The past 12 months have seen some interesting developments in several distinct areas of intellectual property law. Among the most important developments were emerging trade mark protection issues for well-known literary characters coming out of copyright. There was also a surge of trade mark litigation regarding the area of copycat advertising and packaging. Head of Intellectual Property, Gerard Kelly looks back on some popular insights from our award-winning team on these developments.
Lidl and Tesco Caught in a Vicious Circle
One of the biggest developments of the year was the English decision in Lidl v Tesco. This was a poacher-come-game-keeper enforcement action in which Lidl was successful in enforcing its well-known Lidl yellow and blue logo mark, under both copyright and trade mark infringement. This decision was underpinned by the fact that Lidl’s reputation was taken unfair advantage of by Tesco, otherwise known as “free riding”. We should now see an uptake in this type of trade mark enforcement action for reputable marks. We are likely to see this especially in the area of copycat packing. In addition, the decision in the Thatcher’s Cider case against Aldi, which was heard by the High Court in England in November 2023, will be persuasive authority in Ireland.
Read the full article: Lidl and Tesco Caught in a Vicious Circle
The Expiry of Copyright of Well-Known Characters
Another significant development is the phenomena of comic book and other famous literary characters coming out of copyright protection. This has prompted rightsowners to seek trade mark protection in order to continue to commercialise and enforce their IP rights in these characters.
One such example is the EU General Court decision that the Batman logo can be registered as a trade mark, as it is distinctive and represents a commercial origin associated with DC Comics. This registration is attributed to its commercial origin rather than having a purely literary/artistic origin. We are likely to see an uptake in this type of application as characters come out of copyright protection, with the benefit of trade mark protection being potentially unlimited subject to renewal.
Read the full article: The Expiry of Copyright of Well-Known Characters
Enforcing Breach of Confidence Claims in Ireland
A further development in 2023 is an uptick in breach of confidence actions against former employees or consultants. We look at a recent example of a case taken by Crocs in the US against a former employee for misappropriation of trade secrets. We also provide some practical tips for companies when seeking to protect and enforce their trade secrets in Ireland.
Read the full article: Enforcing Breach of Confidence Claims in Ireland
What’s in store in 2024 – top tips
Based on the developments which occurred in the past 12 months, our main tips for rightsowners are to ensure that their trade mark portfolio includes:
- trade marks for product packaging to maximise the potential for protection against copycat packaging and advertising. This also ensures that rightowners don’t have to rely on unregistered rights like passing-off, and
- Potential trade mark protection for any works that might be coming out of copyright protection so that IP rights can still exist following copyright expiry.
In addition, in the area of breach of confidence, it is important that clients remain vigilant in putting in place appropriate steps to protect confidential information and trade secrets. This is particularly crucial to cover off the risks posed by employees and contractors moving on from the business and working for competitors.
For more information and expert legal advice on how best to protect your intellectual property rights, please contact a member of our award-winning Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.
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