From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 22 October 2015

IP in the Fashion Industry 2015: Part 3

Our first after-lunch speaker at today's IP in the Fashion Industry 2015 conference at Holborn Bars, London, was Annabelle Gauberti (Crefovi, President of the IALCI).  Annabelle explained that fashion and luxury law was underpinned by IP rights, but covered a great deal more too: employment and labour law, distribution and agency, finance and other issues were important too. She also gave an account of her own career, and how she was able to establish a niche for herself in the area as a dual French and English lawyer.

Fashion and luxury sector is "a good wave to surf", said Annabelle, pointing to the many years of double-digit growth which the market has enjoyed.  In terms of dispute resolution, the major conglomerates don't like the publicity that arises from litigation, so settlements out of court are prevalent.  The Court of Justice of the European Union ruling in Case C-170/12 Pinckney [noted by the IPKat here] has made it easier to sue in respect of infringing products that are widely available on the internet, which is good too.

As for the Paris-based  IALCI, Annabelle gave an overview of its activities on an international basis, and its coverage of trade shows.  There then followed an extended question-and-answer session, in which Annabelle fielded whatever the audience could throw at her.

Solicitor Antony Gold then took the stage, taking a look at the practical side of IP fashion dispute resolution. In his experience, fashion houses tended to be claimants in IP litigation: they were divided between smaller, less well resourced and informed businesses and those with deep pockets and a good deal of awareness.  He noted that, in general, larger problems tended to be easier to resolve than smaller ones, and that lawyers were capable of being both part of the problem and part of the solution.

Antony then showed various approaches to addressing a client's IP issue -- one being based on the premise that there was a dispute waiting to be resolved, the other being based on an answer to the question put to the client as to how much the dispute meant to him and what he actually wanted.  In 90% of cases the answer to that question was "remove the other side's garments from being on sale". Keeping communications going is also imperative if the parties can be enabled to resolve their differences between themselves.

Keeping IP dispute resolution cost-effective can be challenging, particularly where many different rights (especially trade marks, copyright and designs) in a range of products is involved.  There were basically three criteria to consider: the merits of a case, its cost and its importance: if any two of those three boxes were ticked, it was usually worth it to dig deep in working to solve the matter; with just one, much less so. The dangers of fiddling around were then addressed: this happens when clients and their lawyers are a bit in two minds whether to write a letter, press a claim etc or not.

When a lot is involved, you have to move up a gear. In-house lawyers must be bypassed so that you can get to speak to the actual designers and understand the issues at first hand. Getting documents from a client can be hard, but should not: many are reluctant to provide them and need reassurance that they will get them back.  It may be important to get a bit bossy in order to push things on.

In terms of documents and evidence, there's nothing to beat genuinely confused consumers. Blog evidence of confusion was misunderstood in the Moroccanoil case (mentioned in the first session).

The final speaker for the day was Judge Melissa Clarke, a Deputy Judge of the Intellectual Property Enterprise Court -- the IPEC. Melissa, who handles disputes that travel through the small claims track,  Melissa mentioned that two more IPEC deputy judges have been lined up -- Nicola Solomon and Richard Vary -- and that they should soon be pressed into action.

Melissa reminded prospective litigants (and their representatives) of the things that are important from her point of view. "Keep your evidence", she urged. Back-of-envelope designs, original documents and suchlike -- these are things that judges like to see,  The IPEC handled mainly copyright cases, plus passing off and unregistered design matters.  The court did most things, but did not grant freezing orders or interim injunctive relief.  The small claims track, being fast and cheap, was increasingly being used by large litigants as well as small ones, especially when their claims were unlikely to be opposed and a summary judgment was the likely outcome.

Expert evidence could be introduced, but was rare on account of the expense involved in a forum in which costs were firmly capped. IPEC offered a multitrack as well as a small claims track, and pre-action disclosure could be secured through the multitrack before opting for the small track.

The court is busy and work is piling up. It can be a year now between the case management conference (CMC) and the hearing, though the introduction of new deputy IPEC judges should ameliorate the position, CMCs are almost all conducted by Judge Richard Hacon, for the sake of consistency, and people who often appear before that court know exactly what to expect. A large proportion of cases settle shortly after the CMC takes place.

Trials are usually split between preliminary and other issues, on the basis of a cost-benefit analysis on the facts as they are known at the time, and judgment comes around six weeks after trial. The IPEC hears more account of profits cases than the High Court, Melissa added.

As to recoverability of costs, the cost-cap is very useful to the parties since it gives them the data they need if they are to assess the risk of liability.  The caps are staged, and court fees are outside the costs cap -- something that many parties misunderstand. There are exceptions to the costs cap, for unreasonable or abusive behaviour, though the court is somewhat reluctant to characterise litigants' conduct as being such.

In terms of popularity of the IPEC reforms, the cap on costs and the case management have turned out to be its most greatly welcomed features. The fact that judgments favourable to small IP owners are actually issued makes it easier for them to protect their rights and assert them against much larger parties.

Following a discussion as to whether the surname of IPEC's Judge Hacon pronounced his name to rhyme with "bacon" or not (which a majority thought it did), the event ended and we all went off back home to ponder on what we had learned today.  Many thanks to all who spoke, and to all who attended.

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