A recent Supreme Court ruling in the case Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] has established a clearer picture of the rights afforded to trade mark owners when seeking to defend their mark.

It was found that post-sale context, or how a trade mark is viewed by the public after the product has been sold and is in use, will be taken into account when assessing the similarity between two marks. In this instance, the case hinged on whether Dream Pairs’ logo was sufficiently similar to Iconix’s logo, the Umbro ‘double diamond’, when viewed from above on the side of a shoe, and whether this would cause confusion for a member of the public.

The High Court had initially dismissed Iconix’s claim, holding that there was only a passing resemblance between the two marks and that there was no likelihood of confusion. However, on appeal the Court decided that this assessment had been irrational, as it had not accounted for how the mark would be viewed in a post-sale context. As a result, the initial ruling was overturned.

Dream Pairs then opted to appeal this decision to the Supreme Court, where it was further confirmed that the way a product is viewed in a post-sale environment is to be taken into account when assessing similarity between two marks. Additionally, the Supreme Court held that where there is no likelihood of confusion at the original point of sale a trade mark can still be infringed if there is a likelihood of confusion post-sale. Effectively, breach of a trade mark can happen irrespective of where in the product’s use cycle the confusion occurs.

The effect of this ruling is that future trade mark enforcement can be based on how the mark would realistically be encountered by the public. This means that any use of a mark similar to that of a registered trade mark needs to be done with additional care, and it opens up new possibilities for defending a mark.

If you believe that your trade mark may have been infringed, or require assistance defending your trade mark, our Commercial team would be happy to assist. Please email info@franklins-sols.co.uk or call 01908 660966 / 01604 828282.

The video game industry is constantly expending with not only multi-national corporation but also small publishers who develop games worldwide making it a multi-billion-dollar global market. From developers to publishers and distributors, all parties involved in this industry have to navigate complex legal issues. These include, amongst other things, licensing.

Video game licensing encompasses areas such as intellectual property law, contract law and competition law.

  1. Copyright

Video game licensing is partly governed by copyright law as video games are considered to be literary and artistic works, which are protected under copyright law.

Under copyright law, the inventor of the game will be the owner of it and will therefore get exclusive rights to reproduce or distribute the game. With licensing, this allows the owner to grant specific rights to third parties (i.e. distributors, publishers etc) for a consideration.

  1. Trademark

When creating a video game, developers will often include distinctive names or logos. Under trademark law, these would be protected against unlawful use by third parties. However, licensing would play a significant role in the development and distribution of the game worldwide. As for copyright, the owner of the trademark would license the right to use the trademark, therefore allowing third parties to use the names, logos or character.

This would be the case when merchandise is developed, such as clothes, figurines or goods in general.

Notwithstanding the above, there are a wide range of elements to take into consideration when preparing a licence agreement and specific provisions would have to be included within such a document, such as:

Video games licensing is a complex field of law and our commercial team would be happy to assist companies with the process.

For further advice and assistance please contact our Commercial Solicitors on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

The giant retailer, Marks & Spencer, removed a brewery themed garment from sale after being accused of ‘ripping off’ a London craft beer chain brand.

Martin Hayes, the founder of Craft Beer Co, set up in Clerkenwell in 2011 was surprised to hear that a £16 T-shirt was on sale with his pub’s name in graphic print. Martin pointed out the use of its name to M&S in a tweet, attracting the public’s attention immediately, especially since the Colin the Caterpillar feud between M&S and Aldi. M&S responded to confirm that they have removed the item from sale while the accusation is being investigated.

A M&S spokesman said: “We take intellectual property very seriously and, while the t-shirt was designed in good faith, we’ve taken the decision to remove the product from sale so we can investigate further.”

Martin confirmed to the BBC that Craft Beer Co will not be taking any legal action and confirmed “I’m not angry about it, but it is a little annoying”. He also added “We’re a relatively small business so I don’t think we’ll be taking on a PLC. This isn’t Aldi versus Marks and Spencer“.

Aldi, who lost the infamous public legal battle with M&S after being accused of copying the M&S’s iconic ‘Colin the Caterpillar’ trademark, could not resist joining in on the tweets. Despite Aldi reaching a confidential settlement out of court with M&S, the German retailer amusingly responded to the Craft Beer Twitter campaign by tweeting “OH HOW THE TABLES HAVE TURNED.”

