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COVERAGE p TM FILING’S UK VE TRADE MARK ATTORNEYS? p A 2015 CONFERENCE 2015 E E L M HOW TO TO HOW DELEGATE p SAVAGE BERNARD I WHERE DO GATEKEEPER R C INITIATIVES F AIMEDAT 24 RARE IPORARE OPPORTUNITY p CHRIS MORRIS 14

STAR ATTRACTION p JOHN COLDHAM itma.org.uk

May 2015 May

CATHERINE WOLFE p12 WOLFE CATHERINE INSIDE CHINA’S IP CHINA’S THE JOURNAL OF THE INSTITUTE OF TRADE MARK ATTORNEYS THE JOURNAL OF THE

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REVIEW ITMA

ITMA REVIEW May 2015 itma.org.uk itma.org.uk 23/03/2015 09:36

Interbrand Best Global Brands 2013, Top 100 Top 2013, Brands Source: Best Global Interbrand TRADEMARKS.THOMSONREUTERS.COM THOMSON COMPUMARK PROTECTS PROTECTS THOMSON COMPUMARK THE WORLD’S MOST 9 OUT OF 10 OF BRANDS VALUABLE Brands Best Global than 90% of Interbrand’s more a fact, It’s us. EveryThomson to protection their trademark day entrust and brand of trademark helps thousands CompuMark launch, expand and protect the world around professionals brands. strong you? us, shouldn’t trust brands respected most If the world’s OUT OF IFC_ITMA_May_15.indd 1 003_ITMA_MAY15_CONTENTS.indd 3 Senior Sub-editor: Alice Ferns Designer: AlixThomazi Senior Designer:Clair Guthrie Account Manager: Kieran Paul Group Account Director: Polly Arnold [email protected] Advertising: Dalia Dawood, Editor: CaitlinMackesy Davies www.thinkpublishing.co.uk Tel: 020 3771 7200 Street, NW15DH Think, CapitalHouse,25Chapel Published onbehalfofITMA by: [email protected] Richard Goddard, Publications &Communications: [email protected] Law &Practice: Imogen Wiseman, [email protected] Education: PhilipHarris, [email protected] Events: MaggieRamage, [email protected] Executive: CatherineWolfe, Committee chairs Tel: 020 6090 7101 Email: [email protected] 222-225 Strand, London WC2R 1BA ITMA O ce, 5thFloor, Outer Temple, General enquiries ITMA contacts © ITMA 2015 talks orevents. information contained inthe articles, of any kindabouttheaccuracy ofthe no representations norwarranties views oftheInstitute. ITMA makes and donotnecessarily represent the or event are personal to theauthors, in theReview andatany ITMA talk The views expressed inthearticles [email protected] and CaitlinMackesy Davies at email [email protected] please contact HeleneWhelbournby contribute to afuture anarticle issue, are welcome. Ifyou would like to reader suggestions andcontributions members onavoluntary basis,and Review content isprovided by ITMA Review

W Inside issue this out whereyour fi wasrankedrm inthe recent IPO/ITMAevent inBristol, find content, successful readaboutthe amongst enlighteningthen, muchother fl outwardjourney.y onthe You can you mighttake issueto this make time INTAmeetinginSanDiego.Ifso, the better, by Bernard Savage 26 Development How to dodelegation opportunity for members to reach theIPO 24 ITMAevent Chris Morrisreviews arare against financial crime professionals onthefront lineinthefi ght reveals theinitiatives thatare puttingIP 20 Money laundering JaneJarman in UK-based trade markfi lings for 2014? 17 TM fi lings Who were the top 100 agents of therecent G-Star decision litigators shouldtake notice particular 14 DesignsJohnColdham explains why with theBritishEmbassy’s IPO cer inBeijing 12 Interview CatherineWolfe catches up Spring Conference happenings atanoppulentannualITMA 08 Conference coverage Allthe benefits ofourwebsite refresh 06 ITMAonlineKeven Baderreviews the Features explained by retired memberMike Lynd 42 TheTM20Afew favourite things 41 Events Diarydates for ITMA members member moves andaheartfelt InMemoriam 04 ITMAInsider Updates from ourCEO, Regulars be preparingto attend Review issue of the issue ofthe elcome to May the 2015

. Many ofyou will ITMA ITMA

should alreadyknow how to dothis. you areenroute to SanDiego,you how to delegate better. Ofcourse,if of ourSpringConference, andlearn agents, highlights catch the upwith 2014 tableoftrade markfilings by UK reasons for thefailure ofthis Now appeal 40 T-278/13 HarryRowe recounts the Roberto Pescador sell whenitcomes to registration, says 39 T-59/14 Slogans remain adi cult Stephanie Taylor the cruxofargument, reports 38 T-123/14 InBoschtest, similarity is explains AzharSadique the establishedscriptinfinding for Coke, 36 T-480/12 The Court from departed Emma Reeve get mixed messages inSIMPLY, says 35 O/025/15 The publicwas unlikely to a new confectionery markwas descriptive 34 O/024/15 Yana Zhouillustrates why reports MarkCaddle reputation contributed to Imperial’s loss, 33 O/496/14 QuestionsaboutUK Olivia Gregory victorious inthisfashion dispute, writes 32 [2015]EWCA Civ3Rihannaruled concludes DrBrianWhitehead Infringement was almostinevitable, 30 [2014] EWHC 4242(Pat) relief inEnterprise misgivings abouttheJudge’s approach to EWHC 300(Ch) JamesSweeting has 28 [2015]EWHC 17 (Ch), [2015] commentsCase ITMA President Chris McLeod May 2015 01/04/2015 12:54

03 CONTENTS 004-005_ITMA_MAY15_INSIDER.indd 4 04 business structures (ABS). application processfor alternative ran awebcast to explainthe recently, CIPA, inconjunctionwith regulation,weAlso concerning ABS explanations andprovideconcerns greater clarity. latter,is the which we hopewillallay be found atipreg.org.uk,states it that sufficient. Theguidance,whichcan for holdingofclientmoneyis the a secondbankaccountmaintained client accountisrequired orwhether “ontrust” matter atrue ofwhether IPReg haspublishedguidanceonthe andIampleasedto rule reportthat to obtainclarityonthis been trying Matters. CIPA, ITMA,alongwith has compliance Rule11 with –Financial requirements aboutthe forconcerns 20151 January were andthere some from IPReg cameinto force on profession. Thenew CodeofConduct IP in the confusion amongthose a matter hasbeencausingsome that anupdateI start bulletinwith on this Code ofConduct –Rule11 we’ve beenupto sofar. snippets ofinformation aboutwhat busy periodfor us.Hereareafew yearthe proved to beaparticularly fipace and,asusual,the rst quarter of The world ofITMAcontinuesatafast This live webcast, featuring 19 February memberbulletin Highlights andupdates to Keven Bader’s CEO update n sider article in a future issue of the article inafutureissueofthe html. We an willalso becarrying policyreview.tv/conference/1008. viewed athttp://responsive. required by IPReg. Thewebcast canbe evidence documentary place the application processandputtingin step-by-step guideto completing the requirements andincludeda ABSlicensing lookatthe in-depth Maggie Ramage fromITMA,took an HodkinsonfromCIPAKeith and period forperiod us particularly busy year proved to bea quarter of the the first as usual, at afast pace and, ITMA continues The world of to important recapthis information. Review , since this new set-upwasintroduced since this pieces ofwork. Itisjust over ayear volunteer to particular helpwith opportunities for ITMAmembersto workloadthe andprovide more introduced Working Groupsto spread Committees Institute ofthe and we outarestructure of the carried We have mentionedpreviously that Working Groups Council, Committees and to continuingconversation. the weemail mesothat canfeed in them Indianjurisdiction,please the within encountered related to transactions you have you experiencesthat have Vijaythink shouldbeaware, orif particular issuesofwhichyou in early March.Ifyou have any VijayChris McLeodandImetwith Iyer, covering Indianmarket. the appointed anew IPattaché,Vijay You may have IPOhas the readthat IP attachés proceed smoothly. subscription renewal process will we areconfi nextyear’sdent that promptedthat usto allow extra time, Having overcome technical the issues our extended deadlineof31 March. membershipsubscriptions by their Thank you to allmemberswhopaid subscriptions Membership itma.org.uk MAY 2015 01/04/2015 12:20 004-005_ITMA_MAY15_INSIDER.indd 5 MAY 2015itma.org.uk Member [email protected] Working Group,Christian Ziarat leadofourWebinarcontact the at anITMAwebinar yourself, please hear aboutorifyou’re keen to speak certain subjectmatter you’d like to members. Therefore, a ifthere’s will befreeofcharge to ITMA year’s programme ofITMAwebinars We arepleasedto this reportthat ITMA webinars are free! ITMA office. to emailmedirectly orcontactthe to offer to volunteer, pleasefeel free like moreinformation oryou wish what mightinterest you. Ifyou would therefore pleasetake alookandsee Committees andWorking Groups, websitethe Council, aboutthe time to nameforward. puttheir interested andwhohassomespare more volunteers andIurge anyone We would, however, benefit from and by andlarge ithasworked well. There isbasicinformation on spent 13 years &ClerkLLP. atMarks was previously atNovagraaf UKandprior to that fi on7April 2015rm asaSeniorAssociate. Shaun appointment ofShaunSherlock who joinedthe Group andisdelighted to announcethe Potter LLPisexpandingitsTrade Clarkson Mark appleyardlees.com Chris canbecontacted atchris.hoole@ contentious andnon-contentious IP matters. a wealth ofknowledge particularly in Attorney, Chrisjoins asanAssociate andbrings team at its Leeds office. Training as a Trade Mark Appleyard Leeshaswelcomed ChrisHooleto the or [email protected] contacted on08454978655and07469 123 880, Branding Team inManchester. Carolcanbe Carol NyahashaasaTrade MarkAttorney to its Eversheds LLPispleasedto welcome moves London, SW1P 2HT 4 Abbey Orchard Street, clinics take place atThe IPO, and6.00pm.5.30 Currently the The sessions are heldat5.00, at three ofthehalf-hour sessions. who are available to give advice qualified Trade MarkAttorneys For each session, we o„er two sessions available for thepublic. Currently, there are sixhalf-hour discuss trade markqueries. the publiccanputforward and December), where members of month (except August and on thesecond Thursday ofevery Institute holdsfree advice clinics As members willknow, the or [email protected]. ITMA o”ce 6096 on020 7101 contact GillianRogers atthe additional information –please than two ayear –oryou require that you would attend nomore free advice clinics,onthebasis interested inthese intakingpart attorneys to attend. Ifyou are occasions, struggledto find increase thisaswe have, on clinics, butwe would like to that itcancalluponto sta„ these – volunteers needed clinics mark Trade ITMA hasapoolofattorneys . passed away. his many visitsto thecountry whenhe entirely fitting thathewas ononeof remained hisspiritualhome,anditis was aprivilege to have known him. missed by everyone atSpoor &Fisher. It immensely popular, andwillbemuch sharp observation andwit.Hewas combined wisecounsel withkindness, reference works. prestigious international journalsand was acontributor to anumberof legal research anddrafting, and and evolution ofIPlaw, hespecialisedin a complex understanding ofthecontext With ameticulouseye for detail,and much involved inthefirm asaconsultant. partnership in2004,butremained very Jersey in1988.Heretired from the accepting ano–er to joinSpoor&Fisher oŽce inLechlade-on-Thames, before years, Macmanaged asmallsolicitor’s with Kenya For andvisited often. four in 1984,butthey maintainedcloselinks the HighCourt ofKenya. becoming andanadvocate apartner of stayed withthefirm for 25years, firm of Hamilton Harrison & Mathews. He being asked to jointheleadinglocallaw the Registrar General’s oŽce, before 1963. From 1956 to 1959, Macworked in Reserve untilKenyan independence in 1956, andremained intheTerritorial active (operational) duty from 1954 to service intheKenya Regiment. Hewas on was calledupfor compulsory emergency working for alaw fi rm inMombasa,he Nairobi, abriefperiod andthen,after educated atthePrince ofWales Schoolin three. From 1948 to 1953 hewas having arrived there in1939 attheage of for several decades. authority onAfrican IPlaw andpractice of thelegal profession, andapre-eminent and colleague, MacSpence. announces thedeathofourdearfriend sadness thatSpoor&Fisher It iswithprofound 29 January 2015 15 May 1936– Spence (‘Mac’) McAllen William Robert In memoriam: Mac was happy inJersey, but Kenya An a– able andunassuming man, Mac Mac andhisfamily moved to England Mac spentmuchofhislife inKenya, Mac was ahighlyrespected member 01/04/2015 12:20

05 ITMA INSIDER 006-007_ITMA_MAY15_ITMAONLINE.indd 6 06 I continue to launchand support the additional benefitsfor members.To we itdelivers areconfident that and undertaken ITMAoffice by the administrative inthe efficiency tasks functionality aimsto increase of fullnessandsatisfaction. a taste offers afeeling sensationthat and, to cooking analogy, continuethe abetterpublic with userexperience generalmembers ofITMAandthe baked website provides that both project wasto deliver abeautifully In addition, the added In addition,the The ultimate aimofthis of updated lookandfeel. functionality, asplash with of enhancedfeatures and launched anew website full n January, ITMAsoft- ITMA CEOKeven Baderreviews thebenefits of face forface ITMA the organisation’s updated web presence Fresh new the relevant section of the website. relevant sectionofthe the intended to draw visitors quickly into How to ‘Find for advice. anExpert’ • General information aboutTrade • Information aboutcareers inthe • How to join ITMA asamember. • navigation to information about: page (itma.org.uk),providing quick boxes’ top Home acrossthe ofthe introductionof‘featurebeen the maindesignchanges has One ofthe Feature boxes of them onceagain.of them features, we’d like to highlightsome new maximum benefitfromthe membersget the ensure that The increased visibility of these is The increasedvisibilityofthese Marks andIP. Profession. Members Search tools, sostrike a details areviewed Publicand viathe willalsobevisibleifyourpicture that date. You canalsoaddaprofile important to keep your detailsupto (CRM) system, therefore itis Customer Relationship Management our profileissynchronisedwith the majority ofinformation containedin change The to ITMAheadoffice. communicatingthe rather than can update your contactdetails take exciting that new position,you information themselves. So,ifyou abilityto the amendcertain with Institutethe andprovides members information aboutyour activitywith website.profile onthe Thiscontains own memberofITMAhastheir Every Profiles itma.org.uk MAY 2015 01/04/2015 12:21 Feature boxes pose (maybe not a selfi e!) and upload a profi le picture. To access your profi le you will need to be logged in. Search options Talking of search tools, we have made enhancements to the Public Search Tool and the Members Search Tool, so that fi nding an expert for advice or fi nding another member of ITMA is a lot easier. The information returned from any search should be more relevant than from the search via our old website. We have added a map feature so that results can be displayed in that form as well as in a standard list format. As a reminder, ITMA information the Public Search Tool returns results Event booking of Fellow, Ordinary and Corporate Honorary members of ITMA (qualifi ed Trade Mark Attorneys) in private Joining ITMA mentioned above, we are looking to practice. The Members Search Tool We have transformed the application integrate the events fully with our allows you to search all categories of to join ITMA into an online CRM system and enhance the ‘Jobs membership, but to use this facility experience. Again, this means there Board’ facility. We plan to provide you have to be logged in, otherwise are no PDF forms to print, complete, more information about what the you will only be searching as if you scan and return. The information Council, Committees and Working were a member of the public. provided in the online form is sent Groups are working on, so that you through to our CRM, negating the can get a better sense of what ITMA is Membership renewal need for data entry by the ITMA offi ce doing for you and the Profession. We We have added a facility for and allowing us to streamline the will also be trying out new features, individual members to pay their joining process. such as the facility to run mini-polls.

