8th November 2018

ICC, Birmingham

Relative disharmony - earlier rights and resolving conflicts

Chaired by Tania Clark, CITMA President, and Richard Goddard, CITMA First Vice-President

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Time Title
9am Registration with light refreshments, exhibition open
10am Introduction

Relying on passing off as earlier unregistered trade mark rights in oppositions
Ese Akpogheneta, Nucleus IP

In UK and EU trade mark legislation, trade marks can be opposed on the basis of unregistered trade mark rights. In the UK these are passing off rights? This session will examine these unregistered trade mark rights and the requirements of the UKIPO and EUIPO in proving them as well as look at cases where reliance on such earlier rights has succeeded and the pros and cons of relying on such rights over registered rights.


Amendments to EU Trade Mark Directive and regulation and its impact on oppositions
Leanne Hall, Serjeants

Leanne will be considering the recent changes to EU trade mark law in relation to relative grounds. In particular, she will be reviewing how this has changed UK law and practice.


Tea and coffee break, exhibition open


Unregistered trade mark rights - a European perspective
Peter Brownlow, Bird & Bird LLP 

What unregistered trade mark rights elsewhere in Europe can be relied upon in EUIPO and non-UK EU member states? Peter's session will examine rights available such as unfair competition available elsewhere and whether it is possible to rely on them in EUIPO and other EU member state oppositions.


Geographical indications and designations
Roland Mallinson, Taylor Wessing

12.55pm Lunch, exhibition open

Commercial ways to resolve disputes
James St Ville, 8 New Square and Richard Goddard, BP p.l.c.


How to get your ducks in a row
Amanda Michaels, Hogarth Chambers 

Join Amanda as she looks at best practice in UKIPO proceedings and beyond. Amanda's session will consider the best way to ensure the evidence remains robust if there is an appeal to the Appointed Person or the High Court and will consider strategies involving multiple oppositions. 

3.35pm Tea and coffee break, exhibition open

Honest concurrent use
Kelly Salliger, CMS

Kelly will be providing a review of the development of the law of honest concurrent use and the how not taking action can result in a junior trade mark owner becoming entrenched. Kelly's session will review case law but also look at circumstances where honest concurrent use has succeeded in opposition cases. 


A round up of UK Appointed Person/court decisions involving earlier rights in the last 12 months
Bonita Trimmer, Browne Jacobson

“Earlier rights” feature in both section 5(4) and section 11(3) of the Trade Marks Act 1994 as, respectively, a grounds for opposition and as a defence to infringement. Bonita will consider the key recent decisions dealing with these. In particular, she will discuss the Caspian Pizza Limited v Shah and the Student Union Letting Limited v Essex Student Lets Limited decisions which shed light on the more rarely used “shield” aspect of such rights.   

5.15pm Summary and closing words
5.20pm Drinks, canapés and networking, exhibition open
7pm Close