From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 20 February 2017

Major changes to trademark law in Turkey: read all about it


The long-awaited New Turkish IP Code of Industrial Property, no. 6769, entered into force upon publication in the Official Gazette of January 10, 2017. The new Code repeals and replaces the Decree Laws on Patents and Utility Models, Trademark and Service Marks, Industrial Designs and Geographical Indications. The new Code is set to profoundly change the IP landscape in Turkey, affecting the legislative, administrative and professional components of the law. Kat friend Okan Can, of the Deris Law Firm in Istanbul, summarizes the changes to the trademark law; a further report on the new patent law will follow.

Several major changes have been introduced regarding registrability.
1. Colors and sound marks have been included in the definition of signs that may be protected as a trademark. The wording of the Code also paves the way for motion marks.

2. Trademark applications consisting of a registered geographical indication will be rejected by the Office. Therefore, words that have been registered as a geographical indication will no more be accepted for registration as a trademark.

3. The Code introduces the use of a Letter of Consent, by which the owner of an earlier trademark may consent to the registration and the use of an identical or similar trademark later filed for the same or similar goods or services. The absence of the possibility to submit a letter of consent under the former law was criticized.
Concerning oppositions, these changes are noteworthy:
1.The opposition period- which used to be three months, has been shortened to two months.

2. Bad faith is explicitly mentioned as a ground for filing an opposition.

3. The Code, unlike the former law, enables the applicant of an opposed trademark to require from the opponent show evidence of the use of the trademark on which the opposition is based, if the five-year grace period for non-use of the opponent’s trademark has passed. The same non-use argument can be claimed in a trademark infringement or cancellation action.

4. The parties may settle an opposition through mediation as per the Mediation Law.
The Patent Office will implement the administrative proceedings for a cancellation within seven years of entry into force of the Code, namely by 2024. These proceedings will include cancellation of a registered trademark on grounds of:
1. Non-use;

2. Becoming generic (on the products / services on which the trademark is used);

3. Deceiving the public (as to the characteristics, quality or geographical source);

4. Use of a certification mark contrary to the terms of its technical regulation that are provided to the Patent and Trademark Office.
Concerning infringement, the following changes are especially interesting:
1.The Code specifically provides that the use of a trademark as an essential part of a company/establishment name, or its illegal use in comparative advertisements, is prohibited.

2. Mere registration of a trademark does not constitute a legitimate defense against an infringement claim brought by the owner of an earlier IP right. This is a material change to the law, as the previously- settled Supreme Court case law deemed the mere fact of registration of a mark as a legally protectable use until cancellation of the mark by the Court. The same non-use argument can be claimed in a trademark infringement or cancellation action.

3. The Code introduces the international exhaustion principle instead of the national exhaustion principle provided by the former legislation.
As for criminal aspects, the Code provides for two notable provisions:
1. The Code introduces criminal provisions for trademark infringement only; there are no corresponding criminal provisions concerning patent, industrial design or geographical indications.

2. The Code regulates criminal offences concerning the counterfeiting of trademarks by providing that producing goods or providing services, exposing for sale or selling, importing or exporting, purchasing, keeping, transferring or storing for commercial purposes, by means of a counterfeit mark that infringes the registered trademark rights of a third party, is subject to a term imprisonment of between one and three years as well as the imposition of a monetary fine.

Thursday, 16 February 2017

Tartan Army scores own goal?

The defendants' magazine
Via Katfriend Gill Grassie (Brodies LLP) comes a trade mark story from Scotland, that tells the tale of the trade mark ‘Tartan Army, its alleged infringement, and the resulting decision by the Court of Session. The case is Tartan Army Ltd v Sett GmbH and Others [2017] CSOH 22. 

Here’s what Gill writes:

This was a trade mark/passing off case relating to UK and EU registered marks ‘Tartan Army’ (the Mark) decided just last week by the Court of Session in Edinburgh.

It has all the ingredients of a hard-fought football match between two rivals determined to get the better of each other.

It involved numerous tactical moves, lots of emotion, a few penalties, many injuries and stoppages, extra time and ultimately an own goal just before the final whistle.

The stakes

The ‘honourable referee’ was Lord Glennie, who is an IP designated judge in the Court of Session.

