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.
As the impact of COVID-19 is felt throughout the economy, even those companies able to weather the storm are likely to feel the effects of corporate insolvency as collaborators, customers and suppliers find themselves in financial difficulty. This article focuses on the impact of insolvency on IP licences from the perspective of both licensors and licensees. It also contains top tips for mitigating the risks.
After the Corporate Insolvency and Governance Bill was published on 20 May 2020, it raced through the House of Commons and the House of Lords, coming into force in under six weeks as the Corporate Insolvency and Governance Act 2020, with some of the temporary measures taking effect from 1 March 2020. Although the new tools are entirely untested, the sooner they become an integrated part of the UK restructuring landscape, the better.
The Corporate Insolvency and Governance Bill was recently laid before Parliament. The bill contemplates a temporary ban on statutory demands presented from 1 March 2020 as a ground for presenting a winding-up petition and on winding-up petitions presented from 27 April 2020 unless the petitioning creditor has reasonable grounds for believing that COVID-19 has not had a financial effect on the debtor company or that it would have been insolvent even if COVID-19 had not had a financial effect on it.
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 much-anticipated Corporate Insolvency and Governance Bill was published on 20 May 2020. The proposed legislation is split into two broad categories: temporary provisions brought about as a result of COVID-19 and permanent provisions which will result in fundamental changes to UK insolvency law. The proposals, both temporary and permanent, reflect a shift towards a more debtor-friendly regime.
Generally speaking, the purpose of adjudication is to speed up cash flow and allow the speedy resolution of disputes, while the purpose of liquidation is to resolve the final accounting position between two parties in respect of all of their dealings. As a result, there are often incompatibilities between the two regimes. A recent Technology and Construction Court decision provides the latest judicial guidance on the ability of a company in liquidation to refer a dispute to adjudication.
High-profile use of company voluntary arrangements (CVAs) has led to widespread media coverage and controversies. Household names such as Jamie's Italian, Prezzo, Toys R Us, Mothercare, Gourmet Burger Kitchen and more recently Debenhams are among the growing list of companies that have followed this well-trodden path, with varying degrees of success. This article briefly covers the CVA process, analyses Debenhams' recent High Court appeal and discusses the impact of CVAs on lenders.
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.
In a recent ruling, the Court of Appeal confirmed that administrators owe a duty to all creditors and cannot be held personally liable for the economic loss of a creditor where no special relationship exists. In coming to its decision, the court showed a willingness to look at the commercial realities of the decisions that administrators must make on a daily basis.
The UK Intellectual Property Office recently upheld LinkedIn Ireland Unlimited Company's opposition to JK Solutions' registration of the word mark KINKEDIN in Class 45 designating, among other things, internet and video dating services. Despite the high degree of aural and visual similarity between LINKEDIN and KINKEDIN, the examiner held that there was no likelihood of confusion on the basis of conceptual dissimilarity alone.
In 2016 McMug Ltd successfully filed a UK trademark application for the mark OKAYEST for a number of products, including beer mugs, chinaware and flasks. However, AMC Photographics Limited challenged the mark's validity on the grounds that, among other things, it was devoid of distinctive character and was a wholly descriptive dictionary word (a superlative of okay). This case is a useful reminder that, even after registration, a mark can be challenged on the grounds of non-distinctiveness and descriptiveness.
Leicester City Football Club Limited recently opposed Leeds City Football Club Limited's application for a graphical trademark covering various goods and services in Classes 16, 25, 26 and 41. Leicester City's claims relied on its earlier mark for the acronym 'LCFC'. In comparing the goods and services covered by the two trademarks, the UK Intellectual Property Office held the parties' goods to be identical and their services to be identical or at least highly similar.
A UK Intellectual Property Office (UKIPO) opposition was recently brought by eBay Inc against an application by the games company SC Zumedia Games SRL to register a figurative trademark. eBay relied on two earlier registered UK word marks for EBAY in Classes 35, 38 and 41 and figurative EU trademarks in various classes. While the UKIPO accepted that eBay has a protectable goodwill, it was satisfied that there was no likelihood that a substantial number of eBay's customers would be misrepresented.
In 2017 an application was filed to register LIFEWEAR CLOTHING as a UK trademark for clothing and headgear. The application was opposed by Fast Retailing Co, Ltd, the owner of the well-known UNIQLO brand, based on their trademark registrations and the reputation of UNIQLO LifeWear, as well as their unregistered rights in the term 'life wear' for clothing. UNIQLO's earlier rights covered identical goods to those applied for, making it easier to argue a likelihood of confusion (or association) between the marks.
Under Section 46 of the Trademarks Act 1994, a registered trademark can be removed from the register if there has been no genuine use of that mark for five years or more. This is the crux of the so-called 'use it or lose it' argument. But how much evidence is needed to prove genuine use? This question was put to the UK Intellectual Property Office during a recent revocation application.
The Supreme Court recently handed down its judgment in the Warner-Lambert v Generics (UK) (Mylan) case concerning the validity and infringement of a patent claiming the use of pregabalin for treating neuropathic pain. The key issues which the court had to resolve were the tests for infringement of a second medical use claim and the test for plausibility of a claim such that it is sufficient.
The government recently announced that it will legislate to update the restructuring and insolvency systems, with the aim of the United Kingdom retaining the gold-standard regime. The reforms are a response to international developments (with countries such as Spain and the Netherlands recently introducing updated insolvency systems) and some domestic corporate collapses which have put the UK system under stress.