Passing Off

A claim in passing off is about stopping the infringer from selling their goods or services by making unfair use of the claimant’s reputation. A common scenario is where the defendant adopts some mark, sign or other distinguishing feature; for example the appearance of the packaging of the goods which customers associate with the claimant. They use this, or something confusingly similar to it, for their own goods or services, with the result that customers are misled into thinking they are buying the claimant’s product. To establish this right of action, the claimant must show three elements often referred to as the ‘classic trinity’ first established in the House of Lords decision of Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 WLR 491 (also known as the Jif Lemon case). The three elements are:-

  1. Goodwill
  2. Misrepresentation
  3. Damage

Goodwill refers to the reputation of the business whereby the goods or services are recognised and distinguished from competitors e.g. the plastic lemon in the Jif Lemon case mentioned above. The distinguished feature can also be a name, logo, shape, style or packaging e.g. the classic Coca-Cola bottle.

The second element is misrepresentation leading to confusion. The defendant misrepresents his goods or services, either intentionally or unintentionally, where the public may have the impression that the offered goods or services are those of the claimant. There must be a misrepresentation made by the defendant during trade. In the Jif lemon case, the misrepresentation was the use of the plastic lemon. In most passing-off cases, there is a deliberate attempt by the defendant to ‘ride on the back’ of the claimant’s success.  A well-known example is the Colin the Caterpillar case also referred to above, where M&S claimed that the Cuthbert cake product allowed Aldi to “ride on the coat-tails” of M&S cake’s reputation. It is not enough that there is confusion between the claimant’s and the defendant’s product. Customers must believe that the defendant’s products are associated with the claimant and must lead to confusion of customers or potential customers.

The third element is that the claimant must show damage or the likelihood of damage. The main types of damage are loss of profits or loss of reputation. It follows that if you make a potential customer or recipient of your services think you are another party, that person has a right to claim compensation for losses suffered by the deception. Remedies for passing off can include an injunction, damages and/or an order to cover up marks or repackage. A claim in passing off is now often used as an additional remedy to trademark infringement claims, as it is more flexible in approach than a trademark claim.

Evidently, accusations in relation to the use or misuse of logos has become an increasingly litigious area over the last few years. Unfortunately, there is no one size fits all approach when it comes to dealing with copyright infringements. However, there are several key brand protection strategies for brand owners to consider:-

For further advice and assistance please contact our Business Services Team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

 

 

Copyright is defined as “a type of intellectual property that protects original works of authorship as soon as an author fixes the work in a tangible form of expression”. Different types of works are protected including paintings, photographs, illustrations, musical compositions, sound recordings, computer programs, books, poems, blog posts, movies, architectural works, plays, and more.

Determining originality is not an easy task as various influences converge to create original works and expressions. Where these works and expressions are so similar that they need to be closely examined in a court to determine if they infringe copyright laws, the services of a trained solicitor and a supportive law firm are needed.

Ed Sheeran has just won a copyright infringement suit brought against him by Sami Chokri who performs under the alias Sami Switch. Ed Sheeran had been accused of plagiarising part of a track called ‘Oh Why’ by Sami Chokri, along with two of his co-writers – Snow Patrol’s Johnny McDaid and producer Steve McCutcheon.

Sami Chokri had claimed that Sheeran’s 2017 hit infringed “particular lines and phrases” of his 2015 song and he and his co-writer Ross O’Donoghue further alleged that the main “Oh I” hook in ‘Shape Of You’ is “strikingly similar” to the “Oh Why” refrain in their own song. Chokri had further claimed that he and Sheeran had “overlapping circles” of artists, writers and producers in common, stating that there had been a “concerted plan” to bring ‘Oh Why’ to Sheeran’s attention, which claims were denied by Ed Sheeran’s party.

Ed Sheeran and his co-writers launched legal proceedings in May 2018, requesting that the High Court declare they had not infringed copyright. In July that year Sami Chokri and Ross O’Donoghue lodged their own claim for “copyright infringement, damages and an account of profits in relation to the alleged infringement”.

Ed Sheeran and his co-authors denied all allegations of copying, claiming that they did not remember hearing ‘Oh Why’ before the claims were lodged.

After an 11 day trial, Justice Zacaroli ruled that Ed Sheeran “neither deliberately nor subconsciously” copied a phrase from ‘Oh Why’ when writing ‘Shape of You’.

