Image for illustrative purposes only

Birkenstock’s sandals have been around for decades and undergone something of a renaissance in recent years, featuring on catwalks and the Barbie movie.  Founded in Germany in the 18th century, the company saw a surge in popularity in the 1970’s following their introduction into the USA.

The Birkenstock name and logos, like most established footwear brands, are protected by numerous trade mark registrations throughout the world.  Trade mark registrations are powerful intellectual property rights as, if they remain in use and are continuously renewed, the rights can remain in force indefinitely.

Protecting Footwear Designs 

The footwear itself can be protected by registered designs, another form of intellectual property.  Registered designs are a useful form of protection for the appearance of products that are novel and have individual character. Registered designs protect against unauthorised selling of products with the same appearance or give the same overall impression as the protected design, and last up to 25 years from registration in Europe and the UK. 

Owing to the company’s recent success, Birkenstock have suffered from copycat versions of their sandals being sold, particularly through online marketplaces.  As the copiers are careful not to use the Birkenstock brand or anything similar to their registered trade marks, Birkenstock have had difficulty stopping copies of their older designs, as the relevant design rights have expired.

Birkenstock’s Legal Challenge and the Role of Copyright

Recently, Birkenstock failed in their attempt in the German courts to prevent several manufacturers from copying their iconic design by claiming that copyright in their sandal design was being infringed.  Copyright is an automatic right which subsists in an original artistic, dramatic or musical work.  Birkenstock’s claim therefore relied on being able to convince the German court that their sandals were artistic works and were eligible for copyright protection.  

Ultimately, Birkenstock were unsuccessful, with the German court ruling that “pure craftsmanship using formal design elements” was not enough to qualify the design as an artistic work. 

While the ruling prevented Birkenstock from relying on copyright to protect their designs, other forms of protection may still be available. For example, one further form of protection available to Birkenstock may be the registration of some of their recognisable designs as three-dimensional trade marks.

This case shows that companies and individuals may rely on a variety of intellectual property rights to protect their designs, and that designers should consider the whole range of protection available to them. If you would like cost effective and pragmatic advice on how to protect your designs, products, and ideas, please contact one of our attorneys.

The election of US President Donald Trump has already provided many high-profile developments in his short time in office. Among the wide-ranging measures that have been introduced are policy changes that may impact the performance and operation of the US Patent & Trademark Office (USPTO), and subsequently may affect the prosecution of US patent and trade mark applications by both domestic and international applicants. 

In this article we will discuss the two most relevant actions: firstly, the order for federal workers, including USPTO administrators and examiners, to return to work at the office; and secondly, a freeze on the recruitment of USPTO staff. 

What is the USPTO?

The United States Patent and Trademark Office (USPTO) is the federal agency responsible for granting patents and registering trademarks in the United States. The USPTO operates within the department of commerce, examining patent applications to explore whether inventions meet the requirements for IP protection.  The agency also provides numerous resources for those within the intellectual property space, such as inventors and patent attorneys, providing guidance alongside a public accessible database of existing patents and trademarks.

Trump Policy: Ending Remote Work at the USPTO

Regarding the request for existing staff to return to work in the office, while the headlines suggest that this is relevant across all Federal agencies, including the USPTO, there is the possibility of agency heads making “exemptions as they deem necessary”.  However, the emphasis is still on the agency heads to terminate remote working where possible. In a memorandum issued by the White House’s Office of Personnel Management, it was stated that the USPTO no longer permits regular and recurring remote working and therefore employees should work full-time at their respective work sites or offices. This does not supersede existing collective bargaining agreements but there is an obligation on the agency heads that these collective bargaining agreements should be brought into compliance with the new requirement to work in the office where possible.  

This could have a particular impact at the USPTO because at present, over 90% of employees have a remote working agreement, meaning that around 9,000 examiners work remotely full-time within the US.  Furthermore, as a result of this, the available space at the USPTO offices has been significantly reduced over previous years, accelerated by the Covid-19 pandemic, such that if the employees do return to office-based work there will be insufficient space for these employees. Therefore, there is a concern that the USPTO will be unable to retain all employees if they are all forced to return to office-based work under the action.   