subscription renewals through the I am in no doubt that the website is ONLINE ITMA website. However, in recognition that ITMA information not yet the perfectly baked signature

many fi rms pay membership The website showcases both what dish, but I hope you will all agree 07 subscriptions for their employees, we ITMA is and does, and what the that it is a signifi cant improvement, are in the process of developing this Profession is and does. There is now more modern and more user-friendly facility further. We hope, in time for more information about ITMA in the for both the public and the the 2016 subscriptions, to be able to ‘About Us’ section and we urge all membership. We are always happy to offer a facility through which a members to peruse this. We will receive comments about the website, named contact at a fi rm can settle, in continually review the website to both positive and negative, so please one transaction, the subscriptions for ensure it is fi t for purpose, editing get in touch if you have any thoughts. all those employees who are members and adding content as required, so we and for whom they wish to pay. recommend that you visit regularly. Event booking More to come As ITMA puts on more than 60 events Finally, there are further a year, we wanted to improve the developments in the pipeline and booking procedure for these. Through additional features to try out. In the the new website, events can be second phase of the project, as well as booked online, so there are no more developing the bulk renewals The website PDF forms to print, complete, scan showcases and send. Online bookings can be completed – including payment – by both what both members and non-members. Repeat users should fi nd previously ITMA is and entered information, such as address details, already populated, making does, and the process quicker and easier. Payment is online and booking what the information is fed back into reports, Profession is which are easier for the ITMA offi ce to view, and there is no more data and does entry into spreadsheets or endless piles of paper for us to manage. Membership renewal/Joining ITMA

MAY 2015 itma.org.uk

006-007_ITMA_MAY15_ITMAONLINE.indd 7 01/04/2015 12:22 008-011_ITMA_MAY15_SPRINGCONFERENCE.indd 8 08 enjoys Breakfast atTiˆany’s withAudrey Hepburn 05)Guestsascend to enjoy anightwiththestars 06)Chris McLeod addresses attendees attheGaladinner 03) Baroness Neville-Rolfe, Minister for IP, delivers aspeechto Galaattendees, endorsing thework ofITMA andthe IPO04)CatherineWolfe (BoultWade Tennant) 01) The red carpetisrolled outatMadame Tussauds, thesettingfor theGala dinner02)Guestsmingleamidstthewaxworks attheGala drinks reception AND STEWART RAYMENT PHOTOGRAPHY BY KAT HANNON the CJEU.the Following atea indulgent break with territorial questions scopeandthe referred to importanceabout the reputation, ofCTMswith was examinedby Péter Lukácsi (SBGK).Hespoke case IronandSmith the visual aids.Afterwards, conducting investigations, someevocative with perilsof informed usaboutthe (Cerberus) particular inAfrica. seizing goodsandenforcing legislation,in EU.the facedin We difficulties ofthe learned capturing counterfeits insideandoutside both strategiespresentation onthe involved in (GSK)gaveSarah Jeffery aninsightful 2015. MarkBearfoot (Harley-Davidson) and reform package shouldbefinalby December ofEUlaws.provide harmonisation The further system, whichwillimprove consistency and amendments to Europeantrade the mark Pombo Abogados S.L.P.) updated then usonthe Design System. UKwillseekto HagueInternational the jointhe that service waslaunchedanditconfirmed proposed designsopinion consultation onthe the morning of IPareas.Infact,that towards convergence EUinanumber the with last financialyear. TheUKIPOismoving mark applicationswere UKinthe filedinthe followed, arecord50,000trade announcingthat and caselaw EU. inthe Steve Rowan (UKIPO) importancethe oflegislation ofharmonisation conference ofIPconvergence theme emphasised whosekeynoteRichard Arnold, speechonthe venue andinformed speakers. foodthe andentertainment, to animpressive count,from success –ITMAgotitrightonevery This year’s SpringConference wasacomplete THEOPULENCE IP AMID as ourreporters explain this year’s annualgathering, just oneof thehighlights of A star-studded was evening LONDONON CONVERGES ITMA Next, CameronGowlett andDuncanMee & José MiguelLissénArbeloa(Gómez-Acebo onThursdayFirst HonMrJustice off wasthe

02 01 itma.org.uk MAY 2015

07/04/2015 10:58 cake pops, Matthew Dick (D Young & Co) spoke of the dangers of converging trade marks, focusing on the Yourview v Youview case. On Friday, Dominic Farnsworth (Lewis Silkin) gave a presentation that covered gaming and the law. The case involving the Lady GooGoo game, in relation to which Lady Gaga successfully proved trade mark infringement, was a talking point at the tea break. Amanda Michaels (Hogarth Chambers) and Clare Jackman ( LLP) gave a fantastic talk on the convergence of approach 03 to shape, sound and movement marks. Chris Schulte (Merchant & Gold) then entertained us all with his witty presentation on viewing the EU Specsavers case through the lens of the US mutilation doctrine, and we all learned about “squint tests” and “phantom marks”. Next, trade mark use issues in Europe were highlighted by Anne Marie Verschuur (NautaDutilh NV) and the final speaker was Debbie Roenning (WIPO), who updated us on the expansion of WIPO Members and some improvements that are on the horizon, such as the possibility of the removal of “central attack”. Chris McLeod closed the conference and everyone who attended left in agreement and complete harmony.

Report from Triona Desmond, 04 (UK) LLP SPRING CONFERENCE 2015 SPRING CONFERENCE 09 06

“A great night with a load of dummies”, was ITMA President Chris McLeod’s comment on 05 the Gala event.

MAY 2015 itma.org.uk

008-011_ITMA_MAY15_SPRINGCONFERENCE.indd 9 01/04/2015 12:24 SPECIALIST SPEAKERS

The Hon Mr Justice Richard Arnold’s keynote speech on the conference theme of IP convergence emphasised the importance of harmonisation of legislation and case law in the EU.

07

On Friday, Dominic Farnsworth (Lewis Silkin) covered 10 gaming and the law. The case involving the Lady GooGoo game was a talking point at the tea break.

08

Amanda Michaels (Hogarth Chambers) and Clare Jackman (Norton Rose Fulbright LLP) gave a fantastic talk on the convergence of approach to shape, sound and movement marks. 09

itma.org.uk MAY 2015

008-011_ITMA_MAY15_SPRINGCONFERENCE.indd 10 01/04/2015 12:24 008-011_ITMA_MAY15_SPRINGCONFERENCE.indd 11 10 11 MAY 2015itma.org.uk Madame Tussauds George Clooney at Limited) relaxes with House (Albright IP 1 Whitehall Place 11)Julia main conference venue, and Writing Room atthe Tussauds 10) staircase atMadame 09) Guestsascend the Muhammed Ali up for around with Associates, Jordan) gear Qumsieh (bothNJQand Christodoulou andFiras reception 08)Michalis Hungary) atthedrinks and Péter Lukácsi (SBGK, Fetherstonhaugh, Canada) Lapin (Smart &Biggar (Envoy Renewals), Philip (lto r)CallumSmith 07) The Reading tweets: on the Word addressed attendees CHRIS MCLEOD at Intellectual Property, Kazner Leonardos Anita Cordeiro Guerra, TUSSAUDS SWAY BAR meets modernchicat Victorian grandeur MADAME Withers &Rogers LLP Mark Caddle, their IPassets. assisting businesses to protect the valuable work they do in IPO, andpraised IPspecialistsfor endorsed thework ofITMAandthe Minister for IP. Inherspeech,she company ofBaroness Neville-Rolfe, also hadthepleasure ofthe his usualwitty mannerandguests McLeod addressed theattendees in selfies taken at anITMAevent. set anew record for thenumber of this inmind,theevening may have refreshment withthestars. With ride’, guestswere ableto share a Following theenlightening ‘cab into thehistory ofthehostcity. colleagues asitprovided aninsight particular impactonouroverseas London Ride’. Thismay have had drinks reception ona‘Spirit of were ‘chau eured’ to theopening at Thursday’s Gala Dinnerguests world’s mostfamous museums. And Indeed, itmustrank asoneofthe Madame Tussauds are undeniable. what was to come. for chic andcertainly‘set thebar’ Victorian grandeur andmodern provided awelcome mixof an unocial kick-o . Sway Bar before provided asuitabletimefor on Thursday morning,theevening With theconference commencing Conference were noexception. accompanying thisyear’s Spring never lackvibrancy andthose Events organised by ITMA set the bar events Social Alongside thestarspotting, Chris The playfulness andprestige of 07/04/2015 10:58

11 SPRING CONFERENCE 2015 012-013_ITMA_MAY15_INTERVIEW.indd 12 12 China’s IP Inside IP environment for abriefing onthedeveloping the British Embassy Beijing, IPO with ShiHui, cer at Catherine Wolfe caught up will incorporate discussion ofthese The UKIntellectual PropertyOffice underlying systemic problems. adapts to new system, the andany understandable CTMO asthe growing pains,whichare us isto distinguish between initial clearing examinationbacklogs. delays asresourcesarediverted to and oppositionproceedingshave seen experiencing technical difficulties onlinetrade databaseis the marks adjust to new law. the Inaddition, examination quality asexaminers formalities andinconsistency in around inflexibility onexamination we’vethat seenrelates to concerns its HRsystems. new cadreofexaminers andchanged system. TheCTMOhasalsohireda putting significant strain onthe is mark examinationprocess,this limits for trade variouspartsofthe new statutoryCombined with time single-class applicationsin2014. applications, including2.3million (CTMO) receives huge volumes of system.the through measures ascasesprogress time to impact seethe new ofthe trade system. marks Butitwilltake welcomed Chinese by usersofthe protection for priorrights–were andenhanced made ingoodfaith applicationsare principlethat the changes itintroduced–suchas of the revised ChineseTrademark Law? Looking ahead, the keyLooking ahead,the pointfor So far, most feedback fromusers The ChinaTrademark Office into force on1May 2014. Many Shi Hui:TherevisedLaw came you seeingtheimpact ofthe Catherine Wolfe: How are trade mark squatters. China Also,the againstbarriers moreopportunist CTMOwillhelperect policy by the Proactive implementation ofthis beyond agency’s corebusiness. the for ongoodsandservices marks trade markagencies to directly apply new Trademark Law doesnotallow attorney profession. For example, the quality Chinesetrade ofthe mark includes efforts to improve the tunnel.Positiveof the evidence Not yet, butwe end doseelightatthe entrepreneurial fi lings”)inChina? fi lings(“unexpected third-party turned thecorneronbad-faith Do you thinkwe have fi nally Board (TRAB). Review andAdjudication Trademark CTMO,andthe of the parentministry & Commerce,the State Administration for Industry technical exchanges the with issues into our2015 bilateral INTERVIEW example whereasingle individual targeted, applications,for bad-faith protection against large-scale, includes provisions strengthen that Thisguidance CTMOandTRAB. the review decisions issuedbyand other trade markexamination,opposition courts hearingjudicialreviews to Court hasdeveloped guidancefor applicants. attorneys andbad-faith preventing collusionbetween inChina,aswellindustry as better-regulated Trade MarkAttorney commitment to ahigher-quality, examination, indicatinggovernment Tradethe MarkAttorneys’ several measures,includingreviving Trade MarkAssociation(CTA)issued In addition, the SupremePeople’sIn addition,the itma.org.uk MAY 2015 01/04/2015 12:26 012-013_ITMA_MAY15_INTERVIEW.indd 13 MAY 2015itma.org.uk considering an application through is especially important when applications andspecifications. This of sub-classifi cation whendrafting to take Chinesesystem accountofthe trade markapplicationsystem, and practice national Chinese andthe gapsof the between international sub-classification system. CTMO hasnoplansto change the anticipated.they Currently, the receiving narrower coverage than Offices andoften resultsinapplicants international other is outoflinewith considered “similar”.Thisapproach narrow view onwhichsub-classes are Chinese trade marksystem takes a sub-classes. Moregenerally, the application against anarrow list of usually only cross-check an mark application,CTMOexaminers services. Whenexaminingatrade a list ofstandard items ofgoodsor sub-classes, eachofwhichcontains class into itsown unique system of manner. TheCTMOdivideseachNice examination inahighly mechanical tends to treattrade mark CTMO applications inChina,the Given highvolume the oftrade mark ever beabolished? sub-classifi cation system will Do you thinktheChinese a particularindustry. for in famousinternational marks makes alarge numberofapplications Businesses areadvisedto beaware as a priority in the fias apriorityinthe ling strategy of Mainland Chinashouldbeconsidered Attorneys, what would itbe? you couldgive toUKTrade Mark If there was onepieceofadvice Britain BusinessCouncil(cbbc.org). found website on the China- ofthe IP-focused webinars, whichcanbe has alsodelivered anumberof trade markstatus. TheUK’sIPattaché topics, suchasobtainingwell-known into detailinrelationto particular IPsystemthe inChina anddelving structure of factsheets outliningthe gov.ukOn the website are there provide conciseandup-to-date advice. company.pursued by the legal oradministrative strategy obviously needsto the beinlinewith British companies, this although making representationonbehalfof Embassycanconsider cases, the companies counsel.In some andtheir British experiencewith share this cases eachyear andarehappy to Embassy. We supporthundredsof IPteam British the inthe with UK clientcanget intouch directly A Trade MarkAttorney representinga documentation? in China? Dowe needsupporting contact you forhelpwithaclient Can aTrade Mark Attorney countries orregions. China, incomparison other with scope ofprotection may resultin Madridsystemthe whereadifferent Our onlineresourcescanalso Mainland system. systems fully separate to Chinese the and Macaooperate trade mark Hong Kong should rememberthat being infringed. marketplace to itisnot ensurethat applications andalsomonitor the registrationthe for bad-faith in China,companies shouldmonitor strategy. After obtainingatrade mark is prioritisedinaglobalfiling fi China lings –shouldalsomeanthat system to effectively tacklebad-faith Chinese inabilityofthe – andthe applications suffering frombad-faith infringing products).Thehighriskof companies for (both legitimate and logistics capabilitiesofChinese globalmanufacturing and the China isespecially important given most UKcompanies. Filingearly in Renmin University. a Masters inIPLaw from China Foreign StudiesUniversity andholds enforcement andlitigation. with regards to bothadministrative implementing IPprotection inChina, clients from many countries in law firm inBeijing.Sheassisted Hui was anattorney-at-law for anIP IP-related government agencies. bilateral relations withChinese theIPattachéto build supports engage onIPinChina. Shealso benchmarked asamodelonhow to UK-China IPSalon events are developments inChina. Her informed aboutIPpolicy UK stakeholders become better 2013. Her as theIPOcer (Policy) inJanuary Shi HuijoinedtheBritishEmbassy Shi Hui石慧 Backstory: Finally, Trade MarkAttorneys Shi Huistudied EnglishatBeijing Prior to joiningtheEmbassy, Shi China IP Newsletter IP China [email protected] Wade Tennant is aPartner atBoult Catherine Wolfe helps 01/04/2015 12:26

