What's next for trade marks in the UK and EU? Report on JIPLP/GRUR trade mark conference

Last Friday (24 November) saw the Journal of Intellectual Property Law & Practice (JIPLP) and GRUR partner up once more to host a half-day event at Allen & Overy LLP discussing the developments in trade mark law in the UK and EU.

Katfriend and IP Associate Natasha Rao (Allen & Overy) reports.

Here’s what Natasha writes:

“The first panel focussed on recent and upcoming changes in EU law, and featured Yann Basire (Université de Haute Alsace and CEIPI - Université de Strasbourg), Karin Sandberg (Harmsen Utescher and GRUR Board Member), Marius Schneider (Attorney-at-law at the Brussels and Mauritius bar and JIPLP Co-Editor), David Stone (Allen & Overy and JIPLP Board Member), and Gert Würtenberger (WK-IP and GRUR President). The moderator was IPKat’s own Eleonora Rosati (University of Southampton and JIPLP Co-Editor).

The panel discussed at length the impact of the recent EU Trade Mark Regulation (EU 2015/2424): Gert Würtenberger and Marius Schneider highlighted the implications of Article 9(4) for goods in transit, whereby customs authorities will now be allowed to detain goods in transit bearing an identical/similar mark no matter where they are destined. However, controversially, this right will be lost if the declarant or holder of the goods can prove in infringement proceedings that the EUTM holder is not entitled to IP protection in the country of destination: both reversing the previous burden of proof and putting new onus on EUTM holders to consider where their trade marks are protected. David Stone separately commented on the Regulation’s positive impact on sound marks, which no longer need to be graphically represented in musical notation: allowing for sounds like the MGM lion roar, or the HBO ‘TV static’ sound, to be more accurately represented on the register.

Sir Richard Arnold

Trade mark enforcement was a hot topic on the panel, in particular the need for harmonised enforcement across the EU, through (e.g.) pan-EU interim injunctions and quia timet relief. David Stone also underlined the need for harmonisation of the unfair competition regime across the EU. He was supported by Marius Schneider, who confirmed that you cannot – for example – rely on unfair competition law as an alternative to IP rights in Belgium, but you can in other jurisdictions (such as Germany).

Karin Sandberg took the floor to discuss the complexities of the Louboutin case (C-163/16), which is pending before the Court of Justice of the European Union (CJEU), and its potential impact on shape and position marks. In particular, she raised and put to the audience the question of whether the value of the mark in question is derived from the colour of the sole, or from the reputation of the trade mark owner itself: a point made by the Advocate General in his recent Opinion (see here).

Yann Basire discussed the interplay between copyright and trade mark law, with a thought-provoking analysis of the recent decision of the EFTA Court in the Vigeland case (here), and the subsequent application of the judgment by the Norwegian Intellectual Property Office (here). 

The keynote address was delivered by Sir Richard Arnold, who addressed the requirement for a trade mark applicant to have ‘intention to use’ and its current status in EU and UK law. The well-known High Court judge, who took the audience carefully through various key cases on the topic (such as the CJEU Lindt case (C-529/07) and the Redbull v Sun Mark case ([2012] EWHC 1929 (Ch)), focussed specifically on the link between intention to use and the requirement for the EUTM holder not to register the trade mark in ‘bad faith.’ Mr Justice Arnold considered that – on the basis of the case law – the lack of intention to use can be proof of bad faith. However, it would not be sufficient proof simply to show that the applicant has a contingent intention to use the mark in the future, or has applied to register the mark in a very broad range of goods and services (where the applicant had a reasonable commercial rationale for doing so).   

Eleonora Rosati and Yann Basire
with Eleonora's students
attending the conference

The second panel addressed UK trade mark law, and was composed of Anna Carboni (Wiggin and JIPLP Board Member), Birgit Clark (Baker & McKenzie and JIPLP Board Member), Gill Grassie (Brodies and JIPLP Board Member), and Darren Meale (Simmons & Simmons and JIPLP Board Member). The panel was moderated by Stefano Barazza (University of South Wales and JIPLP Co-Editor).

Gill Grassie reported on the recent decision in Cartier v BSkyB ([2016] EWCA Civ 658), a landmark judgment on intermediary injunctions in trade mark cases (see here). She also discussed the upcoming Supreme Court appeal on the question of who should bear the cost of implementing blocking injunctions: the trade mark holder or the ISPs? When questioned on whether it would be proportionate for ISPs to have to pay these costs, Gill Grassie agreed that the fact that many injunctions will now be pursued against the ISPs (on the basis of the Cartier decision) should be a factor in the Supreme Court’s assessment of proportionality.

Anna Carboni commented on changes to the law around dealing in ‘grey goods,’ which can now lead to criminal liability and not merely a civil claim for damages and/or an injunction (see R v M (and others) ([2017] UKSC 58, here). In particular, she stressed the difficulties this could raise for parallel importers who have even minor doubt regarding the provenance of the goods for sale in their possession.

Finally, the panel discussed extensively on the topic of Brexit, and its impact on UK trade marks. Darren Meale and Birgit Clark considered that there could be benefits from Brexit, such as greater certainty due to the lack of a CJEU referral process, and a potentially fresh and uncluttered UK trade mark register (if trade mark holders are required to ‘opt in’ to transfer their marks across from the EUTM register). UK courts would also be in a better position to move away from unpopular CJEU decisions: the panel pointed to L’Oreal v Bellure (C-487/07) as a good example of this (in which many, including Sir Robin Jacob, criticised the CJEU for finding that “smell-alike” perfumes can infringe trade marks, even in a situation where the seller tells the buyer that the perfume is a smell-alike) (see here and here) [But what will be the relevance of CJEU judgments issued before Brexit day? So far what we know is in s6 of the Withdrawal Bill]. However, Darren Meale - supported by the rest of the panel – also emphasised that government clarification on the post-Brexit UK trade mark regime is sorely needed.

Lively discussion and debate on the above continued afterwards over wine and canapés.”