Nine of the best

the key intellectual property cases for retailers in 2014

December 2014

As intellectual property (particularly brand value) is a core asset of most retailers, they have for decades been the vanguard in the evolution of new law in this field.

2014 has been a bumper year, with many leading brands making the trip to court. As a result, the IP landscape as we approach the seasonal break looks markedly different than it did in January.

We summarise below some of the key retail IP cases this year. What is striking is that the majority of the outcomes have been in favour of the claimant. It is always dangerous to generalise with litigation but the tentative lesson to be drawn from the 2014 crop of cases is that, when retailers choose to assert their rights, they are more likely to succeed than fail. This is, in part, likely to be a result of careful selection of the right battles to fight but retailers do seem to be operating within a reasonably favourable litigation landscape at present.

If you would like any more information on their implications for retailers please contact either me at, or Katie Goulding at, Lauren Somers at, Katharina Barker at or any other member of our retail team.

Antony Gold
Partner, Head of Retail


In January, the court gave its decision in a case concerning "Mr Wills", the anthropomorphic pheasant used by clothing retailer, Jack Wills. This is not the only bird to feature in a logo; Hollister, Lyle & Scott and Emporio Armani, amongst others, all utilise bird designs. However, Mr Wills stands apart from these other designs as somewhat of an English gentleman. Indeed, he is central to the branding chosen by the "University Outfitters" to convey a sense of British heritage mixed with a more American-influenced, casual, irreverent spirit. It was not surprising, then, when Jack Wills brought claims against department store, House of Fraser, for trade mark infringement and passing-off in respect of a similar-looking Pigeon logo (featuring a top hat and bow tie) which appeared on a number of garments in their in-house Linea range. At the High Court, Mr Justice Arnold found that there was "a reasonable degree of visual similarity and a high degree of conceptual similarity between the marks"; that the goods to which the marks were registered were identical; and that the types of garments on which the logos were used corresponded closely - all of which suggested a likelihood of confusion existed with regard to an average consumer. So Jack Wills won.

For a link to the full decision, click here.


In April, supermarket chain, Aldi, proved that it is possible to "live dangerously" when it comes to creating a product of a similar getup to a more established brand when it successfully defended a claim of passing-off by Moroccanoil Israel Ltd (MIL). The case concerned Aldi's "Miracle Oil" hair product, which MIL claimed bore similarity to their "Moroccanoil" with regard to name, bottle-shape and packaging, to the extent that consumers would confuse the two and/or assume a trade connection existed between the manufacturers.

Assessing a claim of passing-off requires the classic trinity to be applied, as established in Reckitt & Colman Products Ltd v Borden Inc., MIL had little trouble establishing that goodwill existed with regard to their popular and well-regarded Moroccanoil product. The court's attention focussed primarily on whether there had been a misrepresentation.

The court found strong evidence to suggest Aldi had created a product reminiscent of Moroccanoil, even finding references to it in Aldi's design specifications. Intention, however, as seen in Specsavers International Healthcare v Asda Stores Ltd, does not necessarily lead to misrepresentation. Indeed, it was pointed out that the price of Miracle Oil, approximately £4, in comparison to MIL's Moroccanoil at £30, and the location in which it is typically for sale (Aldi Stores as opposed to high-end salons) contributed to the judge's decision that consumers were unlikely to assume the two products were the same or connected in any way. As a result, MIL lost - a thought-provoking outcome.

For a link to the full decision, click here.


In June, the CJEU strengthened the position of designers when it held that the fact that a design is made up of an amalgamation of features or parts of earlier designs does not prevent it from having 'individual character'. This is one of the requirements for design protection, namely that the subject design produces a different overall impression on the informed user than designs that have gone before it.

In 2008, the Irish High Court had upheld Karen Millen's claim that Dunnes Stores had infringed its unregistered Community design in two of its garments. Dunnes subsequently appealed the decision to the Irish Supreme Court which, in light of the CJEU's ruling, was dismissed in July of this year.