Ultimately, this referee decided there was no infringement or passing off and that a number of trade marks in various classes should be revoked or specifications restricted. 

The case started as long ago as 2009. Now, on the face of it, that seems an inordinately long time to reach what is only the first instance decision. The case rather surprisingly was not brought as an IP case and so was not dealt with under the strict IP case management rules. In addition, it was stayed for a period of a whole 4 years from 2010 to 2014. The lack of any case management followed by this long stay contributed to the delays and only when the case was ultimately transferred to the IP procedure was any swift and focused progress really made. 

Despite the obvious determination by both sides to see this through, there was not a huge amount at stake. The claim for damages and net profits was dropped - probably because the Mark had not been particularly successfully exploited – and the only claims were for injunctive relief (interdict), destruction of infringing materials and expenses/costs. 

The marks

The pursuers (claimants) owned  a number of UK and EU registered marks in respect of the Mark. It seems that some of the more relevant EU trade marks were allowed to lapse in error along the way with applications for new ones, in exactly the same classes, being made as late as May 2016. After a non-use attack ultimately, the only relevant ones left standing in the trade mark team were those in classes 25, 32 and 41. 

Notably there was only one UK valid trade mark in class 25 (articles of clothing, headgear, footwear etc). There were valid EU trade marks however for all three of the relevant classes. [Class 25 being for articles of clothing, headgear and football strips, Class 32 for beers, minerals and aerated waters and other non-alcoholic drinks … Class 41 for publishing services; on line publishing, the provision of on line and electronic publications and digital music, entertainment, sporting and cultural services, information and advisory services related to all of these.]

A tartan army
The beautiful game?

The case did not ultimately turn any issue on disputed facts. Rather it was all about the law as applicable to those facts, ie the rules of “the beautiful game” of trade mark law! 

Just about every point imaginable was argued. 

The pursuers were successors in title to the Mark with first dated UK registration being in 1996. The mark was filed in numerous different classes with widely drafted specifications. Perhaps the zenith of its use was in 1998 coinciding with that 1998 World Cup. It was used for fan merchandise and a few licenses were granted but the commercial results were not great. Use was sparse and intermittent but not commercially significant since around 2008. It had only been used in classes 25, 32 41- albeit not across the full width of the specifications, since 2010.

Personal bar/consent (estoppel) – the first goal to the pursuers’ team!

The defenders were publishers of a magazine called, “The Famous Tartan Army”.  They had approached the then owners of the Mark in 2005 for permission to use the name ‘Tartan Army’ to produce a magazine. An email had been sent on behalf of the then owners on 2 September 2005 authorising use for a magazine called, “The Famous Tartan Army”. Nothing was said in the email as to whether this authorisation  was revocable or not. The pursuers in the action had purported to terminate any informal licence which may have  been granted by that email, by a subsequent email of 31 July 2008. The defenders attempted to rely upon personal bar/consent (estoppel) to argue reliance on the original email granting consent such that it could not later be cancelled. However, this was undermined by evidence that the defenders had already begun to prepare to use the Mark for a magazine with the relevant title in 2004/05.

The judge indicated that he had no doubt that even if the defenders had not received the original email, they would have carried on in any event and used the name for that purpose. In addition, permission, unless otherwise stated, could be revoked on reasonable notice, which would be determined by the specific circumstances. Here notice had been given in July 2008 via the relevant email and the action was not started until 2009. This was more than sufficient time here. 

Also any licence in the 2005 email was personal and not transferable and the owners of the Mark had changed through assignations etc since then. Further the decision to revoke the licence in the later email only came about in light of concerns that the defender’s use was going beyond mere production of a magazine in any event. 

Thus this argument was rejected.

Validity - a draw?

There was also a validity challenge on two main grounds – absolute grounds of refusal and non-use for five years.

The former attack was based on an argument that the trade mark was incapable of distinguishing goods or services etc. Section 3(I)(a)(b)(c) and (d) of the UK Trade Marks Act 1994 were all relied upon. 

The ‘honorable referee’ blew the whistle on this pretty quickly!

