2020: Looking back on an extraordinary year

If 2020 was a brand, its logo would be red and spiky. Its trade marks would feature “COVID-19” and “Coronavirus” and slogans would include the words “unprecedented”, “crisis” and “pandemic”.

History will undoubtedly record 2020 as the year of coronavirus. It is not the first time countries across the globe have been hit simultaneously by a health crisis, but it is the first time that crisis has been played out across instant global communications, with vast amounts of instant data influencing public opinion and government decision-making for better and worse.

But there is more to 2020 than COVID-19. We have seen major civil rights protests and notable corporate and regulatory interest in improving diversity at senior levels. We’ve also seen significant changes to institutions from the British Royal Family to the European Union, which herald the changing times.

Through all this it has been more evident than ever that IP industry is symbiotic with everything that happens in the world. From debate around the intellectual property rights to vaccines and medical instruments during times of global threat, to working through the implications of the UK’s exit from the EU and commentating in royal trade mark applications, the industry has been working hard to protect innovation and share ideas. And, like most people in knowledge industries, we have been doing this while working from home, getting to grips with Zoom etiquette and juggling family life like never before.

The year has brought some moments of light relief, too, as some brands have opted to take a more friendly approach to protecting their trade mark territory. Here are some of the cases and interesting IP stories that piqued our interest and tickled our fancy this year.

Key cases:

Booking.com: in May the case of the registrability of Booking.com as a trade mark for the eponymous organisation came before the Supreme Court of the United States. At issue was whether a top level domain, in this case “.com” added to a generic word such as “Booking” created a mark that was sufficiently distinctive.

Increased interest was generated because this was the first time in US legal history that the proceedings of the Supreme Court were broadcast live. The court’s opinion was the last written by the legendary Judge Ruth Bader Ginsburg and it upheld Booking.com’s claim to registrability as Ginsburg put it: “because Booking.com is not a generic name to consumers, it is not generic.”  The case hinged upon Booking.com’s submission of a consumer survey showing that nearly 75% of participants recognised the name as a brand.

The implications of this ruling will echo through future trade mark applications and you can read a great analysis of the case courtesy of the IPKat.  

Sky vs Skykick: Originally a claim by Sky that cloud services provider Skykick had infringed its trade mark, the case grew in interest following Skykick’s counterclaim that Sky’s registrations were too broad and registered in bad faith.

So the question was whether brands that have registered their trade marks across a very broad range of goods and services – even when they do not operate in those categories – can claim infringement.

The final judgement found that Sky had applied for its trade marks intending to obtain exclusive rights for purposes beyond those falling within the functions of a trade mark i.e in bad faith. The court issued “fair description” of the marks that it judged had been applied for in bad faith. Ultimately, however, because the CJEU had ruled that trade marks could not be ruled invalid on the basis of containing imprecise specification terms, Sky was successful in claiming infringement by Skykick. For more on this, Emmy Hunt and Edwina Fitzhugh of Potter Clarkson LLP reviewed the CJEU ruling and subsequent  UK High Court  decision for CITMA.

Trade marks and society

The dominant social issues of the year were also reflected in IP activity. From spring onwards, attempts to register COVID-19-related trade marks were common. However, the majority of these failed to reach registration due to their lack of distinctiveness and potential to run contrary to public policy and morality as Pinsent Mason’s Florian Traub points out.

In May the killing of George Floyd ignited a surge of protest against racial injustice that quickly spread worldwide. Amid widespread demonstrations a number of organisations applied to register Black Lives Matter – related trade marks. This prompted condemnation and debate over whether such terms should be permitted to be registered by individuals. Manchester-based businessman man Georgios Demetriou applied to register “I CAN’T BREATHE” and “BLACK LIVES MATTER” claimed to be planning to launch a charity to help inner-city children. Following widespread media coverage and public backlash, Demetriou dropped the petition. WTR Magazine contributed some excellent and balanced analysis to the story as it unfolded.

The heightened recognition of the insidious impact of racial prejudice, whether overt or implied, also led a number of companies to examine the heritage of their brands and resulted in the “retirement” of those with foundation in racial stereotyping. Quaker Oats announced in June that it would be replacing its “Aunt Jemima” pancake and syrup brand, while in September Mars Food announced that “Uncle Ben’s” rice would become “Ben’s original”.

Differing approaches to brand protection

Being BOSSY

Hugo Boss found itself on the receiving end of British satire as a result of its robust approach to brand protection. Comedian and tongue-in-cheek consumer rights champion Joe Lycett changed his name by deed poll to HUGO BOSS to protest the brand’s issuing of a number of cease and desist letters, most notably to Welsh brewery Boss Brewing. Lycett’s campaign served to highlight the potential PR pitfalls of an aggressive approach to protection.

However, lawyers for HUGO BOSS made the headlines again in October when it informed Merseyside artists John Charles of its intention to oppose his application to register his slogan “Be Boss, Be Kind” – his signature sign off at the end of his online lockdown art lessons – for use on clothing. While HUGO BOSS stated it was looking for an “amicable solution” the narrative of a big brand squeezing the little guy once more caught the public’s imagination.

Battle in the beer aisle

In a contrasting approach, when Brewdog co-founder James Watt spotted that ALDI’s “Anti-Establishment IPA” packaging bore more than a passing resemblance to the company’s own “Punk IPA” product, he took to twitter to point it out and proposed the retailer stock Brewdog’s quickly created “YALDI IPA”. Responding that they “would have gone with ALD IPA”, ALDI invited Brewdog to “send us a crate and we’ll talk.” In a rare instance of twitter trash talk turning out well, by October  Brewdog’s ALD IPA was on the shelves in ALDI, with the retailer saying  it couldn’t resist stocking ALD IPA, which supports its “mission to work with the UK’s best independent suppliers.” Both Brewdog and ALDI came out of the situation well.

Entertainment

It’s not often that trade mark law is a key thread of a mainstream entertainment show, but 2020 has brought us everything, including the Netflix true crime sensation “Tiger King”. A pivotal point in the story lay around protagonist Joe Exotic’s adoption of the name “Big cat rescue entertainment” to describe his mobile big cat show. Rival Carole Baskin, who runs “Big cat rescue” sued Exotic for infringement. WTR Magazine has a full analysis of the case put together by Joe Lawlor of Haynes and Boone.

Mental health and inclusivity awareness

As we took on the unique challenges of 2020, we saw a renewed focus on the importance of mental health and support for diversity and inclusion in the industry. There have been some excellent resources published and campaigns running over the year and we would like to celebrate the work of Jonathan’s voice and IP Inclusive in particular. Without organisations and initiatives like these, the world would have been an even stranger, more uncertain place than it has been this year.

As the saying goes, “hindsight has 2020 vision”. At the start of the year very few would predict what lay ahead. With hope on the horizon in the shape of a vaccine, we can look forward to 2021 and all it has to offer in IP and every other way, with enthusiasm.

Wishing everyone a very Happy New Year from all at WebTMS!