This broad interpretation of unregistered design rights is particularly important in the fashion industry when designs only have a short lifespan. Conversely, retailers who adopt a fast-fashion strategy must be even more cautious to ensure their designs do not fall foul of the CJEU's interpretation.

Whilst the decision is fashion focussed, the general principles are applicable to all designs.

For a link to the full decision, click here.

RETAIL LAYOUTS REGISTRABLE - Apple Inc. v DPMA (German Patent and Trade Mark Office)

In July, the Court of Justice of the European Union confirmed that the representation of the layout of a retail store may, subject to certain conditions, be registered as a trade mark.

The decision flowed from an appeal by Apple when the DPMA refused it a registration for a three-dimensional trade mark graphically depicting the layout of its flagship store. The CJEU confirmed that the test for determining whether such a design is registrable is the same as that for more traditional trade marks, such as words and logos, in that the layout of a retail store must (1) constitute a sign (it is rare for this requirement not to be met), (2) it must be capable of being graphically represented, and (3) it must be capable of distinguishing the goods or services from those of other undertakings, or businesses.

It is now for the national German court to decide ultimately whether registration will be granted for Apple's trade mark application. The case is a welcome reminder to retailers to consider the more non-traditional aspects of its branding in order to secure fully rounded IP protection: it is easy to see how a trade mark registration for retail layouts could provide a strong weapon against me-too imitators if passing off remedies were more problematic.

For a link to the full decision, click here.


Also in July, following a reference from the German Court in proceedings between Netto Marken-Discount AG & Co. KG and the German Trade Marks Office, the CJEU confirmed that trade mark protection can be obtained for services which consist in bringing together a variety of services so that the consumer can conveniently compare and purchase them, i.e. services for bringing together services.

As we would expect, the services must be specified with sufficient clarity and precision to enable the services which the applicant intends to select and offer to the consumer to be identified by the competent authorities and competitors.

If general indications are used to identify the services which are to be brought together, for example "entertainment" then, unless the general indication itself is sufficiently clear and precise, the description is unlikely to satisfy the necessary requirements. However, this is for the national office to decide. If the class heading is used to identify the list of services that are to be brought together, the applicant must specify whether it intends to cover all of the services included in the alphabetical list of the class to which that heading belongs.

It is for the German court to decide the fate of Netto's application but, in the meantime, the case offers welcome clarity and confirmation that, finally, retailers who bring together a number of services, may be able to register a trade mark covering the actual services in which it has a commercial interest.

For a link to the full decision, click here.


In a further July decision, business-clothing outfitters, Thomas Pink, made entry into the European market more difficult for American lingerie retailer, Victoria's Secret, when judgement was given in proceedings it had issued for passing-off and trade mark infringement. The claim concerned Victoria's Secret's "PINK" sub-brand which appeared on various items of clothing, typically alone, without reference to the parent company, and even extended to the fronts of standalone stores. In its defence, Victoria's Secret claimed that Thomas Pink's UK mark was invalid due to a lack of distinctiveness and that its CTM should be revoked for non-use, citing that "clothing" (class 25) was too vague.

Mr Justice Birss, stated that "clothing" was not too vague and that it accurately reflected use of the mark by Thomas Pink on its various products. However, with regard to the UK mark, he agreed that "PINK" was not distinctive. Following consideration of Victoria Secret's argument that the mark could not have acquired distinctiveness because it was used in a different form to that in which it had been registered, the court concluded that the mark had in fact acquired distinctive character due to its extensive use.

The judge went on to find that the use of "PINK" by Victoria's Secret on its products, both alone and within a slogan, did indeed amount to infringement, as both gave rise to a likelihood of confusion. Furthermore, where "PINK" was used in conjunction with "VICTORIA'S SECRET" the form in which the latter sign was used should be prominent enough to avoid confusion. The judge found that in many instances, including the shop-fronts, that was not the case and that there had therefore been infringement. With regard to the clothing labels, however, there no risk of confusion and hence no infringement had taken place. In light of the findings on trade mark infringement, the passing-off claim was not considered.

For a link to the full decision, click here.