13 INTERVIEW 014-016_ITMA_MAY15_GSTAR.indd 14 14 attraction attraction Star of G-Star particular notice litigators should take explains why John Coldham D Jeans”) were madeto designof the styles name“Voi (soldunderthe G-Star variousRhodi alleged that Elwood mid-1990s. designfrom the moving away fromG-Star’s successful knee, amount offabricaroundthe “anti-fit” effect andanextreme an kneeswith (three-dimensional) emphasised,– with stretched, bent created “Arc ajeandesign–the Pant” denim fashionbrands. Itsdesigners UK unregistered designrightsinjeans. ([2015] EWHC216), whichconcerned is G-Star Raw vRhodiandothers area offers guidanceinthis case that be consideredcarefully, latest andthe HighCourtitshould case reachesthe protection andenforcement. to clientsondesign advisetheir mark practitioners need to beable ever,than patent both andtrade SupremeCourt.More heard by the later casewillbe year Trunki this the High Court, and Court (IPEC)andthe Intellectualthe PropertyEnterprise G-Star isoneofEurope’sleading inmind,whenadesign this With more cases in both more casesinboth seeing moreand however, we are subject. Now, seen asaniche esign law usedto be Benckiser) has criticised the useof Benckiser) hascriticised the notably in Procter &GamblevReckitt The CourtofAppeal(perhapsmost Expert evidence for would-be litigators. warnings claim, andsomesalutary success whenbringingadesignright requirementsuseful recapofthe for wayin the ofnew law, itprovided a casedidnotprovideWhile the much Useful lessons liable for infringements. those four Rhodicompanies of the were infringed itsdesignrightsandthat proving all nineofRhodi’sstyles that G-Star succeededin (on 6February) 2015.until early February Ultimately QC,reservingjudgment Spearman 2014, Judge, Richard the with which had…becomecommon”. due to sharinggeneric features them similarities to ArcPant is the this styles extent their havethe that denimmarket,trends inthe andto and were “following general fashion reference“without to ArcPant” the not copies.Rather, were they created Rhodi contended itsstyles that were G-Star’s UK unregistered design rights. ArcPantthe and,assuch,infringed The trialtook placeinOctober itma.org.uk MAY 2015

01/04/2015 12:27 014-016_ITMA_MAY15_GSTAR.indd 15 MAY 2015itma.org.uk styles whenrelying onsuch between ArcPant Rhodi the andthe differences expert couldonly seethe Rhodi’s addition to factthat the misleading andunreliable”.In “simply, andsignificantly, wrong… (a factwitnessfor Rhodi)to be found evidenceofEstelle the Moore Ican spot.” are differences that realised, actually, you know, there I peoplethat Moore andother I closely looked work atthe ofEstelle Rhodi’s styles hesaid:“Itisonly when between G-Star’s Arc Pant designand and inrelationto differences the “stylethese ideas”hadbeenused, evidence largely where dealt with ARC usesandthe Pant”.other His similaritiesbetween of the these “compare significance andassessthe would these assist courttothat the He suggestedPant] andafterwards”. date Arc 2007 [the ofdesignthe aspects areexamples, before both late style design of the ideasofwhichthe hehadfoundexpert arguedthat “use for broaderexpertevidence.Rhodi’s wasgrantedpleaded case,permission designs andcommunitydesignright. lack ofsubsistence ofregistered be to prove. Itismucheasierto prove itcan is areminderofhow difficult design rightcasesonly to dropitlater plead commonplace inunregistered frequency whichparties the with G-Star’s designto behighly original, Judge found the evidence). Although expert (but after serviceoftheir plealongbeforedropped this trial of commonplace, Defendants butthe issue casewasonthe evidence inthis unregistered designcases? cases. Butissuchevidenceusefulin expert evidenceinregistered design The problem was that the Judge the The problemwasthat changes toIn lightofthe the forThe originalpermission expert Rhodi must have copied. and persuasive” analysis as to why to behelpfulinproviding “coherent G-Star’s expert evidenceinparticular Judge foundcan beuseful.Herethe general question. step backandanswering amore are beingasked, takinga rather than expert focuses question onthe they strong the andreliable andthat factevidenceisboth the ensure that reminder to partiesto litigation to reliability ofhisevidence. Judge questionedresult, the the wrongway the round.Asa them and asked whichwaswhich,hegot respective pattern piecesinisolation examination hewasshown the However, whenduringcross- and itspurposeispurely aesthetic”. equivalent ArcPant] sectionofthe sameergonomic job[asthe doing the insidelegwas“not piece alongthe pattern Rhodi’s designofathird strongly. For example, hesaidthat to have putsomepointsalittletoo designcorpus. the with of generality whencomparing them pleaded designsattoo highalevel criticised himfor lookingatthe Judge misleading evidence,the strong andreliable evidence is both that the fact litigation to ensure to parties to forceful reminder These events are a However, evidenceisstrong ifthe it These events areaforceful Finally, Rhodi’sexpertwasfound design, andRhodi wasunableto wentand originalitythat into its demonstrate skill,labour the itsabilityto Judge with the accused ofcopying. G-Star impressed a claimantinanactionorcould be you whether arelikelyis true to be designprocess. This document the importanceof the ofbeingable to involvedremind allthose indesign record-keeping, caseshould this was notsimply aresultofpoor evidence disclosure andsatisfactory lackof the casethat view inthis noneexisted.that any independentdesign process supportfor lack ofdocumentary have drawn an inference fromthe telling, Judge appearsto andthe designprocesswasseen as the Thelackofdisclosure of good faith”. Defendants’ scepticalaboutthe “very Judge tosome ofwhichcausedthe be “glaring gaps” inRhodi’sdisclosure, manufacturers”),and by other samples…design ideaswith produced at drawing” and“communicated his (except oneemployee, whowas“bad allegedly designedRhodi’sstyles who a lackofevidencefromthose numerous reasons.Theseincluded burdeninitsfavourthe for Rhodi didnotsucceedindischarging indeed reversed case,andthat inthis in Designers Guild v Russell Williams: burden of proof on copying, as set out alleged independentdesignprocess”. preserve afullpapertrail ofthe Defendantsthe to take careto proving defence: their he“expected standards expected ofdefendants in provided usefulguidanceonthe independently. TheJudge inG-Star design the it cameupwith a designrightclaimto arguethat It iscommonfor adefendant to designThe independent plea Although it was clearly the Judge’s itwasclearly the Although burden was The Judge the held that not result from copying.” that, despite thesimilarities,they did the defendant to satisfythejudge copyright work, theburden passes to defendant hadprioraccess to the been copied, andestablishesthatthe but inthefeatures claimedto have similarity, notintheworks asawhole “If the plainti demonstrates sucient reversedThe Judge consideredthe 01/04/2015 12:27

15 DESIGNS 014-016_ITMA_MAY15_GSTAR.indd 16 16 DESIGNS concluded the difference betweenconcluded the test for infringement ofcopyright. He how itdiffered to corresponding the infringementanalysis test of the and The Judge conducted adetailed Correct test for UKDRinfringement? arguments shortshrift. Courtwillgivesee the such will beencouraging for designers to to anallegation ofinfringement, it itwouldthat be: factories, Judgeblame the said the was so”.WhenRhodiattempted to Rhodi had“reasonto believe this that infringing articles objectively,or that, part its of stylesRhodi that comprised prove actualknowledge either onthe infringement. G-Star therefore hadto secondary caseconcerned the partiesoverseas.by third Asaresult, Rhodi’s productswere manufactured Knowledge any independentcreativityatall. demonstrate ithademployed that The G-Star RawThe G-Star Arc Pant As this isacommonanswerAs this given whether copying hadoccurred”. door ifhehasnotlooked to see not somethingthatcanbelaidathis copying otherpeople’s designsthatis choose to fulfil thoseinstructionsby say thatifthosemanufacturers similar to populardesignsand then manufacturers to produce articles giving general instructionsto foreign escape liability for infringement by copying otherpeople’s designscould of conducting business may result in who isaware oftheriskthathismode “an unfortunate result… ifaperson would-be litigators of designs: he gave shouldbeusefulfor all designs aredirected”. Theguidance eyesthe ofconsumersto whomthe willnotbesignifi they that cant in “any changes areinsubstantial, in photographs ofeach]”.Heheldthat evident fromcomparing [the Arc Pant,Designs and,indeed,the is and configuration ArcPant ofthe substantial shape reproductionofthe stageat the ofinfringement”. subsistence right,rather than ofthe stageof ‘part’comesinatthe of respect wassimply question “the that copyright anddesignrightinthis creating thatdesign.Inthose and e thathehasexpendedort on misappropriation ofthetime,skill obtain protection against unfair exactly orsubstantially, hewill which heclaimsto have beentaken correctly thepart(s) ofhisdesign “Provided theclaimantidentifies Overall, “the Judge heldthat the was seen astelling design process inthis case The lack of disclosure of the Wragge &Co acted for G-Star. [email protected] is aDirector atWragge Lawrence Graham &Co. John Coldham whether there hasbeeninfringement. there whether claimantand,consequently,of the time, skillandeffort andjudgement defendant hasmisappropriated the establish the can then whether rightsare. Thecourt is clearwhatthe court photograph the orarticle,that and, ideally, linked to anactual shouldbesuffithey ciently precise characteristics claimedright, ofthe words inpleadingto representthe one must someform of comeupwith So, itiskey to while rememberthat that are ‘original’.” aspects withintheclaimedright by saying thatthere are some basis, andtheday willnotbesaved it hadbeenadvanced onanarrower fail even ifitmighthave succeeded if widely, thatmay causetheclaimto if hepleadshisdesignrightcasetoo design are also‘original’. Conversely, extent to whichotheraspectsofhis to beserved by investigating the circumstances, nopurposeislikely itma.org.uk MAY 2015

01/04/2015 12:29 017-019_ITMA_MAY15_CORSEARCH.indd 17 I MAY 2015itma.org.uk and the tables on the following tables onthe and the pages 2014made duringthe calendaryear, and 445CTMsfor itspart. LLP, representing366UKtrade marks mark categories wasBarker Brettell ITMA Review ITMA data, whichwascompiled for the CTMs, accordingto Corsearch’slatest filings for UKtrade and 702 marks for This year’s figuresrepresentfilings Marks &ClerkLLP,Marks 570 with billing wastaken by (CTMs) for 2014, top the or CommunityTrade Marks agents for UKtrade marks tally offilings n the by UK . Next in line in both . Next inlineboth CORSEARCH HASONCEAGAIN CRUNCHED THE NUMBERSONWHO’S REPRESENTED THE MOST FILINGSIN2014 over 2014 the calendaryear. arobustCTM filings,with total of382 Stobbs IP moved into placein third and ranking for sixth CTMs (350). topthe 10 for UKtrade (261) marks makes astrong showing, just missing filings. Boult Wade Tennant also trade markfilingsand356CTM 353UK tallies,with fourth inboth Meanwhile, HGFLimited holdsafirm the CTMlist in (353). and fifth volume ofUKtrade markfilings(362), topthe 10 lists, inthe ofboth third made itinto top the 100. those UKrepresentativesthat reflect Withers &RogersWithers LLPappearsin representatives. CTMs werethe filed by top 100 UK 12,094 UKtrade and14,576 marks and Topps Tileskeeping 62. busywith at 115, Diageo cominginat68 with Reckitt Benckiser Batmark tieswith 274. tally ofCTMfilers, Inthe and Legal GlobalTrade with Marks) GlaxoSmithKline (ServiceUnlimited Batmark Limited 236and with active infilingsincludeboth Corporates were most that alsothe mark operations remainactive. representatives only, in-housetrade Overall, figuresrevealthat the While ourtablesrepresentexternal 01/04/2015 12:30

17 2014 FILINGS 017-019_ITMA_MAY15_CORSEARCH.indd 18 18 40 22 29 38 39 37 33 36 35 32 20 10 25 24 41 12 14 26 30 19 16 34 17 13 21 11 7 6 4 2 5 = = = = = 9 8 3 1 = BAILEY WALSH &CO LLP AA THORNTON &CO TRADE MARKDIRECT JA KEMP PAGE WHITE&FARRER NUCLEUS IPLIMITED LEWIS SILKINLLP HARRISON IPLIMITED SILVERMAN SHERLIKERLLP SIPARA LIMITED WP THOMPSON FRANKS &CO LIMITED CLEVELAND PERKINS STEVENS HEWLETT & GILL JENNINGS&EVERY LLP BECK GREENER FORRESTERS TAYLOR WESSINGLLP KILBURN &STRODE LLP DEHNS SWINDELL &PEARSONLTD MATHYS &SQUIRE LLP LLP &GIBBONS WILDBORE HELPLINE LTD THE TRADEMARK LLP BAKER &MCKENZIE NOVAGRAAF UK REVOMARK KELTIE LLP D YOUNG &CO LLP STOBBS BOULT WADE TENNANT THE TRADEMARKHELPLINE & WRIGHTLLP GROOM WILKES MURGITROYD &COMPANY & LORD LLP URQUHART DYKES APPLEYARD LEES WILSON GUNN HGF LIMITED WITHERS &ROGERS LLP BARKER BRETTELL LLP MARKS &CLERKLLP

249 226 264 342 201 201 140 283 326 362 570 130 261 149 149 102 172 147 366 196 166 339 108 337 156 103 129 130 130 353 126 127 127 173 173 123 110 112 119 113 111

44 48 46 62 47 54 63 55 45 43 72 61 50 66 58 51 68 57 59 53 60 ======LIMITED TRADEMARKROOM LIMITED INTELLECTUAL PROPERTY SCOTT &YORK VENNER SHIPLEY LLP CONSULTANTS CO TRADE MARK IRWIN MITCHELLLLP LLP INTERNATIONAL LLP DICKINSONLLP BOND IP21 LTD HANSEL HENSONLIMITED ELKINGTON ANDFIFELLP CHANCERY TRADEMARKS THE TRADE MARKS BUREAU BRIFFA BARON WARREN REDFERN BRAITHWAITE LONDON LLP BATES WELLS & HASELTINE LAKELLP TRADE MARKS LLP CARPMAELS &RANSFORD ABEL &IMRAY MEWBURN ELLISLLP BIRKETTS LLP STEPHENS SCOWN LLP ASSOCIATES LLP ALEXANDER RAMAGE RGC JENKINS&CO & JAMES LLP WYNNE JONESLAINE CONSULTANT LTD BAYER & NORTON BUSINESS DOLLEYMORE LLP SAUNDERS & EAGLE LIMITED TRADEMARK WALKER MORRISLLP WATERHOUSE LLP FIELD FISHER LLP BIRD &LLP

102 101 80 90 84 84 62 62 68 68 68 86 86 99 96 74 77 78 78 76 83 63 63 63 63 85 93 65 65 73 75 71

76 74 94 98 96 80 86 75 93 92 83 89 81 79 = = *Figures represent those filers who are the current current the are who filers those represent *Figures UK agents for CTMs or UK trade marks for which which for marks trade UK or CTMs for agents UK applications where made between 1 January 2014 2014 January 1 between made where applications and 31 December 2014. Where a trade mark’s mark’s trade a Where 2014. December 31 and ownership was transferred from one agent to to agent one from transferred was ownership another during the year, both the first first the both year, the during another representative and the new one are credited. credited. are one new the and representative Figures do not represent WIPO-designated filings. WIPO-designated represent not do Figures ======Total CHAPMAN+CO BRYERS LLP BROOKES BATCHELLOR LLP NABARRO LLP FREEMAN HARRIS SANDERSON &CO LIMITED COLLER IPMANAGEMENT TRADE MARKWIZARDS & COMPANY JEFFREY PARKER MANCHES LLP PENNINGTONS ADMINISTRATION LIMITED MORGAN LLOYD ALBRIGHT PATENTS LLP LONDON IPLTD FRKELLY DLA PIPERUKLLP SERJEANTS LLP MISHCON DEREYA BLAKE MORGAN LLP POTTER CLARKSON LLP LINCOLN IP ROUSE IPLIMITED EVERSHEDS LLP MEI LENGFONG BRABNERS LLP ALBRIGHT IPLIMITED PETER FUHRMAN UKLLP BOGGS SQUIRE PATTON

itma.org.uk MAY 2015

12,094 60 48 46 46 47 47 50 54 54 54 45 45 45 52 52 52 58 58 58 59 56 57 53 53 53 55 55 01/04/2015 12:31

