Logos and No-gos: the best of 2013

In this briefing, we provide our usual round-up of the key IP developments last year, focusing on trade marks, passing off, copyright and defamation.

Trade marks

Interflora Inc v Marks and Spencer Plc

The High Court held, following guidance provided by the CJEU, that M&S had infringed Interflora's trade mark by its use of Google AdWords as the essential function (of guaranteeing origin) of Interflora's trade mark had been affected. This was on the basis that:

  1. average well-informed internet users did not know how Google AdWords operate;
  2. the average internet user is not generally aware that M&S's flower service is not part of the Interflora network and this was not made clear in the advert; and
  3. the particular nature of the Interflora network meant that it was plausible that there could be a connection between Interflora and M&S. During this long running dispute, the High Court and Court of Appeal were asked twice (most recently in February 2013) by Interflora to adduce survey evidence. Whilst the High Court permitted the survey evidence on the basis that it would likely be of "some value", the Court of Appeal rejected this decision and instead held that, unless the survey evidence is of "real value" and its costs can be justified, it is very unlikely that consumer surveys will now be accepted.

Specsavers International Healthcare Limited & Ors v Asda Stores Ltd

The CJEU provided preliminary observations in July that Specsavers had made genuine use of its wordless overlapping ovals trade mark registration even when the SPECSAVERS word mark was superimposed over the ovals. Further, as Specsavers had used its wordless ovals trade mark in green (whilst not registered in that colour), the fact that Asda had also used green to represent its allegedly infringing sign should be taken into account when making a global assessment of the likelihood of confusion or unfair advantage.

Mattel, Inc & Ors v Zynga Inc

Fundamental flaws in Mattel's consumer surveys, its longstanding awareness of Zynga's use of the sign "SCRAMBLE" and its attempts to license the Scramble game concept from Zynga, persuaded the High Court that there was no infringement by Zynga of Mattel's "SCRABBLE" and "SCRAMBLE" trade marks, nor was there passing off.

Passing Off

Fenty and others v Arcadia Group and another

Rihanna successfully sued Topshop for passing off for its unauthorised use of a photograph of the singer on a T-shirt. The High Court held that customers who purchased the T-shirt did so specifically because they believed it was official merchandise that had been endorsed by the singer (in particular, because Topshop often collaborated with artists).


Public Relations Consultants Association Limited v The Newspaper Licensing Agency

The Supreme Court referred questions to the CJEU as to whether the requirements of Article 5.1 of the 2001 Copyright Directive are satisfied where an end-user of a news report provider makes temporary copies of protected works on the provider's website, or the internet cache, as an incidental consequence of his/her use of a computer to view the relevant material.

SAS Institute Inc v World Programming Limited

The Court of Appeal confirmed that the functionality of a computer program is an idea, not a form of expression, and as such is not subject to copyright protection.


The Defamation Act 2013

The Defamation Act 2013 came into force on 1 January 2014 introducing, amongst other provisions, a requirement that complainants must now prove "serious harm" (or "serious financial loss" in the case of a company) caused (or likely to be caused) to the complainant's reputation by the statement in question.