Even if the Mark would have generic meaning for the mass of Scotland’s football fans, it could still be distinctive in the sense of being capable of identifying goods or services for which the trade mark was registered as coming from a particular undertaking as opposed to identifying the actual undertaking as the source. That dealt with (a) and (b). Also the fact that the term might often be used as a badge of allegiance to the Scottish Football Team (the Arsenal and Tottenham cases etc) would not prevent its registration as a trade mark.  As (c) and (d) were merely specific instances of lack of distinctive character, these grounds were also dismissed accordingly. 

There was also an argument of 5-year non-use which was a little more successful, with the registered trade marks in classes 24, 27 and 35 all being deleted. This left only classes 25, 32 and 41 standing but with some restrictions to the specifications. 

There was a very interesting argument by the pursuers as an attempt to fall within the exception to non-use by trying to establish that there were proper reasons for it. This was, as the judge put it, “the ebb and flow of the fortunes of the Scottish Football Team (presently more ebb than flow) made it perfectly reasonable for the pursuer to seek a wide protection for the Mark without actually making use of the Mark in relation to items such as carpets, which were only likely to be marketable as and when the Scottish Football Team qualified for a major championship.  This applied across the whole range of classes protected by the trade marks – the larger and/or more expensive the item, the more justification there was for putting off use of the trade mark in relation to the use of that item until the national team enjoys greater success.  He compared the situation to that of World Cup Willie, a Mark in respect of which the Court had accepted that it was reasonable not to have used it for many years.”

However the referee in this instance did not accept that comparison and made the point that World Cup Willie was specifically linked to the success of the English football team on home soil in 1966 and commented that, “it was not surprising that it will have lain dormant for many years since then without that non- use necessarily resulting in revocation.”

Don't overlook the importance
of (case) management
In contrast, the judge remarked that the Mark here had “never specifically attached to one particular occasion” and that the use had been continued in certain respects in relation to clothing and a website despite the lack of success of the Scotland football team.  It was not the case that the Mark’s use had been put into abeyance awaiting the prospect of future success. This argument therefore also failed dismally.

The ultimate own goal?

All of the above was however in vain as the ultimate own goal was that what was left of the pursuers’ brand armoury was held not be infringed.  It was decided very briefly by the judge that there was no infringement or passing off.  The marks were not identical given the use of the qualifier ‘Famous’ which was more than just a mere descriptor. Whilst the marks were similar and  in so far as use for a magazine was concerned  fell within class  41 there was no likelihood of confusion or evidence of such.  There was also a case argued for infringement by use for travel services but the relevant EU trade mark was no longer in play so it was dismissed.
Furthermore, it was not a well-known trade mark under Section 10(3).  For similar reasons, the case on passing off also failed.

Injury time and to appeal or not to appeal?

We are now in the long overdue period of injury time and it remains to be seen if the pursuer will still have sufficient passion (not to say the funds) to lodge an appeal.

Lessons learned

The case got off to a bad start by not being designated as an IP case.  Doing so at the outset would have avoided long delays and considerable (no doubt) wasted costs. The IP Court Rules and Procedure offer very close and strict case management of the proceedings  from the earliest possible stage – ie within just over a month of the case being started. Use of these rules would have kept expenditure and time under control, and added  considerable focus to the action. 

Secondly, use your registered trade mark!

Thirdly, don’t fight for the sake of it, especially when the tide is ‘ebbing away’ rather  rapidly. 


Of course had the Scottish National team been playing in better form over the period in question things might have turned out quite differently …”

Book review: "Brandfather: John Murphy, The Man Who Invented Branding"


Most of us like to read the story of successful people. And there are few personalities in the IP world whose aura is so identified with success as that of John Murphy. Murphy's name may not be well-known for the under 40's crowd, since his glory days were in the 1980's and 1990's, when he created Interbrand and quickly turned it into a (the?) pioneer in the emerging field of branding and brand valuation. Having sold the company in 1993, Murphy has been engaged since that time mainly in specific business projects. Nevertheless, for those who recall him in his full active glory, the publication of his short memoir, "Brandfather: John Murphy, The Man Who Invented Branding", promises a chance to relive those times from the vantage of a person who was central to it all.

