We’re excited to announce the CITMA Autumn Conference 2019, taking place in Birmingham’s ICC for the second year running.
This year, we will focus on what the IP profession might look like after Brexit, helping attorneys to prepare for contentious matters and conflict situations in the new landscape.
What to expect
Listen to a range of excellent speakers, including Chartered Trade Mark Attorneys, solicitors, barristers, in-house counsel and senior representatives of the UK IPO and EUIPO.
Get up to speed on the latest UK law and practice in UK contentious proceedings, from registry proceedings to appeals to the High Court, as well as a roundup of leading UK decisions.
After a buffet lunch - a little shorter than last year, in response to your feedback - a panel of in-house practitioners will lift the lid on the in-house department, before we turn our focus to EUIPO mediation and appeals.
This year’s conference will end at 4.40pm, following a review of 2019’s key EUIPO and General Court decisions.
After the conference, stay for drinks, canapés and networking opportunities with the IP community, also at the ICC. We’ll finish at 6.40pm, giving you plenty of time to travel home.
Join us for the full day to earn five hours’ CPD.
Hear what delegates said about last year’s conference – click here to watch our video.
The conference runs from 9.45am to 4.40pm.
Chaired by Tania Clark, CITMA President, and Richard Goddard, CITMA First Vice-President
|8.45am||Registration with light refreshments|
|Tania Clark, CITMA President|
Diversity and inclusion, Kate Swaine, Gowling WLG
|10.05am||UK IPO & UK court decisions, Michael Edenborough, Serle Court|
|10.40am||Appeals to the High Court, Ian Bartlett, Beck Greener|
Evidence in registry proceedings, Oliver Morris, UK IPO and David Stone, Allen & Overy LLP
Are you regularly asked to put together and present evidence in registry proceedings? The UK IPO’s Oliver Morris and Deputy High Court Judge David Stone will pass on insight and tips for presenting evidence before the registry and the High Court, including IPEC. Sharing their registry and judicial experience, Oliver and David will explore the dos and don’ts of presenting evidence—in particular, what they would like to see more and less of. You will leave the talk with a range of practical tips to use, and unique insights to consider.
|12.15pm||UK IPO hearing preparation, Oliver Morris, UK IPO|
|1.50pm||How in-house clear brands – assessing risk from a commercial perspective, Leanne Hall, Serjeants (lead), Sarah Coomber, Caterpillar UK Ltd plus guests|
Effective dispute resolution in EUIPO Boards of Appeal: Tailoring solutions for business, Gordon Humphreys, EUIPO
The ‘one-size-fits-all’ approach of traditional trade mark litigation ignores considerations of costs, resources, time and bargaining positions. Four possible tiers of decision-making may be needed by some litigants but can be ruinous for others. These factors, combined with an annual case load of over 2700 appeals, have led the EUIPO Boards of Appeal to actively case manage files. The Boards now offer parties a range of mechanisms to resolve their disputes, ranging from an oral hearing before a nine-member Grand Board panel to a single member written decision and, proposing non-traditional tools such as mediation and conciliation through the newly created Alternative Dispute Resolution Service.
This presentation will look at how the initial case triage is effected and the functioning of the various instruments available in the dispute resolution panoply at the Boards of Appeal, with particular emphasis on ADR and efforts to optimize the system.
EUIPO and general court decisions, Kate Swaine, Gowling WLG
SkyKick - what does it mean in practice? Emmy Hunt and Edwina FitzHugh, Potter Clarkson
The questions referred to the CJEU in Sky plc v SkyKick UK Ltd re-examine our understanding of bad faith and invalidity of trade mark registrations. Edwina and Emmy will look at these questions and how the CJEU’s decision might lead to changes in how the UK and EU Registries examine trade mark applications and third party proceedings and what changes practitioners might make in how they file and enforce trade marks in the UK and EU.
|4.35pm||Summary and closing words|
|4.40pm||Drinks, canapés and networking|
Tania Clark, CITMA President
Richard Goddard, CITMA First Vice-President
Richard is CITMA's First Vice-President and a Fellow of the Institute.
