Experts assemble

22nd Apr 2021

Keeping our distance didn’t mean we couldn’t bring our members together for two memorable days of discussion.

Over two days in March, we welcomed more than 200 delegates, speakers and exhibitors to our bespoke virtual Spring Conference to learn and network together. In an innovation first introduced at our virtual Autumn Conference, each delegate was invited to create an avatar to represent themselves in our virtual world. This allowed them to navigate the platform, ask our speakers questions and visit exhibitors’ stands. For those who weren’t able to take part live, here are some highlights from the conference programme. 

Keynote: Unleashing innovation

In his keynote address on day one, UK IPO Chief Executive Tim Moss set out how IP can help the UK’s economic recovery by “unleashing innovation”.

“IP creates confidence for businesses, investors and creators across the UK. It’s the confidence that an idea has the support to make it off the drawing board when planning to invest and expecting a return when protecting in your ideas. The IP system can and must sit at the heart of this innovation agenda,” he said. 

Tim also shared the news of the start of the UK IPO’s digital transformation strategy, which will build a single integrated system for all IP rights in a common IP system. A new patents system will be delivered as part of phase one, with trade marks and designs to follow in phase two.

Exhausting discussion

Where are we going on exhaustion? This was the question addressed by Michael Silverleaf QC (11 South Square) on the first day.

“The government, having started from the position that the UK should have complete international exhaustion, has moved to a position where we should have regional exhaustion within the EEA,” he told delegates. Michael expressed doubts that there would be support for this stance from within the EU and EEA, given its absence from the free trade agreement. Would it even be allowed under WTO rules?

Michael continued: “Looking at the possibility of regional exhaustion, not only is there probably no support from the EU and EEA for EEA-wide exhaustion to include the UK, there is real doubt whether such an outcome is compatible with WTO rules.”

Indeed, a research paper published recently by a team from UCL, Duke University and the University of Minnesota argues that such an arrangement is illegitimate and would be struck down by the WTO.

Michael concluded with a stark reminder: “We’re entering unknown territory with little or no guidance. We have abandoned a system which had been established for nearly 50 years, and we’re stepping into a future which will be different in innumerable unpredictable ways.”

Earlier in the day, the UK IPO’s Tim Moss had also addressed the issue, saying: “The UK now has the regulatory freedom to choose its own exhaustion of IP rights regime. We will be consulting to determine the most appropriate exhaustion regime for the UK and how any change should be implemented.”

Virtual hearings to be a feature of the future

“It is clear that remote hearings are here to stay in at least one form or another,” intellectual property judge Mr Justice Mellor told delegates in his day-two keynote. Mellor was joined by fellow IP judge Mr Justice Meade to address the impact of COVID-19 on hearings and what IP hearings will look like in the UK in future.

“Although they can be tiring, there have been good things about the numbers of virtual hearings. Looking to the future, I hope that we can take the knowledge of which hearings lend themselves to remote conduct and reduce physical attendance at court if it is not necessary,” said Mr Justice Meade.

Mr Justice Mellor told delegates that a couple of hearings had really brought home the key advantages of remote hearings – access to justice and efficiency. “These hearings involved parties and attorneys spread right across the UK, and naturally the attorneys and clients didn’t have to travel long distances to a hearing room with the attendant costs in time and money.

“There will still be hearings or trials that will be best conducted in a real court or hearing room, but I think we can all expect remote hearings to continue to be prevalent even after the pandemic restrictions are fully lifted.”

The Chancery Division of the High Court, where trade mark and design litigation take place, has coped well with the pandemic and the changes to the way hearings have been conducted, delegates heard. Even in the early days of lockdown, it was carrying out 85% of its usual work and quickly bounced back to almost 100% capacity, Mr Justice Mellor explained.

Conscious that there has been a very sharp increase in the number of UK trade mark filings, which is bound to lead to more litigation, appeals and extra demands in future, Mr Justice Meade was keen to point out that the Chancery Division is ready for whatever comes its way. 

“We will do our level best to make sure that judicial resources are available... Whether that is full judges, deputy High Court judges drawn from the profession or by way of hearings in front of the Appointed Person,” he said.

Both justices invited delegates to provide feedback on both the ongoing use of virtual hearings and which kinds of hearings lend themselves to remote attendance, either through CITMA or via IPEC’s Users’ Committee. 

IPO confirms surge in service demand

There has been a significant increase in demand for UK trade marks and registered designs since Brexit, according to Natasha Chick, the UK IPO’s Divisional Director for Tribunals, Trade Marks and Designs. She shared her insight into how things were looking post-Brexit at the UK registry during a panel session with Catherine Wolfe (Boult Wade Tennant) and Kate O’Rourke (Mewburn Ellis).

Comparing January 2020 to 2021, UK trade mark applications were up by nearly 50%, Natasha explained, and demand for UK registered designs was up some 150% year on year.

Natasha revealed that there had been a dip in demand for trade marks when COVID-19 was first spreading around the globe in spring 2020, but by the summer months demand was booming again – likely caused by small businesses that had started up during lockdown. There was then another increase in demand towards the end of 2020 as represented customers filed UK marks before the end of the Brexit transition period.

The demand for registered designs also dipped around the start of the pandemic, but then increased over the summer. Natasha told the panel that this increased demand for filings had not yet translated into increased demand for tribunal services, but the UK IPO is monitoring this.

Changes of address

There has been a 250% increase in demand for changes to the register, including a particularly large volume of applications to change addresses on newly created comparable rights, Natasha noted. In January, 97% of those requests were handled within 10 working days. In total, 10% of comparable marks were changed to a UK address in January.

Natasha also pointed out that these changes can be made in bulk. If 50 or more need changing, she recommended using the dedicated bulk change of address service, which is available until 30th September 2021. This service is proving popular; 40,000 cases have already been changed using it.

