2020: Law and practice

8th Apr 2021

Our Law and Practice Committee leads our work on responding to proposed changes to IP law and practice on behalf of our members as well as keeping them up-to-date on the latest developments.

The UK Intellectual Property Office (UK IPO)

Our officers attended the quarterly marks and designs forum (MDF). We also attended regular UK IPO stakeholder meetings, particularly in relation to the impact of the Covid-19 pandemic on the profession and in the lead up to the end of the transition period for leaving the EU.

As has now become a custom, the committee hosted termly visits by senior officers of the UK IPO to its own committee meetings, which provides us with updates as to the latest and upcoming developments at the UK IPO. In return, we can raise directly with the officers of the UK IPO questions on matters of policy or particular points of practice that may be causing difficulty for our members.

The committee has also continued to work with the UK IPO in connection with its marshalling schemes of hearing officers.

European Union Intellectual Property Office (EUIPO)

Despite the cancellation of all in-person meetings with the EUIPO early in 2020 as a result of the pandemic, our officers and members of the various working groups sitting under the Law & Practice Committee continued to attend regular virtual meetings with the EUIPO throughout the year.

Our President, Richard Goddard, supported by our first Vice-President, Rachel Wilkinson-Duffy, attended the annual EUIPO User Meeting and our Immediate Past-President, Tania Clark, supported by our Chief Executive Officer, Keven Bader, attended the EUIPO’s anti-scam meeting.

The EUIPO and copyright and designs working groups continued to attend meetings on convergence programme 11 and 12 and the EUIPO stakeholder quality assurance and panel meetings throughout the year, as well as engaging with the new EUIPO customer panel.

The committee responded during the year to a number of EUIPO consultations and questionnaires regarding CP initiatives and user engagement, including the draft updates to the latest version of the EUIPO official guidelines.

World Intellectual Property Organization (WIPO)

While the annual WIPO meetings in Geneva were cancelled, the committee continued to collaborate with the UK IPO and WIPO throughout the year on substantive issues relating to international registrations, including ensuring that the issues raised within the UK position paper listing our priorities continued to be focused on by the international bureau as a short-term priority.

The WIPO working group contributed to the Joint Statement submitted to WIPO regarding Provisional Refusals, which was co-signed by MARQUES, AIM, ECTA and APRAM.

European Sister Organisations

The annual meeting of the European Sister Organisations, which was due to be held in Turin in March, was cancelled due to the COVID-19 pandemic.

This annual meeting of European stakeholder associations, including representatives from APRAM, BMM, GRUR, ECTA, MARQUES and UNION, whose principal interest is in trade marks and designs, normally provides a useful forum for discussion of matters of mutual interest in the field, including the impact of Brexit.

Issues normally raised during the course of the annual meeting were instead raised by the committee with the European Sister Organisations through informal virtual meetings or correspondence.

Litigation

The litigators’ working group continued to attend the IP court and Intellectual Property Enterprise Court (IPEC) users’ committees and its review of IPEC guidelines. Our annual Litigation Seminar was held virtually in November and once again it was well attended.

Organisation of the marshalling scheme with the IPEC judges continued in a limited virtual form. Discussions regarding the possibility of expanding the marshalling scheme to High Court judges were ongoing.

Designs & copyright

Despite the impact of the pandemic, the Design and Copyright working group had another busy year, including organising a popular webinar near the start of the first UK lockdown on the interplay between copyright and designs, jointly led by John Coldham and Dave Musker.

Other work included contributing to the EUIPO guidelines on designs, providing comments to the UK IPO on Brexit issues and providing updates to members and responding to the consultation on treatment of retained EU case law.