Justice Zacaroli did acknowledge there were “similarities between the one-bar phrase” in ‘Shape Of You’ and ‘Oh Why’, but added that “such similarities are only a starting point for a possible infringement” of copyright.

In reacting to the judgment, Ed Sheeran stated that “It is so painful to have to defend yourself against accusations that you have done something that you haven’t done and would never do”, and called on all artists to continue to support each other in a spirit of creativity.

For further information on copyright law related issues please contact our Business Services Team, on 01908 660966 / 01604 828282 or by email info@franklins-sols.co.uk.

Multi-Million pound company Oatly recently took a UK family run business – Glebe Farm Foods to court over a trademark dispute. Lawyers for Oatly claimed that Glebe Farm, which rebranded its Oat Drink product as PureOaty in 2020 (previously known as “Oat drink”), intended “to bring Oatly’s products to mind”, benefiting from Oatly’s brand. They also claimed that the name PureOaty was similar to Oatly, as was the product’s blue packaging and image of a teacup. Ruling in favour of the farm, Judge Nicholas Caddick QC, said while there were similarities between the initial PureOaty packaging and the Oatly packaging, including the use of the colour blue and the use of an irregular font for the product name, these were “at a very general level”.

Photo by Toa Heftiba Şinca from Pexels

Philip Rayner, Glebe Farm’s owner and managing director, said: “It is enormously gratifying that the judge has ruled in our favour, and to see that smaller independent companies can fight back and win. We can now forge ahead with PureOaty and our oat milk enterprise.” Oatly said it fully accepted the court’s decision and would not file an appeal. It said that while for some this might be seen as vindication for small oat drink companies over big oat drink companies, for the Swedish group, “this case has always been about protecting our trademark and how the single letter Y creates too much of a similarity between Oaty and Oatly”.

If you have any enquiries relating to trademarks and intellectual property, please contact Christopher Buck on 01908 660966 / 01604 828282 or email Christopher.buck@franklins-sols.co.uk

Dua Lipa is being sued by Intergral Images for posting a photo of herself, taken by Integral Images, in February 2019 on her Instagram page. Intergral Images has stated that the basis for the claim is that Dua Lipa has profited from the photo as her Instagram page is also a marketing platform for her music and the photo was shared without their consent. Integral Images applied to register copyright for the image, and the request was granted in February 2021 by the US Copyright Office.

Photo by Brett Sayles from Pexels

Copyright is a legal right, giving the owner exclusive control over their work and how it is used. Copyright infringement in the UK is largely governed by the Copyright, Designs and Patents Act 1988. In relation to copying work, the key test is whether a substantial part of the work concerned has been copied as stated in section 16(3) of the Act and in determining substantiality the test is qualitative not quantitative. The courts will look at the quality of the parts taken, not necessarily the amount.

It is important to protect your work and prevent others from using your work without your permission. If you require legal assistance in relation to copyright or copyright infringement contact Christopher Buck, Associate Partner in our Business Services Department who will be happy to assist.

Photo by Pexels

Passing off and trade mark(s) are both important to businesses. Passing off is a common law tort, which helps businesses protect goodwill that they have generated in their business and which is accrued to them, which is generally done by the provision of goods or services to consumers.  Goodwill is said to be the attractive force which brings in customers and helps return them and passing off protects against misrepresentation, whether intentional or not, by third parties which could damage that goodwill.

In contrast, a registered trade mark is a property right that is granted by statute upon application in respect of certain indicia for certain goods or services and its purpose is to distinguish the goods or services of one undertaking from another undertaking.  The right that is granted is not a positive right to use that trade mark on the market.  Instead, it is what is termed a negative right – being a right to prevent others trespassing within the scope of that registration.

Why are they important for businesses?

The reason that trade mark rights and the ability to sue for passing off are important for businesses is it relates back to what drives revenue to a business.  Every business will supply goods and/or services to customers to make money and generally they will be supplied to customers under a distinctive name, typically a brand, so the customers can recognise them when they see them on the market and repeat that experience.  Therefore, being able to protect the revenue stream by preventing competitors trespassing within your market space not only helps to maintain market share but can help the business grow.

