Retromark 2025: Event Report (Part 2 - an interview with you – the audience)

Hot on the heels of my Event Report [here], Katfriend Darren Meale of Simmons & Simmons reports on the outcome of his “survey” of last week’s event’s audience:

At the sixth annual Retromark: the conference last week, more than 180 of you showed up to experience an afternoon of trade mark law and practice. But not just that, the audience also participated in a short “interview” which I conducted to try to understand the views of the UK trade mark profession.

I posed eight questions with the help of the interactive presentation software Menti: four on the state of play of trade mark rights before the UK court; two on the differences between the UKIPO and UK court practices; and two on bad faith following the Supreme Court’s decision in SkyKick.

Here’s what the audience told me.

The state of play in the UK courts

Q1: Did the Aldi product take unfair advantage of the reputation of the Thatchers mark?

Right before our first panel discussion of the Thatchers v Aldi lookalike case in detail (click the link for a reminder of the mark and sign), I asked the audience who was right – the trial judge who had found no infringement by way of unfair advantage, or the Court of Appeal which had reversed that and found against Aldi.

The vast majority of participants were with the Court of Appeal on this one:

I then asked about another high-profile case in which the Court of Appeal had overturned the trial judge’s finding of no infringement…

Q2: Was the trial judge or the Court of Appeal right in Iconix v Dream Pairs?

This, of course, was the case in which a big part of the reasons given for overturning the original decision was Lord Justice Arnold’s conclusion that, in the post-sale context, the Dream Pairs logo would be viewed from above at an angle, making it look more like the Umbro logo.

Again, the audience was with the Court of Appeal, but not by such a wide margin:

The audience was then asked to consider how strongly pro-defendant or pro-TM owner the courts used to be before the recent wave of reversals in the Court of Appeal (let’s say, 2-3 years ago), and whether they felt the balance had shifted following that wave of cases. To do that each participant rated the position on a scale of 1 (strongly pro-defendant) to 5 (strongly pro-TM owner). The results (averaged out) were as follows:

I’m no statistician – but these numbers suggest the audience felt the courts have moved from a fairly balanced position to one significantly in favour of TM owners.

The UKIPO versus the Court

It is no secret that the vast majority of trade mark disputes in the UK play out in front of the UKIPO in an opposition or cancellation action. It is also no secret that the UKIPO’s hearing and decision backlog is only getting worse, with it now requiring as many as three years to take an opposition from filing through to a first instance decision – and maybe even longer. I therefore wanted to explore what improvements the profession might like to see at the UKIPO (beyond speeding things up) and what measures might be adopted by the Court to encourage more disputes to be settled there – at least while the UKIPO clears its backlog.

Q5: Would you like to see the UKIPO adopt any of the following court-like processes?

For this question, participants were given five court processes, and asked whether they would like to see them adopted by the UKIPO on a scale of 1 (strongly against adopting them) to 5 (strongly for adopting them).

The picture is fairly mixed. The strongest reaction was in favour of the suggestion that poor behaviour should be punished in costs. Hearing Officers are entitled to award off-the-scale costs to deal with unreasonable behaviour but, in my opinion, show a real reluctance to do so. Clearly, I am not the only one to have been disappointed in this way.

More disclosure – although already theoretically available before the UKIPO – was not particularly popular and neither was more cross-examination of witnesses at final hearings, also already available but rarely used.

Summary judgment was the next most popular measure, perhaps reflecting the current long wait for final hearings. However, after my interview I was assured – by someone who should know – that the UKIPO is already empowered to give summary judgment under its general case management powers, should a party ask for it. But in practice, and for now at least, a request for a summary judgment hearing would face the same lengthy delays as final hearings.

Q6: What might persuade you/your clients to bring a claim in the courts rather than merely rely on an opposition?

By this question, I asked the audience which of six/seven UKIPO-like things which, if adopted by the courts, might persuade them to bring a claim there. Two stood out. The first (with a score of 4.3 out of 5) was guaranteeing that the judge is a trade mark expert – not guaranteed in the court, but by definition all UKIPO Hearing Officers are trade mark experts. So this is clearly important to us. The second, with a score of 4.2 out of 5, was guaranteeing a faster resolution than before the UKIPO. No surprises there.

As I confessed to the audience, this was slightly a trick question, as many of these things are already available in the IPEC and the IPEC Small Claims Track. Although I am biased because I occasionally sit as a judge in it, the IPEC Small Claims Track could be the perfect venue for trade mark cases looking to escape the UKIPO’s backlog: many, if not all, of the judges there are IP experts; the costs risk is minimal; an injunction and even damages are available; and procedure is straightforward. Why then does the track see so few trade mark cases in comparison to the UKIPO?

Bad faith

I ended the interview with two quick-fire questions on SkyKick and bad faith.

Q7: Will SkyKick lead to a reduction in filings for long specs and broad terms?

To my surprise, the audience was feeling very optimistic about the impact of the Supreme Court’s decision in this case – an optimism I am not sure was shared by the panel discussion that followed.

Q8: How do you think we should deal with “computer software”?

With the final question, I looked for a practical answer to the problem of the broad term “computer software”, until now a regular constituent of class 9 trade mark specifications at the UKIPO and the EUIPO. I offered four options, but almost no one picked the first two, the gist of which is that there is no problem left to fix. That is somewhat inconsistent with the answers to Q9, so perhaps practitioners aren’t so convinced by the Supreme Court’s decision after all…

Fascinating insights all round!