He is a Chartered Trade Mark Attorney at BP p.l.c., where his work includes advising on the registration, enforcement and licensing of trade marks and designs.
Richard joined the profession in 2003, working in private practice for several years before moving in-house.
Kate Swaine, Gowling WLG
Diversity and inclusion
EUIPO and general court decisions
Kate leads the UK trade marks, brands and designs team at Gowling WLG. She is an experienced litigator and works with her clients on both domestic and international IP portfolios. Kate is an expert in managing global enforcement programs and co-ordinates work in over 50 countries.
An expert in all aspects of brands and designs, Kate works alongside her clients to ensure they use their IP effectively and commercially to add to the value and reputation of their businesses - whether that's through the clearance of new products and concepts, training design and marketing teams, developing an intellectual property exploitation strategy, or successfully enforcing rights against infringers. She ensures her clients have what they need to achieve the maximum benefit to the business.
Kate is an Associate member of CITMA and serves on our pro bono working group, promoting the provision of pro-bono services.
Michael Edenborough, Serle Court
UK IPO & UK court decisions
Michael’s practice centres on advice and appellate advocacy concerning the validity, revocation or cancellation of registered IP rights. He is often instructed in cases involving unregistered IPRs such as goodwill, copyright, designs and confidential information. Further, he has been instructed on matters dealing with plant varieties, moral rights, database rights, Geographical Indications, data protection and Freedom of Information requests relating to IPRs, and the calculation of the financial relief and other remedies that might be available.
In addition, Michael acts as an expert witness on points of English law in foreign cases, and as a mediator in IP cases - in particular where the parties wish to adopt the facilitative approach for their mutual advantage.
Michael is an Associate Member of CITMA and is the author of the CITMA publication ‘Contentious Trade Mark Registry Proceedings’ - currently the only guide devoted to the practice and procedure relating to contentious matters before the UK Trade Marks Registry.
Ian Bartlett, Beck Greener
Appeals to the High Court
Ian heads up the trade marks department at Beck Greener. Ian is an expert in trade mark and merchandising law, both in the UK and internationally, and is a skilled practitioner in the fields of copyright and designs.
With over 25 years’ experience of trade mark prosecution and contentious IP disputes, Ian represents clients regularly at hearings before the UKIPO and Appointed Person. He is ranked as the number 3 attorney of the list of trade mark attorneys and solicitors by appearance at hearings before the UKIPO (Source: CITMA Review, Issue 448, March/April 2019). He also runs cases before EUIPO (the EU trade mark and designs office), their Board of Appeal, and works on cases referred to the General Court.
Ian is a Member of CITMA. He serves on our Law & Practice Committee and leads its litigation working group.
David Stone, Allen & Overy LLP
Evidence in registry proceedings
David works with the world’s leading businesses to protect their most valuable asset: their brands. Leading the Allen & Overy global IP practice, he is a distinguished IP litigator specialising in trade marks and registered and unregistered designs.
A solicitor advocate, David also has the benefit of in-house experience having worked in-house with Coca-Cola. In 2017, David was authorised to sit part time as a Deputy High Court Judge.
He is regularly sought after to speak, providing unparalleled narrative and advice around the most crucial IP issues. David is a Research Fellow of the Oxford Intellectual Property Research Centre, and teaches IP, including at the Universities of Oxford, Queen Mary and Alicante.
The second edition of David's book, European Union Design Law: A Practitioners' Guide, was published by Oxford University Press in January 2016.
David is a Member of CITMA and speaks regularly at our events.
Leanne Hall, Serjeants
How in-house clear brands – assessing risk from a commercial perspective
Leanne graduated from DeMontfort University in 2008 having gained an LLB (Hons) degree in Law. After completing her degree, she started working as a trainee trade mark attorney at a large intellectual property firm. She qualified as a trade mark attorney in 2012 and then moved in-house to a large engineering company. Leanne joined Serjeants in October 2016 and advises clients on the protection and enforcement of trade marks.
Leanne is a Member of CITMA and serves on our Events Committee.
