2022 review: Six TM cases that changed the IP world
Some notable trademark cases emerged this year, including Cadbury’s sweet victory over the colour purple and Banksy’s revival in fortunes.
Find out more about the six biggest trademark cases of 2022 and discover how they’ve reshaped the IP environment
Sweet victory
In what has been seen as a positive step in gaining trademark protection for colour, Cadbury triumphed in an appeal originally brought by rival Nestlé over the distinctive ‘Cadbury purple’.
Cadbury’s victory has been many years in the making, after a long and winding dispute with Nestlé.
The High Court of England and Wales, in July this year, allowed Cadbury to secure a trademark for its colour purple per se, with no description other than reference to its Pantone number (2685C).
It’s a remarkable case—registered colour trademarks represent a tiny fraction of all trademarks and the majority of colour marks are refused in the UK.
To find out more about the decision, and what it means for brands looking to file their own colour trademark applications, click here.
Peppa Pig and sanctions
In March this year, a Russian court allowed the free use of Hasbro’s ‘Peppa Pig’ trademarks without legal retaliation in Russia, claiming an “entrepreneur’s” use of the marks was justified in light of the mounting economic sanctions affecting Russia.
According to Judge Andrei Slavinsky of the Arbitration Court of the Kirov Region the infringement was justified due to the “restrictive” sanctions imposed on Russia as a result of its invasion of Ukraine.
Entertainment One UK (the creators of “Peppa Pig” that were later acquired by Hasbro) had noticed Russian entrepreneur’s drawings of the “Peppa Pig” and “Daddy Pig” characters and subsequently sued for trademark infringement.
However, the court claimed that sanctions from the UK had impacted the ruling, classing Entertainment One’s actions constituted an “abuse of right”, and that the court was free to dismiss the claim.
Click here to read a WIPR investigation into whether brands should be worried about copycat Russian marks.
A landmark NFT decision
Italian football club Juventus secured a major victory in a landmark trademark infringement case against an online seller of non-fungible tokens (NFTs) of fantasy football playing cards.
Juventus had sued Rome-based blockchain network Blockeras earlier this year, accusing it of trademark infringement and unfair competition practices via the NFTs, which bore its trademarks.
The infringing tokens had featured the football club’s mark and unauthorised images of former Juventus player Christian ‘Bobo’ Vieri donning the team kit and name (although Vieri has authorised the use of his image alone).
Juventus secured a preliminary injunction against Blockeras, in a move that reassures brand owners they can obtain protection for their IP rights in the metaverse.
To find out more about the case and what it means for brand owners, click here.
A potential transformation of China’s TM system
London-based shoe designer Manolo Blahnik has triumphed in China, meaning the brand will now be able to use its name as a trademark in the country.
The Supreme People’s Court of China's (SPC) ruling in July this year marked the culmination of a 22-year long case.
Chinese businessman Fang Yuzhou secured a trademark for the name ‘Manolo & Blahnik’ in 2000 for use in the sale of footwear. Yuzhou’s trademark registration was made possible by China’s ‘first-to-file’ trademark system, which means that any individual can register a trademark in the country, even if that mark is registered elsewhere by foreign entities.
Manolo Blahnik company had several appeals dismissed because it could not prove it had a reputation in China before 2000, and because Yuzhou had established use of the trademark for his shoe label, in accordance with Chinese IP law.
However, this case could signal a turning point for foreign brands who wish to sell directly to the Chinese market. To read more about this case, click here
Banksy laughs again
Anonymous graffiti artist Banksy prevailed in his latest dispute with a greeting card manufacturer over the use of his ‘ Laugh Now’ figurative trademark.
The EU Intellectual Property Office’s (EUIPO’s) Fifth Board of Appeal annulled the Cancellation Division’s earlier decision that ruled against Banksy.
The appeal board rejected greeting card company Full Colour Black’s ‘bad faith’ invalidity action. Full Colour Black had argued that Banksy’s only intention in registering ‘Laugh Now’ as a trademark was to prevent others from using it, implying abuse of said registration.
A discussion of the case can be found here.
Chocolate bunnies
In another chocolate-related case, Swiss chocolatier Lindt & Spruengli secured a win at home when Switzerland’s highest court ordered German retailer Lidl to destroy its remaining stock of foil-wrapped chocolate bunnies.
Lindt’s chocolate bunny—which is wrapped in gold foil and has a red ribbon with a gold bell—was found to be well known to the public and so Lindt’s two 3D shape marks were established in the market.
Lidl was ordered to stop selling the copycat product due to the risk of confusion and to destroy its remaining stock.
According to Mark Kramer, partner at Potter Clarkson, Lindt recognised the value of its iconic gold bunny early in the game and this is now paying dividends.
“IP protection won’t necessarily eliminate copycats or keep you out of the courts, but it provides the necessary tools to stop competitors in their tracks as we’ve seen here with the might of Lindt’s rights forcing Lidl to melt its entire stock of chocolate bunnies,” he said.
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