USPTO Recruitment Freeze Following Trump Election

The USPTO are aiming to reduce the prosecution period for an application to obtain patent protection by positively recruiting new staff, however this recruitment looks to be halted as a result of a freeze ordered by President Trump on the filling of any Federal civilian position that is vacant as of 20 January 2025. This slowdown on patent prosecution may impact the US economy, as the USPTO itself estimated in 2019 that industries that intensely use intellectual property, including the filing of US patents, made up 41% of domestic economic activity and directly supported around 33% of all US employment. It remains to be seen if the reduced rate of patent prosecution, and therefore the rate at which patents grant in the US, will affect the productivity of these industries. 

Trump Administration’s New USPTO Leadership and Policy Direction

In a further indication of President Trump’s desire for change, he has appointed a new deputy director, without confirmation from the US Senate.  The new Deputy Undersecretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Coke Morgan Stewart, will likely lead the USPTO for up to 300 days and has full authority to implement the new instructions regarding ordering the return to working in the office and the freeze of recruitment. This could be a signal that the new Trump administration plans to directly affect intellectual property policy directly and with immediate effect.   

In summary therefore, initially, it is likely that there may be some further delay in the granting of patent applications by the USPTO while the impact of requiring existing examiners to be office-based is implemented.  It is likely that only after this exercise has been performed, will the retention of existing staff be assessed and then a decision will have to be made with regard to continuing recruitment, affecting the rate of patent, trade mark and design prosecution in the interim.

There’s no point in creating a fantastic business if you don’t do your best to defend its integrity. Many entrepreneurs focus on protecting material items while overlooking their intangible assets which are equally as important, if not more.

Your brand and logo are elements that customers instantly connect with. It’s the optimal way to set yourself apart from competitors and build a long-lasting reputation amongst your target audience.

If you’re interested in safeguarding your intellectual property, you’ll need to learn how to register a trade mark in the UK.

What types of assets can you trade mark in the UK?

In the UK, you can register a range of distinctive brand assets, including:

• Slogans or product names
• Logos
• Sounds or music
• Colours

Why register your trade mark in the UK?

There are several reasons why entrepreneurs may decide to trade mark their assets; however, the primary motive is to seek legal protection. Once you complete the trade mark registration process, you have exclusive rights to those brand assets.

In turn, this can help companies achieve greater brand recognition or market expansion by preventing others from using similar marks. It also adds value to businesses and makes it easier for owners to seek legal action against infringement.

What does the trade mark application process entail?

In the UK, all trade marks are registered with the Intellectual Property Office (IPO). You can carry out this process online or via paper forms. To begin the trade mark registration process, you’ll need to:

Select a strong trade mark

Before you begin the application process, make sure you’ve got a strong brand asset that qualifies as a trademark.  This means that the asset is distinctive and not simply descriptive of the goods and services it is going to be used for.

Conduct a trade mark search

Once you know which assets you’d like to trademark, carry out a clearance search to ensure your intended mark is not already in use.

Fill in a trade mark application

As part of your application, you will need to specify which trade mark classes are relevant to your goods or services. Be as thorough as possible as you can’t expand the specification at a later date.

Wait for approval and publication

The IPO must examine your trademark and ensure it meets the necessary requirements. Once approved, your application will be published in the UK Trade Marks Journal, allowing third parties to oppose the registration if they believe it conflicts with their rights.

Secure trade mark registration

If there are no oppositions during the publication period, or if oppositions are successfully overcome, you will receive a certificate of registration for your trade mark.

How long does the trademark registration process take?

The length of the trademark registration process depends on various factors. For example, you could experience delays if the examiner raises objections, or another trade mark holder opposes your application.

If there are no complications along the way, the application process should take around four months which includes the two month publication/opposition period.

How much does the trade mark application process cost?

The official fees for a  trade mark application for a single class of goods and services in the UK costs £170 to register online and £200 to register by post. For each additional class, you must pay an additional fee of £50.  If you decide to get professional help in registering your trade mark there will be additional fees to pay for the advice and management of your trade marks.

Once you submit your application you cannot make any significant changes and fees are non-refundable, so it’s important to go over the details with great attention to detail.

If you’re not sure whether your application will be successful, you can use the IPO’s Right Start service. This service provides a report which tells you whether your trade mark meets the rules and costs £100 plus £50 for each additional class. If you decide to go ahead with the application, you simply pay the outstanding amount.

How long does a trademark last in the UK?

Once you’ve successfully registered your trademark in the UK, you will own exclusive rights for ten years. After this date, you have the option to renew your trademark, but you must pay your renewal fees on time. Your renewal fees will depend on the number of classes your trade mark is registered under.

