance with “Swiss law”.
Previously, the brand’s packaging included the silhouette of the Matterhorn, one of the highest peaks of the Alps, and the silhouette of a bear (the mascot of Bern) with the slogan “Swiss”, along with a chocolate bar invented and manufactured. was near Bern. With some of Toblerone’s production recently relocated to Slovakia, Mondelez has announced that it plans to remove the Matterhorn and replace it with a more conventional mountain. of Switzerland. ”
This article by Kate Swain, Jasmine Lari and Lucinda Wilton Woodhouse reads, “Mondelez Modernizes Iconic Toblerone Packaging. What Does This Mean for Brand Owners?” ”, and considers what this means for brand owners.
sustainable fashion
While there has been a big shift in public awareness in recent years about brands becoming more environmentally conscious, the fashion industry has lagged behind other industries in making progress in this area. , is asking brands to do more to help the planet, and we are increasingly seeing the retail industry address and address environmental issues.
In this article, Sustainable Fashion: 5 Key Trends, Jocelyn Paulley and Jasmine Lalli identify five key sustainability trends impacting the fashion industry today and show how seriously sustainability is taken in the field. Consider whether
AI piracy in the US
Canadian colleagues Susan Abramovitch, Madison MacColl, and Lamont Abramczyk recently suggested that AI image generators and machines be considered potential copyright infringers, even if the machines themselves do not qualify for copyright protection. I considered the contrast with the US courts requested.
Earlier this year, the U.S. Copyright Office ruled that AI image generators do not qualify for copyright protection, but a lawsuit filed by three U.S. artists found that the images they generate alleges copyright infringement.
This article, “AI Image Generators: Painting Infringement Claims, Not U.S. Copyright Protection,” explores AI image generator claims as copyright infringers and the future in terms of the legal rights of those who use AI technology. Consider what it would look like.
Bad Insight Podcast
In the new BAD podcast series, the team explores key topics impacting the IP sector and how to protect your brand, creations and designs. Our team hopes the podcast will provide information on important topics in the world of intellectual property in a fun and engaging way.
Our podcast series has previously covered topics such as the Law of Exhaustion and IP sanctions regimes in the UK and EU. And with new releases slated over the next few months, we have plenty of sessions to add to his list of podcast hits. !
“Bad” Insights: Post-Brexit Exhaustion and Design Protection Laws in the EU and UK
“Bad” Insights: Navigating the UK and EU Sanctions Regimes on IP
BAD’ Insights: IP Rights in the Metaverse
BAD Basic Podcast
We are launching a new series of ‘Basics’ podcasts. This serves as a useful introduction to areas you (or your team) don’t need to cover every day. We launch monthly and our first is Passing Off by Lucy Singer. Her podcast is full of lemony puns.
team news
interface
Heading to INTA! Our team is currently preparing to attend the Annual General Meeting of the International Trademark Association (“INTA”) in Singapore this year. The purpose of the conference is to bring together trademark professionals from around the world and a wide range of other brand protection professionals. We are delighted that the conference will be held in JurisAsia’s home city with which we have an exclusive relationship. So many colleagues in Singapore stand by to welcome visitors to the country.
With a strong focus on collaboration and idea sharing, our team can’t wait to network with other experts and discuss key topics designated for this year, including intellectual property in Asia, the metaverse and trade secrets. .
In preparation for INTA, our team has been busy preparing materials on this year’s designated hot topics. We recently put these together in a virtual fireside his chat that John Coldham attended with members of our team around the world. They discussed current developments and opportunities in Southeast Asia, as well as current topics that trademark attorneys have had little time to consider. A recording of this session will be available soon. Check here so you don’t miss it.
- If you can’t wait for the webinar:
- metaverse
- Check out the BAD Insights Podcast on IP Rights in the Metaverse, hosted by Charlie Bonds and Lucy Singer.We not only consider the benefits of the Metaverse and the opportunities it presents, but also the potential pitfalls – “BAD” Insights: Metaverse IP Rights
- Kate Swain is part of the committee working on INTA’s Metaverse White Paper, which explains the concept of the Metaverse and how it affects various intellectual property rights – White Paper: Metaverse Trademarks
- trade secret
- Brand owners typically protect themselves with a portfolio of IP legal rights such as trademarks and copyrights, but trade secrets seem less common for many brands. In this article, Cassie Blackburn, Khemi Salhan, and John Coldham discuss whether there is still room for trade secrets in brand protection portfolios, and the benefits trade secrets offer brands. Should you consider using trade secrets as a means of brand promotion and protection?
- metaverse
