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We're going to be bringing you news and insights from intellectual property law, as well as interesting cases and developments happening here at Downing IP.
Racing driving and cooking, aerial photography and punting – these are just some of the pursuits that keep the team at Downing IP busy outside of the office. We're very pleased to introduce you to Michael, Martin, and Ed.
Founder Partner Michael Downing ditches his suit and tie in exchange for a helmet and racing suit at weekends, in order to put his car through its paces on racing tracks up and down the country. When not pursuing a racing trophy, Michael takes his work at Downing IP just as seriously, relishing taking on the often-difficult challenges his clients experience regarding intellectual property. Michael has over 20 years experience, which has taught him that a thoroughly prepared, incisive and rigorous service is the best protection against protracted debate.
Martin MacLean enjoys aerial photography and cartography, feeding the teenage friends of his daughters, shouting (at the aforementioned teenage daughters, we think), and skiffing (for the uninitiated, this means rowing, or more correctly sculling, a Thames skiff) as well as punting on the river Thames. Martin is a European Patent Attorney and has a wide experience of providing patent, trademark, copyright and trademark support to industrial clients. Martin can also add experienced Army Officer to his impressive CV.
Last but by no means least, Ed Clarke joined Downing IP this year after twelve years in the business and is a European Patent Attorney. Ed likes to cook, but admits that he has had to take up jogging in order to mitigate the effects of his cooking! Ed likes to work on a wide range of technologies, from mechanical inventions, to electronics and computer software. When he's not in the office, you can find Ed heading to the nearest airport in order to indulge in his other passion, travelling to far-flung corners of the globe.
It's our aim with this newsletter to keep you informed on latest developments and insights into intellectual property. This month: Lego's latest victory in the European Court of Justice.
Toymaker Lego is celebrating the end of a three-year battle to win trademark protection on their minifigures. Since 2012, Lancashire-based toy manufacturer Best-Lock has sought to deny Lego's trademark protection over its much-loved creations, on the basis that they serve a technical function.
Lego has previously had a hard time with its trademarks in the European courts, after losing, in 2010, to the competing Mega-Bloks brand – resulting in Lego losing protection for its brick shapes. Best-Lock manufacture Lego-compatible bricks, and brought this action on a similar basis, hoping to rule out protection for the mini-figures as well.
However, in this latest case, the European Court of Justice ruled that the toys’ characteristics, such as their heads, bodies, arms and legs, did not have a technical function, and upheld Lego's trademark. The Court commented that the evidence put before them was not enough to establish a technical function for the interlocking holes in the figures’ feet and the protrusion on their heads, let alone the human-style shape of the figure.
Best-Lock says it will launch a further legal appeal against Lego’s trademark.
This shows the importance of drafting good evidence in trademark cases. Courts cannot take things as read, even where they might be plainly obvious to a child (such as the fact that the holes on the minifigure’s leg fit onto other Lego bricks!), so these things need to be set out clearly in the evidence. This isn’t always an easy step – you need to develop a clear mental picture of what decision you want from the Court at an early stage in the case before you can work out what gap the evidence needs to bridge.
This aspect of the Lego case bears similarity to one we took on recently where the trademarks of a client's business needed to be put on a secure legal footing. After an initial rejection of the trademark application, which had been submitted independently by the client, we were brought on board. We put in place two additional trademark applications reflecting the distinctive part of the client’s branding. This involved presenting acquired distinctiveness evidence to an initially sceptical examiner. We were successful in arguing that the application should be accepted, and the client now has properly defined and protected trademarks for his business.
For more information or to chat about any of the topics raised in this newsletters, call us now on 01494 422626.