Use it, don’t lose it!

Once a US trade mark is registered, rights owners of the US TM registration have to prove they are actively using the mark after registration by filing what is known as a Section 8: Declaration of Use and/or Excusable Non-use document with the US Patent and Trade Mark Office (US PTO) at the appropriate time.

The purpose of this principal is to avoid the US Trade Marks Register becoming saturated with marks that owners have stopped using, or have no intention of using, and these dormant marks could restrict legitimate competition.

Failure by rights holders to prove they are actively using their marks during the registration period could result in the mark being cancelled.  Thus, the rights holder would have to reapply for the mark and risk facing opposition from another company or third parties who have obtained a similar mark in the meantime.

Relevant maintenance documents and when to file

Section 8 Declaration of Use and/or Excusable Non-Use:

Between the fifth and sixth year following registration of the mark, and the tenth and every ten years thereafter, the Section 8 Declaration must be filed.

A grace period of 6 months following the deadline is available with payment of additional fees.

The declaration must include a sworn statement that the trade mark is still in use and be signed by the rights owner (or an authorised representative/US trade mark attorney). Specimens of use for the mark in all classes covered by the registration must accompany the declaration, together with a list of the goods and services on which the mark is still in use.  Those goods and services that are no longer in use must be deleted from the registration.

If the specimens provided are not acceptable, the Declaration of Use will be rejected.

For this reason, it is imperative that evidence of use is gathered continually throughout the life of the US trade mark registration by keeping detailed records of trade marks in use in the US.  Suitable evidence should include relevant dates, locations, invoices, advertisements, packaging and/or links to websites where the mark is in use.

The USPTO undertakes audits regularly of Declaration of Use filings to make sure the mark is genuinely being use in all classes covered by the registration and it is therefore important to have the evidence readily available.

Excusable Non-Use:

An Excusable Non-Use declaration should include the date of last use and the approximate date when use is expected to restart, together with a list of goods and services for which the mark is not in use, detailed reasons for non-use and steps that are being taken to resume use.

Examples that might be considered as excusable non-use are events such as natural disasters, import/export embargoes or medical emergencies of key personnel.

Declaration of Use (Section 8) and Section 15 Claim of Non-contestability:

It is recommended that rights owners file a Section 15 Claim of Non-contestability with the Section 8 Declaration of Use as it adds an extra layer of protection at the USPTO.

It consists of a statement that no legal decisions adverse to the owners claim of ownership have been made of the trade mark or to the owners right to register and maintain the mark. Confirmation that no pending legal proceedings at the US PTO or any other court must also be made.

Once a Claim of Non-Contestability has been filed and accepted by the USPTO, the mark cannot be contested by another entity at a future date, making this a useful tactic.

Section 9 Trade Mark Renewal:

Section 9 Trade Mark Renewal is filed every 10 years.  It corresponds with the second filing of the Section 8 Declaration of Use and it protects against cancellation of the trade mark.  If the renewal is not filed before the deadline or within the 6 month grace period, the US trade mark will be abandoned.

Section 71 Declaration of Use for Filings under the Madrid Protocol:

To maintain a registered extension of protection in the US under a Madrid Protocol registration, a Section 71 Declaration of Use must be filed between the fifth and sixth year following the grant of the extension of protection.  It must then be filed every ten years thereafter to maintain the extension of protection.  A grace period of 6 months following the deadline is available with payment of additional fees.

Working with a Trade Mark attorney to maintain your registration

Maintaining a US registration is complex and retaining ownership of the mark depends on timely and accurate filings.  At Bailey Walsh, we make sure our clients have all the relevant dates diarised and offer help and advice on appropriate evidence of use that should be gathered throughout the life of the US trade mark, for submission to the USPTO at the appropriate time.

We also have the benefit of long standing relationships with expert trade mark attorneys in the US and if you are considering filing a US trade mark application, or if you already have a registration you would like us to take onto our records, please contact one of our qualified attorneys.

The Court of Justice of the European Union (CJEU) – Europe’s highest court – has recently delivered a judgment that will provide a boost to carmakers over manufacturers of “unofficial”/“non-original” spare parts.  The dispute in question originated in Poland, where a spare part retailer (“GQ”) was selling replacement radiator grilles for old Audi car models from the 1980s and 1990s.  Specifically, the grilles were provided with an element which was designed to receive an emblem depicting the “four rings” logo of Audi.

