As we head into the silly season, it is time to look back on some of the unusual and interesting IP and marketing law news that hit the headlines in 2020.

Caught what, now?

We have all been there - a whole day dangling your fishing rod in the water and yet you catch absolutely nothing, not even a nibble. While some people might put this down as a bad day, surf brand The Mad Hueys went a step further with one of its advertisements on a giant billboard outside a North Beach clothing store in New Zealand. The billboard featured the words “Caught F*ck All Fishing Club”, with an anchor symbol in place of the “u” in “F*ck”. The billboard did, though, manage to catch a large number of complaints filed with New Zealand’s Advertising Standards Authority (NZ ASA).

The advertisers defended the advertisement, arguing that the anchor symbol related to the nautical theme of the brand, and that while the “F” word was offensive in the past it was now part of everyday language.

Although the NZ ASA Board agreed that the “F” word has become more commonplace, they were required to also consider context, medium, audience and product. The NZ ASA took into account that the “F” word is ranked 13th in the New Zealand Broadcasting Standards Authority’s 2018 list of the most unacceptable words in broadcasting. The complaints were therefore upheld by the NZ ASA and the advertisement ordered to be removed.

The Mad Hueys might want to opt for different bait and tackle next time.

Carbon-negative, cursing-positive

In a similar vein, the United Kingdom’s Advertising Standards Authority also recently ruled against BrewDog brewery following complaints in relation to its billboard and newsprint advertisement for the brewery’s carbon negative campaign. The advertisement featured the large text “F*CK YOU CO2”, with the word “F*CK” partially obscured by a can of BrewDog’s product, and with the line “BrewDog Beer Is Now Carbon Negative” at the bottom of the advertisement.

According to the UK ASA’s ruling, BrewDog responded to the complaints by saying that it had wanted to shock people into thinking about the planet and reducing and removing the amount of carbon in the atmosphere. Metro, The Week, and The Economist, which all featured the advertisement in their publications, also responded to the UK ASA with information about the target audiences of their respective publications and their views on BrewDog’s advertisement.

However, the UK ASA upheld the complaints in relation to the billboards and the publication by Metro, finding that the advertisement was likely to cause serious and widespread offence in those contexts. The UK ASA noted that Metro was a free and widely available newspaper. The complaints were not upheld in relation to the advertisement published by The Week and The Economist, because these publications had to be actively purchased or subscribed to, and the nature of the advertisement reflected similar use of language elsewhere in those publications.

A BrewDog co-founder responded on Twitter to the UK ASA’s ruling, saying with expletives in full, “The ASA can go f*ck themselves. We are in the midst of an existential climate crisis. Thank you to the Metro, The Week, The Economist and billboard sites for understanding the importance of our carbon negative campaign."

We wonder whether BrewDog knows what causes the bubbles in its beer...

California’s pot of gold

In some good news for marijuana connoisseurs, the California Department of Food and Agriculture (CDFA) released proposed regulations for the appellations of origin for cannabis. The CDFA says the regulations will promote regional cannabis products and local businesses, prevent the misrepresentation of origin of cannabis products, and support consumer confidence about the origin and characteristics of the products.

Under the proposed regulations, petitioners can apply to establish new appellations of origin for geographic areas, taking into account the distinctive geographical features affecting cannabis cultivation, and the legacy, history, and economic importance of cannabis cultivation in the area. The proposed regulations share similarities with regimes for the protection and use of geographical indications for products such as wine.

This development is perhaps unsurprising given the success of the local legalised cannabis industry in the Golden State. Sales of cannabis in California last year reached around USD3 billion, with sales increasing significantly this year. Perhaps the “Green State” may be a more apt moniker.

Flower power fails to bloom

A significant part of Banksy’s fascination as a street artist is his anonymity. However, this anonymity blew up in Banksy’s face following a decision by the European Union Intellectual Property Office (EUIPO) to cancel an EU trade mark registration featuring Banksy’s famous “flower bomber” artwork:

The trade mark, registered in the name of Pest Control Office Limited, which handles Banksy’s legal affairs, was the subject of an invalidity action filed by Full Colour Black Limited. Full Colour Black is a UK-based business that sells a range of greeting cards, often using Banksy’s artwork. Full Colour Black argued that Banksy had only used the “flower bomber” image as a work of art, not a trade mark, and that the registration was an attempt to monopolise the image contrary to the limited duration of protection provided under copyright law. Pest Control Office argued against these contentions.

Seemingly in an effort to prove that the image was used a trade mark, Banksy launched a pop-up store in the United Kingdom called Gross Domestic Profit. Oddly, the store could not be entered by the public, consisted of displays only, and consumers had to purchase products via an online store.

The EUIPO looked unfavourably on Banksy’s pop-up store, finding that Banksy “only began using the sign after the filing of the present application for a declaration of invalidity and stated that the use was only to overcome EU laws regarding the issue of non-use in relation to a trade mark dispute which shows that his intention was not to use the mark as a trade mark to commercialise goods and carve out a portion of the relevant market, but only to circumvent the law. These actions are inconsistent with honest practices. They show that his intention was to obtain…an exclusive right for purposes other than those falling within the functions of a trade mark.”

Banksy’s past statements about intellectual property, such as “copyright is for losers”, also came back to haunt him. The EUIPO noted that Banksy had “chosen to be very vocal regarding his disdain for intellectual property rights, although clearly his aversion for intellectual property rights does not annul any validly acquired rights to copyright or trade marks”.

The EUIPO Cancellation Division went on to find that the trade mark registration should be cancelled.

No word yet on whether the EUIPO’s decision has been appealed, anonymously or otherwise.

“And we’ll never be royals (royals)…”

News that Prince Harry and Meghan Markle made the decision to take a step back from Royal Family duties dominated the tabloids for some time this year, and have also created gossip in the IP world.

In 2019, the couple launched the Sussex Royal Foundation, a Royal charitable foundation, and filed trade mark applications for SUSSEX ROYAL. But, following a meeting with the Royal Family in January 2020, transitional arrangements were agreed for the Duke and Duchess of Sussex to move away from Royal Family duties. Amongst other things, it was agreed that “While there is not any jurisdiction by The Monarchy or Cabinet Office over the use of the word ‘Royal’ overseas, The Duke and Duchess of Sussex do not intend to use ‘Sussex Royal’ or any iteration of the word ‘Royal’ in any territory (either within the UK or otherwise) when the transition occurs Spring 2020.” In addition, the Duke and Duchess confirmed that, “the trademark applications that had been filed as protective measures and that reflected the same standard trademarking requests as done for The Royal Foundation of The Duke and Duchess of Cambridge, have been removed.”

The Duke and Duchess of Sussex may be interested to know that some territories have laws regarding the use of Royal emblems and names that may prevent them from using the Sussex Royal brand in any event. In New Zealand, for example, the Flags, Emblems, and Names Protection Act 1981 prohibits use of the word “Royal” in connection with any business, trade or occupation, unless authorised by Her Majesty. Her Majesty would therefore need to approve the use in New Zealand, which seems unlikely to happen.

The drama also did not end there. The Duke and Duchess of Sussex later announced the name of their new charity, Archewell Foundation. The announcement was perhaps premature, as a domain name squatter quickly registered the domain name archewellfoundation.com. The domain name was reportedly used for some time to redirect to a music video of Kanye West’s hit, “Gold Digger”. We will leave it to our readers’ imaginations to interpret that cutting social commentary.

Until next year

We wish you a safe and happy festive season.

Contributors matt.broadbent@simpsongrierson.com