In October, Cartier was successful in an action against five major Internet Service Providers (ISPs) which sought an order blocking access to websites promoting or retailing counterfeit goods.

The outcome is believed to be the first of its kind. Previously brand owners have taken action against the counterfeiters themselves rather than the ISPs. However, in this case Cartier attempted to shift the requirement for action to the ISPs - BskyB, BT, TalkTalk, EE and Virgin - and require that they block the pirate websites within 15 days of notification from Cartier.

Mr Justice Arnold considered the damaging effect of counterfeits on Cartier and all brand owners. The finding is obviously good news for all brand owners with counterfeit problems who now have an important additional remedy to consider. Mr Justice Arnold did make some comment on the question of how long the resulting blocks should remain in place. However we suspect that for counterfeiters seeking to make quick sales the two year blocking period recommended by Mr Justice Arnold would be sufficient.

For a link to the full decision, click here.


October also saw the final chapter in the long-running Specsavers v Asda litigation which concerned whether Specsavers' Wordless Logo. (that is, its famous overlapping double ellipse logo without the word "Specsavers" in it) had been used by Specsavers. The issue arose because Specsavers had always used its logo with the word "Specsavers" superimposed and the High Court had revoked the Wordless Logo for non-use.

After the CJEU had found that in principle a logo of this type could be used, even if only ever used with other material superimposed, provided that the distinctive character of the mark was not affected, it fell to the Court of Appeal to determine whether in fact the Wordless Logo had been used by Specsavers.

The Court of Appeal found that it had. It drew attention to the facts behind the Asda marketing campaign which had led to the litigation and noted, in particular, the comments in many of Asda's internal documents which dealt with the creation and consideration of various logos which were deliberately modelled on Specsavers' logo. The Court of Appeal found that this showed that Asda's marketing professionals had clearly perceived the Wordless Logo as a distinctive and independent device in its own right, notwithstanding the fact that the logo had always been used in conjunction with the word "Specsavers".

The Court of Appeal sought to stress that the facts of the case were relatively unusual but he decision is good news for major brands who register "base" marks on which additional material is often superimposed in practice.

For a link to the full decision, click here.

KEYWORD BIDDING - COURT OF APPEAL ORDERS REMATCH - Interflora Inc v Marks and Spencer plc

In November, the Court of Appeal ordered a retrial in the Interflora v Marks and Spencer PLC keyword advertising case. In making this unusual order it criticised the High Court judge for, amongst other matters, the degree of reliance he placed upon the concept of 'initial interest confusion'. It found that this concept did not belong in UK trade mark law.

According to the concept of 'initial interest confusion' and in the context of keyword advertising, an internet user is 'initially confused' if he/she thinks a keyword advert is connected to a brand owner, clicks on that ad and is taken through to a linked website. The judge had found that even if their 'confusion' is dispelled once it has visited the linked website, that is the user then realises the linked website is that of Marks and Spencer and not Interflora, trade mark infringement will still be held to have occurred.

The outcome of the retrial will be crucial in laying down guidelines in the multi-billion pound keyword and pay per click advertising sector in the United Kingdom.

For a link to the full decision, click here.


About HGF's Retail Team

HGF is one of the fastest growing and largest full service IP practices in the United Kingdom. When ranked by the number of Community Trade Mark filings (a commonly used metric) we are presently the second largest trade mark practice in the UK and the sixth largest in Europe.

The HGF Retail team work with a growing number of national and international retailers and provides support and advice on the full suite of IP needs including

  • brand creation;
  • searching and clearance;
  • filing and prosecution of trade mark and design applications globally;
  • trade mark and design portfolio management, including renewals;
  • oppositions, appeals and other disputes at trade mark offices around the world;
  • domain name registration and maintenance;
  • design and brand protection including anti-counterfeiting, dispute management, enforcement and litigation;

In addition to our expert advisors, many of whom are highly ranked in legal directories, we support our clients with leading edge, bespoke portfolio and document management software allowing full online access to files as well as specialist renewals and formalities teams.

For more information on the HGF Retail Team, please visit /industry/retail-and-fashion/.