Was the Audi-style grille considered a trade mark infringement?

The case was referred to the CJEU asking the question whether the provision of an element designed to enable the attachment of an emblem which is protected by a registered trade mark itself constitutes registered trade mark infringement.

Audi asserted that the provision of a grille having the element in question, which is identical with or similar to Audi’s registered trade mark was an infringement of their trade mark rights.  GQ contested the claims and asserted that it was a common practice of motor vehicle manufacturers whereby they do not object to the sale of non-original radiator grilles incorporating an element designed for the attachment of the emblem representing their brand.

Ultimately, the CJEU determined that the element provided to attach the Audi emblem was sufficiently similar to the registered trade mark that it would cause confusion and lead consumers to believe that the grilles were at least commercially linked with Audi when the fact is they weren’t.  Consequently, there was found to be registered trade mark infringement.

Impact on the wider aftermarket industry

The wider implications of this decision are that manufacturers and retailers of “non-original” spare parts must take care not to replicate a sign or emblem which is the same or similar to that of a registered trade mark, in an attempt to resemble the original part as closely as possible.  In this instance, the defendant strayed too far – in practice, could they not have provided an element or elements for the attachment of Audi’s emblem that did not so closely resemble the mark itself?

For more information on Trade Marks, or if you’d like to speak to an expert about your case please feel free to get in touch here.

The EUIPO has ruled on whether Prada can protect their triangle pattern, referred to by Prada themselves as being their “iconic Triangle”. The EUIPO Board of Appeal has ruled that the pattern would not be inherently distinctive, but what does this mean?

Some background to the Prada Triangle case

Prada applied to register its triangle pattern (depicted below) in April 2022 as an EU trade mark (EUTM Application No 018683223) in relation to the goods and services in Classes 3, 9, 14, 16, 18, 20, 24, 25, 27, 28, 35, which includes everything from non-medicated cosmetics and toiletry preparations to clothing and video games.

The Examiner prosecuting the application raised the objection that the trade mark lacked inherent distinctiveness pursuant to Article 7(1)(b) EUTMR for the majority of the goods and services applied for.

Prada argued that the iconic upside-down isosceles triangles had clearly become their iconic signature; they had already successfully registered “Triangle” figurative trade marks before with the EUIPO; and that the pattern had been extensively used and promoted. 

The case was refused by the Examiner for the majority of goods and services applied for and was allowed only for certain classes of goods and services that were of little use to Prada, including computer software, business administration and marketing research. 

Prada appealed the decision but specifically refrained from relying on acquired distinctiveness through use, relying solely on their inherent distinctiveness argument.

Decision of the Second Appeal Board 

To achieve inherent distinctiveness, in the absence of verbal elements or other elements that could allow the sign to be perceived by consumers prima facie as trade mark, the EUIPO generally considers that the overall impression created by simple shapes following a pattern, as in the mark applied for, is devoid of any distinctive character. In other words, consumers will not perceive the pattern as a badge of trade origin, but merely as a decorative pattern of a style which is commonplace in the field of textiles and other industries concerned in the case at issue.  This is outlined in the EUIPO trade mark guidelines. 

The Board of Appeal concluded in its decision that the triangle-shaped pattern is indeed “a basic and commonplace figurative pattern” and “does not contain any notable variation in relation to the conventional representation of a triangle-shaped pattern and is the same as the traditional form of such a pattern”.

Specifically, regarding clothing, textiles and similar goods, the Board of Appeal agreed with the Examiner to find that the pattern is “commonly used” and “the targeted public would merely perceive the repeating pattern as a typical design of decorative elements, as opposed to a trade mark”.  The average consumer would consider the Prada pattern “as an attractive detail of the product in question, or as a banal decorative element, rather than as an indication of its commercial origin”.

As such, the Board of Appeal found the pattern lacked inherent distinctiveness. The Board of Appeal could not say whether the triangle pattern could have acquired distinctiveness through its use because Prada did not rely on Article 7(3) EUTMR in the appeal.

Inherent vs Acquired Distinctiveness

Although it was claimed that the pattern was “iconic”, which could lead to a finding of distinctive character acquired through use, Prada did not rely on the acquired distinctiveness of the sign and as such, the EUIPO could only assess its inherent distinctiveness in respect of a very wide range of goods, and which the application was found to be lacking.

