From licence formalities to image rights: two trade mark decisions with practical impact
Citation: [2026] EWCA Civ 583 (12 May 2026)
The Decision
The Court of Appeal has reinforced a significant hurdle for trade mark proprietors seeking to recover damages on behalf of unregistered licensees. In Lifestyle Equities v Frasers Group, the court held that trade mark owners cannot recover a licensee’s losses in an infringement action unless the licence has been registered at the UK Intellectual Property Office. We always knew that this was the case – particularly if an exclusive licensee wants to be able to take action in the stead of the trade mark proprietor, but this recent decision has been an unsavoury reminder.
The judgment concludes a protracted dispute between Beverly Hills Polo Club (owned by Lifestyle Equities) and Sports Direct/Frasers Group over the infringing ‘Santa Monica Polo Club’ brand. Although Lifestyle Equities won the underlying infringement case in 2018, the damages appeal turned on a critical procedural issue: Frasers Group successfully argued that third-party companies using the Beverly Hills Polo Club brand name were not officially registered licensees of the trade mark in the UK and accordingly, any losses suffered by them could not be swept up into the overall losses incurred by the Licensor.
What This Means
The court’s interpretation of section 30 of the Trade Marks Act 1994 effectively creates a registration requirement as a precondition to relief. Key implications include:
- Registration is mandatory: Without a registered licence, proprietors cannot recover losses suffered by third parties or sub-licensees;
- Retrospective effect applies: Licence registration has retrospective effect to catch infringements pre-dating registration, but only within the six-year limitation period from the infringing acts;
- Late registration does not revive time-barred claims: The ordinary limitation period applies strictly; delayed registration cannot save time-barred claims;
- Six-month costs window: For infringements occurring before registration, costs recovery is restricted unless registration was applied for within six months of the licence (or as soon as practicable thereafter).
Practical Guidance for rights holders and their legal teams
- Audit existing licences immediately: Identify all trade mark licences currently in use, including sub-licences;
- Diarise the six-month window: Mark the date when each licence must be registered to preserve the costs recovery position;
- Weigh confidentiality against enforcement risk: The claimants’ deliberate policy of non-registration to preserve confidentiality proved fatal to their sub-licensee loss claims;
- Plan for intervention: Since 2019, licensees may intervene to claim their own loss when the proprietor sues, but the registration precondition still applies;
- When infringement is suspected, act promptly: Ensure any licensee loss claim is pleaded and supported by timely licence registration to avoid limitation risk.
Giusy Ferreri’s sound mark application: Personal attributes and the AI challenge
EUIPO Application: No 019353063 (Published May 2026)
Italian singer Giusy Ferreri has filed a sound mark application at the European Union Intellectual Property Office (EUIPO) covering the phrase “SONO GIUSY FERRERI” (“I am Giusy Ferreri”) in classes 9 and 41. This follows similar applications in the USA (notably from Matthew McConaughey and Taylor Swift) and Italy and represents what has been presented as the first sound trade mark application at the EUIPO explicitly seeking protection against unauthorized digital replicas and deepfakes. The older trade mark practitioners amongst us will remember the flood of sound marks on the introduction of the 1994 Trade Marks Act but after the initial flurry, they are not as popular as they were.
The application has passed EUIPO’s internal review and will proceed to registration on 10 August 2026 unless oppositions are filed.
This is not entirely new. We have previously reported on UK/USA and EU trade mark applications covering personal attributes-faces, voices, and distinctive phrases. Some of which are now pending registration.
Registrability: The Obstacles Ahead
Distinctiveness (Absolute Ground for refusal)
When Ferreri seeks to register a sound mark for goods such as “talking books” or “musical sound recordings,” one of the main obstacles is whether the phrase ‘functions as a trade mark indicating commercial origin’ which is required at law in order to be registrable on absolute grounds; or would it be perceived as content (an audiobook narrated by Ferreri or a new single)?
Like applications featuring AI avatars of historical characters, it is highly doubtful that the average consumer would perceive Ferreri’s recognizable voice as ‘functioning as a trade mark’ when used in connection with her own musical or spoken-word products.
Substantial Value (Absolute Ground for refusal)
This ground is increasingly relevant. Under the reformed EU Trade Mark Regulation, Article 4(1)(e) operates as an absolute ground for refusal, preventing the registration of signs that consist exclusively of essential product features which could grant an unfair or permanent monopoly in the market. A sound mark consisting of a distinctive personal phrase might fall within this ground if the distinctiveness of the phrase lies principally in its economic value as a marker of Ferreri’s persona, rather than as an indicator of proprietor origin.
Public Policy
There is also an argument that these types of applications stretch the role of trade marks beyond their proper function by seeking to protect ‘personality interests’ that trade mark law was not designed to serve. Perhaps our legislators would be better off looking into introducing proper ‘personality rights’ or ‘image rights’ or even boosting our privacy protection around the use of a person’s image without consent. We are so woefully skant on such protections at the moment, that figures in the public eye are left with trade mark protection as at least offering some sort of protection – if they can get it!
Enforceability: Even Harder Than Registrability
Assume Ferreri’s (or Taylor Swift’s or Matthew McConaughey’s) mark is registered. The question I raised several months ago and continually grapple with is “can it actually be enforced against unauthorized digital replicas and deepfakes?”.
The Infringement Test
Trade mark infringement requires that:
- the infringing sign is identical or similar to the registered mark;
- the sign is used in the course of trade; and
- the use causes confusion or takes unfair advantage.
My problem is that a digital replica of Ferreri that sounds like her but if it does not pronounce the phrase “Sono Giusy Ferreri” or a ‘confusing similar phrase’ (how does one assess that?!), it may fall outside the literal scope of the registered mark. Furthermore, if the digital replica is not commercially-focused and is used ‘for fun’ or otherwise in a personal capacity, there may be no “use in the course of trade” in any event. In any of these situations, trade mark registration will not help her.
The Narrative Problem
There is a risk that applications like Ferreri’s create a misleading narrative-that trade mark registration is “the way” to protect against unauthorized digital replicas. This is simply incorrect, in my view: trade mark rights are a supplementary tool, not a primary solution.
Final Thoughts
Both of the above decisions reflect important shifts in IP law:
- Licensing discipline is now mandatory: Proprietors who fail to register licences will lose the ability to recover licensee losses; and
- Personal attribute marks face a long road: While the EUIPO has admitted Ferreri’s application, registrability remains uncertain-and enforceability against deepfakes is questionable without complementary legal tools
For rights holders, compliance teams and competition-law advisers, the common thread is clear: formalities matter, context is everything and there is no substitute for careful legal architecture.
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Disclaimer
This information is intended for general informational purposes only and does not constitute legal advice. We recommend seeking professional advice before taking any action on the information provided. If you would like to discuss your specific circumstances, please feel free to contact us on 0800 2800 421.