Resourcing

Natasha admitted that there have been delays in issuing examination reports. This was initially caused by the earlier-than-expected surge in demand during the pandemic. Currently, the UK IPO needs around 35-40 working days for trade marks and registered designs – much longer than the usual 10-day target.

“We want to get back to our previous standard of issuing most examination reports within 10 days,” Natasha reassured the panel. “We have recruited more than 100 additional examiners over the past year, with the majority having been recruited since August.”

Most of these new examiners are for trade marks, but extra design examiners have been recruited too. “Our aim is to get back to issuing examination reports in 10 days within the next financial year. We’ve already put new case workers and Hearing Officers into our tribunal service to deal with predicted increases in demand there,” Natasha added. 

Getting to specifics

Kate O’Rourke asked Natasha to clarify the rules governing the letters from examiners to holders of earlier rights. Natasha responded: “For trade marks filed since 1st January, examiners are required to notify all earlier rights holders, including those with comparable marks. For those filed before 31st December, notification is only required for holders of existing UK marks, with other marks being provided for the information of the customer applying for the trade mark.” The advice is to speak to the examiner if you believe this has not been done correctly.

Concerns have also been raised regarding the filing date of UK applications based on earlier EU applications that were pending at 11pm on 31st December. On this, Natasha said: “UK law is very clear on what the filing date is for a UK application, and applying for a UK right based on an earlier EU application doesn’t change that. The Withdrawal Agreement refers to the two applications as having the same deemed filing date.

“The trade marks will not have the dates on them changed, so the filing date corresponds to the earlier EU mark. That’s important for us because there may be situations where customers may not have been entitled to some of the classification terms they made applications for.

“The Withdrawal Agreement is very clear about the application – it needs to be for the same mark with either all or some of the classification terms that were applied for on the earlier EU right.”

When receiving applications, the UK IPO is storing the UK filing date as well as recording the earlier EU filing date as a priority date. You can ensure this is recorded on the filing receipt and registration certificate when applying for a non-word mark by adding the earlier filing date in the text box. For word marks, the examiner will add the information and it will appear on the registration certificate. The UK IPO can reissue the filing receipt if required. 

Natasha confirmed that even if an application has been subsequently refused by the EUIPO, this does not prevent it being filed in the UK, as long as it was pending at 11pm on 31st December 2020. The UK IPO will then make its own decision.

The UK IPO has not received as many applications as expected for UK rights based on EU applications that were pending at the turn of the year. Natasha encouraged delegates not to wait until the end of the available nine-month window.

Confirmation on translation

Natasha also confirmed that there is no deadline for filing English translations of the regulations relating to an EU certification or collective trade mark registration. Nor is there a requirement to do so, as the UK has committed to not requiring any administrative process to gain a comparable right under the Withdrawal Agreement. 

A translation of the regulations might not meet the conditions of the Agreement, and if there is a dispute, the UK IPO can require a translation to be filed, of which the rights holder will receive notice.

Case law covered

In her UK case law update, Jade MacIntyre (Allen & Overy) shared insights on some important UK cases, including that of THE ROYAL BUTLER, a trade mark filed by a former butler to the Prince of Wales and the Duchess of Cornwall. The perennial issue of band names also came up, with Jade addressing cases involving Procol Harum, The Bonzo Dog Doo-Dah Band and The UB40 Experience.

On day two, Nicole Ockl (Haseltine Lake Kempner) updated delegates on some important EU cases, including decisions involving football icon Lionel Messi, Monster energy drinks and China Construction Bank.

Brexit effects discussed

A rise in UK international trade mark designations and the areas most likely to see post-Brexit case law divergence were among the topics discussed on day two by our Brexit panel, featuring Professor Phillip Johnson (Cardiff Law School), Michael Edenborough QC (Serle Court) and Peter Brownlow (Bird and Bird).

Peter suggested that bad faith could be an early area of post-Brexit divergence from the EU. He told the panel that, procedurally, the UK is well suited to dealing with bad faith cases because of the ability to seek disclosure and the ability to cross examine witnesses – particularly on what the intention of the proprietor was. “I can see bad faith being a ground cited much more often in UK cases than in the EU, either at the EUIPO or at the litigation court level,” he told the panel. “Therefore, because there will be more cases here, there is a likelihood that we might see some divergence.” 

The panel also predicted that there could be a lot more litigation in the UK, and the three panel members will be watching how this develops.

Plenary sessions

In a plenary session on IP litigation after Brexit, Dr Brian Whitehead (Haseltine Lake Kempner) gave his thoughts on three areas where we might see divergence: estoppel/acquiescence as a defence, the use of trade marks in comparison lists, and bad faith. He also provided insights on a few areas that may need clarification, notably distinctive character and double identity.

In his own session, Juan Rodriguez Guerra (WIPO) considered current trends in the use of the Madrid Protocol. “Brexit has not had a noticeable impact on the number of international applications filed by UK-domiciled applicants,” he explained. However, Brexit has had an impact on the choice of office of origin. In 2015, 66% of applications by UK-domiciled rights holders were filed via the UK IPO. In 2020 this had risen sharply to 87%.

Between 2010 and 2016 demand for UK designations was steady, with some 4,000 a year designating the UK. However, from 2016 onwards, there was a sharp increase to some 19,000 in 2020.

in-house panel provides niche perspective

Our in-house panel – featuring Diageo’s Louise Butler and David Llewellyn from Arm, and chaired by British American Tobacco’s Ese Akpogheneta – considered the impact of Brexit on their practice. The panellists discussed changes in filing practice and expressed a desire for more certainty and clarity on who can do what before the UK and EU offices.

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