Another reason why they are important is that, if your business is looking to raise investment or even sell the business, they can be very valuable, saleable assets.  As such, if you are doing due diligence on a business, one of the things that gets asked quite a lot by investors or buyers is the position with the intellectual property – for example: do you have registrations and are things protected?  Generally, the more complete that portfolio, the better the investment or price will be.

How are they different from each other?

The key differences between passing off and trade mark infringement relate to the constituent elements to what a claimant has to prove and what the court will look at. 

In passing off, a claimant will have to demonstrate that it has protectable goodwill and that might also include the geographical scope of that goodwill and the type of scope that that goodwill relates to in terms of the type of product or service that is being provided.  It will then need to demonstrate that the defendant has made a misrepresentation, again whether intentionally or not intentionally, and that it has then suffered damage as a result of that.

With registered trade mark infringement, you start off with the claimant’s trade mark.  You then take the claimant’s trade mark and the defendant’s sign and compare them.  You then compare the claimant’s goods and services covered by the specification with what the defendant’s good and services are.  From there you move on to see whether it fits into one of the types of infringement listed below: 

Goods or service of claimant compared to those of defendantTrade mark of claimant identical to defendant’s sign Trade mark of claimant similar to defendant’s sign
IdenticalInfringementInfringement if there is a likelihood of confusion
SimilarInfringement if there is a likelihood of confusionInfringement if there is a likelihood of confusion
Dissimilar Infringement if there is unfair advantage or detrimentInfringement if there is unfair advantage or detriment
Why is having a registered trade mark preferable?

The advantages of having a registered trade mark as opposed to only relying on passing off are that a registered trade mark automatically covers the full territorial scope, so for example if you have a United Kingdom trade mark it will cover all of the United Kingdom, whereas at the moment you may only be trading in a limited area of the territory.  Whereas in respect of passing off, if you are only trading in a limited area, it is possible that your rights, the goodwill you have accrued, might be limited to that area.

The next reason is that the evidence in passing off matters can be quite onerous in that you have to have cogent evidence of goodwill and a misrepresentation.  Generally, the courts will be looking for clear evidence that people have actually been deceived by the misrepresentation.  Whereas with trade marks, the court is really looking as to whether in its mind there could be a likelihood of confusion.

The other advantage of a registered trade mark is that for trade marks which have gained a reputation, so they have been used for a certain period of time and people recognise them, they can rely on not only people who are selling similar or identical goods and services but also potentially dissimilar ones, in a way that their use by the third party takes unfair advantage of its reputation or is detrimental to it.

The interrelation between the two

The way that passing off and registered trade marks interrelate is that quite often claimants will plead both causes of action, so a claimant may have a protectable goodwill through its trade but it may also have a trade mark registration.  So it is quite common to see both being pleaded.

Where they further interrelate is that generally with registered trade marks it is a first-to-file system.  So if you are the first on the file, registered, you own the trade mark.  However, that trade mark can be attacked as to its validity through passing off.  The way that works is that someone else can file for a declaration of invalidity of the registered trade mark on the basis that at the filing date of the mark they had a protectable goodwill and notional and fair use of that trade mark would amount to passing off.  So passing off can often be used to attack a registered trade mark.

Contact Us

If you require legal assistance regarding any intellectual property matters, please do not hesitate to contact Christopher Buck, Associate Partner in our Business Services Team, on 01908 660966 / 01604 828282 or by email at christopher.buck@franklins-sols.co.uk who will be happy to assist.

The High Court held that Meghan Markle is the sole copyright owner of the letter which she sent to her father after her wedding to Prince Harry.

Background

In February of this year, Meghan Markle had won most of her claim for misuse of private information and copyright infringement. But the Mail on Sunday suggested that she may not have been the sole copyright owner and argued that the letter had been co-written by the Duchess of Sussex’s former communications secretary Jason Knauf. However, the High Court has confirmed that this has been denied by him.

What is Copyright?

Copyright is the legal right that protects the use of your work. The current copyright legislation in the UK is the Copyright, Designs and Patents Act 1988 which governs the rights of owners and the responsibilities of other people who want to distribute, adapt or use the work.

If you require legal assistance regarding copyright infringement contact Christopher Buck, Associate Partner in our Business Services Department on 01908 660966 / 01604 828282 or email Christopher.Buck@franklins-sols.co.uk.

