WebTMS: A Year to Celebrate in Trade Marks and More!

WebTMS: A Year to Celebrate in Trade Marks and More!

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2023 was a very special year for WebTMS as we marked 25 years in business. And what a business it is! From advances in the study of the human brain to the acceleration of artificial intelligence, and from the metaverse to the real world, trade marks and intellectual property issues have been at the forefront of innovation once again. As always, this year brought forth a wealth of fascinating trade mark stories, some of which we’ve picked out below. It also saw intellectual property offices working to modernise their systems and processes in both the UK and the US. And, of course, as WebTMS marked its quarter-century, we’ve continued to work hard ensuring that our software and support continues to be invaluable to the attorneys and paralegals who rely on it every day.

January – March: Gin win for M&S, brain scans, and a missing mountain

The year began with a win for UK high street favourite Marks and Spencer, which often seems to be on the back foot in its battles against discounter ALDI and its ninja social media team. M&S had launched a case against ALDI over the registered design of its light-up gin bottle and was successful. The judge at the Intellectual Property Enterprise Court (IPEC) ruled that ALDI’s bottle shared several common features with M&S’s design. We have a certain sympathy for M&S as it pays the price for creativity and often sees lookalike products launched in competition, but we also have a grudging respect for ALDI’s commitment to tweaking the tail of intellectual property law.

In February, a study from University of California, Berkeley suggested brain scans could be used to determine ‘likelihood of confusion’ with allegedly infringing products. Earlier research has shown that when a subject is shown two similar images, their brain “suppresses” activity for the second image. The Berkeley researchers suggest that if a subject is shown an original image followed by an image of an allegedly infringing product and exhibits suppression activity for the second image, the product must be confusingly similar. It’s an interesting thesis that could ultimately supplant the frequently challenged consumer survey as evidence of confusion.

Staying with technology, the launch of ChatGPT in late 2022 saw artificial intelligence capture the public consciousness. Generative AI, whether text or image-based, raises numerous questions about the IP rights owned by the makers of the data it is trained on. There are several cases currently in progress, including one brought by authors of books who allege pirated copies were used to train Meta Platform’s AI models. This will be a huge area to watch in the coming year.

Also in the first quarter we saw two issues of geographic indication. First, US judges ruled that “gruyere” cheese can legitimately come from the US and French or Swiss groups cannot restrict its use. The second was somewhat the reverse of this, with pointy chocolate vendors Toblerone obliged to remove the famous Matterhorn mountain because its products are no longer entirely manufactured in Switzerland.

April – June: INTA celebrations and Supreme Court chuckles

April brought us another iconic INTA meeting, the 24th attended by our co-founder and sales director Rita O’Kyere. She reflected on some of the changes she has seen over the years, including the evolution of the dress code: “Sharp suits and pencil skirts have given way to a more relaxed look.”

INTA was a great success for WebTMS this year, with booth visitors particularly keen on our celebratory cupcakes, which revived many a flagging delegate.

In June there was occasion for a little levity in the US Supreme Court as the Justices heard arguments in the case of Jack Daniels vs VIP Products LLC. The defendants claimed that their dog chew toy, presented as a whisky bottle bearing the name ‘Bad Spaniels’ and referring to poop-related doggy indiscretions in a way similar to Jack Daniel’s registered trade mark “Old No.7”, was permissible as a non-commercial parody protected by the First Amendment. As attorneys presented their arguments, at some points the debate turned on whether the joke was actually funny. Many trade mark professionals hoped that the Court would address the Rogers Test regarding parodies, but instead the justices took a narrow interpretation of the case, holding that the toy manufacturers were using Jack Daniel’s registered trade mark as a trade mark – designating the source of the goods – and consequently the Rogers test does not apply. Dentons explains the outcome here.

July-September: Barbiecore and Paralegal Power to the fore

The world turned pink in July as the hotly anticipated Barbie movie hit our screens. In a masterclass of brand power, Mattel developed Barbiecore to the max, embarking on more than 100 partnerships and licensing deals ranging from nail polish to burger sauce. WIPO took a look at the power of the Barbie brand.

The development of the UK IPO continues apace with the team seeking to build world-leading digital IP services. Consultation with key stakeholders is a crucial part of the process and in August the IPO launched its second consultation, which included a suggestion that series marks should be abolished due to their high objection rates for incorrect use and doubt over whether they add any additional value or protection to owners.

In September, CITMA hosted its first ever paralegal conference, held at Pinsent Masons. We were hugely proud to sponsor the event. Trade mark paralegals are our people, and in fact many of our team are qualified paralegals. Our Business Development Manager Samantha Crellin delivered a presentation on how rules and workflows (and a host of other insider tips) can help simplify trade mark work. Judging from the nods of recognition rippling around the room as Sam talked about some of the challenges of trade mark paralegal life, she pitched her topic just right.

October-December: A not so “Easy Life” and Lionesses roar in trade mark terms

In a move that shook the UK Indie music scene, EasyGroup embarked on brand protection that grabbed the headlines when it challenged UK band EasyLife’s name and use of images in its promotional material. The band attempted to seek support from the court of public opinion, accusing EasyGroup of brand bullying, but EasyGroup was not to be swayed. It published an excoriating explanation of its actions and unwillingness to be linked in any way to the band and its rock and roll behaviour. Describing them as “brand thieves” it was clear that the commercial group wouldn’t back down. The band will change its name, although its new moniker has not yet been announced.

On the sporting stage, England’s Lionesses Football Team has enjoyed huge success in the past two years. Now key players are beginning to develop business propositions around their celebrity. One such is Ella Toone, the charismatic attacking midfielder. She has applied to register ET7 (her initials and shirt number) in various classes to include football academies etc. In choosing this type of mark she is echoing her childhood hero Cristiano Ronaldo, who holds several registrations for CR7, and Brazil’s Ronaldo Luis, who has registered R9.

In US IP office news, November saw the US PTO launch its new, cloud-based, trademark search engine, the successor to TESS. It still hasn’t got a name, but reports are that it is a vast improvement on the older system.

This is just a flavour of the stories and events that have shaped the IP environment in 2023. As we close out our anniversary year, it’s with a huge sense of gratitude to everyone who has shared the WebTMS journey so far, whether as a client, colleague or partner. We’d like to thank all of you for being with us, wish you a peaceful holiday season, and here’s to the next 25 years!