Author: Andrew Lee, John Shaw, Joe Mansfield, Courtney Bryan-Isaacs

The anticipated decisions that will shape the future of business strategies.

2024 has already seen a number of important intellectual property decisions and more are set to come out. Below is a look at the likely implications of some recent and upcoming decisions.

Sky v Skykick 

In these long running proceedings, Sky brought an action against SkyKick for infringement of its trade marks across a range of goods and services relating to computer software. SkyKick challenged the validity of the trade marks on the grounds of bad faith under the Trademarks Act 1994 and alleged that Sky’s overly broad application of trade marks amounted to bad faith by demonstrating a lack of commercial intent to use the marks.

Mr Justice Arnold, as he then was, found in favour of SkyKick at first instance in relation to the bad faith claim but also found that SkyKick had partially infringed Sky’s trade marks.

The Court of Appeal found that Sky had not acted in bad faith and dismissed SkyKick’s cross appeal on infringement.
SkyKick now appeals to the Supreme Court on the issue of bad faith and we are likely to see the final judgment in 2024. It is clear from its decision that the Court of Appeal was steadfast in maintaining a high threshold for a finding of bad faith. In doing so, the court has avoided posing a high burden on brand owners by preventing them from applying for marks across a general category. It will be interesting to see if the Supreme Court maintains this approach.

Lifestyle Equities C.V v Amazon

In November 2023 the Supreme Court heard arguments to decide the issue of when does the sale or advertising of trade-marked goods on a foreign website infringe the relevant trade marks in the UK or EU.  The decision is expected in 2024 and it will be significant for online marketplaces and how they market goods to consumers.

The Court of Appeal found that Amazon had used the BHPC marks in the UK and EU and infringed Lifestyle’s trade marks by targeting listings of goods at the UK market. The decision was based on the fact that the website recognises that the purchaser is located in (e.g.) the UK, the shipping and billing addresses are in the UK, the currency of payment could be GBP, the consumer was told that certain goods “ship to United Kingdom” or similar, and Amazon makes all the necessary arrangements for the goods to be imported into the UK for delivery to consumers in the UK.

The Court of Appeal further held that even if Amazon’s advertisements and offers for sale did not constitute use of the BHPC marks in the UK/EU, Amazon’s sales of US branded goods to UK and EU consumers nevertheless constituted use of the marks within the relevant territory and thus infringed Lifestyle’s trade marks.

The upcoming Supreme Court decision will be of interest to businesses whose products are sold on Amazon and other online marketplaces. If upheld by the Supreme Court, it will make it easier for such businesses to prevent infringement of their trade marks in the UK and online retailers will have to be more careful in their approach to global listings.  A shift to a stricter territorial focused business model may be required.

Lidl v Tesco

Lidl alleged that Tesco’s use of its Clubcard label on its product placement and branding constituted trade mark and copyright infringement as well as passing off. Lidl claimed that by using a yellow circle surrounded by a blue square for its ‘Clubcard’ promotion, Tesco was intending to “deliberately ride on the coat tails of Lidl’s reputation as a discounter’ supermarket.”

In question were two registered marks:

- The Lidl logo - a yellow circle enclosed by a red ring and blue square with the word “Lidl” inside of it.
- The same design but without the “Lidl” text.

Lidl's Registered Trade Marks

Tesco's Infringing Marks

Tesco’s infringing mark was a yellow circle surrounded by a blue square. This mark helped Tesco’s customers to identify discounted products within their stores.

Drawing on arguments from Sky v SkyKick, Tesco argued that Lidl’s registration of the marks was filed in bad faith as a ‘defensive’ attempt to legally monopolise the mark’s protective scope. The court ruled in favour of Lidl in the trade mark, passing off and copyright claim. The counterclaims were dismissed as a mere lack of intention to use the trade mark was not sufficient evidence to constitute bad faith.

The Court of Appeal is hearing arguments relating to the judge’s findings on trade mark and copyright infringement as well as passing off as well as her decision to grant an in junction on the copyright claim if the Trade Mark and passing off claims are overturned.  Lidl is also challenging the decision relating to bad faith findings on the wordless mark above.

This appeal will be of interest to businesses that operate with similar logos to competitors and should provide guidance on what the bar is for a logo to be considered original (as the Lidl logo was).

Lifestyle Equities C.V v Royal County of Berkshire Polo Club Limited

Lifestyle Equities, the owner of the Beverly Hills Polo Club brand (“BHPC”), brought a claim against Royal County of Berkshire Polo (“RCBPC”) for trade mark infringement. Both brands’ goods are primarily casual clothing, the complaint was also made about footwear, fragrances, fashion watches, bags and luggage. The marks in question both prominently feature polo players on a pony and the words “Polo Club”.

The registered trade mark infringement claim concerned whether RCBPC’s sign conflicts with BHPC’s and if likelihood of confusion exists between the marks. A key issue of the trial concerned the extent to which average consumers in the relevant territory were affected by the use by third parties of other marks that evoke the sport of polo (e.g. Ralph Lauren), creating a ‘crowded marketplace’ and whether or not that ought to be taken into account in assessing infringement.

The Court found there to be no likelihood of confusion, some reputation but no dilution, and no passing off.
2024 will see Lifestyle appeal this decision and the Court of Appeal will be asked to consider if the existence of other polo-themed trade marks in the market is relevant.  The court will also consider if the terms of co-existence agreements is relevant to questions of infringement.

In the event that Lifestyle is successful and obtains a ruling that other brands are not relevant as a matter of law in assessing distinctiveness of their trade marks, brand owners in crowded market places will be better placed to enforce their rights.  Also, the court is likely to provide important guidance on how co-existence agreements will be treated when determining if there is a likelihood of confusion in the marketplace.  This will likely inform future decisions to enter such co-existence agreements when similar marks appear near each other.

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