How intellectual property issues are affecting retailersPrint publication
The courts have decided a number of high profile cases this summer in which retailers have been involved in intellectual property disputes. The issues in dispute have been diverse but together they show how integral intellectual property is to retailers’ operations and how fine the margins can be between what is acceptable practice and what is not.
Some of the cases decided over recent months include:
- Copycat packaging. In proceedings brought against it by the Saucy Fish Company for trade mark infringement and passing off, Aldi has reportedly agreed to an injunction requiring it to remove the packaging of its own brand fish and sauce products, which are alleged to resemble the Saucy Fish Company’s own packaging.
- Copycat packaging. Aldi has successfully defended a claim for passing off. The claimant argued that the combination of the name of Aldi’s “Miracle Oil” hair product, together with its “get-up” passed off its Moroccanoil hair product. The Intellectual Property Enterprise Court considered that there had been no misrepresentation by Aldi as the evidence did not support a conclusion that members of the public were likely to believe the two products were the same or came from the same manufacturer or were otherwise linked in trade. 
- Fashion brands. Victoria’s Secret has lost a trade mark infringement claim brought by Thomas Pink Limited regarding the use of the trade mark PINK. Victoria’s Secret opened a number of retail outlets in Europe from which it sold a range of products including fragrances, toiletries, bags and clothing on which appeared the work PINK. PINK had been registered as a Community and UK trade mark by the claimant who successfully brought an action for trade mark infringement. 
- Fashion designs. Dunnes Stores has lost its long-running dispute with Karen Millen in the Court of Justice of the European Union in an unregistered Community design case. Dunnes Stores did not deny copying Karen Millen’s designs but argued the designs lacked individual character. The ruling, which will be welcomed by the fashion industry, essentially means that fashion designs that are based on an existing design which is then amalgamated with another design to create a new design is capable of having individual character. 
- Store lay out. The Court of Justice has ruled that a three-dimensional representation of the layout of a retail store is, in principle, capable of registration as a trade mark for goods and services, including of services that do not form an integral part of the offer for the sale of those goods, such as product demonstration seminars. 
- Retailers’ search engines. We have written separately on the High Court judgment concerning Amazon’s search engine and the use of a trade mark entered into the search engine bringing up competing goods.
The variety of the claims outlined above – designs, trade marks and passing off, in particular – give a flavour of the intellectual property issues that retailers may face. Other intellectual property issues that retailers are facing, and which at some stage may require resolution in the courts are:
- comparative advertising and the use of a competitor’s trade marks
- the extension of gtlDs to include e.g. .clothing and .shop
- parody accounts on social media (or other forms of brand disparagement on social media)
- stopping competitors from using your brand as an Adword.
If your business is facing any of the intellectual property issues outlined in this article, or if you would like to ask any questions of any of the subjects mentioned in this note, or if you have any concerns about your trade mark portfolio, then please drop Alan Harper a line, contact details below.
 Moroccanoil Israel Ltd v Aldi Stores  EWHC 1686 (IPEC)
 Thomas Pink Ltd v Victoria’s Secret UK Ltd  EWHC 2631 (Ch)
 Karen Millen Fashions Ltd v Dunnes Stores, Case C-345/13
 Apple Inc v Deutsches Patent- und Merkenamt, Case C 421/13