Proving that a mark has acquired distinctiveness is a means to bypass a lack of inherent distinctiveness. However, this is no easy task as the mark must have acquired distinctiveness through a significant portion of the EU to be accepted by the EUIPO. 

In this case at least, it appears that acquiring distinctiveness is the only way this triangle pattern may be accepted by the EUIPO for goods and services of use to Prada.

A long-running trade mark dispute has finally reached a conclusion in the High Court, with the judgement delivered earlier this year.  The case involved Lifestyle Equities CV, a licensee of Beverly Hills Polo Club, who had brought multiple actions against rival polo clothing brands, including our client, the Royal County of Berkshire Polo Club (RCB).

What did the trademark infringement consist of?

Claims of registered trade mark infringement were made by Lifestyle Equities, alleging that RCB’s logo (below, left) was confusingly similar to the logo of Beverly Hills Polo Club (below, right), and also that RCB’s logo took advantage of the reputation of the Beverly Hills logo.  In addition, Lifestyle Equities alleged passing off by RCB, although the parties agreed that this would only be considered if there was first found to be registered trade mark infringement.

The approach taken by Lifestyle Equities appeared overly aggressive, naming 10 other individuals and companies as defendants in the case, while also claiming a “conspiracy to injure” by RCB, and this was criticised by the judge in the case deeming this to be “as oppressive as possible and not proportionate”.

The elephant in the room

Ultimately, the claims of infringement failed, with the judge noting that the primary point of distinction between the two was the names of the brands with no weight or distinctiveness being afforded to the horse and rider motifs or the words “polo club”.  Consequently, the average consumer would make no link between the two logos.

A key factor in the decision made by the judge was the existence of a coexistence agreement in place between RCB and the “dominant” polo brand in the marketplace: Ralph Lauren.  The dominant position in the marketplace held by Ralph Lauren’s polo brand significantly reduced the degree of distinctive character of the Beverly Hills mark.

Further, the coexistence agreement between RCB and Ralph Lauren, which was negotiated and put together by trade mark attorneys at Bailey Walsh & Co. LLP, indicated that Ralph Lauren considered its horse and rider motif to be sufficiently different from those of RCB and Lifestyle Equities such that there would be no confusion on the part of the average consumer.  The judge considered this to provide a very useful and practical insight into the polo brand marketplace.  In addition, further evidence compiled by Bailey Walsh & Co. LLP was key in showing the existence of other polo brands coexistence agreements.

The final outcome

As a result, the judge found there to be no evidence of confusion and the claim of trade mark infringement was dismissed, and consequently the remaining claims were also dismissed.

Despite the “overly oppressive” approach taken by Lifestyle Equities, the work carried out by attorneys at Bailey Walsh & Co. LLP was instrumental in ensuring a positive outcome for our client.

If you have any questions or would like further information regarding any of the above, or would like to understand how we could help you, please do not hesitate to contact us, either by email at mail@bailey-walsh.com or by telephone on +44 (0)113 243 3824.

The UKIPO has issued a notice on 25^th January 2023 advising of a change in practice regarding serving documents relating to any cancellation, rectification or opposition proceedings on UK designations of International Registrations (IRs)

Where no UK address for service is recorded against the UK designation of an IR, before any documents are considered to be formally served, the UKIPO will notify the WIPO representative, or the holder of the IR directly by post only, that a UK address for service will be required in the UK within one month of the issuance of the notification and to confirm the intention to defend the action.

This highlights the importance for overseas holders of IRs designating the UK to have a UK address for service in place and, in view of the tight deadline of such notices from the UKIPO, we would strongly recommend that a UK representative be appointed as early as possible.

The recent United Kingdom Intellectual Property Office (UKIPO) Marco Polo decision highlights the risks of the owners of International Registrations not appointing a UK address for service for the UK designations.

In this case, the mark was cancelled after the owner did not respond to a notice issued by the UKIPO because the office in Australia was closed due to the COVID-19 pandemic.

Current practice of the UKIPO, where no UK address for service is recorded, is to directly notify the proprietor and not the WIPO representative.  There was no UK address for service in the Marco Polo case and as such, the invalidity notice was sent directly to the owner.  The owner failed to file a defence to both the first and second notices and consequently, the mark was cancelled.

The owner appointed a UK address for service and appealed the decision.

The matter is currently being reviewed by the UKIPO and we expect to receive guidance on this issue in the near future.