What the reader gets is a large dose of the author, as he interweaves himself into numerous anecdotes, taking us down the path of his career since the 1970's. Murphy recounts how he moved from a job in corporate planning to the creation of a brand naming (e.g., PROZAC and ZENECA) and trademark prosecution company to the establishment of Interbrand and, in particular, the development of the field of brand valuation. In doing so, he seems to have a wonderful recollection of personalities and events, reminding us how little things can have a huge impact on one's business trajectory. Murphy did not intend to become a brand naming or brand valuation guru, but he was adept in spotting opportunities and taking advantage of them.

This reviewer found Murphy's description of how his team managed to turn a commission for valuation into the foundation for the field of brand valuation of particular interest ("… indeed, establish the entire concept and grab the market for ourselves"). As he tells it, the seminal work was done literally over a weekend later to be validated by the professional and academic community. To be clear, this is not a book about learning the art (and science?) of brand valuation. Murphy has published others works in this vein for those who wish to learn how it is done (e.g., here). Rather, it is an account about how circumstance, vision and grit can be brought to bear to make the most of a business opportunity. In reading the book, the words "first mover", "luck" and "fun" come to mind. All three terms seem to have been significant components in Murphy's success.

Murphy does not suffer from shyness or self-deprecation; he often reminds the reader that the book is ultimately about him. Also a bit more context would have been nice, such as the rise in corporate interest in the 1980's in something called brands (think about the iconic end-of-the year 1988 cover story that appeared in The Economist—"The Year of the Brand"). But that is also the charm of the book. Murphy has enjoyed a singular career that continues to impact on the way that trademarks and brands are treated. More power to him. For those who want a narrow window into how this came about, go out and read this slim volume.

Brandfather: John Murphy, The Man Who Invented Branding, by John Murphy, 184 pages,The Book Guild Ltd., 2017, ISBN:978 1911320 357, is available here.

Review by Neil Wilkof

Tuesday, 14 February 2017

IP Summit 2016 (Second Part)

Be ready for the second part of this Kitten’s report! Check out the first part here.


Unconventional Trade Marks under the New EUTM System

The conference was chaired by Dr. Thies Boesling. The speakers, Dimitris Botis (EUIPO) and Simon Barker (FREETHS/UK), provided an overview of the registrability of unconventional trade marks in the context of the latest amendments to the EU Trade Mark Directive and the Regulation.

Botis noted that, for filing purposes, even though the graphic representation requirement was deleted from the definition of an EU trade mark, according to Recital 9 of the Trade Mark Regulation, the representation of the sign must still fulfil the so-called Sieckmann criteria: it should be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In addition, the mark “should be permitted to be represented in any appropriate form using generally available technology.”

In this regard, Botis discussed some of the applicable rules regarding the representation of an unconventional trade mark. For 3D trade marks, 3D modelling in motion and CAD formats are now accepted. For position marks, visual means (i.e. broken lines) must indicate the disclaimed part and for pattern marks, the pattern must be reproduced repetitively, so for both types of marks, the description of the sign is kept as a complement to delimit the scope of protection. For colours per se, it is compulsory to indicate the colour codes. For sound and motion marks, even though a sound or video file will suffice, musical notation and a series of still images can also be used.

From the point of view of a practitioner, Simon Barker discussed some notable cases related to the registrability exclusions set forth in article 7(1)(e) of the Trade Mark Regulation. In particular, he provided an overview of the Nestlé Kit Kat bar, Yoshida knife handle, Rubik’s cube, Trip Trapp chair and London Taxi Corp cases, which involved either the registrability exclusion of a shape resulting from the nature of the goods, the necessity of obtaining a technical result or adding value to the product.

Simon considered the particular challenges in registering a 3D trade mark by having to show by, virtue of acquired distinctiveness, that a shape fulfils the essential trademark function. This Kitten found the session most interesting because these registrability exclusions have intrigued her for a long time, particularly the one about the substantial value added to the product.


The growing importance of online services and restoring the “value gap”

The conference was chaired by Fabienne Brison. The speakers, Jackie Alway (Universal Music Publishing), Pierre Mossiat (Strictly Confidential) and Lauri Rechardt (IFPI) provided insights about the so-called "value gap" within the context of article 13 of the proposal for a Directive on Copyright in the Digital Single Market.

