IP Top 10: March – Apples and Pears, Okurrr?
by Martin Hendry · Published April 3, 2019 · Updated May 8, 2019
IP Top Ten March: when is a pear too similar to an apple?
IP Top 10: March
IP Top 10: March: March has come and gone in what seems like a blink of an eye – and with it came a raft of interesting and impactful intellectual property stories (say that twenty times fast).
Intern Oscar Guardo has helped rifle through the stories that moved and shook the month; identifying 10 tasty morsels for your consideration.
Here, in no particular order is our IP top 10!
#10 Fallout: Directive on Copyright in the Digital Single Market
After two and a half years of continuous controversy, the European Parliament has finally approved the Directive on Copyright in the Digital Single Market. By 348 votes in favour and 274 against, the European Parliament has taken its final step towards regulation that has created a deep division between supporters and detractors, and that will change fundamental rules for Internet content providers.
Forbes offers a good overview of the main talking points from the Directive.
Razvan also took a closer look at the most controversial aspect, Article 13 (or is it Article 17?)
#9 Classic Soda "Slice" is Back!
Nowadays, it can be very challenging to earn money when starting out as a business. That being said, here is a idea that may change your luck: take an old trademark from its original owner and adapt it for the modern market!
It may seem like crazy concept, but this theory has been put into practice this month with the return of a classic "Slice Soda" which joins other resurrected brands that have found a renewed audience (Champion, anyone?).
Entrepreneur take a close look at this refreshing return
#8 "Lepin" Trade Mark Tumbles Down
The UKIPO has cancelled the trade mark of a Chinese company making "almost identical" products to Lego with the brand name "Lepin". You might think that this name would not be enough to draw the ire of the IPO; but the construction of the logo was found to be clearly "inspired" by Lego's red square logo.
After a year building their case, LEGO has managed to win their claim over LONGJUN Toys, sending a clear and concise message to all those who may be tempted to encroach upon their trade mark.
Gizmodo offer a good overview of this case.
#7 Chris Skidmore Stresses Importance of Ensuring UK IP Protection Remains Among the Best in the World
The UK's current Minister for Business, Energy and Industrial Strategy (encompassing IP) spoke at the Managing IP forum, expressing the importance of protecting the country's IP in years to come.
With Brexit looming ever ominous on the horizon, it may be reassuring to some rights holders that the current government has emphatically stated the importance of IPRs in the post-Brexit landscape.
To read Chris Skidmore's statement, click here to visit Gov.uk.
#6 Louis Vuitton's Parting Blow
It is not uncommon for fashion giants such as Louis Vuitton to be involved in IP disputes. In fact stories such as the following tend to be part and parcel of any of these monthly round ups.
In the case of Louis Vuitton versus Sefendant "My Other Bag", the latter successfully defended their case on a parody argument in relation to their "bag on a bag" range. They then sought to enforce a order against LV for the costs incurred over the 4 years of litigation.
Louis Vuitton was found not liable to pay nearly $803,000 in legal bills that My Other Bag (MOB) incurred over the course of the parties' litigation. Such a decision would only have been granted in "exceptional" circumstances, however MOB's claim was left wanting.
The ever articulate The Fashion Law have an excellent write-up of this case.
#5 Confirmed: Post-Brexit Numbering of EU Trade Marks and Designs
The UK Intellectual Property Office (UKIPO) has confirmed continued protection of EU registered trade marks and designs after Brexit. An equivalent UK registration system has been developed for all registered European Union Trade Marks (EUTMs), Registered Community Designs (RCDs), International Designs and International Trade Marks which designate the EU.
This protection has been confirmed regardless of the outcome of the Brexit negotiations and whether the UK leaves with or without a deal. Existing marks and designs will receive an analogous registration number on the UK register.
CITMA explain more here.
#4 Cardi B's Trade Mark Attempt Might Not End Up "Okurrr"
Singer Cardi B asked to register her "Okurrr" (a peculiar way of saying "OK" which sounds quite like a pigeon cooing…) as a trade mark in the US. She has made this noise popular during the course of her meteoric rise to the top of the charts.
In accordance with U.S. law, before a party may be granted a trade mark registration, they must be able to show the USPTO that they have used the trade mark beforehand. It seems, with little proof of use, Cardi will face some difficulty in achieving registration and all of the merchandising and commercial benefits that come with a trade mark.
Observer take a look at why Cardi B's attempt to claim this phrase may be a Sisyphean feat.
#3 Time is Money and McDonald's Knows It
Remember in January where the McDonald's lost their "Big Mac" trade mark in the EU as a consequence of a dispute against Galway's "Supermac"? If not click here to refresh your memory!
Well, it seems that McDonald's has not given up yet (makes sense) and has decided to appeal to the EUIPO. Whatever the outcome, McDonald's will have to wait for a year without one of their key brands being protected as they wait for the appeal decision to be granted and then litigated.
The Irish Times tell all in this article.
#2 Apples and Pears, Apples and Pears!
Apples and pears are similar kinds of fruit (editor: although you will never catch me eating a pear, the cardboardy skin is my kryptonite…) but would a "pear" trade mark be too similar to "apple" when it comes to trade mark classes 9, 35 and 42?
The CJEU say no, dismissing Apple Inc.'s filed opposition of Pear Technologies Ltd. figurative mark.
For those interested in the perils and pitfalls of trade mark registration, this is an a-peeling case study.
As purr usual, IPKat have an excellent write-up of these proceedings.
#1 Music Industry Making Noise After Streaming Services Latest Move
Finally, a move from streaming giants including Spotify has angered the US music community, as they seek to appeal royalty rates imposed by the CRB (Copyright Royalty Board).
Streaming services decided to dance to their own tune, lobbying against the CRB's rate with their growing influence in the industry.
The appeal having now been confirmed, industry stalwarts are raising their objections at how many (aside from Apple Music who had agreed the remuneration rate) platforms had baulked at what musicians deemed as fair recompense.
For all things copyright 1709 is the place to be, and it is no exception in the case of this story.
And that is it for this month's IP top 10. Another month of stories you could not make up if you tried.
IP has to be one of the most unpredictable areas of law.
If you would like to speak to any of our team of intellectual property specialists, please call:
IP Top 10: March was written by Oscar Guardo and edited by Martin Douglas Hendry (and then edited again by Gemma Wilson)
Tags: appleintellectual propertyIP Top 10trade marks
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