Retromark 2025: Event Report (Part 1 – the write-up)

http://ipkitten.blogspot.com/2025/04/retromark-2025-event-report-part-1.html

Panel 1: “It looks like lookalikes are no longer liked:
has the Court of Appeal moved the dial in favour of brand owners?”

A panel consisting of Jonathon Moss (Hogarth Chambers),
Joel Smith (Simmon & Simmons), Mel Jones (GSK) and Victoria Jones (3PB),
moderated our very own Eleonora Rosati, discussed the recent Thatcher’s Court
of Appeal decision, and the direction of travel on lookalikes.

An initial poll of attendees indicated that the Court of
Appeal’s decision had broad support among the audience. While I didn’t spot
anyone from Aldi in Groucho Marx disguise, the poll did express some
reservations about the judgment.

The panel discussed that the decision was in line with Specsavers
and Lidl v Tesco, both of which resulted in wins for the claimants
(albeit in the latter case, only just). As in Lidl v Tesco, the implied
pricing message of the disputed sign had been important, and claimants may need
to expressly plead the same in order to get appropriate disclosure. [Alessandro’s
Katpost on Lidl v Tesco here]

The relevance of comparative advertising law has
increased. The panel discussed whether Aldi might have been in a better
position had it said out loud was it was saying implicitly. See my Katpost [here]
(and the reference to the challenge where the comparison is for a product that
is an imitation).

Some felt that the decision might be limited to its quite
particular set of facts (i.e. very close copying of the packaging, evidence of
‘benchmarking’ and deliberate free-riding, and lack of any investment in the
infringing product). It will take time to see how this develops in the case
law. It was mentioned that Robinsons has issued proceedings against Aldi in
relation to a soft drink product, so it may not take long for the High Court to
be looking at this again, albeit in similar circumstances.

Some disappointment was expressed that the first instance
dismissal of the passing off claim was not appealed, which one panellist felt
was a missed opportunity. The (in)famous MorrocanOil case got a name-check [Katpost
here]. The panel and audience had a lively discussion about whether a
tort of unfair is within sight, or even desirable, and how it could be
implemented.

There was a discussion about the number of IP cases
reaching the Court of Appeal and Supreme Court. Prior to the recent spate, IP
cases reaching the Supreme Court were very rare, yet there have been three
heard in the past year (Lifestyle Equities x 2 and Iconix), and Thatcher’s v
Aldi seems to be heading there too. Is this a reflection of complicated cases
being heard within the strictures of the IPEC, a Court of Appeal that is more
willing to grant permission, the lack of ability to refer matters to the CJEU,
or something else?

Overall, there was a strong sense that the dial has
shifted in favour of trade mark owners and brands. Each case will depend on its
facts, but the days of close lookalike products being sold in the UK but not in
other European jurisdictions may be numbered. The Supreme Court appeal will, if
permission is granted, be highly anticipated, even if, as one panellist said,
there is a risk that the Supreme Court will take a less IP-centric view.

Panel 2: “A tale of a supreme saga: where does the
Supreme Court judgment in Skykick leave us?”

This panel was formed of Andrew Norris KC (Hogarth
Chambers), Grant Robery (Natura & co), Philipp von Kapff (EUIPO) and Ese
Akpogheneta (BAT), this time moderated by Darren Meale (Simmons & Simmons).

The Skykick saga has consisted of nine written judgments
stretching back to those halcyon days of 2017 when Despacito was top of
the UK charts. The litigation has included one trip to Luxembourg, two to the
UK Court of Appeal, and now two to the UK Supreme Court, as well as around a
dozen IPKat posts. To get up to speed, you can read the most recent of the
latter [Jocelyn’s
Katpost here].

Much of the discussion focused on whether there would be a
change in filing strategy, although there was significant doubt that there
would be. Practitioners are already taking the decision into account in
drafting specifications, although extensive specifications remain common.

Much of the debate focused around broad terms such as
“computer software”, with some recognising the fact that the term was
absolutely reasonable years ago, and it is only more recently that challenges
have been made to that term. Concerns were also raised that a restrictive
approach to “computer software” might spill over into other areas, such as
“retail of goods”. Some suggested that “computer software” might be better put
in each particular class of goods/services for which the software is used,
although the impact on filing and renewal fees was noted.

Bad faith challenges appear to have become more
commonplace as the Skykick proceedings have progressed, and that is likely to
continue following the judgment. The door being open to bad faith attacks on
trade marks might undermine the principle that a trade mark does not need to
have been put to genuine use in the first five years of registration.

There was an interesting discussion as to whether filing
procedures should be changed, including whether a US-style requirement to prove
use should be implemented (a resounding ‘no’) or whether the UKIPO should
charge fees based on the length of the specification (also unpopular).

Takeaways

Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).