017-019_ITMA_MAY15_CORSEARCH.indd 19 MAY 2015itma.org.uk 20 24 22 28 30 29 26 27 34 23 32 25 38 39 36 37 33 35 10 41 14 18 19 16 17 13 31 15 11 4 2 = = 8 9 6 = 7 3 5 1 BIRD &LLP SHERIDANS SOLICITORS HASELTINE LAKELLP ALBRIGHT IPLIMITED LADAS &PARRY LLP SWINDELL &PEARSONLTD BECK GREENER LLP REDDIE &GROSE LLP OLSWANG LLP KELTIE LLP WILSON GUNN SOLICITORS FREEMAN HARRIS & WRIGHTLLP GROOM WILKES MATHYS &SQUIRE LLP LEWIS SILKINLLP MEWBURN ELLISLLP PAGE WHITE&FARRER TRADE MARKDIRECT TRADE MARKS LLP CARPMAELS &RANSFORD RGC JENKINS&CO & EVERY LLP GILL JENNINGS CLEVELAND HELPLINE THE TRADEMARK JA KEMP & LORD LLP URQUHART DYKES DEHNS MURGITROYD &COMPANY LLP BAKER &MCKENZIE LANE IPLIMITED COMPANY JEFFREY PARKER AND FORRESTERS RAY YOUNG KILBURN &STRODE LLP D YOUNG &CO LLP BOULT WADE TENNANT WITHERS &ROGERS LLP HGF LIMITED STOBBS BARKER BRETTELL LLP MARKS &CLERKLLP

200 204 204 202 220 209 264 702 282 320 445 298 268 277 277 276 382 343 350 356 241 353 182 170 261 134 154 188 189 183 158 177 178 159 195 165 153 141 141 191 151

44 64 48 49 46 43 54 52 68 66 74 67 63 58 65 59 73 57 75 53 55 61 71 51 ======BRISTOWS LLP DOLLEYMORE LLP SAUNDERS & WP THOMPSON WILLIAMS POWELL ASSOCIATES LLP ALEXANDER RAMAGE ABEL &IMRAY DICKINSONLLP BOND SIPARA LIMITED LIMITED PROPERTY MANAGEMENT CHAMPION INTELLECTUAL LIMITED OAKLEIGH IPSERVICES MALLESONS LLP KING &WOOD BAILEY WALSH &CO LLP CLARKE WILLMOTT UKLLP BOGGS SQUIRE PATTON ROUSE IPLIMITED HARRISON IPLIMITED SANDERSON &CO NABARRO LLP FOX WILLIAMSLLP LIMITED TRADEMARKROOM COOLEY UKLLP AA THORNTON&CO JAMES LLP WYNNE JONESLAINE& NOVAGRAAF UK PAISNER LLP BERWIN LEIGHTON BRIFFA VENNER SHIPLEY LLP LOCKE LORD LLP SOLICITORS SILVERMAN SHERLIKER SIMMONS &LLP POTTER CLARKSON LLP APPLEYARD LEES LLP &GIBBONS WILDBORE PERKINS STEVENS HEWLETT & WATERHOUSE LLP FIELD FISHER

120 109 129 126 126 105 134 101 112 121 121 113 113 80 90 84 88 88 98 98 87 87 97 77 77 77 76 76 83 85 73 75 81 71 71

100 80 84 82 92 88 98 89 99 86 96 87 97 78 77 83 85 93 representatives by the top 100 CTMs were filed marks and14,576 12,094 UKtrade figures reveal that theOverall, 91 = = = = = Total ANSONS PROPERTY LIMITED BRIDLE INTELLECTUAL LAW LTD FILEMOT TECHNOLOGY CHAPMAN+CO ASHFORDS LLP NUCLEUS IPLIMITED MW TRADEMARKS LTD JEANETTE WOOD BARON WARREN REDFERN PHILLIPS &LEIGH WALKER MORRISLLP STEPHENS SCOWN LLP JOSHI &WELCH LIMITED ELKINGTON ANDFIFELLP SOLICITORS MISHCON DEREYA REVOMARK DECHERT LLP GLOBAL IPLAW LTD PROPERTY LAW INTELLECTUAL SCOTT &YORK PROPERTY LIMITED RAPISARDI INTELLECTUAL GRAHAM WATT &CO LLP SPEECHLYS LLP CHARLES RUSSELL BROOKES BATCHELLOR HANSEL HENSONLIMITED

14,576 01/04/2015 12:31 40 42 60 48 49 46 46 46 62 43 54 69 66 66 67 67 38 59 37 65 57 55 51 51

19 2014 FILINGS 020-023_ITMA_MAY15_MONEYLAUNDERING.indd 20 20 itma.org.uk MAY 2015 13/04/2015 10:43 020-023_ITMA_MAY15_MONEYLAUNDERING.indd 21 T MAY 2015itma.org.uk sophisticated moneylaundering profession isvulnerable to legal research indicates the that spree to fi nd criminalconduct, required to goonanunpaid detecting practitioner critical. Whilethe isnot legalfrom the andfinancial sector –is – to proceeds ofcrime “freezeout”the actor inapotential criminalenterprise. a portfolio casts attorney asan the over-valuation securitisationof inthe eventadvice inthe ofadeliberate chain of or beingcaughtupinthe assignmentofamark, reviewing the clearance ofaportfolio, or drafting risk. Assisting duediligence inthe activities arehigher regulations, other registration may notbecovered by the plain sight.Whileasimple fuss andcost? Theproblemhidesin compliance anissue?Isitworth the anti moneylaundering(AML) Laundering Regulations (MLR),why is specifi Money c ambitofthe registration the doesnotfallwithin straightforward trade mark low.seem very property sector, can risks wherethe context intellectualthe ofthe keep records)canseemexcessive in prevent money laundering;andto clients; develop asystem to detect and laundering reportingoffi cer; screen compliance; appointamoney (to train inmoneylaundering staff of crime”. to “moneylaundering”and“proceeds Yet rationale rules the behindthe that As itiscommonground 1 Theongoingrequirements legislation pertaining legislation pertaining complythey all with person” must ensure regulated“every Conduct states that he IPReg Codeof techniques. Research alsoshows whether directly orindirectly),whether and such abenefi t (inwholeorpartand from criminalconductoritrepresents criminal property, if: there.” occurred any United partofthe Kingdomifit Unitedpart ofthe Kingdom,or which: criminal conductasthat inSection340,defi(POCA), nes criminal provenance ispivotal. provenance. Thewidedefi nition of disguiseitscriminal further “integration”at the stage inorderto bag marked “swag”. Lawyers areused £10,000client inreceptionwith ina is unlikely alawyer that willfi nd a “integrated” and“clean”.Ofcourse,it money is“layered” inuntilitisfully transactions whichthe through financial system viaaseriesof is to place“dirtymoney”into the benefi ts ofcriminalconduct. Theaim aims to originsofthe disguisethe common defi nition isanaction that is “moneylaundering”?Themost distinctions later. First, whatactually “regulated sector”. Moreofthose can only becommitted inthe by those be committed by anyone, whileothers Some moneylaunderingoffences can Defi ningterms trade marklawyer isnotimmune. credibility to transaction. the The are specifi add c targets, asthey variety oflegal sectors. Infact,lawyers heartland ofconveyancing into a moved beyond traditional the money launderingtechniques have “(a) itconstitutes aperson’s benefi t Section 340(3)defi nes propertyas (b) would constitute anoffence in “(a) constitutes anoffence inany The ProceedsofCrimeAct2002 2 that that insufficient. Thisisarelief! feels lines “this abitodd”is suspicion. Ablanket view alongthe need to bespecifi natureof c aboutthe taking place. moneylaunderingis suspicion that extent, must there be asettled be committed by anyone. Thesecond whichcan Section 327-329ofPOCA, money launderingoffence under Attorney. The fi rst isa“primary” be committed by aTrade Mark are two could typesofoffence that there background, Considering this Potential problems unease would notsuffice.” relevant factsexist. Avaguefeeling of the fanciful,that is morethan isapossibility, there that think which defendantcontext, the must isthat ‘suspects’ anditsaffi liates, inthis word“The essentialelementinthe mostR vDaSilva isthe compelling: succinct defi nition, although The courtshave struggled to provide a reasonable causeto suspect. suspect/reasonable togrounds suspect/ legislation: various guisesinthe is notusedconsistently. Itappearsin cash. Knowledge iskey. benefit neednotnecessarily behard benefi t fromcriminalconduct. The property constitutes orrepresentsa if apersonknows the orsuspectsthat property “becomes”criminal of “criminalproperty”,inthat defielement embeddedinthe nition wide. Thereisalsoacurious represents suchabenefi t.” itconstitutessuspects that or What emerges from the caselawWhat emerges fromthe isa Unfortunately, term “suspicion” the The defi nition inSection340is alleged offender knows(b) the or 3 To that mens rea rea mens

13/04/2015 10:45

21 COMPLIANCE 020-023_ITMA_MAY15_MONEYLAUNDERING.indd 22 22 chain isenough. transactional one smalllinkinthe is no or any respectto rightswith it”.There disposition, movement orownership disguising itsnature,source,location, or disguisingincludes“concealing Section 327(3)states concealing that property orremove criminalproperty. conceal, disguise,convert criminal Section 327makes itanoffence to and transferring Section 327: concealing, disguising possible to slipinto categories. both The problemfor lawyer the itis isthat “regulatedby apartyinthe sector”. report”, whichcanonly becommitted is a“satellite” offence of“failingto a transaction. of ateam ofprofessionals working on of offence, even attorney isone ifthe conduct. Itiseasyto fallinto type this criminal proceedsoftheir clean the launderers seekto useprofessionals to vulnerable to offence, as this noted lawyers that areespecially person”. on behalfofanother or controlofcriminalpropertyby or acquisition,means) the retention, use suspects facilitates (by whatever arrangement whichheknows or inan or becomesconcerned commits anoffence ifheenters into Section 328states a“person that Section 328:arrangement commits anoffence ifhe: According to Section329,aperson and possession Section use 329:acquisition, The FinancialActionTask Force (b) uses criminal property; (b) usescriminal property; (a) acquires criminalproperty; de minimis minimis de clause. Just forming of it,subjectto relevant inadvertently cominginto possession using criminalproperty, orpassively or period. expiration ofaspecified moratorium actualconsentorimpliedis either by offi await cer and then consent,which fi moneylaundering reporting rm’s by waySection 338ofPOCA ofthe National under CrimeAgency (NCA) make disclosure”to an“authorised the offences underSection327to 329to moneylaundering primary the conduct. Itisadefence to any oneof represented benefi the t fromcriminal knowledge property the that defendant the hadrequisitethat component offence is necessary ofthe against organised crime. (SAR) notifi chain cation isalinkinthe Client requests cutsorthere short isunexplained speedrequired incompletion. • Unusualtransaction becauseofsize, nature, frequency ormannerofexecution. • Source offundsisunusual;ahigh-riskcountry isinvolved orthird-party payment is • Multiplebankaccounts are usedwithoutgood reason. • Nointernet presence orpresence involves anunusualdomainname. • Usesanintermediary for noreason. • Evasive aboutbeneficial ownership orsource offunds. • Task Force’s extensive studyofthevulnerabilities ofthelegal profession worldwide What are somewarning signsthatpointto money laundering? The Financial Action beneficial ownership, are: ofwhichthemostimportant identifies anumberof“red fl ags” to aidriskanalysis concerning clientidentity and This offence canbecommitted by possessionofcriminalproperty.has (c) requested for nogood reason. 4 TheSuspiciousActivityReport

mens rea mens . A . A oxygen legal ofthe system. commercial money launderersthe schemeaimstounderpins the deny client duediligence (CDD)that provision. Thehigherstandard of imposition. “gatekeeper” Thisisthe for knowing orsuspecting”seemedan suspect” or“have reasonablegrounds make “know SARswherethey or professionals” 2007 (MLR)apply to “independentlegal The MoneyLaunderingRegulations MLR 2007–inorout? provision oflegal servicesisone “regulatedthe sector”, ofwhichthe requirement in (indeedduty)onthose proved most the controversial. The Section330 inception ofPOCA, At the Section 330:the “gatekeeper” o ences financial orrealpropertytransactions” services…when participatingin 7 providing “legal itma.org.uk MAY 2015 6 , to 5 , 13/04/2015 10:46 020-023_ITMA_MAY15_MONEYLAUNDERING.indd 23 compliance isseenasbest practice. general insurance is“out”,butMLR insurers. Life insurance is“in”and board, ashavemeasures acrossthe Solicitors have adopted MLRclearance new directaccessarrangements. advising ontaxlaw oractingunder wereunless, ofcourse,they barristers interpretation isacriminaloffence. in regulationsandanerror the “relevant person”for purposeof the whether currency), isa or transaction (andduring its to consider,necessary for eachretainer MAY 2015itma.org.uk instructions fromaUKsolicitor to liable. Onarisk-sensitive basis, get itwrong,youif they still remain party to complete for CDDchecks you, possible to regulated rely onanother answer is: “It depends.”Whileitis by aforeign agent? Theonly viable Is itpossibleto rely onMLRclearance CDD: Regulation 17 MLR assets.” money…or other in relationto managingofclient “the as low risk. trade markrenewals would beseen disclosures. Astable clientbasefor are indicated Enhanced DueDiligence procedures when Simplified DueDiligence and system circumstances outliningthe of any transaction. Thereshouldbea benefi cial ownership purpose andthe identityverifi with concerned cation, typeoftransaction. the CDDis typeofinstructions and client,the the protocols natureof arebasedonthe based approach”andany CDD high/low riskareasoflaw. A“risk- metric ofclienttypedemographic and based” approach.Itisbasedupona Initially, barristers were not“in”, The regulationspromote a“risk- 10 andaprotocol for NCA 8 So, it is So,itis 9 nature, document why this is the case. case. nature, documentwhy isthe this type ofintroductionisalow-risk aparticular If you decidethat then to make someform ofriskassessment. Some countriesarenotcompliant. own their AMLrequirements.with instructing you to ensurecompliance you that party arerelying onthe compliance worldwide. Also,“fl ag” which provides asnapshotofAML “equivalent” (including supervision)ofatleast an subject to requirements regulatory the independent legal professional, must besatisfi arean they ed that EEA you jurisdiction. Outsidethe Directive hasbeenenacted inthat 3rdMoneyLaundering and the professional mandatory regulation professional aresubjectto ifthey rely onanindependentlegal EEAyou UK.Inthe mayoutside the obligations. regulatory their undertake work low isvery risk,given vulnerability sector ofthe to “gatekeeper” initiative limitsthe disproportionate burden.The factor, butitshouldnotbea MLR compliance isanadministrative Final thoughts this issue is the IBA’s issueisthe this AMLForum bestinstruction. Whatisthe response? Directive. Atallorderfor ashort At the end of the day, endofthe At the you doneed The positionismorediffi cult The best sourceofinformation on 11 nature to the 3rd natureto 3rd the mark practice. Jane helpsto deliver theprofessional certificate intrade [email protected] is aSeniorLecturer in Law atNottingham Law School Jane Jarman 12 , useful by-product of the regime. regime. ofthe useful by-product rights. Not quite two for one,buta beneficial ownership ofvariousIP definition ofspecifi c retainersand launderers andpromotes the excellent source andup-to-date information. ofimportant 12) http://www.anti-moneylaundering.org/Default.aspx isan compliance theIBAwebsite ismore userfriendly. work beingundertaken. Interms ofappreciating red fl ags in clearance requirements shouldbeproportionate to the professional asagent isa“risksensitive” element.The notes butremember thatyour relationship withaparticular Laundering Steering Group hasprovided someguidance 11) Equivalence isadi¤cult issue. The JointMoney given thenature oftheclient. perhaps simplified duediligence procedures (Regulation 13) by anotherregulated professional (Regulation 17)or lawyers, where theattorney willbeableto rely onclearance especially whenintroduced by otherprofessionals suchas 10) Agood dealoftrade markwork willbelow risk, See Lloyd’s9) ofLondon Market BulletinY4161 (13June08). 8) Regulation 3(9). 7) Regulation 3(1)(d). 6) Iecaughtby theMoney LaunderingRegulations 2007. www.fatf-gafi.org/media/fatf/documents/reports Vulnerabilities ofLegal Professionals (June 2013)http:// 5) FATF Money LaunderingandTerrorist Financing the-sars-regime about-us/what-we-do/specialist-capabilities/ukfiu/ for itsuse.http://www.nationalcrimeagency.gov.uk/ the system for onlineSAR reporting, aswell astherationale 4) The NCA website provides very helpfulinformation asto 3) RvDa Silva [2006]EWCA Crim1654para 16. AboutAML.aspx (October 2014)http://www.anti-moneylaundering.org/ Guide to Detecting andPreventing Money Laundering in conjunction with theABAandCCBE, ALawyer’s Vulnerabilities ofLegal Professionals (June 2013).SeeIBA 2) SeeFATF Money LaunderingandTerrorist Financing Regulated Persons Code”). (2015)(“the for Patent Attorneys, Trade MarkAttorneys andOther 1) Rule11:Financial Matters, RulesofConduct for Conduct 13/04/2015 10:46