First, Lauri Rechardt explained that the recording industry is continuing to face difficult times. Even though there is growth in streaming as revenue model, there still remains a mismatch between the levels of consumption and the revenues paid to creators and producers. He stressed that less than 4% of industry revenues are paid in connection with User Uploaded Content (UUC) services, despite having a consumer basis of around 900 million users. Lauri also highlighted that UUC services, being the largest providers of music on-demand, are undermining the development of digital markets because they are not liable for the uploading of infringing content.

Jackie Alway stressed that licensing benefits the creators, fans and partners, fostering creativity and maximising commercial opportunities. In order to fix the market distortions faced by the music industry, it is necessary to amend the current legal framework so that right holders can negotiate fair terms with the UCC platforms. In addition, she mentioned that further consideration regarding the prevalence of takedown notices in that 94% of them are recidivist notices.

Pierre Mossiat (Strictly Confidential) remarked that streaming is the future for the music industry, as is evidenced by the decrease in revenues derived from the sale of physical means (i.e. compact discs and vinyl records). He stressed that streaming brings to the fore legal issues that need to be solved, which is more urgent than takedown notices for restoring the value gap.

The social programme included a Gala Dinner at Chalet Robinson, where in a relaxed atmosphere participants had the opportunity for networking as well as meeting old colleagues and friends. This social event was a delight!

*Pictures are courtesy of Premier Cercle team.

Monday, 13 February 2017

Around the IP Blogs!

This Kitten is delighted to bring you the highlights from some recently published IP blogs!

This Kitten enjoyed a lot reading some IP blogs!
Nathaniel Boyer and Dori Hanswirth of LimeGreen IP News recaps James Paul McCartney v Sony ATV Music Publishing LLC. The case involves a declaratory judgement sought by Sir Paul McCartney to confirm the validity of his request for reversion of the assignment of copyright to Sony of works created as part of The Beatles as well in connection with his career as a soloist. McCartney did so by serving a series of notices based upon section 304 of the US Copyright Act 1976.

Moving to trademarks, John L. Welch of The TTABlog discusses Luxco, Inc. v Consejo Regulador del Tequila, A.C. in which the Trademark Trial and Appeal Board (USPTO) dismissed an opposition based upon genericness, lack of legitimate control and fraud, filed by Luxco against registration of the certification mark TEQUILA filed by the Mexican Tequila Regulatory Council (TRC).

Over at Kluwer Trademark Blog, Bettina Clefsen reports on Cases 25 W (pat) 59/14 and 60/14, in which the German Federal Patent court cancelled trademark registrations consisting of dextrose sweets whose shapes enabled easy storage and consumption and were therefore necessary to obtain a technical result.

Moving to the topic of standard essential patents, Marco Lo Bue muses on TrustinIP whether the new IP policy of one of the standard setting organizations (the Institute of Electrical and Electronics Engineers -IEEE-) complies with competition law.

Finally, turning to the field of Traditional Knowledge and Cultural Expressions, Afro-IP blog summarizes some initiatives, whose goal is to enable traditional communities to commercialize in an effective manner their indigenous knowledge. These initiatives include the South African Traditional Knowledge Bill and the Maasai Intellectual Property Initiative.

Monday miscellany

The Kats like chocolate,
but KitKat?
1. IPKat's own Mark Schweizer will be hosting a webinar for the EUIPO Academy on the fallout of the Court of Justice's decision in the "Kit Kat shape" mark dispute (C-215/14), and the developments since (T-112/13 is certainly interesting and seems to contradict Arnold J's interpretation of the Court of Justice's judgment). The webinar is based on the article "Break for or blow against three dimensional trade marks? The fallout from the Court of Justice's decision in the Kit Kat shape mark case" in ABA's landslide magazine. The webinar will be held on Tuesday, 14 February 2017, at 10 am CET (9 am GMT), and you can register for free here. The slides can be downloaded here, but as usual, the interesting stuff is not on the slides.

2. GOLDING ESSAY PRIZE 2017: The CLA is offering a prize of £1000 to be awarded for an essay submitted by a student, trainee solicitor, pupil barrister, devil barrister (from Scotland) or trainee patent and trade mark attorney on the following topic: How can owners of EU trade marks effectively maintain their rights following Brexit, and what implications is this likely to have for trade mark litigation and licensing? Will any assistance be needed by way of legislation to preserve rights of such owners in the UK?

