You’re cabbing a laugh (Brands & IP Newsnotes - issue 1)
27 September 2015
The High Court has refused an application by the manufacturer of the iconic London black cab (“LTC”) for permission to adduce survey evidence in a claim for passing off.
Ecotive proposed to introduce a new version of its ‘Metrocab’ taxi to London’s streets – and, in LTC’s view, pass off that new cab as the ‘standard’ London black cab.
It is both true and trite (or should that be ‘hackneyed’?!) to say that achieving permission to conduct a survey in a trade mark infringement claim is now next to impossible (following the Court of Appeal’s decision in Interflora). However, the consensus has been that it was still possible in passing off claims.
Interflora set out several tests: a “real value” test (ie would the survey provide the court with a perspective it wouldn’t otherwise readily have?) and a “cost-benefit” test (ie would the costs of carrying out and interpreting the results of the survey be worth it?).
Where the wheels came off
When applying these tests, the Court put the brakes on the survey. It was concerned by the photographs of the competing cabs on which the survey would be based. They were not a fair comparison and the goods in issue, London cabs, were neither “specialised” nor “esoteric”. So the Court didn’t need the assistance of the fare paying public. It was also concerned by LTC’s projected cost – more than 20% of its projected total costs to trial.
Surveys are expensive and difficult to do without artificially leading the participants. But they are carried out with ‘real’ consumers, whose vision has not been tainted by years of considering the technicalities of IP disputes and whose eyes do not consider an alleged infringement in the (some might say, equally) artificial surroundings of a court room. This decision offers a further death-knell to rights holders seeking to educate judges about the likely views of consumers, rather than gambling on the trial judge’s view of how consumers think.This article was first published in the Brands & IP newsnotes publication - issue 1.
EU trade mark reforms come closer (Brands & IP newsnotes - issue 1)27 September 2015
Seven years after the European Commission started its evaluation of the European trade marks framework, the texts of the new proposed legislation were finally published in June 2015.
It never rains, but it pours…(Brands & IP Newsnotes - issue 1)27 September 2015
Registered designs are used to protect the appearance of products. In considering whether to allow registration, several factors come into play: what else is already out there (the ‘prior art’); who will use it (the ‘informed user’); and what ‘degree of freedom’ does the designer have in arriving at the particular design?
What’s New Copycat? (Brands & IP newsnotes - issue 1)27 September 2015
Last year, consumer group Which? carried out a comprehensive survey of the copycat product packaging market in the UK. It found that over 150 of retailers’ own-label products “mimicked” the market-leading brand-owner’s packaging.
A copyright work in 140 characters? (Brands & IP Newsnotes - issue 1)27 September 2015
It isn’t easy to keep your social media followers entertained with rafts of enthralling and hilarious new material.
Not so-far, Sofa Workshop (Brands & IP newsnotes - issue 3)27 September 2015
If a trade mark proprietor does not make ‘genuine use’ of its marks, they may be vulnerable to attack from third parties.
When “logos” turn into “no-goes” (Brands & IP Newsnotes - issue 1)27 September 2015
As we move even deeper into an age of digital advertising and social media, it is becoming increasingly important for businesses to have a short hand for their brand; something which denotes the business, stands out as a guarantee of origin and makes the brand instantly recognisable. We’re talking about logos.
Access to justice: IPEC 1 - MoJ 0 (Brands & IP Newsnotes - issue 1)27 September 2015
Conducting litigation in a cost effective and proportionate manner can be a challenge, especially if it involves big brand owners going toe to toe. But help is at hand in the form of the Intellectual Property Enterprise Court (‘IPEC’).