23 COMPLIANCE Rare opportunity to reach IPO Chris Morris recounts an evening that o ered updates and insights on the work of the UK O ce

n 12 February, opened with some statistics on the protection of black-and-white marks, LLP continuing buoyancy of the UK’s and CP5, on how to compare trade hosted around 80 national trade mark system. marks with common elements of delegates for a joint Application fi gures continue to rise, little or no distinctiveness, are both ITMA and IPO with around 50,000 new applications settled and in place. Attendees were seminar. The IPO in the year 2014/15. Consequently, the provided with a range of indicative brought almost 40 representatives to IPO has recruited, and is now examples of how the practice will be

24 the event, with a similar training, a new batch of examiners. applied, which should provide a Onumber of ITMA members also useful tool for practitioners. We also attending. The event, a repeat of one Convergence updates heard about the yet-to-be-endorsed held at the same venue two years ago, Abraham also provided an update convergence programme on offered a rare opportunity for the two on various OHIM convergence “surplus”– in other words how much, sides to meet outside of proceedings. programmes, from the UK and what, extra matter needs to be After a welcome from ITMA perspective. CP4, on the scope of added to an otherwise unregistrable President Chris McLeod, Jeremy Dickerson (Head of IP at Burges Salmon) and Sean Dennehey (IPO Director of Patents, Trade Marks & Designs), the fi rst of four presentations from the IPO began. Nathan Abraham, Head of Examination Practice, provided an update on ex parte proceedings. He

The IPO is keen for the conversation with users to carry on

itma.org.uk MAY 2015

024-025_ITMA_MAY15_IPO.indd 24 01/04/2015 12:34 Trade mark application fi gures continue to rise, with around 50,000 new lengthy negotiation process. changes to the application form, applications in the He outlined the UK’s priorities in formalities-type errors in applications negotiations, with a focus on benefi ts have dropped from 88 to 47 per cent. year 2014/15 for SMEs (hence the UK arguing for Following an audience Q&A retention of OHIM search reports in session, the evening concluded with sign to get it over the line. Abraham some form, with formal watching drinks and an opportunity for more indicated that this had proved to be services felt to be prohibitively informal discussions, as well as a tricky area for a common practice, expensive for small business). one-to-one demonstrations of the

with diverging views across Member Haikney stressed the negotiator’s IPO’s work-in-progress online design EVENT ITMA States, particularly in relation to the mantra that “nothing is agreed until application form.

use of colour. everything is agreed”, but provided 25 Oliver Morris followed Abraham examples of where it looks like and gave us an inter partes update, consensus has been reached. also opening with some fi gures. The hope and intention is that While the number of oppositions the process will be concluded continues to rise (15 per cent year on before the end of the Latvian year) the proportion of applications presidency in June. opposed remains broadly static at Finally, Lynda Adams 4 per cent. Processing speeds outlined the IPO’s plans for continue to be impressive, with 84 modernising registered designs. per cent of proceedings reaching a She gave a frank assessment of the decision within 15 months (against a current problems with UK designs, in target of 75 per cent). Next year the particular when compared with aim is for 75 per cent to reach a Registered Community Designs or decision within only 12 months. Case the German system, as well as some management conferences were even more frank comments obtained pointed to as a key driver here. from users. Morris then provided some insights As the system is updated, the IPO is in relation to recent revocation keen for the conversation with users decisions and proof-of-use to carry on so that improvements can requirements. He ran through a continue to be made. Adams pointed selection of tips on how to structure to a statistic that, following evidence, how and what to fi le, and consultation and the resultant some comments on late fi ling of evidence, referring especially to the Gucci decision. Reform review Chris Morris Simon Haikney spoke next, with an is an Associate and Trade Mark Attorney at Burges Salmon LLP update on the EU trade mark reform [email protected] package and the IPO’s efforts in the Chris is a member of the Intellectual Property team.

MAY 2015 itma.org.uk

024-025_ITMA_MAY15_IPO.indd 25 01/04/2015 12:34 026-027_ITMA_MAY15_DEVELOPMENT.indd 26 26 delegation better delegation How to do that pass onatask are simplypassing thebuck Bernard Savage puts anendto theidea thatpeople L only delegate to subordinates inan you assertionisthat can incorrect don’t wantto dothemselves. Another to they giving peopletasks dothat about abdicatingresponsibility and Many wrongly regard itasbeing how aboutdelegation. peoplethink better? Perhaps problemliesin the delegated and how canitbedone of delegation, whatshouldbe going wronginleaders’management developing future leaders.Sowhatis buck” andnotastrategy for delegation isregarded as“passingthe skills training andaculturewhere lack ofinvestment innon-technical compounded inmost fi byrms the ontechnicalother knowledge. Thisis skillsandthe on peopleandsoft different activity. One activitycentres It’sacompletelyshould they? make best the leaders.Andwhy excellent attorneys donotalways over anaptitudeto lead.Intruth, as aselectioncriterion hair to take precedence tendency isfor grey misunderstood. The fi islargelyrms eadership insomeIP itma.org.uk MAY 2015 01/04/2015 12:35 026-027_ITMA_MAY15_DEVELOPMENT.indd 27 MAY 2015itma.org.uk percentage ofyour continuing Ask fee inyour earners fi “What rm: Corporate lessons better received anddelivered. delegationtimescales ensuresthat is Delegating onrealistic tasks practise strong timemanagement. time (even oflower those rank) and Leaders must berespectfulofothers’ results inapoor-quality endresult. project briefislikely to bepoor. This to willfeel “dumped on”anda minute, personbeingdelegated the aredelegatedWhen tasks last atthe implemented istimemanagement. delegation moredifficult andpoorly 3. Can thejobbedoneatalower cost? 2. Who could doitbetter? Who elsecould dothisjob? 1. task to bedelegated: should askinrespectofapotential placed intargeted press. publications andgetting articles taskofproducingclient the aptitude for writingto bedelegated an client events with and those for confident networkers to host activities, itmakes commercialsense in assigningbusiness-development realise £350perhourvalue.Similarly, to complete don’t activitiesthat a£175attorney with per-hourtariff, it ismorecost-effective for John,an has a£350perhourcharge-out rate, fileader and,asapartnerinthe rm, In simple team terms, if Janice isthe matchingthen activityto skillset. of everyone’s fi time inthe and rm costa combinationofcalculatingthe evaluation. How doyou It’s dothat? making aninformed commercial leadership roleandisbasedon rightpeople isa Identifying the to rightpeople. right tasks the Delegation isaboutassigningthe Right tasks,right people what delegation isandisn’t. Key to isrethinking makingprogress organisation, usually directreports. Another thing that makes that thing Another questionsThere arethree aleader 3. People have preferred 2. People are motivated by dierent Engagement ismorethan important 1. corporatefrom the world: fi suchasIPfirms, canlearn rms, professionallessons that services aresomeimportantIn fact,there organisations’these corporate clients. IPfishepherded within asbyrms skills arenotalways ascarefully umbrellaof“peopleskills”. Such the delegation –allofwhichcomeunder business development and,yes, management, marketing and communication skills,time afiwith leadership, rm’s commercial successismoreto do lies,since conundrum where the likely to beunder5percent.Thisis development?” answer andthe is been innon-technical skill professional development pointshave and communicate accordingly. understand thesepersonal di†erences and materials. Leaders needto through touching andfeeling objects world around themvisually, others to anoral brief, someinterpret the them inwriting,others respond better like to have information presented to communication styles. Somepeople appreciation orpublicrecognition? motivated by money, personal be delegating work. Is“John” them andto whomthey are likely to the psyche ofpeoplewhoreport to factors. Business leaders mustknow regularly usingallchannelsavailable. consistent andto communicate employees. Itiscriticalto beclear, done isto focus onengaging boost internal morale andget things waypunishment, butthesmarter to space isgiven to rewards and carrots andsticks. Muchbookshelf [email protected] is aDirector atSize 10½Boots Bernard Savage of tasks onehasbeendelegated.of tasks to challenge ofsuccessfuldelivery the opportunities canbearesultofrising flourish. Promotionsandnew opportunity to grow learn, and Delegation is,after all,an need to have rightmind-settoo. the beingdelegatedleaders, those tasks two-way process.It’s notallabout improvingthat delegation isa 7.Remove obstacles. Ane† ective 6. Give clear instructions. E†ective 5. Transparency isnecessary. Ifpeople 4. Emotional buy-in must come first. It’s important to alsorecognise ways to remove them. getting intheway ofpeopleandfinds leader identifies barriers thatare be done,why, whenandhow. delegation highlightswhatneedsto achieving theirdesired outcomes. activity thatwillcontribute to them delegated, asthey feel it’s apositive be more receptive to whatisbeing goals andmeasures, they are likely to can seehow atask relates to personal a promotion oranew role. asked to personal drivers, suchas the context andrelating whatisbeing invest more timeup-front explaining this principleofinfluence andwill change anddelegate tasks understand Leaders whoare mostableto e†ect them to take actionisanothermatter. and appearto toe theline,butgetting to. They may pay lipservice to ideas People onlydowhatthey really want 01/04/2015 12:35

27 DEVELOPMENT 028-029_ITMA_MAY15_EUROPCAR.indd 28 28 E beats rival Europcar Enterprise the Judge’s approach to injunctive relief Yet James Sweeting hasmisgivings about facing vehicles andsignage. Usewas includinguseoncustomer-green, ‘solus’ form (seeimage overleaf) in Enterprise having usedits‘e’logoin There wassubstantial evidenceof Logos anduse and committed passingoff. Community Trade (CTMs) Marks Registered Trade and Marks Europcar hadinfringed 10 UK new logo,Enterprise alleged that digitalenvironment. the stand for Europcar, particularly in of beingusedasasymbolor‘icon’to deemed moreadaptableandcapable ‘e-moving(the logo’)in2012, whichit refresh, Europcarbegan to usealogo itneededabranddecided that vehicle rental. market UK cent forof the share in the and Europcarhave 50per morethan company. Between Enterprise them, European-based vehicle rental Following introductionofthis the The dispute arosewhen,having Defendant Europcarisalarge rental company world. inthe largestcase, isthe vehicle nterprise, Claimantinthis the Court, 13Januaryand11February 2015 Europcar Group UKandanother, High 300 (Ch), Enterprise HoldingsIncv [2015] EWHC 17 (Ch) and [2015] EWHC services (shown right). services includingvehicle rental registered inblackandwhite for infringement onEnterprise’s CTM The Judge basedhisassessmentof Infringement –colour since the brandsince the refresh: categories hadtaken ofusethat place Judge identifithe different ed three social media. digital environment,includingin also found to beprominentinthe with the word the ‘Europcar’: with iconforas the anapp): with a ‘secondary brand’, for a‘secondary example:with suit, butEuropcarhadappliedto OHIM for markto this berevoked There was a green tradeThere wasagreen markin In considering the Europcar use, In consideringthe

Category 3: 3: Category 2: Category 1: Category for infringement non-use, sothe claim wasstayed pursuantto Solususe(for example, Use in combination Use incombination Use incombination confusion orunfairadvantage. likelihoodglobal assessmentofthe of colour,that isrelevantinthe that signifi publicwith cant portionofthe become associated mindofa inthe in aparticularcolour, andsohas colour, buthas beenusedextensively whereaCTMisnotregisteredthat in be anissue.Specsavers madeitclear in Specsavers) to did notconsiderthis CourtofJustice EU–CJEU the ofthe in onetrial.” UKtoinfringement inthe beresolved regardbetween partieswith to the lifted, soasto issues enable allthe should have to stay agreed the being to saying: that, Inmy view, Europcar criticised Europcarfor notagreeing staythe Judge belifted andthe to mark.Enterprise that asked that 207/2009 (CTMR)insofarasitrelated Article 104 Regulation (EC)No out by Enterprise, which provided the hefavouredthat survey the carried distinctiveness. Jremarked Arnold purpose ofestablishing enhanced to evidenceinfor get this the fromMrJusticepermission Morgan Enterprise hadsuccessfully sought reliable evidenceofconfusion, able to provide Courtwith the notionofconsumersurveysthe being protection. tideisagainst Whilethe mark wasdeservingofenhanced its to propositionthat supportthe had commissionedstreet surveys of useandtrade evidence, Enterprise In additionto evidenceofuse,scope Survey evidence respondents with marketrespondents with sector As it happened, the Judge (citing As ithappened,the context when askingthem whether they recognised the recognised the they whether itma.org.uk MAY 2015 01/04/2015 12:36 028-029_ITMA_MAY15_EUROPCAR.indd 29 infringement on afinding of injunctive relief obtain EU-wide proprietor to potential for the a CTM is the A keybenefit of MAY 2015itma.org.uk latter for former. the Helooked, in Europcar logocouldmistake the Enterprise saw logoandthen the had animperfect recollectionofthe similarity, average the consumer who deal”of was somebut“notagreat Judge found the there Although that Similarity and context caution). assessment (albeitwith nationals shouldbefactored into the and accepted attitudesofnon-UK that transnational natureofvehicle rental person”. Healsoconsideredthe reactions ofasinglehypothetical restricting consideration to the to orarule asinglemeaningrule legal construct and“doesnotamount averageof Appeal,the consumerisa as setoutinInterflora Court IIIby the notionthat, The Judge consideredthe Average consumer similar exercises future. inthe perhapspavingthereby way the for have anenhanceddistinctiveness, fi Enterprise’snding that markdid value” inassisting himto reachhis surveythe evidenceto beof“real Judge confi hehadfound that rmed mark. Inhisjudgmentoncosts, the across the Europcarbrand.across the ‘e-moving logo’wasaunifyingfactor hefelt made itclearthat the particular, context atthe ofuseand the evidenceondistinctivenessthe and burden,as muchof in satisfyingthat Enterprise hadnotgonefarenough case,hedetermined that In this justification for anEU-wide remedy. Claimant to is show there that onusonthe burden, placingthe Article 9(1)(a)andhereversed the not follow samelogicasunder the 9(1)(b) and9(1)(c)infringements did defendant.proof isonthe mark”. Note burden of the herethat trade functionsofthe affect the issue doesnotaffect orisnotliableto signat proves useofthe the that circumstances defendant where“the EU. Thismay casein notbethe extend rule, to entireareaofthe the threatened infringement must, asa against infringement or further uniform protection, a prohibition case –confi to that, ensure rmed (C-235/09) –inpartadoubleidentity of infringement. TheCJEUinDHL EU-wide injunctive reliefonafinding potential for proprietor the to obtain found to there bepassingoff. determining infringement. Healso evidenceofactualconfusion) in with factors into consideration (together aboveon Article9(1)(b),takingthe The Judge found inEnterprise’s favour Decision andrelief In Enterprise, Arnold J said that In Enterprise, Jsaidthat Arnold A key benefi t ofaCTMisthe ownership, exploitation andenforcement oftheirtrade marks. James isalitigation specialistwhoadvisesclients onthe [email protected] is aSeniorAssociate atLewis Silkin James Sweeting Europcar logos is correct.” interpretation lawclear that ofthe Jaccepted:UK. Arnold “Itisfarfrom confusion waspointed towards the accept this as the rightapproach. asthe accept this highercourts will seen whether pan-European relief.Itremainsto be pan-European evidenceto support of having to deploy avast bodyof on aCTM)may alsohave burden the simplyclaimant (rather than relying in9(1)(b)and9(1)(c)cases, a that, outcome reliefhearingmeans ofthe case.However,and passingoff the and confusionto winatrade mark deploying evidenceofdistinctiveness practitioners onsuccessfully provide clearguidancefor The first judgmentappearedto Conclusion The Enterprise marks Solus form logo’ 2012 ‘e-moving CTM Black andwhite (1989) version Pre-refresh 01/04/2015 12:36