3. IP Out are holding a drinks and networking event, hosted by Marks and Clerk, on Thursday 23 February. Full details here.

4. Call for Papers: The Centre for Cross-Border Commercial Law in Asia (CEBCLA), School of Law, Singapore Management University, is pleased to announce the first Future of Law Conference: The Internet of Things, Smart Contracts and Intelligent Machines, to take place on 26 – 27 October 2017 in Singapore. Tentative topics include: 1) Privacy and information security 2) New transacting & marketing models, e.g. apps, platforms, sharing economy, smart contracts, ubiquitous computing 3) Paperless trade 4) Legal technology & computational law 5) FinTech, Banking Regulations, Crypto-currencies. Interested scholars should submit their request to present by emailing their contact information including their academic affiliation, a short bio (not exceeding 300 words), a title and an abstract of their paper (not exceeding 500 word) as a Word or PDF attachment to CEBCLA to the following email address: futureoflaw@smu.edu.sg.

5. The Global Advertising Lawyers Alliance (GALA) informs us that Israel’s Ministry of Health recently announced new rules on the marketing of unhealthy foods. The new rules include Red warning markers must be placed on the packaging of foods that are high in sugar, salt, or fat; Product packaging must be marked with spoons that show the amount of sugar contained in the product; and Unhealthy foods may not be marketed to children. "...Now is the time for food manufacturers to consider whether to reformulate their products and what changes may be necessary to their packaging," said Jeffrey A. Greenbaum, GALA's Chairman and Managing Partner of Frankfurt Kurnit Klein & Selz in New York. 

6. The Intellectual Property Office of Singapore (IPOS) has recently launched the 1st edition of the Trade Marks Case Guide, which is targeted at IP practitioners who act for clients in contentious TM proceedings before the Registrar at IPOS. A PDF copy of the Case Guide can be found here.

7. Preparing for World Intellectual Property Day – April 26, 2017? This year’s theme has been announced: Innovation – Improving Lives.

8. Call for Papers: “Art in Law in Art Conference” is an interdisciplinary conference investigating the broad themes of law relating to visual art including intellectual property issues, and how visual artist perceive the law. Papers from any discipline may engage with any aspect that explores these general themes and may embrace a broad definition of both visual art and law. Scholars, practitioners, artists, and artistic and cultural institutions are invited to submit late abstracts to conference-law@uwa.edu.au more information here. The conference will be hosted by the University of Western Australia law school, and held at the Art Gallery of Western Australia during 4 and 5 July 2017. 

9. The Parasol Foundation Trust International LL.M at tel Aviv University offers a Law & Information Technology Track, with a focus on IP. The 10-month program takes place at Israel’s leading Law School and commences in early September, more details here.

10. Call for papers: The seventh annual Patent Conference (PatCon 7) will be held on Friday April 7th and Saturday April 8th at the Northwestern University Pritzker School of Law. Please submit abstracts to David Schwartz (david.schwartz@law.northwestern.edu) by February 15, 2017.  

11. The U.S. Chamber of Commerce has released its 5th annual International IP Index, rating 45 world economies on patents, trademarks, copyright, trade secrets, enforcement, and international treaties. According to the Index, the three countries ranking highest in Overall Economy Scores were US (32.6), UK (32.4), and Germany (31.9). A summary and key findings can be found here.

Sunday, 12 February 2017

Playing Polo with potential defendants

Beverly Hills is famous for many things, including the activities of a vacationing policeman and - to a slightly lesser extent - its Polo team.

Like many other Polo brands the Beverly Hills Polo Club name has been heavily licensed for consumer products such as clothing and shower gels.

There has been a longstanding dispute between the club's UK licensee (Lifestyle) and six Sports Direct group companies (including an earlier decision from Master Clark regarding the required court fee for IP claims - see an earlier IPKat post here).  The dispute concerns infringement of EU and UK trade marks and procuring breach of a licence agreement.  It began in September 2015 as a claim for trade mark infringement based on the sale of various items of clothing.  In April 2016, permission was given for the claim to be expanded to cover the sale of gels as well.  The gels defence was based on exhaustion of rights.

