Overview of United Kingdom Trade Mark and Designs Cases 2019

This report highlights key UK trade mark and design decisions from the past year that may be of particular interest to comparative lawyers. Virgin Enterprises Ltd v. Virginic LLC was a useful reminder regarding distinctive character, the assessment of similarity and how all of this impacts the assessment on likelihood of confusion. Gap (ITM) Inc v. Gap 360 Ltd points out that specifications must be compliant with requirements as set out in the case law, and in particular, IP Translator and Postkantoor, or they will be considered ineffective, especially when trying to avoid a potential dispute. Nomination v. Brealey (t/a JSC Jewellery) shows that the right to resell branded goods is not unqualified and gives us another example of what may be considered a legitimate reason to oppose resale. Bentley 1962 Ltd v. Bentley Motors Ltd serves as a warning to brand owners looking to extend their brand into a new marketplace, noting the limitations that apply to even brands with a reputation when moving across into new sectors. Beauty Bay Ltd v. Benefit Cosmetics Ltd highlights the importance of context in the assessment of confusion in a trade mark infringement claim and demonstrates a situation where marks could be found to be similar but likelihood of confusion is still not found. Claridge’s Hotel Ltd v. Claridge Candles Ltd was not a surprising decision but reminds brand owners to put their best mark forward in enforcement proceedings while Glaxo Wellcome UK Ltd v. Sandoz Ltd & Ors illustrates the difficulties of relying on colour marks to denote trade origin. Another year meant another case involving Michael Gleissnar in Trump International Ltd v. DTTM Operations LLC and unsurprisingly, the Hearing Officer found bad faith in this case. APT Training & Consultancy Ltd v. Birmingham & Solihull Mental Health NHS Trust gave us further insight into what constitutes use of a mark in the course of trade and Aiwa Co. Ltd v. Aiwa Corporation is worth a read for brand owners who are thinking of re-launching a historic brand.