Sarah Coomber, Caterpillar UK
How in-house clear brands – assessing risk from a commercial perspective
Sarah joined Caterpillar 6 years ago and recently completed her training to become a Chartered Trade Mark Attorney. She qualified as a UK Chartered Trade Mark Attorney in 2018 and continues to progress her career working in-house at Caterpillar.
Before joining Caterpillar, Sarah obtained her law degree and passed the Legal Practice Course.
Sarah is a Member of CITMA and serves on our Paralegal Events working group.
Gordon Humphreys, Chairman of the Fifth Board of Appeal, EUIPO
Effective dispute resolution in EUIPO Boards of Appeal: Tailoring solutions for business
Gordon holds an LL.B from the University of Buckingham, an LL.M from the University of Wales, and a master`s degree in economic law from the University of Liège as well as a post-graduate diploma from the University of Alicante. He qualified as a barrister of England and Wales and was admitted to the Brussels Bar as an avocat in 1994.
Following a period in private practice in Luxembourg, he joined the Legal Department of the EUIPO in 1997, acting in several of the earliest trade mark cases before the (then) Court of First Instance. He was Head of the Register Service from 2002-2005 before taking up his duties as a member of the Boards of Appeal in December 2005, handling both trade mark and design cases. Since September 2014, he has been Chairman of the Fifth Board of Appeal.
Emmy Hunt, Potter Clarkson
Emmy qualified as a Chartered Trade Mark Attorney in 2008 and is a Member of CITMA.
She has over 10 years of experience in advising clients on brand protection and managing their UK, EU and worldwide portfolios. Emmy specialises in the clearance and protection of trade marks and designs and provides strategic advice for clients seeking to develop, expand, maintain and enforce their rights. Emmy has advised on a wide range of brand protection issues such as certification marks, protection for non-traditional marks and company and domain name watching and enforcement. She has acted in contentious proceedings at the UKIPO and EUIPO and has particular experience with clients in the fashion, technology and media sectors.
Emmy is a member of INTA's Harmonization of Trademark Law and Practices Committee and regularly advises at our CITMA/UKIPO trade mark clinics.
Edwina FitzHugh, Potter Clarkson
Edwina is a qualified UK and European Trade Mark Attorney who advises clients in relation to UK and international trade mark strategy. She manages the portfolios for a variety of clients (from start-ups to large international companies) and specialises in conducting clearance searches and domain name searches, preparing risk analysis reports, filing and prosecuting trade marks, conducting trade mark oppositions, invalidity actions and revocation actions and drafting IP assignment agreements, licences and co-existence agreements.
Before Edwina joined the profession, she worked in marketing and advertising which strengthened her experience in corporate branding and eventually led her to a career in trade marks.
Edwina is a Member of CITMA.
Book an earlybird delegate place until 6th September:
- CITMA members – £255
- Non-members – £310
Regular delegate tickets are available 7th September to 9th October (9am):
- CITMA members – £305
- Non-members – £355
The fee gives you:
- Entry to all the conference sessions
- Access to all the presentations after the event
- A buffet lunch plus refreshments throughout the day
- Drinks reception and canapés
Prices above are VAT exempt.
Drinks reception only
If you can’t make the conference, you can still join us for networking drinks at the ICC from 4.40pm to 6.40pm.
- CITMA members – £36 plus VAT
- Non-members – £46 plus VAT
The International Convention Centre (ICC) is hosting this year's event.
This contemporary purpose built conference and exhibition centre enjoys a prime location in central Birmingham. The ICC incorporates Symphony Hall and is just next to the Library of Birmingham and five minutes' walk from the exclusive Mailbox and Bull Ring shopping centres, as well as Broad Street and Brindley Place.
The ICC's full address is The ICC, 8 Centenary Square, Birmingham B1 2EA.
More information on the venue is available on their website.
If you travel to the conference on Virgin Trains, we’re delighted to offer you a 25% discount on your train ticket. Here are full details.
We’ve also put together a hotel guide in case you need to stay the night before or after the conference. We suggest booking early as demand is likely to be high.
If we can help with anything else, just email firstname.lastname@example.org
- Payment online via debit or credit card only; proforma invoices are not available.
- Full terms and conditions apply.
- Closing date: 9am Wednesday 9th October 2019.