Welcome to the seventh instalment of Scran & sIPs™ - the autumn edition of the quarterly publication by Marks & Clerk that focuses on Intellectual Property and the Scottish Food and Drink sector.
In this edition of Scran & sIPs™, Erik Rõuk takes a look at the trade mark regime in Australia; Eve Brown discusses the Advertising Standards Authority and plant-based burger ads; Julie Canet talks about Royal Warrants; Pam Bryer discusses design protection for the shape of food and drink products; Eve Brown and Claire Keating look at the regulation and trade mark protection available for CBD foods.
Claire Chalmers also summarises the EUIPO Board of Appeal decision on the inherent registrability of the shape of the Absolut bottle and provides some takeaway points for registering 3D marks.
We are joined by the City of Aberdeen Distillery for a Q&A, and we speak to Vault City Brewery and Savora Drinks who both won category awards at the Scotland Food & Drink Excellence Awards 2022, in September. We meet Meena Murrin and Louise Mansion in our Meet the Team section, and our cross-office challenge theme is pumpkin carving.
The emphasis at M&C this autumn is less on trick and more on treat as we have had a lot to celebrate.
We are also delighted to share the news that Julie Canet recently qualified as a Registered and Chartered Trade Mark Attorney (UK), and was promoted to an Associate. This follows Julie being awarded a distinction in her final set of exams. Julie joined Marks & Clerk in 2019 after completing a Masters Degree in Intellectual Property Law at Panthéon-Assas University (Paris) and a Bachelors degree in Law, which included a year studying at the University of Rotterdam. She has also passed the French Bar Examination. Julie is certainly one to watch for the future and we wish her all the very best in what we are sure will be a very successful career!
In September, we were delighted to announce the appointment of Esther Gottschalk as our new Head of Trade Marks (Europe). Esther has been with the firm since joining as a trainee in 2001 and became a partner in 2011; she will oversee M&Cs trade mark offering across a 9 strong office network including teams in Edinburgh, Glasgow and Aberdeen.
Commenting on her appointment, Esther said: “It is a privilege to take on this role for Marks & Clerk. I have been with the firm for nearly 22 years and I am proud of its talented and committed trade mark team, where we work with fantastic brand holders both in the UK and globally. As a management team and as a firm, we are aware that the role of the trade mark attorney is constantly evolving and there are opportunities but also challenging times ahead. I want to support the team and add value to our clients as Marks & Clerk continues to support the IP industry at large.” Congratulations Esther!
Also in September, Marks & Clerk was once again recognised by The Legal 500 as a Top Tier Firm in their annual rankings.
The Legal 500 is one of the most well respected guides to law firms and solicitors in the UK, and these rankings reflect the results of detailed analysis of law firm submissions and thousands of interviews with GCs and private practice lawyers, conducted by a team of experienced researchers.
A total of 35 lawyers and attorneys from Marks & Clerk have been mentioned by name in the latest Legal 500 UK commentary for their standout contribution to their respective practices, but here at Scran & sIPs™ Towers, we were especially thrilled to see Jason Chester and Noëlle Pearson’s names riding high in the rankings!
As ever, we would like to take this opportunity to thank our clients for their recognition of the firm’s continued efforts and extend our warmest congratulations to Jason and Noëlle for their achievements.
Hot on the heels of our success in The Legal 500, our Editor Jason was also recognised by Managing IP as a Rising Star in their rankings! The special edition of the publication, which is produced by the IP STARS research team, recognises some of the best up-and-coming intellectual property practitioners who have contributed to the success of their firms and clients.
And finally, just as we were going to 'press', we have just been notified of our recognition by The Times as one of the UK's Best Law Firms in their 2023 guide! The annual report, produced in co-operation with Statista, recognises the the best lawyers for business, public and private-client law in this list of the top 250 legal practices in England and Wales plus Scotland's top 20 — all chosen by lawyers.
To learn more about Jason, Noëlle and the award winning expertise we are able to offer the Food & Drink industry, click here.
As part of the Commonwealth, Australia has been an important export destination for British goods. British exports to Australia have amounted to £4.1 billion per year and are expected to grow with a new free trade deal having been struck following Brexit. The UK-Australia free trade agreement concluded in December 2021 is expected to boost British exports with many food and drinks products having been subjected to up to 20% tariffs previously.
The national register of trade marks in Australia was established in 1906 and was based on the Commonwealth Trade Marks Act 1905.
Prior to that, each colony or state had passed their own legislation to regulate trade marks. The Commonwealth Trade Marks Act 1905 largely mirrored contemporary UK legislation, which, like Australian laws, had its roots in the common law i.e. law established through precedent. The Trade Marks Act 1955 (Cth) followed and again largely mirrored the UK’s Trade Marks Act 1938, although some key differences had begun to emerge.
The contemporary Australian trade mark system is governed by the Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth). The latest Act was necessary to address a number of issues, including Australia’s compliance with its obligations under the the TRIPS Agreement. At the same time, UK trade marks law was increasingly becoming more harmonised with European trade mark law. As a result, current Australian legislation has evolved in a way that makes it unique and distinct from current UK legislation and the legislation of other Commonwealth states, although many similarities remain.