29 CASE COMMENT 030-031_ITMA_MAY15_ICECREAM.indd 30 30 van victory van Whitby’s concludes DrBrian Whitehead infringement was almost inevitable, In thisdesignrights case Limited andothers, HighCourt, 17December 2014 Vehicles Limited vYorkshire SpecialistVehicles [2014] EWHC4242 (Pat), Whitby Specialist

T owned Secondand Third by the Mondial,in2006. as the created designinquestion, the known a commercialvanchassis.Whitby involves fittingabodyandinterior to vans UK. Manufactureofthese manufacturer oficecreamvansinthe registered designsandUKUDR. deciding validityandinfringement of approachto ofthe useful summary conventional, decisionsetsouta the issues consideredwere entirely legal the ice creamvans.Although registered trade inrelationto marks The First Defendant wasacompany The Claimant,Whitby, isamajor design right (UKUDR) and design right(UKUDR)and designs, UKunregistered registeredhis caseconcerned itma.org.uk MAY 2015 01/04/2015 12:37 030-031_ITMA_MAY15_ICECREAM.indd 31 MAY 2015itma.org.uk Whetherornotanalleged • law,the key the features ofwhichare: of again setoutadetailedsummary regard J With to UKUDR,Arnold the UKUDR design, infringement wasmadeout. Defendants’ registered vanandthe “minor differences” between the narrow, were given there only that scope ofprotection wasrelatively the was therefore valid.Although character, registered andthe design designs to possessindividual be sufficiently different to earlier the Itwasheldto them. in commonwith designs, andhadanumberoffeatures to beanevolution ofearlier Whitby Althoughitisrelevant to lookat • Similarly, ifaregistered designis • Ingeneral, thegreater thedegree of • points were ofparticularrelevance: applicablelaw. ofthe summary These Mr Justice setoutadetailed Arnold Registered design business wasdisputed. involvement First inthe Defendant’s aforementioned the andhis of Defendant father Fourth wasthe Defendants, The whoarebrothers. test, to bedecidedthrough theeyes to theprotected designisanobjective infringement ismadesubstantially The Mondialwasacknowledged degree offreedom. regard to thedesigncorpus andthe produced ontheinformed user, having consider istheoverall impression respective designs,themainthingto similarities anddierences between design thatdiers only slightlyfrom it. broader scope ofprotection thana corpus, itwillgenerally receive a markedly dierent to thedesign a registered design. the scope ofprotection given to the designer’s freedom, thebroader powerful evidence of copying existence of the mouldwas mark infringement, the As well asconstituting trade UKUDR in19 different designsin decided inafuturecase. issue,whichwillhaveon the to be into UKUDRlaw, hedeclinedto rule designer partofthe creativity onthe importingthereby arequirement of same meaningasincopyright law, “original” inSection213 CDPA hasthe wordprepared to the assumethat difference to outcome case. the ofthis onit,asitwouldrule have madeno butdeclinedto ofthat, correctness retrospective. Jdoubted Arnold the amendmentwasfully the that (IPEC), ithadbeencommonground (Operations) Ltd,[2014] EWHC4034 of DKHRetail LtdvHYoung Property Act2014. earliercase Inthe above, pursuantto Intellectual the aspect of”were deleted fromthe whole orpartofanarticle.” internal orexternal)(whether ofthe shapeorconfiaspect ofthe guration Part designofany ‘design’meansthe Patents Act1988 (CDPA) read:“Inthis 213(2) Copyright, Designsand ofthe Similarly, theissue ofwhetheradesign • The above issue mustbedecidedatan • Whitby alleged infringement of Similarly, Judge was whereas the On 1October 2014 words the “any The originalversion ofSection that samelevel ofabstraction. is commonplace mustbedecided at embodies thedesign. than thatexhibited bythat thearticle will notnormallybeatahigherlevel appropriate level ofabstraction, which is directed. of theperson to whomthedesign has worked asaresearch scientistandanacademicpublisher. Brian holdsanMAinchemistryand aPhDinbiochemistry. He [email protected] is aSeniorSolicitor atKempner &Partners LLP Dr BrianWhitehead finding ofinfringement wasmade. Mondialhadbeencopied,a the lateMondial, andtheir admissionthat between Defendants’ the vanandthe match” Given grounds. similarities the “mustbasis ofthe fit” or“must and most were notexcluded onthe original, most were notcommonplace designswere allthe Judge heldthat various aspectsofitsMondialvan.The powerful evidenceofcopying. existence the mouldwas ofthe constituting trade markinfringement, MORRISON” inreverse. Aswell as cover words bearingthe “WHITBY Mondial’sdrivemould ofthe shaft Defendants’ Facebook page, ofa a photograph, downloaded fromthe copying. However, Whitby produced The Defendants hadoriginally denied Infringement costs orderagainst them. inevitable when presented the with have intransigence causeto their regret necessary. Defendants Ifso,the may madeafulltrial evidence–that with under cross-examinationwhenfaced – denying copying, only to admitit Defendants’ approach to litigation this It may itwasonly the bethat infringement wasalmost inevitable. evidence ofcopying, afi nding of respective strongthe designsandthe ofsimilaritybetweenGiven degree the Summary asto hisinvolvement.truth DefendantFourth hadnottold the involvement,father’s the andthat Defendants were covering uptheir SecondandThird the holding that Defendants’ point, evidenceonthis liable. TheJudge wascriticalofthe Defendantfound Fourth jointly the Defendants’ assertionsto contrary, infringements andalso,despite the Defendants liablefor company’s the The Judge found SecondandThird the Liability 01/04/2015 12:37

31 CASE COMMENT 032_ITMA_MAY15_TOPSHOP.indd 32 32 O Topshop flop fashion dispute, writes OliviaGregory Rihanna ruledvictorious inthis suffered damage because of this. suffered damage because ofthis. product;and(iii)Rihannahas the Rihannaauthorised believing that consumers willbedeceived into image soa substantial number of (ii) Topshop hasmisrepresented the image; Rihanna hasgoodwillinthe would needto beshown (i) that: claim,it a successfulpassingoff For of“passingoff”. grounds on the Topshop’s activities,shehadto doso [2013] EWHC2310 (Ch)). Limited (t/aTopshop) andanother vArcadiaGroupBrandsand others image” (Fentyreproduction oftheir (or anyone else)to controlthe general rightby afamousperson asafree-standing“no suchthing decision fromJustice is Birss,there original UK,assetoutinthe in the of anindividual’simage). However, rights (rightsover reproduction the Spain, itispossibleto establish image US states, France, Germany and to merchandise. useitonthe fromRihannaherself permission Topshop butTopshop didnotseek photographer, waslicensedto by anindependentthird-party image,The copyright owned inthe of Rihanna,asshown page. onthis began to selltops image bearingthe again emerged victorious. 2015on 22January andRihannahas “take abow”. Theappealwasdecided involved to, to quote aRihannahit, timehascomefor but the those entertaininga very caseto follow, an image ofRihanna.Ithasbeen us inrelationto atop, whichfeatured When Rihanna wanted to challenge In someterritories, suchascertain In summary, in2012 Topshop have putonquite ashow for star RihannaandTopshop ver past the few years, pop Others, Court ofAppeal,22 January2015 Others vArcadia Group Brands Limited and [2015] EWCA Civ 3,Robyn RihannaFenty and However, itshouldnotbeconfused image ongoodsisunusual. their has beenableto prevent useof the acelebrity attention factthat andthe The casehasreceived muchpress Unusual attention decision. in reachingthis pastRihanna inthe were allmaterial Topshopthat hasforged with links wasmuchpublicised) and shoot that famous (itwastaken duringavideo image was the as afashionicon,that and known fashionindustry inthe requirements. ThatRihannais successfully metallthree Rihanna upheld onappealthat It wasdecidedby Justice Birss and The Topshop product [email protected] is aTrade MarkAssistant atAppleyard Lees Olivia Gregory ‘passing o ’ on the grounds of she had to doso Topshop’s activities wanted to challenge Rihanna When that wasn’tthere. that linkbetween twoan authorised the in whichconsumerswould assume Topshop amounted to asituation image ofRihannaontops soldby well-knownparticular facts,this instance inthis andonthese that case.Itjust sohappens passing off treated sameway inthe asany other involving acelebrityimage willbe Acase permission. are usedwith imagesinto used the believingthat image whereconsumersaredeceived preventing reproductionoftheir the famous isnotexcluded from be perfectly legal. However, someone anditmay permission oftenwithout of celebritiesbeingreproduced to isnothing stopUK, there images borderline” [63].Therefore, inthe “regard[s] caseascloseto this the Underhill he commentsthat fair competition” [33] and Lord Justice designed to protect apersonagainst reiterates isnot “passingoff that decision,LordJusticeIn this Kitchen beinglegallywith groundbreaking. itma.org.uk MAY 2015 01/04/2015 12:38 033_ITMA_MAY15_IMPERICON.indd 33 CTM territory Imperial cedes O Class 35:Retailing andwholesalingof • Class 25:Clothing, ready-made • EU,offering inthe namely: Opponentwasactually the of those limited to reflect afairrepresentation were Opponent’sEarlierMarks the provided, goodsandservicesof the EU. evidence use inthe Inlightofthe Opponent prove hadbeen putto they Applicantrequestedthe the fi aremorethan Marks ve years old, Trade Act1994. Earlier Marks Asthe UK on Sections5(2)(b)and5(3)ofthe TheOpponentrelied Earlier Marks). IMPERIAL inclasses25and35(the Mark (CTM)registrations for mark the earlier EuropeanCommunityTrade Imperial basisoftwo S.p.A.onthe online andoffline). footwear, headgear andheadwear, various accessories,textiles, clothing, saleof services connected the with (including wholesaleandretail footwear andheadgear) and35 in classes25(includingclothing, IMPERICON asaUKTrade Mark MAY average consumerwillbebusiness wholesale servicesinclass35,the deemed to general bethe public.For Applicant’s goodsandservices was The average consumer ofthe Key factors to theOpponent’s loss, reports Mark Caddle Questions aboutUKreputation contributed shops and department stores.shops anddepartment footwear, hats, capsandjewellery via ready-made clothingandaccessories, neckties andhandkerchiefs. jerseys, bomberjackets, overcoats, namely coats,jackets, shirts, trousers, clothing for ladiesandgentlemen; The Applicationwasopposedby 2015itma.org.uk to register mark the and ApparelGmbHapplied n 13 March2013, ICMusic Imperial S.p.A., UKIPO, 20November 2014 O/496/14, ICMusicandApparel GmbHv 2. There2. isalow-to-moderate degree Overall, there isalow-to-moderate 1. following assessmentwasmade: by businessesto businesses). other consist of commercial services offered e-commerce andadvertising, which exceptionthe ofsomerelated to application(with in class35ofthe reasonably similarto claimed those Opponentare services ofthe same departmentsofretailoutlets. areoften found Also, they inthe goods. Theyare,therefore, similar. Applicant’s footwear andheadgear held to serve samepurposeasthe the Opponent’sclass25goods werethe identical to goods.Inaddition, these were EarlierMarks by heldto the be itemsTherefore, clothing covered the footwear andheadgear” inclass25. for broadterms “clothing, the negotiation duringpurchasing. increased level ofattention and services willgenerally involve an consumers andaselectionofthese be pronounced identically. The word syllables, butonlythefirst syllable will The marks athandcomprise four of aural similarity between themarks. -CON and-AL are very di‡erent. marks are identical,buttheendings the marks. The initialsixletters ofthe degree ofvisualsimilarity between In comparing the marks, the class35 the It wasalsoheldthat The Applicationclaimedprotection Withers &Rogers represented theApplicantinthiscase. [email protected] is anAssociate atWithers &Rogers LLP Mark Caddle of the Applicant. of the award ofcosts wasmadeinfavour was refusedinitsentiretyandan were unsuccessful.TheOpposition assertions pursuantto Section5(3) to UK the such reputationdoesnotextend maymarks bereputed EU, inthe Opponent’s the consumers. Although promotional material targeted atUK evidence ofadvertising UKor inthe UK.However,in the was no there enjoyits EarlierMarks areputation Section 5(2)(b)failed. oppositionunder basis,the On that level ofaural andvisualsimilarity. low-to-moderate their offset marks conceptual differences between the identicalgoodsandservices. The with areusedinconnection marks the likelihood ofconfusion, even when isno IMPERICON willnot,there averageby the UKconsumerand Since IMPERIALwillberecognised Decisions 3. The marks were3. heldto be The Opponent also alleged that The Opponentalsoalleged that as itisaninvented word. be unknown to theaverage consumer contrary, themark IMPERICON will due to itsobvious meaning.Onthe recognise theword IMPERIAL UK consumer willimmediately conceptually di‡erent. The average endings soundquite di‡erent.

