The Dryrobe case: When is a trade mark generic? An interview with Theo Barclay

Rebecca Field and Lee Curtis interview Theo Barclay of 4 New Square, who was the successful lead counsel for Dryrobe Limited, in the recent decision of the Intellectual Property Enterprise Court (IPEC) concerning trade mark infringement and passing off claims by Dryrobe Limited against Caesr Group Limited (trading as D-Robe Outdoors) and counterclaims by Caeser Group based on descriptiveness, genericism and non-use. The case is particularly interesting as it is one of the few UK trade mark cases concerning genericism and it concerns an item of fashion.

Rebecca Field and Lee Curtis discuss the impact of Generative AI on online search and associated legal issues. The online search market has been stable for over twenty years. Will Generative AI change the way online search works and looks, and what are the implications for brand and trade mark owners?Timestamps:2:17 The impact of AI online search with a focus on fashion retailers4:21 - The way search is and was conducted raised a number of legal issues and what were they?5:56 - AI and change6:55 - Why are these changes important?8:19 - Where could the rise of GEO be particularly important in the word of fashion products?

Overview: Rebecca Field and Lee Curtis interview their HGF colleague Rachel Platts about the UKIPO’s consultation on proposed changes to UK design law and their impact on fashion design. We touch on possible changes to the UK design examination system, searches, the possible introduction of opposition procedures and dealing with bad faith filings. We also discuss important possible changes to disclosure rules and touch on copyright protection for fashion designs.Timestamps:2:29 introduction to Rachel3:00 discussion of the design consultation4:28 changes to the searching and examination system for registered designs.8:52 Simplification of the present system relating to unregistered design rights

Rebecca Field and Lee Curtis discuss the recent Opinion from Advocate General Emiliou in the Deity Shoes S.L. case. The case concerns whether fashion designs need ‘intellectual effort’ to benefit from EU Registered and Unregistered design protection and whether fashion trends impact the designer's freedom when considering the validity of designs.Timestamps:2:13 can you provide some background on the Deity Shoes dispute?4:25 The first core issue: How did the Advocate General answer this key point?8:18 The second core issue: The designer’s freedom in developing the design

Rebecca Field and Lee Curtis interview barrister Simon Malynicz KC of Hogarth Chambers on the recent decision of the UK Supreme Court in the Iconix vs Dream Pairs case.  We discuss the concept of post-sale confusion in the world of trade marks and as ever have a fashion spin.Timestamps:3:14 - Summary of the Iconix case10:45 - Has the Supreme Court helped define the limits of post-sale confusion?12:30 - Do you think post-sale confusion is a particular issue in the world of fashion?14:30 - Have there been any other recent cases in the world of fashion in the United Kingdom which dealt with the concept of post-sale confusion?17:30 - The differences in applying confusion with regard to trade mark infringement

Rebecca Field and Lee Curtis interview barristers Andrew Norris KC and Becky Knott of Hogarth Chambers on the recent Sonia Edwards vs Boohoo design case. We also touch on the well-known Rihanna case and other notable fashion IP cases.Timestamps:3.34 - Introduction to Andrew and Becky4:22 - You acted for Boohoo in that case. Could you, Becky provide a brief summary of the case and the issues involved?6:28 – issue of copying. Andrew explains this and how it came up in the Edwards case.9:40 - Could you provide our listeners with some comments on this aspect of the case?14:58 - For our listeners who are not aware of that case, can you explain your role, the background to the case, and some of the key takeaways of the Topshop case18:34 -What fashion IP case have you found the most interesting?

Rebecca Field and Lee Curtis interview their HGF colleagues Susanne Bilderbeek and Olivia Petter on smell-a-like perfumes and compare and contrast UK, Benelux and German trade mark and copyright case law on perfume comparison lists and smell-a-like perfumes.Timestaps:4:54 So-called smell-alike perfumes case law8:40 Smell-alike perfumes and German case law15:00 Is there any UK case law on this

Rebecca Field and Lee Curtis interview Professor Johanna Gibson of Queen Mary University of London. We touch on the new Fashion Law LLM, the first fashion law LLM in the United Kingdom and discuss fashion IP cases past, present and future.Timestamps:6:49 - The new Fashion Law LLM at Queen Mary10:28 - Historical fashion IP law case21:09 – Supreme court

Rebecca Field and Lee Curtis interview barrister Victoria Jones from the chambers 3PB in this edition of the Fashionably IP podcast on good practice in contentious proceedings before the UKIPO. Victoria provides tips on good practice in evidence and oral arguments and the benefits of using a barrister in UKIPO proceedings. Of course, the podcast will also have a fashion spin as always.Timestamps:3:39 - Could you give an explanation of how the UKIPO Tribunal system works and maybe some of the similarities and differences to UK court proceedings?6:19 - Can you explain the role of a barrister in UKIPO Tribunal proceedings and when do you think it best they are engaged in the proceedings?15:28 - Fashion cases you have dealt with before the UKIPO with regards to trade marks

Rebecca Field and Lee Curtis interview barrister Daniel Selmi of Three New Square in this edition of the Fashionably IP podcast on the concept of the informed user in UK and EU registered design law. Who is the informed user? How does the informed user impact the assessment of design infringement, validity of registered designs and prior art? Has the concept of the informed user impacted any fashion cases?Timestamps: 3:23 - The concept of the informed user and how does this concept impact the assessment of prior art and design corpus in a UK or EU registered design case?6:27 - How the product for which the registered design can impact the assessment of prior art and design corpus in a UK or EU registered design case9:21 - What is the difference between the concept of the average consumer under UK and EU registered trade mark law and the informed user registered design law?11:09 - How the informed user has impacted any fashion design cases in the UK and/or EU? Can you make any comparisons with the average consumer in trade mark cases and the utility of these sorts of notional constructs of IP law?13:35 - How the courts assessment of the informed user has evolved overtime and how UK courts post Brexit might diverge from the assessment of this concept compared to EU courts.