Sweet treats and frightful fancy dress: Halloween IP update

By Vanessa Harrow,

With Halloween ‘creeping’ up on us, we’ve rounded up some ‘trick-y' and ‘sweet’ case law updates to get us in the mood for the upcoming spooky festivities.

Treat for sweet fans

In 1990, Mars attempted to unify the global brand name of one its products and renamed, in the UK, the then-known Marathon bar to Snickers. Nearly 30 years later, Mars has good news for sweet lovers, as it recently announced the return of the product to its roots in the UK, by reusing the Marathon name for a limited time. With no anticipated change in the product itself, the retro renaming will celebrate 85 years of Mars making chocolate in the UK, with Marathon bars being made available for three months from limited UK retail stores.

Despite the apparent lack of use since the renaming in the ‘90s, the UK trademark register shows a number of registered rights owned by Mars, for the ‘MARATHON’ mark in Class 30, with the oldest subsisting registration dating from 1967 and the most recent from 2008. UK and EU law, like many jurisdictions throughout the world, applies a use requirement to registered trademarks and if a registration is not put to genuine use after an initial five-year grace period, it may be vulnerable to cancellation. All of Mars' ‘MARATHON’ registrations are now subject to this use requirement and are therefore potentially vulnerable.

This is a good example of a situation where a historic brand name may still be considered to have consumer recognition and goodwill, but where the registered rights for that brand may be vulnerable to cancellation due to lack of use. Historic brands can be valuable to a business despite the risk of cancellation, and owners of the registered rights may want to take steps to help protect this value. Whether the proposed use by Mars would be considered sufficient to demonstrate genuine use for the purposes of maintaining a registration will depend on a number of factors. However, launching limited edition products using historic brand names can be a good way to help protect against non-use vulnerability, providing such use is genuine and not merely token.

This is something to keep in mind when reviewing your portfolio of rights – just because a trademark may no longer be in use, does not necessarily mean you should let the registration lapse. Be sure to consider whether there may be long-lasting value in the brand and scope for use in the future, even if that use may only be limited. Maintaining registered rights which are not in use carries risks of non-use attack, but steps can be taken to mitigate those risks.

Regardless of the motivation from Mars, for UK consumers with a “soft spot” for nostalgia, the limited relaunch of Marathon is sure to be a ‘sweet treat’ indeed.

Frightful fancy dress fakes

In a recent case which proved to be ‘tricky’, proactive action led to success for trademark owners and trading standards and a ‘nightmare’ for a trademark infringer in the UK. Despite having her account on Etsy closed in October 2017 due to selling products which infringed trademark rights, Michelea Mariner, the owner of UK based fancy dress business, continued in her disregard for IP rights by selling infringing products through other channels.

Following a complaint to UK Trading Standards, officers made test purchases, seized nearly 200 items and discovered that most of the products being sold were illegal copies of costumes, bearing trademarks such as Superwoman, Snow White, Supergirl, Alice in Wonderland, Harry Potter and Batman, without permission of the trademark owners.

In addition to civil remedies for infringement of trademarks, the Trade Marks Act 1994 allows for criminal prosecution. In this case, Ms. Mariner pleaded guilty to a number of offences and was given a three-year conditional discharge, as well as being ordered to pay a Proceeds of Crime Act confiscation order for £65,000 and £1,500 towards prosecution costs.

As many brand owners will already be aware, protection of your trademarks is just one part of having a strong IP strategy. Effective monitoring and enforcement action is key to ensuring the value of your brand and IP rights are not diminished. From innocent conflicts to reckless infringers, brand owners should ensure they have mechanisms in place to identify issues and, when identified, consider the various options for recourse which may be available. Watching services, customs notices and an effective anti-counterfeiting policy are, for many businesses, vital elements of an effective IP strategy.

As the owner of a fancy dress business, Ms. Mariner failed to disguise her infringing activities and, with the help of trading standards, another infringer has been removed from the market.

Multimedia marks no longer mythical

On 1 January 1876, the first ever UK trademark was filed under trademark number UK00000000001, which is still a registered trademark and one that Novagraaf is proud to be recorded as the representative of record. However, more than 140 years later, the trademark landscape has come a long way. 2019 marks another significant step for trademarks as a change in law led to the first multimedia mark being registered in the UK.

In the UK and EU, the definition of a trademark previously included the requirement that a trademark be ‘capable of graphic representation’. Changes to legislation have now removed this requirement, enabling IP owners to more easily register non-traditional signs (such as shapes, sounds, smells, holograms and multimedia), so long as they can be represented in a manner that is ‘clear and precise’, and fulfil the general requirement of distinctiveness.

With similar changes throughout the EU, Novagraaf is proud to have been announced as the very first applicant for registration of a multimedia mark in the Benelux.

While there are still challenges that need to be overcome in terms of clarifying the subjective and objective parameters for non-traditional trademark registrations, this is a momentous development for brand owners.

As businesses and brands continue to develop innovative offerings for fast-changing markets, the changes in law recognise that trademarks are also becoming increasingly innovative and it goes someway to ensuring there is an appropriate legal landscape for protecting the investment in trademarks.

Creepy IP

Please do check out the USPTO's annual #CreepyIP on social media platforms Facebook, Twitter and Instagram. This social media hashtag was started by the USPTO eight years ago with the aim of educating the public about the importance of IP in their everyday lives. The USPTO uses the hashtag to explore the deepest, darkest corners of their archives to reveal a number of creepy Halloween-appropriate patents and trademarks.

For further information or support on any of the topics covered in this article, speak to your Novagraaf attorney or contact us below.

Vanessa Harrow is a Trademark Attorney in Novagraaf’s Manchester office.

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