per se per . TheOpponent’s 01/04/2015 14:00

33 CASE COMMENT 034_ITMA_MAY15_BLOND.indd 34 34 for Sonafi for No sweet ending T ex parte ex Applicant. TheApplicantsoughtan however, essentially aboutthe chocolate. Thesesourceswere, term “blond”descriptivelythe for articles inwhichpartieswere using persuaded andreferred to internet “chocolate”. TheExaminerwasnot specification berestricted to The Applicantrequested the Shades ofblond to bedescriptive confectionery markwas decided Yana Zhouillustrates why anew blond incolour. is that goods,egconfectionery the to designate characteristics the of of asignwhichmay serve intrade markconsisted the that exclusively Trade Act19943(1)(c) ofthe Marks – application underSection3(1)(b)and The UKIPOprovisionally refusedthe andconfectionery.including pastry UKforthe arange ofcocoaproducts No. 1155277 BLONDdesignating for International Registration registration assoonpossible. marketplace andoffiling for a a markisbeingusedinthe a descriptive sense,ofnotinghow one’suseofabrandthat isnotin registration vague basedonthe itwouldthat to beincorrect deny usual way ofdesignatingchocolate, would differ signifi cantly fromthe flavour chocolate, “blond” ofthe that colourisnotassociated the that with normally usedto describechocolate, hair colour, “blond”isnot that “blond” almost exclusively refers to provided several submissions: that The Applicant,Sonafi, applied In the Hearing, the Applicant Hearing,the In the of the importanceof the ofensuring decisionremindsus in this he HearingOfficer’s reasoning Hearing. 12 January2015 O/024/15, BLOND, UKIPO, included third-party uses of the word usesof the included third-party Examiner).Thesesources by the to internet sourcesreferred the to Hearing Officer referred (inaddition internet sourcesto other whichthe a bigleapwere itnotfor various the chocolate. colour)ofthe (ie the consumers to describe a characteristic it would beunderstood by average when usedonchocolate products, refer to alightbrown shade–so word would that beunderstood to section 3(1)(c),“blond”isacommon Offi inrelationtocer concludesthat, is usually aprecursorto anappeal. Officer’s decision–sucharequest Hearing reasoning behindthe a form TM5andrequested full the convinced. TheApplicantsubmitted to Applicant. the raised Examinerreferred by the internet references the and that wish to useit(Case0/391/12 Sushi) traders other maypossibility that Such aconclusionmay have been Hearing In herreasoning,the The HearingOfficer wasnot also lack any distinctive character the characteristics of goods itwill If amark is entirely descriptive of name matters for clientsacross arange ofsectors. Yana handlesvarious trade mark,design,copyright anddomain [email protected] is aSolicitor atStobbs (IP) Limited Yana Zhou lingers alittlelonger. bitterthat aftertaste unfortunately particularApplicant,though, For this potentialhas the to bedescriptive. momentum grows inabrand that of filing for aregistration before importancecase remindsusofthe more orless“solidifi ed”. Indeed,the registered protection for BLONDwas was fi fate appropriateled, the ofthe Officer. application timethe Bythe of “blond”found Hearing by the descriptivebecause ofthe uses likely to have beenadifficult case application. However, itwasalways signmayof the have its undermined Applicant’sown case,the use In this Conclusion distinctive character. itwillalsolack anyservices then characteristicsthe ofgoodsor mark isentirely descriptive of ifa basisthat objection onthe Section3(1)(b) maintained the refusal underSection3(1)(c)grounds. Accordingly, shemaintainedthe filing date ofSonafi ’s application. dated– oneofthem before the chocolate” and“blondbrownies” referred toand recipesthat “blond “blond” descriptively for chocolate Further, HearingOffi the cer itma.org.uk MAY 2015 01/04/2015 12:40 035_ITMA_MAY15_SIMPLY.indd 35 Simply Court answers T MAY 2015itma.org.uk phrase SIMPLY MARKET. The Hearing sameappliesto useofthe the the letter tailofthe “Y”. included inthe wordSIMPLY the “MARKET” logowith mark’s distinctive character. stylisation signifi the cantlyto added As aresult,itwassubmitted that the wordobviously residesinthe only. mark SIMPLY limited, wasvery but distinctiveness registered ofthe word (logo) shown page. onthis evidence showed form useinthe genuine use.TheOpponent’s public soasto test meetthe for being presented to relevant the upon to show word the “simply” is insuffi canberelied cient usethat The HearingOffi there cer heldthat Proof ofuse messages, says EmmaReeve The publicwas unlikely to get mixed (a) of the Act. (a) ofthe Opponent;and(ii)Section 5(2) of the proofofuse provisionsissues: (i)the household orkitchen goods”. services inrelationto food products, in class35atopposition,“retail services Opponent reliedonthese registered on24April2008.The Mark No. 5410998 for SIMPLY (word) Opponent’s earlierCommunityTrade Trade Act1994.the Marks application underSection5(2)(a)of Stores, filed anoppositionagainst the Opponent, International Supermarket classes 32and33on7June2013. The No. 2653270for SIMPLY (word) in The HearingOffi cer concludedthat The evidencealsopresented the the The Applicantarguedthat The Oppositionfocused ontwo The oppositionwasbasedonthe mark underApplication Limited, fi tradeled the he Applicant,Tesco Stores UK IPO, 14January2015 O/025/15, Simply(opposition), The SIMPLY logo in the marks would marks beattributedin the to message. Insummary, identity the send aclearandobvioussuggestive undertakings using“SIMPLY” to surprised to find two different averagethe consumerwould notbe HearingOffithe cer consideredthat services islow. aboveclasses 32and33the similarity between goodsin the not incompetition; therefore the ofusediffer andare and method Offi nature the cer concludedthat Opponent.The Hearing goods ofthe Applicant areidenticalto actual the goodsbeingretailedby the the because if“food” encompassed drink, were different. Thiswasimportant terms the included drinkorwhether argued over term “food” the whether Applicant The Opponentandthe Section 5(2)(a) character fromSIMPLY alone. mayso this alsoalter distinctive the relevant services, a descriptionofthe opposed to brand the “Simply” and market” may beseenasaphrase, as words combinationofthe “simplythe Offi cer cameto conclusionthat the Regarding likelihood ofconfusion, [email protected] is anAssociate atMathys &Squire Emma Reeve to sendamessage. by variousundertakingsusingamark consumer isnotlikely to beconfused trade average markrightswherethe shows itisdiffi that cult to enforce low distinctive character. Thiscase consider registering trade of marks to use,andkeep use. arecordofthis trade asregistered,put their marks, tradethat markholdersdoneedto casehighlights at opposition,the Regarding proof-of-useprovisions the Conclusion of an economic connection. of aneconomicconnection. anindication coincidence, rather than in competition di andareer not and method of use that the nature Ocer concluded The Hearing Finally, holdersshouldstrongly 01/04/2015 12:41

35 CASE COMMENT 036-037_ITMA_MAY15_COLACLASH.indd 36 36 Cola clash O explains AzharSadique established script infinding for Coke, The Court departed from the Regulation (EC)No 207/2009(CTMR). 8(1)(b) andArticle8(5)ofCouncil oppositionweresupport ofthe Article waters”. reliedonin The grounds goods inclass32,namely “aerated earlier UKfigurative mark,covering Opposition wasalsobasedonthe CTMs (shown opposite). The based onfour ofitsearlierfigurative opposition against application the Company (Coca-Cola)fi led an “cola flavoured aerated waters”. classes 29,30and32,whichincluded application for food the anddrink filed aCommunityTrade Mark(CTM) On 14 October 2010, Coca-Cola Investment Co.Ltd(Mitico) Industrial &Trading n 10 May 2010, Modern 11 December 2014 OHIM, CJEU,General Court, T-480/12, The Coca-Cola Company v issue were notatallsimilar onthe signsat Board ofAppealfelt the that Board ofAppeal. Second decision wasupheldby the oppositioninitsentiretyandthe the thatMitico was marketing drinks soft • thatthesimilarity ofsignsshouldbe • thatthesignswere su • ciently similar In its decision on Article 8(1)(b), the In itsdecisiononArticle8(1)(b), the The OppositionDivisionrejected shown opposite). typical Coca-Cola product (evidence impression created was similarto a in suchaway thattheoverall in “Spencerian script”; way inwhich thewords are depicted perceived inrespect ofthedistinctive to create alikelihood ofconfusion; In summary, Coca-Colasubmitted: dilution ofCoca-Cola’s reputed trade basis for opposition,involving found onCoca-Colaproducts. bearing labelsmimickingthose Miticowassupplying products that it dismissedCoca-Cola’sassertions proprietor scriptitself. Lastly, ofthe Spencerian script,itwasnotthe trade commonly marks depicted in proprietor ofarange ofwell-known whileCoca-Colawasthe that letters held “c”and“m”.Itfurther common apartfroma“tail”onthe elements, hadpractically in nothing distinctive fi their than gurative respectively), whichwere more signs (“Coca-Cola”and“Master” word the elementsofthose basis that OHIM did not examine the second OHIM didnotexaminethe itma.org.uk MAY 2015 01/04/2015 12:41 036-037_ITMA_MAY15_COLACLASH.indd 37 MAY 2015itma.org.uk isassessed. marks of the signifi similarity cant rolewhenthe productsassumemoreofa of the visualimpressionelements andthe packaging. Accordingly, fi the gurative “overall visualimpression” ofthe consumers would be guidedby the variousproductsand on the information assessment ofallthe beingafull there often occurwithout asking for Selectionwould them. select productsdirectly rather than supermarkets whereconsumers food products were typically soldin circumstances. TheGCstated that to exceptions dependingonthe distinctive latter, the than subject should beconsideredmore figurative former elements,the a markiscomposed ofverbal and of similarity. where that Itagreed Board ofAppealinitsassessment GCtookthe adifferent view to the In relationto nextsubmission, the Di erence ofopinion provision”.of that is apreconditionfor application the signs,ofwhateverthose strength, existence ofasimilaritybetween the factremainsthat signs, the alinkexistswhether between those assessment underArticle8(5)asto factorsthe relevantto overall the between signsatissueisamong the ofsimilarity degree the that it istrue GC,whichstatedby the “whilst that disregarded relevant evidence relating • haderred inconcluding thatthere • conflated theassessment ofthe • OHIMhad: Article 8(5),andthat plea inlaw, alleging infringement of Court (GC),Coca-Colaraised asingle of Article8(5). application a preconditioninthe similarityis holdingthat marks, The first submissionwasrejected being taken. intention ofanunfair advantage Mitico, whichdemonstrated the to thecommercial useofthemarkby Spencerian script; the letters “c” and“m”the a certaindegree ofsimilarity between as awhole,despite acknowledging was nosimilarity between thesigns under 8(5); 8(1)(b)Article withtheassessment similarity ofthemarks atissue under In itssubmissionto General the No 8792 475 Trade Mark The Coca-ColaCTMs relevant evidencewasalsoupheld. respect ofOHIMdisregarding conceptual differences. auraldespite the and both sufficiently visually similaroverall, marks “m”, whichrenderedthe letters “tail”andthe “c”and the between signsinadditionto the to beasharedelementofsimilarity script business) butconsideredthe commonly usedincontemporary script (whichitconsiderednotto be Spencerian obtain amonopoly inthe Coca-Colawasattemptingthat to TheGCdidnotbelieve marks. the visualsimilarity of of assessingthe would berelevantfor purposes the sharedtypeface and Article8(5),the strict conditions ofArticle8(1)(b) particular font confl the icts with an attempt to monopolisea while TheGCheldthat marks. of the typeface submission inrespectofthe words aredepicted asawhole. way not consideredthe inwhichthe “Coca-Cola” and“Master”, andhad wordsSpencerian scriptfromthe signsby incorrectlythe isolatingthe element ofvisualsimilaritybetween Appeal hadfailedto identifyan The Miticomark andmarketing examples Coca-Cola’s final submissionin The GCalsoaccepted Coca-Cola’s Boardof the The GCheldthat No 3021086 Trade Mark [email protected] is anAssociate atKeltie Azhar Sadique No 2117 828 Trade Mark particular commercialsector. references to usualpractices ina by includingrelevantandresearched riskoffreeridingortarnishment the useful guidancepointinestablishing domain. Thecasealsoprovides a public elements arepresentinthe those irrespective ofwhether into accountallsharedelements, asawhole,taking similarity ofmarks important issueofassessingthe The fi GChighlight the ndings ofthe Concluding thoughts of freeriding. purposesofestablishingthe arisk by Miticowasrelevantevidencefor mark to commercialuseofthe the submitted by Coca-Colarelating including similarpackaging. circumstances case, all the ofthe This analysis shouldbebasedon relevantcommercialsector”.in the consideration usualpractices ofthe based onlogicaldeductionand regulationmayArticle 8(5)ofthe be “aclaimoffreeridingunder that area (T-47/06 Nasdaq), whichstates departed caselaw fromthe onthis consideration Coca-Cola’sevidence Appeal’s refusalto take into Boardof the The GCheldthat The GC held that the evidence the The GCheldthat No 2107 118 Trade Mark No 2428468 Trade Mark UK TM The Coca-Cola 01/04/2015 12:42

