Traditionally, lenders have taken security over the tangible assets of borrowers. However, within the last few decades, lenders have begun to recognise that intangible assets (eg, IP rights) have realisable value and so potential to be used as part of a package – or even the basis – of security. While taking security over IP rights is now an established process, where the intellectual property is of significant value, careful consideration is required as to the rights to be secured and the type of security to be granted.
Licensors of IP rights may soon be unable to terminate licences where the licensee has gone into an insolvency process. The Corporate Insolvency and Governance Act, which recently came into force, reverses a previous legal position in relation to contracts for the supply of goods and services meaning that such contracts cannot be terminated simply because of a counterparty entering an insolvency process.
A recent Intellectual Property Enterprise Court decision is a useful reminder that a finding of trademark infringement is more likely where the mark has been used extensively and has an enhanced level of distinctiveness in the United Kingdom. Further, evidence of actual confusion can support and augment a court's assessment of the likelihood of confusion and need not be first hand or submitted in high quantities to be valuable.
The latest chapter in a long-running saga saw the High Court issue a final judgment in Sky v Skykick following the European Court of Justice's decision in January 2020. The High Court's judgment demonstrates that a finding of partial invalidity for overly broad trademarks due to bad faith may not necessarily taint the entire registration and deal a deathblow to the infringement claim.
The name Claridge's brings to mind one of the most luxurious hotels in London rather than court rooms and trademark law. Trading since 1856, the hotel is unlikely to have foreseen its recent dispute with a company which has sold candles and reed diffusers under the name Claridge since 2018. The case serves as a stark reminder that trademark searches must be completed prior to launching a new brand or product name.