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.

Can lookalike products be considered to take unfair advantage of a branded product?

Recently the Court of Appeal has considered whether products in packaging that look like branded products can be deemed to take unfair advantage of that brand.

In the case of Thatchers Cider Company Limited v Aldi Stores Limited [2025], the Court of Appeal held that Aldi had taken unfair advantage of Thatcher’s trade-mark products by packaging their cloudy lemon cider in a very similar way to Thatchers.

Thatchers initially tried to make a claim that Aldi was causing consumer confusion and that they had taken unfair advantage of their trademark. This was dismissed by the Intellectual Property Enterprise Court, and Thatchers chose to appeal only the claim in relation to unfair advantage which was ultimately successful at the Court of Appeal.

So, what is meant by unfair advantage?

Under section 10(3) of the Trade Marks Act 1994, the following nine requirements must be satisfied:

(1) The trademark must have a reputation in the UK
(2) There must be use of a sign by a third party within the UK
(3) The use must be in the course of a trade
(4) The use must be without the consent of the owner of the trademark
(5) The use must be of a sign that is identical or similar to the trademark
(6) The use must be in relation to goods or services
(7) It must give rise to a link between the sign and the registered trademark in the mind of the average customer
(8) The use must give rise to one of three types of injury; and
(9) The use must be without due cause.

The leading case of L’Oreal SA and others v Belure NV and others also established that the defendant must have an intention to deceive the customer.

The Court of Appeal ultimately held that as Aldi had defaulted from their usual packaging, although they had not tried to deceive the average customer as to the origin of the product, they had tried to remind them of Thatchers’ product which ultimately led to them to purchase the cider. It was therefore held that they had taken advantage of Thatchers’ reputation as a means to boost the sales of their product. The Court of Appeal therefore approved Thatchers’ claim.

What is the significance of the Court’s decision for trademark infringement cases moving forward?

This is significant and it shows a brand owner can bring a successful unfair advantage claim where it has registered well-known packaging as a trademark and a third party sell’s products in similar lookalike packaging as a means to boost sales.

If you require legal assistance regarding trade mark infringement, and/or you would like additional advice regarding the impacts of the recent Court of Appeal decision, please do not hesitate to contact our Commercial Solicitors on 01604 344512 / 01908 044759 or email info@franklins-sols.co.uk

The American political candidate, Donald Trump, has once again been asked to refrain from using an artist’s music during his rallies. This time, the Estate of the late Irish singer, Sinead O’Connor, together with the label Chrysalis Records have demanded that Mr Trump “desist from using her music immediately”.

Both her Estate and the label stated that the artist “lived by a fierce moral code defined by honesty, kindness, fairness, and decency towards her fellow human beings”. O’Connor’s political views differed from those of Mr Trump and they added that she would be “insulted to have her work misrepresented in this way”.

It is not the first time that Mr Trump and his associates have been asked to desist from using an artist’s music. For example, Rihanna, Linkin Park and Steven Tyler have made the same requests.

So, how can artists protect their own music?

Music copyright is an automatic right in the UK. You do not need to apply or pay a fee and you automatically receive copyright protection for original literary, dramatic, musical and artistic work.

With the protection of copyright, the owner has the right to copy, distribute, adapt, display and perform a creative work.

Intellectual Property rights are various and highly important when it comes to protecting your work. It is highly recommended to take legal advice in order to properly and legally protect your rights. Our commercial team has a wide range of experience when it comes to Intellectual Property and would be happy to assist individuals or businesses on issues relating to it.

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

The famous American hard rock band, Guns N’ Roses, are taking legal action against a Texas based gun store for trademark infringement.

‘Texas Guns And Roses’ is a Texas based online store that sells firearms, ammunition related apparel along with flowers. The American rock band, Guns N’ Roses (GNR), has filed a trademark infringement claim against the store for damages whilst alleging the store created its name “for the purpose of confusing consumers into believing that it was connected or associated with, or licensed by, GNR.”

Local newspapers have stated that despite GNR’s numerous attempts of sending cease and desist letters to the store in 2019, the store continues to “intentionally trade on GNR’s goodwill, prestige and fame without GNR’s approval, license or consent”. The store’s attorney has told local news that “There’s never been any confusion and they have no evidence of confusion. This is an attempt to run up costs and burn us out“. However, GNR have requested the store to change its name and pay damages for the alleged trademark infringement.

What is a trademark?  

A trademark is any sign which can distinguish the goods and services of one trader from those of another. A sign can include for example, words, logos, pictures, or a combination of these. A trademark is essentially a badge of origin which is used so that customers can recognise the product of a particular trader. They are therefore closely associated with business image, goodwill and reputation which is demonstrated in the Guns N’ Roses case mentioned above. Amongst many others, top trademarks include Apple, Microsoft, Coca-Cola and Kellogg’s.