Top 10 trade marks in Australia. In 2014, IP Australia asked a panel of Australian personalities to rank top national trade marks and the Australian public were asked to vote for the top 10 favourite Australian trade marks
Country in focus: Australia (cont'd)
Appeals against decisions, directions or orders of the Registrar fall within the jurisdiction of the Federal Court of Australia, the Federal Circuit and Family Court of Australia, and the High Court. Other prescribed courts, such as the Supreme Courts of a State, of the Australian Capital Territory, of the Northern Territory, and of Norfolk Island have cross-vested jurisdiction over actions dealing with the infringement of a trade mark, or applications for relief from unjustified threats.
Registered and unregistered rights
In Australia, like in the UK, legal protection is provided to registered trade marks, as well as unregistered rights under the common law tort of “passing off” and under the Competition and Consumer Act 2010 (Cth). As such, Australia technically operates as a first-to-use jurisdiction. There are, however, many reasons why a registered trade mark is preferable to relying on unregistered rights.
Although unregistered rights can be enforced, the owner of such rights will need to demonstrate the presence of three vital elements a) a misrepresentation on the part of the offending party, b) that the owner of brand being enforced possesses a reputation in that brand in the same geographical area and an ongoing market presence (this can be particularly difficult for international companies), and c) damage to that reputation i.e. a tarnishment of the brand, or that damage to reputation is likely to occur, due to the passing off.
On the other hand, the registration of a trade mark provides the owner with an exclusive right. For registry proceedings, the subsistence of the trade mark does not have to be proven – evidence of the existence of a registration is sufficient - and it can be enforced against third party uses which are likely to cause confusion or take advantage of the mark’s reputation even if there has been no misrepresentation on the part of the offender.
A registered trade mark can also provide protection before it is actually used in commerce. If the trade mark has been registered for more than three years, it may, however, be necessary to provide evidence of use and the registration could be vulnerable to cancellation on the grounds of non-use. The exception is for any marks filed before 24 February 2019 – for such applications, the trade mark needs to have been registered for at least 5 years before it becomes vulnerable to cancellation on grounds of non-use.
Notwithstanding third party attacks e.g. due to non-use, Australian trade marks can potentially “live” forever – they simply have to be renewed every 10 years as calculated from the filing date.
Furthermore, having a trade mark registration is a requirement to file a Notice of Objection with the Australian Border Force to seize infringing goods – although, in principle, copyright can also be relied upon.
Examination of trade mark applications is carried out by IP Australia. Examination is carried out in respect of both:
absolute grounds - i.e. that the sign applied for is capable of functioning as a trade mark to distinguish the commercial origin of goods and/or services for which protection is sought from other undertakings, and ensuring that the other legislative requirements in Australia are met; and
relative grounds – i.e. that the trade mark would not be liable to cause confusion with any earlier registered trade marks.
If absolute or relative grounds objections are raised, the applicant will be given 15 months from the date of the adverse report to address any problems with the application and to place the application in order for acceptance. Where the Australian trade mark practice differs from that of the UK and the EU practice is that the 15 month deadline is intended to give the applicant
Country in focus: Australia (cont'd)
sufficient time to set the application in good order for registration by filing a response, AND for the examiner to have sufficient time to consider the response. Therefore, the deadline is an acceptance deadline, not a response deadline. Extensions are available, if required, but must be requested separately.
If an objection is raised on either absolute or relative grounds, it can potentially be possible to overcome it by filing evidence of use demonstrating that the mark applied for is registrable and/or predates an earlier registration.
In scenarios involving third party rights, IP Australia can also accept evidence of honest concurrent use, prior continuous use, or written consent from the owner of the earlier trade mark. Furthermore, deferment can be requested when cited third party rights are either pending applications, potentially subject to removal (e.g. due to non-renewal or a pending court action), or if the applicant intends to demonstrate honest concurrent or prior use of their trade mark.
Publication and oppositions
Once the trade mark application is accepted by IP Australia, it will be published for opposition purposes in the Australian Official Journal of Trade Marks. If a party intends to oppose an application, they must file an opposition within two months of the date of publication. A Notice of Intention to Oppose has to be filed and the relevant opposition fee has to be paid (currently AUD 250 or roughly £140). Within one month of filing the Notice of Intention to Oppose, a Statement of Grounds and Particulars must be filed to complete the Notice of Opposition.
If the Statement of Grounds and Particulars is not filed, the application will proceed to registration.
In certain exceptional circumstances, an extension to file a Notice of Intention to Oppose or the Statement of Grounds and Particulars can be obtained.
If a trade mark is opposed, a Notice of Intention to Defend has to be filed by the applicant within one month of being served with the Statement of Grounds and Particulars. If a Notice of Intention to Defend is filed, the parties to the opposition will be given the opportunity to file Evidence in Support of their respective positions.