Trade mark infringementMarks and Spencer (“M&S”) have commenced legal action against Aldi, arguing that Aldi’s Cuthbert the Caterpillar cake infringes the trade mark of its Colin the Caterpillar cake.

Background

M&S first launched Colin the Caterpillar in 1990 and the cakes have become hugely popular in the UK. M&S have stated that the similarities between the two cakes mean that consumers may think that the Cuthbert the Caterpillar cake is of the same standard as the Colin cake and associated with M&S’s reputation for high-quality food.

Trade mark infringement claim 

M&S has three trade marks against the Colin cake, which it believes means that Colin has acquired and retains a distinctive reputation. When a trade mark is used the owner acquires ‘goodwill’ in relation to that mark. Goodwill is the quality or reputation which causes a customer to use one particular good or service rather than any other. The owner of a trade mark can take legal action against another trader who uses that mark in a way which confuses the customer or the public into believing that his goods or services are those of the owner of the mark. This action is defined as ‘passing-off’.

What is a trade mark?

Trade marks provide important protection for your brand and your business and are a sign, capable of distinguishing the goods or services of one undertaking from those of another. It is essentially a “badge of origin”.

A sign must not have already been registered in respect of the goods or services to which it relates, and it must not be descriptive of the goods or services to which it relates.

Securing a trade mark in the UK

To secure trade mark protection in the United Kingdom, an application process is required to be undertaken through the United Kingdom Intellectual Property Office. The process is commenced by filing an Application Form. The application is then examined and, if it is accepted, it will then be published. Third parties are then afforded an opportunity to oppose the registration. If the registration process is successful, a United Kingdom Registered Trade Mark will be obtained and this can be indicated by placing the ® symbol next to a mark. The process takes on average five months.

Protection lasts indefinitely in renewable 10 year periods. However, such a registration would only allow acts of infringement undertaken within the United Kingdom to be pursued. Saying this however, a registration in the United Kingdom allows the symbol to be placed next to the mark wherever it is used in the world and, since most laypersons assume this means the same is protected worldwide, a registration in the United Kingdom can prove to be a strong worldwide deterrent to infringers. 

If you require legal assistance regarding trade marks, then please do not hesitate to contact Christopher Buck, Associate Partner in our Business Services team on 01908 660966 / 01604 828282 or email christopher.buck@franklins-sols.co.uk who will be happy to assist.

Hugo Boss Shop DisplayJoe Lycett (now, Hugo Boss) changed his name by deed poll after the fashion house sent cease and desist letters to charities and small businesses who use the word ‘BOSS’ in their names. One particular case involved Boss Brewing, a company based in Swansea, whereby the fashion brand objected to the brewery’s application to register a trade mark in relation to the beer names ‘Boss Boss’ and ‘Boss Black’ due to the potential to cause misunderstanding. This resulted in £10,000 worth of legal fees for Boss Brewing in order to defend itself against the clothing brand which had a net income of £218 million in 2018. It was resolved that the brewery had to change the names of their beers and could no longer sell clothing.

A trade mark is a sign, word or a symbol which enables customers to identify goods or services as coming from one particular source, even though they may not know the identity of the source. The owner of a trade mark can take legal action against another trader who uses that mark in a way which confuses the customer or the public into believing that his goods or services are those of the owner of the mark. This action is defined as ‘passing-off’. Nevertheless, in the context of this case, it is unlikely that the public would confuse beer made by a small company in Wales with the products of a worldwide famous fashion brand. Thus, Joe Lycett’s (Now, Hugo Boss) actions have been described as “comedic activism” and demonstrate the negative criticism that big companies can face when they target small businesses that use similar names. Nonetheless, from Hugo Boss’s (the fashion company) point of view, they were merely trying to protect their historic and well-known trade marks. In relation to Joe Lycett (now, Hugo Boss), his actions do not constitute trade mark infringement unless he begins trading under the name.

Trade marks provide important protection for your brand and your business. If you require legal assistance regarding trade marks, then please do not hesitate to contact Christopher Buck, Associate Partner in our Business Services Department who will be happy to assist.

If you require legal assistance regarding trade marks, or have any other intellectual property concern, please do not hesitate to contact Christopher Buck, Associate Partner in our Business Services Department on 01908 660966 / 01604 828282 or at christopher.buck@franklins-sols.co.uk who will be happy to assist.