Spring Conference 2023: Key takeaways
Some 200 delegates gathered to discuss strategies for success in central London. We have summarised some of the key points from our expert speakers.
Made by bakers, approved by lawyers
Amanda Michaels opened our conference with a keynote on strategies for success. She specifically discussed protecting clients’ get up and packaging.
“Do you register the whole of the packaging? Do you register parts of it?” Amanda asked.
She went on to point out the issues that could arise if you have your brand name on your packaging – if the lookalike has a completely different name it is unlikely to be an infringement, she told delegates.
In the context of caterpillar cakes, Sainsbury’s cake is called Wiggles, is that sufficient to make a difference and how would it work in practice, Amanda questioned.
On the topic of supermarket cakes - ‘made by bakers, approved by lawyers’. Amanda pointed out the quip that Aldi used in its marketing around the relaunch of its caterpillar cake, Cuthbert, following its high-profile dispute with Marks and Spencer where a confidential settlement was agreed.
In-house perspective
Our in-house panel covered a number of important topics. In-house trade mark practitioners from Joseph Joseph, Philip Morris International and Manolo Blahnik formed the panel, chaired by CITMA Immediate Past-President Richard Goddard.
When it comes to co-branding challenges Priti Kocchar outlined some of the challenges. She said that one of the biggest challenges is finding alignment between the two, or more, brands.
Clearance can be tricky too, Priti shared. Even once clearance is obtained the other party could decide they want to change it and you have to go back through clearance again. There is a lot of relationship managing involved, she said.
EU case law update
Jana Bogatz of D. Young and Co looked back at a busy year at the EUIPO, with 117,000 EU trade marks registered during the last year.
Highlighting a wide variety of the cases that the Office has seen this year, Jana particularly drew attention to the importance of appropriately demonstrating consumer confusion with the example of Puma SE v EUIPO and Doosan Machine Tools Co. Ltd.
In this case, the EUIPO ruled that there was a low likelihood of confusion between a lathe manufacturer and a clothing and shoes manufacturer despite both using a similar logo and the same name.
Both this case, and Shopify vs Shoppi, also emphasised the key role of descriptiveness: in both incidents, the name was found to be descriptive.
The path to becoming an AP
Philip Harris, Appointed Person for Trade Marks, took us through his varied career journey.
Following his law degree, Philip got involved with a variety of overseas litigation cases.
He pursued this for himself, qualifying as a solicitor focused on IP. He practiced first in Oxford and then in London.
Philip served as President of CITMA (then ITMA), and later qualified as a barrister. In July 2020, he was placed as Appointed Person – one of nine APs in the UK.
In Philip’s words, training as a barrister made him comfortable with contentious work, and led him to work on the principle of: “What do I need to prove, and how am I going to prove it?”
UK case law update
Simon Malynicz KC discussed a number of UK cases with practical take aways.
Amongst his key points was taking a new point on appeal – which he said “is a reasonably common occurrence”.
He discussed cases with a reliance on facts from other decisions.
The UK IPO “tribunal is supposed to reach primary findings on the evidence before it. It is quite common in UK IPO cases to see the facts from other cases simply recycled as if that is enough”, said Simon.
“Beware, that can be grounds for interfering with a decision,” he warned.
Design protection strategy
Jade MacIntyre and John Coldham provided delegates with practical strategies when it comes to designs.
To have best possible protection strategy, John Coldham suggested, you should protect a wide variety of options.
Unregistered designs can be very useful, John informed delegates, the reason being they are free and are broad.
They can also provide you with the benefit of hindsight when coming to defining the elements you are protecting.
Acquiescence: Key considerations
Denise McFarland laid out the key points that trade mark professionals need to keep in mind when approaching acquiescence.
Taking a broad approach to the EU and UK’s approaches to acquiescence, this session investigated a range of key questions.
She explored Heitech v Heitech, which demonstrated that the acquiescence period can only be interrupted if the actions taken by the claimant were aimed at reaching a legally binding solution and showed adequate due diligence.
Additionally, Denise investigated Vagisil vs Vagisan.
Vagisil, a brand registered in the EU and US for decades, took action against a new brand, Vagisan.
Vagisan claimed that earlier negotiations in 2015 constituted the start of an acquiescence period.
However, this was rejected by the judge, as the negotiations at that time demonstrated that Vagisil would not tolerate the Vagisan brand.
Managing IP risk
David Bloom provided an overview about how IP insurance policies work.
He told delegates: “If a qualifying claim arises the policy will cover the costs of the claim subject to the terms of the policy.”
David made an important point about where an IP owner might not be covered. “If a client knows or ought to know of a claim prior to the policy incepting that claim will not be covered,” he said.
“If a claim arises the client has to obtain an opinion on likelihood of success. Advice must be that claim has reasonable prospects of success,” David told delegates.
We then heard from Redvers Cunningham, a director of PAMIA – the mutual insurance company serving trade mark and patent attorneys in private practice in the UK and Ireland.
He told delegates that since being founded in 1990 around £20m has been paid out in claims, with only £2m paid out in respect of trade mark claims.