Event Report: Trade Mark Conference 2018

Last month, this Kat attended the Thomson Reuters Practical Law 4th Annual Trade Mark Conference at etc.venues in London.

The Impact of Brexit on Trade Marks

After the formal welcomes and introductions, the first Plenary session kicked off by heading straight into everyone’s favourite topic: the impact of Brexit on trade marks. The panel of experts (Kate O’rourke Mbe Senior Counsel, Charles Russell Speechlys; Simon Gray Partner, Tomkins; Simon Malynicz Qc Barrister, 3 New Square; Dominic Farnsworth Partner, Lewis Silkin) considered such questions as: Where are we now? Representation rights during transition and post Brexit; The shape of the UK’s relationship with the EU after the transition period – progress; The shape of IP law in the UK in the longer term; How is the UK IPO gearing up for Brexit?; What should IP lawyers and in-house IP teams be doing to prepare for Brexit?

As readers can probably imagine, the general take-away message was one of uncertainty and concern. For practitioners the message was that whilst there may be a grace period for adjustments post-Brexit, it may be wiser to take action now in order to avoid issues such as being unable to service clients, and the rush to meet EUIPO guides that will likely incur high costs.

The Keynote: Key Trade Mark Cases of the Last 12 months

Benet Brandreth QC (11 South Square) gave an enthusiastic review of some of the most interesting Trade Mark cases in the last 12 months; such as Cartier v B Sky B; Merck KgaA v Merck Sharp & Dohme; W3 v EasyGroup; Puma; and not forgetting the infamous KitKat.

Break-out sessions: Brand Protection on Social Media

The breakout sessions covered: Trade Mark registration and counterfeit challenges in China; and Trade Mark portfolio Management; the interface between Design and Trade Mark; and Brand Protection on Social Media.

This Kat inevitably attended the social media session hosted by Steve Kuncewicz with a presentation from Cam Gatta from the IP Team at Microsoft and Victoria Baxter from the IP Team at King (who make Candy Crush). Each speaker gave an insight into how they deal with infringements on social media platforms and market place platforms such as prioritising, considerations in deciding how and when to take action, monitoring, as well as outsourcing and using AI tools.

Trying to get the marketing department on board
with your IP Strategy like.....
Photo: sad sad sadie 

The take-home messages of this session were:

• Marketing departments and IP Teams should work closely together, in the development of the brand and in the enforcement of the brand. This is particularly prevalent now that negative PR on social media is a growing factor of consideration when choosing whether or not, and how, to take action. A brand’s IP, consumer protection and marketing strategies may be separate documents but they are inextricably connected.
• Technology support and AI tools are super helpful for monitoring BUT should always be used in conjunction with human intervention.
• Enforcing brands on social media platforms is important for protecting brand value, protecting the consumer against confusion, fraud, including fake or infringing support pages, accounts, profiles, advertisements, products and merchandise.

Global Protection and Enforcement of your Brand

The panel for this session included Mark Cruickshank Managing from The Royal Bank of Scotland Group; Diana Koch-Blackman from Digital Brand Services, CSC®; Charlotte Walters Group from Orange; Sarah Wright CMS UK, and was chaired by Katfriend Darren Meale from Simmons & Simmons. The speakers provided insight on their experiences with developing and implementing a global trade mark enforcement strategy, including combating unauthorised content and infringement online.

UK Implementation of 2015 Trade Marks Directive

Mark Holah from Bird & Bird described the impact of the upcoming changes from the implementation of the EU Trade Mark Directive 2015, by the UK 2018/825 Regulations which will come into effect in January 2019. He highlighted key amendments to the Trade Mark Act 1994 such as:

• The expanded definition of a Trade Mark as a result of the removal of the “graphical representation” criteria, which enables the registration of marks such as motion marks, holograms and multi-media marks.
• A new ability for rightsholders to stop goods in transit – coming through the UK – where the goods would be infringing at their destination country.
• The own name defence will be limited to natural persons as a defence to infringement. 
• Rightsholders will be able to bring a claim of infringement in relation to preparatory acts in the use of packaging and labels.

Registration of Non-Traditional Trade Marks

Jeremy Blum from Bristows nicely complemented Marks talk, by going into more detail on the removal of “graphical representation” requirement. He noted that under the new rules it is possible to register marks such as: position, pattern, motion, multi-media and holograms, but that this is an open list, since the reforms are intended to somewhat future-proof the trade mark register.

However, this expansion is also met with the amendment to the absolute grounds of refusal. In addition to shape, the words “another characteristic” has been added. Thus, signs which consist exclusively of the shape or another characteristic which results from the nature of the goods or is necessary to achieve a technical result, or which gives substantial value to the goods, will be excluded from registration. In addition, some of the criteria of the “Sieckmanm 7” has been codified into the new law and therefore some of the same standards still apply, such as signs much be “clear” and “precise”.

Overall it was an insightful and interesting day - see you there next time!