AIPPI Congress Report 3: Brexit, IP in Fashion and Customs & Border Control

A view from the Mary Quant
exhibition at the V&A

On Monday evening, the Victoria & Albert Museum saw over two-thousand attendees pour through its marble and tiled halls for AIPPI's Cultural Evening.  IP lawyers from across the world enjoyed access to the V&A's incredible temporary and permanent exhibitions including the epitome of London fashion for modern women - Mary Quant - and one of the AmeriKat's favorite fashion photographers - Tim Walker.  With the courtyard lit up in the London logo colors and live music playing in the grand lobby and echoing through the Cast Court, the cultural evening was immersed in IP.  Hans Eriksson (Westerberg & Partners) reports on sessions from the next day, Day 2, where debate on Brexit, fashion and customs enforcement continued.

Over to Hans:

"Following Monday’s cultural evening at the Victoria and Albert Museum, spent hobnobbing with the IP glitterati while celebrating all things British (cask ale, football, marmite etc.), it was a sobering wake-up call that the first panel the following morning was on the timely issue of Brexit & IP: an update.

Moderating the panel of government, industry and private practice participants was Daniel Lim, Kirkland Ellis. Himself a Malaysian-born Aussie working in the UK for a US firm, the moderator exemplified the global scope of the panel and the international interest in the Brexit issue. Daniel gave the early morning capacity crowd a quick update on the Brexit state of play, distinguishing between political uncertainty (playing out just a stones’ throw away from the conference center on the steps of the Supreme Court) and legal uncertainty, which was the topic for the morning’s discussion before handing it over to the panellists.

Adam Williams, Director of International Policy at the UK IPO, reiterated that the UK IPO will make certain that the UK remains a world class IP environment after Brexit, no matter the manner of the adieu. He described the organization’s outreach to UK companies and especially SME’s, its publication of technical notices and laser-like focus on mitigating the effects of a no deal scenario. He completed a spirited run-through of the different IP rights and how they may be affected by Brexit, the current state of the Unified Patent Court, exhaustion and enforcement in record time. A crowd question from what was apparently no less than a member of the House of Lords reminded us of the political charge of the Brexit debate (and enabled this foreigner to check off meeting a Lord from his London Visit To-Do List).

The next speaker was Ewan Nettleton, Senior Patent Counsel at Novartis. Ewan described the regulatory challenges and opportunities facing the pharma industry post-Brexit, focusing in particular on the SPC regime, paediatric rewards and regulatory exclusivities. He set out the small but potentially important differences in the regimes as currently understood through a football metaphor, using a picture of the brave Swedish national team (but curiously not this one) and discussed what these differences portend for the industry. The takeaway being that more works need to be done insuring the smooth functioning of the pharma market.

Aurélia Marie, Cabinet Beau de Loménie, followed with a practical view of steps to be taken in the world of soft IP following Brexit, focusing on the comparability of the new UK rights to the EU rights, renewals, recordals and deadlines. In order to prepare for Brexit in whatever form it comes, Aurélia emphasized the importance of working holistically with right holders to review portfolios and commercial agreements in order to protect, manage and maintain rights. Particular care should be given to pending trade mark or design actions before the EUIPO.

The panellists, joined by industry members Bin Sun, Chief Legal Officer at Xiaomi, and Joost Van Ooijen, Director of Intellectual Property at AkzoNobel, proceeded to discuss the broader implications of Brexit for various industries. Striking a cautiously optimistic tone, the panellists agreed on the importance for rights holders to prepare for Brexit now.

The theme of the second panel of the day dovetailed nicely with the Brexit discussion. Seize the Day – customs & border control was moderated by Manon Rieger-Jansen, Bird & Bird, who set the stage by describing the ubiquitousness of counterfeits in 2019 and the global scope of the problem.

Matthew C Wagner, General Counsel PDC Brands, gave the US view. Matthew discussed the different ways US right holders can interact with the US Customs and Border Patrol in order to help the CPB detect, deter and disrupt counterfeiting. He emphasized how rights holders were not yet utilizing important tools like the CPB’s e-Recordation program for trade marks and copyrights enough. On a human level, getting to know your local CPB office and officers and educate them on counterfeits in your field also streamlines the process and enables rights holders to act quickly and forcefully against infringers. On the strategic level, the practice of defensive trademark registrations was also discussed.

The second speaker was Wolf Meier-Ewert, Counsellor IP Division at the WTO. Wolf talked about the WTO’s view of enforcement, based on the TRIPS Agreement. He discussed the current and past work of the TRIPS Council, including a description of pending consultations as well as other current measures being taken at the supranational level.

Turning from the supranational to the local, Jordi Güell, Güell IP, shared some customs enforcement tips and tricks from a Spanish private practice perspective. Jordi emphasized the need for lawyers to be responsive when a customs matters arises for a client, as well as proactive in the creation of product dossiers and other information to customs authorities in order to help them help you. He described the challenge of clients’ budget and time constraints in battling counterfeits and need for local representation in the jurisdictions where counterfeits pop up like daisies.

The best dressed panel of the day was unquestionably the IP in fashion: iconic products, influencers, greenwashing and design lifecycles lunch panel. Moderated by Karen Abraham, Head of IP at Shearn Delemore & Co, the panel discussed the challenges facing the legal function in an international environment with global supply chains.

James Sweeting, Head of Legal at Superdry Plc, pointed out the importance of integrating the legal function as early as possible in product development and to liaise with creatives in order to enable legal to not be viewed as always saying “no” but rather “yes, if…” He also emphasized the necessity of an all-encompassing IP approach in the fashion industry and exemplified it by the nano technology (not the Mork & Mindy one, but arguably equally futuristic) being used in the company’s Indian manufacturing plant.

Rory O’Hare, Senior Counsel at New Balance even mentioned blockchain technology being used by New Balance to trace and verify the authenticity of some severely limited edition sneakers (face it, you don’t understand young people anymore).

To the express delight of the assembled flock of IP lawyers (or is it a “conspiracy” of IP lawyers, as per Sir Robin Jacob’s keynote speech?), Catrin Turner, Head of Global IP at Dr Martens, emphasized the importance of external legal counsel input early on in the planning stages of product development, in order to follow the often tight deadlines imposed by the fashion market. She also mentioned the necessity of strategic thinking in choosing which IP rights to protect, timing issues, disclosure and registration and even trying to understand the driving force behind competitors or counterfeiters in order to proactively block such challenges with a firm steel capped boot."