Trademark Infringement

The Trade Marks Act 1994 (TMA) implemented the 2008 Trade Marks Directive and the 2015 Trade Marks Directive. A simple explanation of a trademark infringement is where a registered trade mark is used in the course of trade without the proprietor’s consent. The TMA uses the following instances as examples:

Section 10 (1) Trade Marks Act the sign used by the unauthorised third party is identical to the registered trade mark and is utilised in relation to goods or services which are identical with those for which the trade mark is registered.

The sign used by the infringer is:

• identical with the registered trade mark, and used in relation to goods or services which are similar to those for which the trade mark is registered;
• or similar to the registered trade mark and used in relation to goods or services which are identical with or similar to those for which the trade mark is registered.

Section 10 (2) Trade Marks Act in each case mentioned above, there exists a likelihood of confusion on the part of the public, which includes a likelihood of association. In the case of GNR mentioned above, GNR did not want to be associated with the defendant given the nature of Texas Guns and Roses’ business. 

Section 10 (3) Trade Marks Act where the trademark used by the infringer is identical with or similar to the registered trade mark, the trade mark has a reputation in the UK, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

To establish infringement, it is necessary to establish the following key elements:

• use of a sign e.g. affix the sign to goods or their packaging, use the sign on business papers and in advertising or offer or expose goods for sale.
• in the course of trade i.e. in the context of any commercial activity with a view to economic advantage, as opposed to for private or domestic purposes.
• in relation to goods or services i.e. use that jeopardises or is at risk of jeopardising one of the essential functions of a trade mark.

Breach of Trademark Law

There are a vast range of remedies available to the proprietor of a registered trade mark if successful in proving trademark infringement. These include:

• damages or an account of profits
• an order for erasure, delivery up or destruction of infringing goods, materials, and articles as appropriate
• an injunction to restrain future acts of infringement
• dissemination and publication of judgment
• contribution to legal costs

 Defences to Trademark Infringement Claim

The TMA, specifically s.11 provides exceptions to trade mark infringement claims which could apply even if the trade mark is already registered. In other words, you may be able to use a trademark and successfully defend an infringement claim. These include the following:- 

• the use of your own registered trade mark for goods/services for which the mark is registered
• the use of your own trademark which is the name and address of the company – this must be in accordance with honest practices in industrial or commercial matters and only applies to an individual’s name and not the name of a company
• the use of signs or indications which concern the characteristics of goods/services e.g. quantity, quality, intended purpose, value, geographical origin, time of production (provided the use is in accordance with honest practices in industrial or commercial matters)
• if the name is for the purpose of identifying or referring to goods or services as those of the registered trade mark, in particular where that use is necessary to indicate the intended purpose of a product or service (provided the use is in accordance with honest practices in industrial or commercial matters)
• use of an earlier trade mark e.g. EU trademark which has already existed prior to the filing of a UK trade mark i.e. in a particular locality

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

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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: 

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.

Marks 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.

Joe 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.

The Court of Justice of the European Union (CJEU) in the case of Sky v SkyKick (C-371/18) has made the landmark decision that the use of broad terms in trade mark specifications such as “computer services” cannot be ruled invalid on the basis that they are unclear and imprecise or contrary to public policy. Furthermore, the CJEU decided that the owner of a trade mark will not be regarded as having acted in bad faith because there was no economic activity in relation to the goods and services covered by its broad specification at the time it was filed. Accordingly, this means that trade mark proprietors do not need to change or amend existing trade mark specifications which use broad terms and therefore, this case has been described as a “welcome relief for brand owners” who wish to maintain broader protection.

The case arose when the UK TV broadcaster Sky plc sued SkyKick, a cloud software company for trade mark infringement in relation to their use of the word “SKY” in their SkyKick sign and its variants. SkyKick counterclaimed and argued that Sky’s trade marks were invalid on two grounds:

• the specifications lacked clarity and precision, particularly in relation to goods and services; and
• the subsequent trade mark application was made in bad faith. The CJEU answered the following questions which were referred by the High Court.

1. Does the use of broad terms in trade mark specifications such as “computer software” mean that a registration is so unclear and imprecise that is should be declared invalid?

The CJEU decided that a lack of clarity and precision in a trade mark specification does not render that trade mark invalid. However, if the trade mark has not been used in connection to the goods and services it was registered for, it can be rescinded after 5 years. Nevertheless, if non-use only applies to a few of the goods or services for which the trade mark was registered, only those goods and services will be rescinded and rest of the trade mark will still exist.

2. Does applying to register a trade mark without any intention to use it in connection to the specified goods or service constitute bad faith and thus render the trade mark invalid?

The CJEU held that the registration will only be constituted as having been made in bad faith if the applicant had the “intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark”. Consequently, bad faith cannot be assumed because there was no economic activity corresponding to the goods and services at the time of the application.

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.