Good morning everyone. Hope you all had a good weekend and enjoyed last week’s sweet article. Now, for today’s recap news.
The Burberry check pattern is a famous trade mark
Burberry managed to prevail in a case involving Chinese retailers selling clothes that bear a suspiciously similar pattern to the one that has been used by Burberry for years.
This case has been ongoing for a few years and, although the Supreme Court sided with Burberry, lower courts had a different opinion on the subject.
Indeed, in the first instance, an Italian court considered that although the Chinese retailers used a “similar” pattern to the one used by Burberry, since the clothing did not include Burberry’s name, consumers were not likely to view Burberry as the source of the products.
On appeal, Burberry argued that the check pattern alone serves as an indicator of source, whether or not it incorporates the name “Burberry”, allowing consumers to promptly identify the origin of the products. The Court of Appeal agreed in part: the use of the check pattern without authorisation could constitute trade mark infringement, however, it considered that the check pattern actually falls into the broader category of famous “Scottish tartans”. As such, Burberry’s check pattern was found incapable of serving as a trade mark since it does not enable to distinguish and identify the source of the goods bearing the pattern.
Finally, in October 2020, the Supreme Court confirmed that there is no need for the Burberry name and check pattern to be reproduced together in order to establish that there is an infringement. As long as there is a likelihood of confusion, even partial reproduction of a trade mark could be considered as an infringement, especially if the trade mark at stake has an established reputation. This is the case here with Burberry’s check pattern, which cannot fall into the general category of Scottish Tartans since it is a validly registered trade mark that has now gained worldwide reputation.
Nokia seeking to block Lenovo’s sales in Germany over patent infringement.
Nokia is accusing Lenovo of violating an encoding patent and is now looking to have a judicial order to prevent Lenovo from importing PC and laptops to Germany. In September, a Court ruled in favour of Nokia, establishing that Lenovo was indeed infringing Nokia’s patents (20 in total) and ordering a recall of all products from retailers.
Lenovo appealed this decision arguing that Nokia had violated its own obligations by refusing to license its technology on Fair and Reasonable and Non-Discriminatory terms (FRAND) to Lenovo or any third party suppliers whose products incorporate Nokia’s H264 technology.
This means that Lenovo considers that Nokia’s H264 technology is a Standard Essential Patent (SEP), or putting it more simply, an essential building block in the technology sector. In such cases, owners of SEP should license their patent under FRAND terms, because the technology at issue is essential and therefore cannot be licensed under “normal” market conditions.
European Commission decision on reciprocity for unregistered community design protection.
Unregistered designs, first disclosed in the EU, receive protection for a three-year period. Until 31 December 2020, UK designers can rely on an unregistered Community design right, granting them three years of protection against copying. The EU design right, which arises automatically, protects the individual character of a design with specific reference to colour, shape, ornamentation, lines, contours, texture and materials. In other words, it covers a product in its entirety. In the UK, unregistered design right protects the shape and configuration of products.
Following this decision from the European Commission, as of January 2021, if a UK design is first disclosed in the UK, it will not automatically enjoy protection as an Unregistered Community Design (UCD) in the EU. So, if you are a UK designer, be mindful of this.
This is all for today. See you next week!
- Publication date
- 27 October 2020
- Executive Agency for Small and Medium-sized Enterprises