37 CASE COMMENT 038_ITMA_MAY15_BOSCH.indd 38 38 opponent bests ‘perfect’ Bosch A consumer would pay ahigher-than- Regulation (EC)No 207/2009(CTMR). infringed Article 8(1)(b)ofCouncil WATERPERFECT and,therefore, this AQUAPERFECTbetween marks the and wasalikelihood there ofconfusion of First Instance basisthat onthe appealedto Court BSH then the Marks andsigns argument, reports Stephanie Taylor Once again, similarity isthecruxof mark and the BSHregistration.mark andthe of confusionbetween Arçelik the registration, wasnolikelihood there similar to covered those BSH by the application were identicaland goods covered Arçelik by the even the basisthat though on the appealinDecember 2013upheld the Arçelik appealed. 2013,successful andinFebruary apparatus. Theopposition was household andkitchen machinesand range ofgoodsinclass7, particularly WATERPERFECT, whichalsocovered a Trade Markregistration for basisofitsearlierCommunity on the application GmbH (BSH)opposedthe BSH BoschundSiemensHausgeräte November 2011. 2012, InFebruary published for oppositionpurposesin apparatus. Theapplication was 2009, predominantly kitchen range ofgoodsinclass7February BSH argued that the relevant the BSH arguedthat The OHIM Fourth BoardofAppeal The OHIMFourth AQUAPERFECT inrespectofa to register trade the mark rçelik A.S¸. (Arçelik)applied A.Ş., CJEU,28January2015 Hausgeräte GmbHvOHIMandArçelik T-123/14, BSHBoschundSiemens the remaining two. On this basis, the remainingtwo. basis,the the Onthis fiin their rst two syllablesbutshare signsdiffer phonetic assessment,the average to Turning the degree. arevisually marks similartothe an PERFECT. Courtheldthat Assuch,the identicalsuffi containthe and both x aresimilarinlength marks the that T-109/07). However, Courtnoted the – SpaMonopole(SPA THERAPY), to start (L’Oréal the ofmarks vOHIM generally pay greatest the attention and “AQUA”, consumers noting that to different prefi the xes “WATER” signs differed onavisualbasisdue been disputed parties. by the and similar, hadnot this andthat had found goodsto the beidentical BoardofAppeal the basisthat on the goodsconcerned similarity ofthe averagethe consumer. relevantconsumercould alsobe the wereas others daily consumergoods, goods but, respect ofsomethe in wastrue The Courtheldthis which wasnotdisputed by Arçelik. goodsconcerned, natureofthe the average level ofattention inview of The Court considered that the the The Courtconsideredthat The Courtdidnotexaminethe variety ofindustrysectors. Stephanie advisesclientsonarange oftrade markissues ina [email protected] is aSeniorTrade MarkAttorney atBerwinLeighton Paisner LLP Stephanie Taylor to anaverage degree. whole, similar similar and,onthe were marks conceptually the that T-471/09). Courtheld Assuch,the v OHIM–Bonfait(BUONFATTI), (Oetker Nahrungsmittel immediate conceptualcomparison itmaybut alsothat prevent an of view ofrelevantconsumers”, point conceptual similarityfromthe to exclude existence the of signs isnotautomatically sufficient “alinguisticthat difference between noted previouscaselaw that hasheld of “water” and“quality”. TheCourt conveyed asbeingthat marks by both would understand message the relevantpublic a large partofthe Latinforrecognised asthe “water”. wouldand, furthermore, be word languages issimilarinthese term “AQUA” means“water” asthe consumers would understand the Portuguese, SpanishandItalian similarity, Courtconsideredthat the Whenassessingconceptual degree. phonetically similarto anaverage are marks the Court heldthat character BSHregistration. ofthe altered weak by the distinctive fi this signs, andthat nding wasnot similarityofthe the coupled with goods, identity andsimilarityofthe established basisofthe onthe alikelihoodthat ofconfusionwas Board ofAppealdecisionandfound The Courtoverturned OHIM the Court conclusion The Court, therefore, held that The Court,therefore, heldthat itma.org.uk MAY 2015 01/04/2015 12:42 039_ITMA_MAY15_BLACKROCK.indd 39 E MAY 2015itma.org.uk Second, thattheBoAhad • First, thattheBoAhaderred infinding • main pleas: BlackRock’s appealcontainedtwo Appeal pleas Roberto Pescador it comesto registration, says Slogans remain adicult sell when phrase blocked BlackRock appealed to General the Court. examiner’s decisionandBlackRock The BoardofAppeal(BoA)upheldthe Regulation (EC)No 207/2009(CTMR). pursuant to Article7(1)(b)ofCouncil oflackdistinctivenessgrounds applicationon the refused the services inclasses35and36.OHIM in relationto arange offinancial a CommunityTrade Mark (CTM) INVESTING FORANEWWORLD as for registration slogan ofthe case strictly. tended to effects ofthe determine the Generalof Appealandthe Courthave subsequent OHIMBoards casesthe level oforiginalityorresonance,in be sufficient for to them have some or “conceptualtension”, anditwould required to display “imaginativeness” Audi confi slogans that werermed not registrability ofslogan While marks. OHIM decisionsrelatingto the case hastaken centrestage inmost slogan Vorsprung durchTechnik, the C-398/08 P(Audi), the concerning misinterpreted Audi indistinguishing be perceived asabanalslogan. discussed inAudi) and would not meanings (one ofthefactors resonance given thatithadmultiple mark was endowed withacertain character. BlackRock argued thatthe that themarkhadnodistinctive In this case,BlackRock, Inc.applied In this decision inAudi vOHIM, EuropeanUnion’sof the ver CourtofJustice sincethe General Court, 29January 2015 T-59/14, Blackrock, Inc.vOHIM,CJEU, the relevant public interpretation by at least some resonant to require original or not suciently The mark was or resonantto require atleast some mark wasnotsufficiently original services atissue.Therefore, the connotations inrelationto the mark still denoted positive Applicant’s possible meaningsofthe decisive factor. Further, allofthe distinctive character itwasnotthe was likely to endow asignwith meanings wasacharacteristic that whilehavingthat potential multiple appeal. First, Courtconfi the rmed The General Courtdismissed the General Court’s decision of evidence oflong-standinguse. the slogan inthatcaseonthebasis qualified lawyer andhasextensive experience intrade marks. Roberto isaqualified Trade MarkAttorney andaSpanish- [email protected] is aSeniorTrade MarkAttorney atKing&Wood Mallesons Roberto Pescador resonance to it. factors,among other added long-standing slogan, useofthe BoA hadsimply stated Audi’s that argument andclarifi the ed that The Courtrejected BlackRock’s many years before for application. the ithadbeenusedfor basisthat the distinguish slogan the inAudi on Accordingly, BoAwaswrongto the inherentdistinctiveness.than distinctiveness use,rather through as having beenbasedonacquired markinAudi assessmentofthe the BoAhadincorrectly described the of promotionalindications). would berelatively low inrespect levelconsumers, their ofattention relevant publicwere specialist the although Courtnotingthat, (the interpretation relevantpublic by the they remaindiffithey cult to register. for relevantpublicto the remember, makes easy or resonancethat them slogans containsomeoriginality unless services, isareminderthat (T-609/13) inrelationto financial SO WHATDOIWITHMYMONEY to businessmanagement systems and SCHEDULING (T-499/13) inrelation suchasSMARTER refusal ofmarks General Courtdecisionsupholding recent This case,together other with Conclusion Second, BlackRock argued that Second, BlackRock arguedthat 01/04/2015 12:43

39 CASE COMMENT 040_ITMA_MAY15_NOWWIRELESS.indd 40 40 CASE COMMENT I Now hear this subdivisions were reasonable within nosignifiof Appealthat cant Board the with The Courtagreed subdivided precisely ornarrowly. hadnotbeen services, asthey useinrelationto assessed the the BoardofAppealhadincorrectly the mark, atleast EU. in partofthe evidence diddemonstrate useofthe linked company. TheCourtfound the UK BroadbandLtd,aneconomically of accessto electronicnetworks from evidence ofuserelatingto supply advertisement. Italsoprovided to customers, andanationalradio databases detailingengineervisits mark,extracts the from carrying including images ofmodems OHIMproceedings, course ofthe submitted extensive evidenceinthe mark.Starbucks had use ofthe Starbucks hadnotdemonstratedthat of four fi parts,the rst ofwhichwas Now Wireless’sargumentsconsisted Appeal arguments the failure ofthis multi-pronged appeal Harry Rowe recounts thereasons for then appealedto Generalthen the Court. against decision. Now that Wireless dismissed Now Wireless’sappeal Board ofAppealOHIMlater class42services.TheSecond the registrationDivision upheldthe for Cancellation class 42services,the 41 but,following limitationofthe revoked inrespectofclasses35and Theregistrationgrounds. was registrationthe in2010 onnon-use Now WirelessLtdappliedto revoke Trade Markinclasses35, 41 and42. “now anddevice”asaCommunity Now Wirelessnextclaimedthat applied to register mark the relation to coffee chain) the n 2004,Starbucks (HK)Ltd(no 30 January2015 CJEU, General Court (Sixth Chamber), T-278/13, Now Wireless Ltd vOHIM, Thames Valley, wasgenuine use. largest EU, urbanareainthe andthe markinLondon,the useofthe that Board ofAppealwasrightto find genuine use.TheCourtfound the extentincorrectly assessed the of BoardofAppealhad claimed the constitute proprietor. useby the proprietorof the isdeemed to operation Business”.Consent ofthe and activitiesassociated the with rendition ofallappropriate services mark“in UK Broadbandcouldusethe stated agreement services, asthe that toagreement wirelessbroadband mark wasnotlimited licensing by the Court confi useofthe the that rmed wireless broadbandservices.The limitedUK Broadbandthat useto contractthe between Starbucks and despiteconcerned, expressconsentin markfor services of the allofthe presumed consentinrespectofuse BoardofAppealhadwrongly the servicesfor purpose. all ofthose that electronicnetworks andrelieson the services wishes each toof those access sameneed.Theend-user of met the –all software modemsandthat those call-out servicesto resolve issueswith associated and,second, software, of modems,broadbandcardsand services provided –first, installation becausethe concerned category the Fourth, andfiFourth, nally, Now Wireless Third, Now Wirelessclaimed [email protected] is aTrainee Trade Mark Attorney atSquire Patton Boggs(UK)LLP Harry Rowe fairly significant wascorrect. extent the ofusewas conclusion that BoardofAppeal’s evidence, the clippings andnationalradio broadcast Paying particularattention to press advertisement a national radio of and modems including images in the proceedings, extensive evidence had submitted Starbucks on the basisofnon-use. on the against anapplicationfor revocation a Community Trade Mark registration sufficient to constitute adefence of of oneEUMemberState may be circumstances, useineven part insome also highlightsthat, documented evidenceofuseand emphasises importance the of singlepleainadecisionthat of the The Courtrejected allfour parts Case conclusion

itma.org.uk MAY 2015 01/04/2015 12:44 The city of Leeds will host our June event looking at colour

More details can be found at itma.org.uk

Date Event Location CPD hours 28 April ITMA London Royal College of 1 Evening Meeting* Surgeons, London Designs and the role of dotted lines, Adrian Froment, Serle Court

29 April ITMA Talk in Glasgow Maclay Murray & 1 Competition law issues for Spens LLP, Glasgow trade mark practitioners, Catriona Munro and Jennifer Marshall, Maclay Murray & Spens LLP

19 May ITMA London Royal College of 1 Evening Meeting* Surgeons, London Colour Issues, Simon Malynicz

Three New Square EVENTS

17 June ITMA & CIPA Talk Bond Dickinson, 1 41 in Leeds Leeds Colour Issues, Simon Malynicz, Three New Square

23 June ITMA London Royal College of 1 Evening Meeting* Surgeons, London IP Valuation, Jan Lindemann

8 July ITMA Summer The Little Ship Club, Reception London

21 July ITMA London Royal College of 1 Evening Meeting* Surgeons, London

17 September ITMA Afternoon Royal College of 2-3 Seminar Surgeons, London Representing before the Registry

22 September ITMA London Royal College of 1 Evening Meeting* Surgeons, London

23 September ITMA Autumn Hyatt Regency, 5 Seminar Birmingham

23 September ITMA Autumn Hyatt Regency, Drinks Reception Birmingham *Kindly sponsored by part of the ITMA Autumn Seminar

20 October ITMA London Royal College of 1 Evening Meeting* Surgeons, London IMAGE: IGOR MATIC/SHUTTERSTOCK.COM IMAGE:

041_ITMA_MAY15_EVENTS.indd 41 01/04/2015 12:44 042_ITMA_MAY15_Q&A.indd 42 42 TM20 clients to pay bills. their In my role, Imost disliked… chasing parties. third with Registry anddisputes hearings atthe advocacy work aspectsofthe – In my role, Imost enjoyed… the by tourism or by first-world values. particular to placesnotoverwhelmed I ammost inspired by… travel. In in my element. English language andIwasentirely the science skillsandafacilitywith require ahappy combinationof outtodepartment, whichturned accepted ajobinanindustrial patent was working couldkillme.I with chemicalsI the I soonrealisedthat industrial researchchemist position, andtakingupan degree a chemistry having Liverpool left University with I becameinterested inIPwhen… UK’sRoman roads. about the Photoshop more skillsandlearning included foreign travel, improving my enjoying my retirement,whichhas generally, oneofcontentment. Iam My current state ofmindis... Popplewell, Francis &Ross. Popplewell, Poole andinStanley, &ClerkHongKong,inStanley,Marks Partner inEdwardEvans&Co., Before thisrole… practised asaPatent Attorney. retiring in2012. Ialsoqualifi ed and & Trade MarkAttorneys LLPbefore &ClerkPatentand apartnerinMarks I worked as…aTrade MarkAttorney I was,variously, a THE TRADE Grief”. Ihave beenafanof My favourite mug…says “Good teak panelofaCambodianapsara. In front ofmenow…is afi ve-foot-high tradition andquality, andhasadash BASS redtriangle,whichrepresents If Iwere a mark, Iwould be… the of itsannualconferences. Attorneys heldone Association(APAA) AsianPatentThailand, wherethe business was… ChiangMaiin My favourite placetovisiton since childhood. other remarks from MARK 20 “Good Grief”, and “Good Grief”, retired member Mike Lynd

Snoopy

[email protected] If you’d liketo appear contact inTM20, TMA instead ofanOAP. helps mepretend Iamstill that areal profession.it gives the It mewith continuingcontact member is…the The best thingabout beinganITMA ofmy birth fithe rst grandchild. In thenextfi ve years, Ihopeto… see nextholidaythe orattend lectures. When Iwant torelax I…read,plan his/her own interest. who ispreparedto give adviceagainst given is…beaprofessional –someone The best pieceof advice I’ve been In my pocket is…my FreedomPass. lunch by ariver. drive andapub sunshine, acountry My ideal day would include… and CeolIlamaltwhisky. family; Stilton; my brightredMorgan, I can’t live without… my wife and ability to play boogiepiano. The talent Iwishhadis…the regardless death, ofmerit. author’s doodle protection for 70 years from the see nojustifi cation for givingevery patent protection for just 25years, I mostWhen the vitalinvention gets protection afforded to copyright. The biggest challenge forIPis…the A Bar at the Folies-Bergère the at Bar A of culture since it appears in Manet’s of culturesinceitappearsinManet’s itma.org.uk MAY 2015 .

01/04/2015 12:45

01/04/2015 16:16 LONDON -qualification — LONDON

— DawnEllmore JERSEY JERSEY MIDLANDS — @AgencyDawn — +44 (0)20 7405 5039 7405 (0)20 +44

www.dawnellmore.co.uk Dawn Dawn Ellmore Employment -HOUSE IP TRADE MARK ATTORNEY IN qualified solicitor with at least 3 years’ years’ 3 with least at solicitor qualified Support vacancy contacts: TRADE MARK ADMINISTRATOR -HOUSETRADE MARK PARALEGAL IN [email protected] Seeking all Trade Mark Paralegals who are available are who Paralegals Trade Mark Seeking all esteemed company This start! immediate an for Trade iswho experienced all in individual an require a on office London their join to formalities Mark leave. maternity of period a cover to basis temporary offer. on is package remuneration verycompetitive A A client of ours withoffices on the beautiful Island of Jersey, new have a requirement Trade for a Mark Attorney with up to 5 years’ post experience.With excellent an academic record,the ideal candidate can be qualified in any jurisdiction as long as they work to the highest quality. of [email protected] A high-profile in London have a new new have a London in firm high-profile law A experienced an Trade for Mark requirement support provide the quality to highest of Administrator with the ITMA theto team. Individuals Trade Mark essential not an is be this preferred will but certificate practice! modern and requirement. fast-growing A experience in Intellectual Property matters to join its its join to matters Property Intellectual experience in unrivalled in-house legal team.Considerable non-contentious and contentious both knowledge of essential. is work mark trade Our client, a pre-eminent global company, is seeking seeking a is company, Our pre-eminentclient, a global fully-

LONDON — LONDON — MIDLANDS MIDLANDS MIDLANDS — —

Attorney vacancy contacts: [email protected] [email protected]

-HOUSE IP ADMINISTRATOR PQ TRADEPQ MARK ATTORNEY

IN PQ/NQ TRADE MARK ATTORNEY

PART TIME TRADE MARK FORMALITIES FORMALITIES MARK TRADE TIME PART relaxed and friendly working environment. working relaxed friendly and their employees to thrive whilst offering a modern, modern, a offering whilst thrive to employees their company pride themselves on providing a platform for for platform on a themselves pride providing company opportunity opportunity to join global a in-house IP team. This secretaries and administrators who are seeking the seeking the are who administrators and secretaries We are seeking applications from patent/trade mark patent/trade mark from applications seeking We are success in the field that belies their experience. applicants will be able to display a real track record for range of work. The candidate who will surpass other practice and to assistwith animpressive andexciting PartQualified Trade Mark Attorney to join their thriving A prestigious IP Law firm in the Midlands are seeking a development ideas are particularly welcomed. particularly are development ideas and their highly reputable client portfolio. Business Business portfolio. highly reputable their client and offer fantastic opportunities in terms of progression progression of terms in opportunities fantastic offer career within their expanding office. The practice practice The office. expanding their within career Newly Qualified Trade Mark Attorney to further to Attorney their Trade Mark Newly Qualified A successful firm in London are now looking for a Part/ a for are London firm looking now in successful A exemplary IP service. An exceptionalIP service.exemplary offer. An on is salary firm are keento uphold theirreputation for an comprehensive experience of Trade Mark formalities, the time basis (3 days per week). Seeking a candidate with Formalities Clerk to join their London office on a part This standout law firm are seeking a Trade Mark

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Patent, Trade Mark Legal & Specialists

Employment Dawn EllmoreDawn

itma.org.uk ITMA REVIEW May 2015 itma.org.uk 23/03/2015 08:56

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