Inside IP Winter 2024/25

A word from our editors Kirsty Dolphin and Simon Taor

Welcome to our Inside IP Winter 2024/25 Edition!

This is an especially exciting issue as it marks the first edition featuring contributions from both the partners and the talented team of AA Thornton, who joined Venner Shipley on 1 December. Their expertise and insights are a welcome addition to our publication, enriching the latest updates and perspectives from the world of intellectual property we bring to you. You will find more details about this exciting news in our VS News section below. As part of our ongoing growth, we are delving deeper into the histories of the firms that have shaped the foundation of who we are today, beginning with Venner Shipley.

Again, this is a packed edition and we very much hope you will find something of interest from our world of IP. In our Perspectives, we explore advancements in solar power technologies and the challenges they face, alongside a review of the Sky vs Skykick legal battle. We delve into language choices for cost-efficient patent filings, the role of generative AI in reshaping patent law, and the latest innovations in breast cancer radiotherapy. Also included are insights into patenting in the gaming industry and a focus on SME funding opportunities with IP Advance, highlighting how SMEs can unlock growth through IP support.

Our UPC updates cover a review of the UPC’s focus on efficiency, offering guidance on navigating tight timelines and procedural rules and explore the relevance of the Gillette defence in a recent infringement case between SodaStream and Aarke.

In our section about trade marks and designs, we explore the rise of beauty advent calendars and their sustainability challenges, and the advantages of dual trade mark and design protection for logos. We examine Lidl’s partial victory against Veuve Clicquot’s orange colour trade mark and considers whether replica toys equate to virtual goods in the Metaverse. Updates include the UK IPO’s new trade mark specifications and lessons from McDonald’s BIG MAC dispute on defending against non-use claims.

To read further click below

Harnessing the sun – a brief review of the solar power landscape
In this second article of our clean technology series, we take a look at three main areas of solar power technology – photovoltaics, solar thermal energy, and photovoltaic-thermal hybrid systems – considering some of the challenges of these technologies and exploring some of the current areas of research and development.

The Sky’s the limit – the Supreme Court provides guidance on bad faith filings
It can be bad faith to overclaim the goods and services covered by a trade mark, but proving bad faith remains challenging. In our first joint article as a combined firm Clare Turnbull, Dan Byrne and Sarah Darby discuss the UK Supreme Court’s guidance in SkyKick UK Ltd v Sky Ltd, highlighting the risks associated with overly broad trade mark filings and their potential vulnerability to invalidation for bad faith.

Language choices to save costs in patent filings
The translation costs associated with entering the national or regional phase with an international patent application can be significant. In this article, Marianne Privett explains the process of getting an application translated and suggests a strategy to reduce the associated costs.

Patents & designs in the age of generative AI: the bar for obviousness 
How can a legal system designed to recognise and reward human creativity be applied in the age of generative AI? Here, Kathryn Sayer considers whether the legal tests for assessing inventive step and individual character need to be adapted to account for the use of generative AI in the invention & design process.

Advancements in Radiotherapy for breast cancer treatment
The field of breast cancer treatment is rapidly evolving, with radiotherapy at the forefront of many innovative approaches. As new techniques emerge, the patenting landscape reflects ongoing research and development efforts. Understanding trends in patenting radiotherapy techniques, along with the timeline from patenting to commercialization, is essential for grasping how these innovations impact patient care.

Patents in the gaming industry: how and why?
Many people in the gaming industry were surprised to learn that Nintendo have reportedly launched patent litigation in Japan against Pocketpair relating to the Palworld game. People may be wondering whether it would be possible for them to obtain patents covering their own developments in the gaming industry and, if so, whether they should.

Funding support for SMEs – IP Advance 
Following on from his article, ‘Intellectual Property for SMEs and start-ups: adding value and encouraging growth’, Ian Grey explores the financial support scheme provided by the UK Intellectual Property Office and why SMEs should take full advantage.

Black History Month 2024: spotlight on pioneering black inventors
This year’s Black History Month theme, “Reclaiming Narratives,” inspired Marianne Privett to explore the sub-theme Innovators and Inventors: Reclaiming Black Contributions to Science and Technology. While researching, she realised she couldn’t name any Black inventors, despite knowing many have made remarkable contributions to everyday life. Motivated to learn more, she wrote this article to celebrate and highlight the achievements of significant Black inventors.

History of Venner Shipley – an update!
As part of our ongoing growth, we are exploring the histories of the firms that have shaped our foundation, starting with a closer look at how far back Venner Shipley’s legacy extends and the life of our predecessor, Siegmund Sokal. Recently released 1923 naturalisation records from the UK National Archives shed new light on our rich history within the IP industry.

Timelines at the UPC – A challenge and an opportunity
The Unified Patent Court (UPC) has been at pains to highlight its ambition of being an efficient court for patent disputes, thereby providing timely access to justice for claimants. As the Court settles into its stride, we look at how these ambitions are playing out in practice and how best to navigate the tight timelines and strict rules at the UPC.

Claim interpretation at the UPC – no need for a Gillette Defence
The Gillette defence is a principle that originates with a decision of the UK Courts back in the early twentieth century. Peter Thorniley examines the likely application of the so-called “Gillette defence” at the UPC, due to a recent decision in an infringement action brought by SodatStream against Aarke.

Unwrapping the beauty of advent calendars
Beauty advent calendars have seen recent exponential growth, allowing retailers to showcase products and increase consumer engagement. However, great beauty brings great responsibility – especially when it comes to sustainability. Louise Foster and Sam Exton explore how IP can support sustainable beauty.

Registered trade marks and designs – dual protection for a logo
It is possible to protect a logo as both a registered trade mark and as a registered design. In this article one of our design attorneys, Ian Grey and our Head of Trade Marks Clare Turnbull, join forces to discuss the advantages of protecting your logo from both angles.

The Lidl shop of champers
Supermarket business Lidl has been attacking Veuve Clicquot’s EU trade mark registration for the colour orange for some eight years. Camilla Sexton looks at the latest decision in this dispute which issued from the General Court of the European Union and where Lidl has finally achieved a measure of success. We examine colour marks and evidence of acquired distinctiveness in the context of an invalidity action.

Trademarking in the Metaverse and NFTs – are toys equivalent to virtual goods?
We have taken on AA Thornton’s ‘Trademarking in the Metaverse and NFTs’ series. In the latest edition, Ian Gill discusses whether toys which accurately replicate real products are equivalent to virtual goods and if so, what cases about replica toys teach us about how the Courts will assess infringement and the similarity of goods vs their virtual equivalent?

UK legal update – restrictions to specifications of trade marks
Tribunal Practice Notices (TPNs) are issued when the UK Intellectual Property Office (UK IPO) sees a need to change or clarify registry practice. In July this year, the officials at the UK IPO published the first TPN of 2024. Suzanne Power explains key issues that resulted in the TPN and how these can be resolved.

Return of the Mac – Part III
Even the most iconic trade marks, such as McDonald’s BIG MAC, can be vulnerable to a revocation attack if they are not used properly. Yoann Rousseau and Jay Patel explore a dispute between McDonald’s and Supermac’s and the importance of having evidence gathering protocols in place, in the event of an attack on the basis of non-use.

Colour me Brat – the challenge of protecting colour marks
With this year’s Brat Summer come and gone, while basking in the remnants of its dayglow green, Jay Patel looks into registering colour trade marks and the role colour is playing in contemporary branding, including a recent Cadbury court case.

VS News
A round-up of the latest Venner Shipley news.