In a recent hearing, Lifestyle sought to add five new defendants to the claim.  The rules about joining new defendants to a claim (joinder) are set out in CPR 19.

The key point is that after service of the claim form, the court's permission is required to add or remove defendants.  In most instances, this application can be dealt with without a hearing only where all the parties are in agreement.  In this instance, the parties could not reach an agreement, so four sets of law firms and their respective barristers ended up in court to determine the following questions.
Is this the logo which launched a thousand lot of applications?
A: yes 

Do the claims against proposed new Defendants 8, 10 and 11 have any reasonable prospect of success?

The case against these defendants was based on joint tortfeasance.  Master Clark considered the authorities including HHJ Hacon's interpretation of the Supreme Court in Sea Shepherd UK v Fish & Fish Ltd [2015] UKSC 10: "I interpret this to mean that in order to fix an alleged joint tortfeasor with liability, it must be shown both that he actively co-operated to bring about the act of the primary tortfeasor and also that he intended that his co-operation would help to bring about that act (the act found to be tortious)."  See Vertical Leisure Ltd v Poleplus Ltd [2015] EWHC 841 (IPEC) at 66.

As the Master identified, one of the difficulties that claimant(s) in IP claims commonly face is that they have no direct knowledge of the circumstances in which the infringing acts occurred and the individuals directly involved in them. "Their case is necessarily based on inference from the facts (including publicly available facts) known to them before disclosure, witness statements and cross examination of the defendants' witnesses."  As the Master put it, deciding whether the proposed defendants should be added to the claim depends upon whether the claimants have a reasonable prospect of success of establishing that those facts are capable of giving rise to the evidential presumption HHJ Hacon referred to in Vertical Leisure v Poleplus.

Does the court have jurisdiction in the claim against the 7th Defendant?

The 7th Defendant is a Spanish incorporated company.  There was some dispute as to whether or not the Defendant's status as a Spanish company meant it could only be sued in Spain on the basis that this was the country where it is domiciled (Art 97(1) of the Regulation) and the EU Member State in which the act of infringement was committed (Art 97(5) of the Regulation).

However, Art 94 of the Regulation modifies the position in Art 97 so that the general rule is that the EU rules on jurisdiction apply unless otherwise specified. All the existing defendants and most of the new defendants are domiciled in England, therefore Article 8(1) of Regulation (EU) No. 1215/2012 ("Brussels 1 recast") came into play.  This meant that the English courts have jurisdiction to hear the claim against the 7th Defendant.

Should the joinder application be stayed pending the trade mark office's decision on validity?

Art 104 of the Regulation states:
    (1) A Community trade mark court hearing an action referred to in Article 96 [i.e. counterclaims for revocation/declaration of invalidity], other than an action for declaration of non-infringement, shall, unless there are special grounds for continuing the hearing, of its own volition, after hearing the parties, or at the request of one of the parties and after hearing the other party, stay the proceedings where the validity of the Community trade mark is already in issue before another Community trade mark court on account of a counterclaim where an application for revocation or for a declaration of invalidity has already been filed at the office…
    (3) Where the Community trade mark court stays the proceedings, it may order provisional and protective measures for the duration of the stay.
"It will be a rare and exceptional case where there are special grounds within article 104(1)" (see the Court of Appeal in Starbucks (UK) Ltd v British Sky Broadcasting Group Plc [2013] Bus LR 633).

The Master considered that she was essentially being asked to consider two separate questions: (i) should the new defendants be joined to the part of the claim concerning infringing use of gels and (ii) should the 'gels claim' be stayed.  She was influenced by the fact that if a stay was granted of the gels claim and joinder together, the proposed defendants would benefit from the limitation defence (England has a six year limitation period).

Time for a minty fresh new court date 
For the reasons outlined above, the Master had concluded that the claimants have reasonable grounds for their claims against the new defendants.  Therefore the answer to the first question was "yes" and joinder was simply a case management question.

The stay was slightly less straightforward and, in the immortal words of East 17, the Master decided to hear about the Stay Another Day.  This was on the basis that the question of a stay came up shortly before the hearing and the parties should have a proper opportunity to provide evidence and considered arguments.  This had a knock on effect on the trial date which is now listed to be heard in the autumn (rather than June).

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