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THOROUGHLY MODERN MARKS Jennifer Sander Assesses the Challenges of Brand Protection for Wearable Technology ITMA REVIEW ITMA SECTION POSITION EVOLUTION INCLUSION THE REPERCUSSIONS OF PRIVILEGE AT THE IPEC WEAKEST LINK JOHN COLDHAM p CLIVE CHEESMAN p SARAH BARBER p JON ATKINS p September September ITMA SUMMER RECEPTION COVERAGE p IPReg CHAIR CAROLINE CORBY p TM p­ REVIEWTHE JOURNAL OF THE INSTITUTE OF TRADE MARK ATTORNEYS Issue September itma org uk THOROUGHLY MODERN itma.org.uk MARKS JENNIFER SANDER ASSESSES THE CHALLENGES OF BRAND PROTECTION FOR WEARABLE TECHNOLOGY p 001_ITMA_SEPT16_COVER.indd 4 05/09/2016 15:00 Less Risk for More Brands Mitigating brand risk is now easy and affordable Introducing TM go365TM Why take chances by clearing brands using web searches or low cost, inaccurate tools? Now there’s a better solution: TM go365™. It’s a revolutionary, new self-service clearance solution that gives you the power to search word and image marks quickly and cost-effectively. Get results in seconds. Reduce brand risk with trusted content. Clear more brands while protecting your budget. Learn more about TM go365™ at trademarks.thomsonreuters.com/tmgo365 THOMSON COMPUMARK IFC_ITMA_Sept_16.indd 1 10/08/2016 11:08 September hope everyone had an opportunity IPReg Chair Caroline Corby and ITMA contacts to relax and recharge their batteries reports on the evolution of the IPEC General enquiries ITMA Offi ce th Floor Outer Temple over the summer and that you are and on the likely eff ect of changes to Strand London WCR BA all looking forward to a busy ITMA Section of the Copyright Designs tm@itmaorguk autumn In October we have the Autumn and Patents Act on designers Tel ­ I Seminar in Birmingham at which we I am also delighted that we have Committee chairs will provide an update on our Brexit contributions from the Philippines Executive Chris McLeod planning and explore the interaction and on the recent European chrismcleod@elkfi fecom Events Maggie Ramage between IP and technology a topic Communities Trade Mark Association maggieramage@edwincoecom that is also at the heart of this month’s meeting in Croatia to ensure we are Law & Practice Imogen Wiseman imogenitma@clevelandIPcom cover story not too UKcentric! Publications & Communications Also inside is a discussion of the rather Richard Hayward more ancient topic of coats of arms We Kate O’Rourke richard@itmaorguk also welcome the contribution from new ITMA President Published on behalf of ITMA by Think Capital House Chapel Street London NW DH Tel wwwthinkpublishingcouk Editor Caitlin Mackesy Davies Inside this issue Advertising Tony Hopkins tonyhopkins@thinkpublishingcouk Group Account Director Polly Arnold Regulars Case comments Account Manager Kieran Paul Art Director George Walker Designer Alix Thomazi ITMA Insider Presidential priorities ­ O// A ray of light remains for CONTENTS Design Intern Alex Hurst UK IPO updates a member move and more Volkswagen believes Martin Delafaille Sub editor Mike Hine Events What’s coming up for members O// Rosalyn Newsome wonders 03 ITMA Review TM Deirdre Naessens Overseas whether there was some sympathy for Review content is provided by members Member is in a celebratory mood the Opponent’s appeal on a voluntary basis and reader suggestions and contributions are O// Decision fl agged up welcome If you would like to contribute interesting issues related to in¡country an article to a future issue please Features contact Caitlin Mackesy Davies at use says Chris Morris caitlin@thinkpublishingcouk ITMA Summer Reception The sun EWHC Roberto The views expressed in the articles fi nally shone for our packed July gathering Pescador sees potential for public in the Review and at any ITMA talk John Coldham explains the policy to trump IP rights or event are personal to the authors Legislation and do not necessarily represent the recent change to Section CDPA and its EWCA Civ At last there views of the Institute ITMA makes no representations nor warranties likely eff ect on designers is certainty around the compatibility of of any kind about the accuracy of the Interview New Chair Caroline Corby series marks with EU law says Nick Smee information contained in the articles talks or events is bringing a fresh eye to IPReg T / Paul McKay speculates on Innovation Jennifer Sander assesses the Applicant’s unusual strategy © ITMA the challenges of brand protection for T/ The relevant public should wearable technology be considered at the fi ling stage writes Heraldry Clive Cheesman reveals the Désirée Fields unique place of coats of arms in trade mark T / A careful approach to class law and practice designations is needed notes Saaira Gill ECTA Cheng Tan refl ects on the ECTA ­ T/ Conceptual diff erences made Annual Conference in Croatia the diff erence reports Oliver Tidman Evening Meeting Sarah Barber recaps a T/ RENV Joel Smith refl ects presentation on the evolution of the IPEC on a long journey towards an Inclusion When it comes to bias every unremarkable Diset decision one of us has to shoulder some blame T/ D registration continues to says Jon Atkins be diffi cult reports Dominic Farnsworth Philippines Jennifer D Fajelagutan T/ Similarity at both the explains how the Supreme Court recently beginning and end of marks led to reasserted its strength Glaxo win says Charlotte Wilding 003_ITMA_SEPT16_CONTENTS.indd 3 10/08/2016 15:11 nsider Kate O’Rourke outlines Brexit update ITMA has begun conversations with the ITMA’s key priorities Government the UK IPO and others to recognition of our preeminent role for ensure that we obtain the best possible trade marks and designs in the UK the postBrexit outcome for the profession quality of the work of our members the the wider IP community and users of the importance of trade marks and designs in IP system the UK economy and the importance of Our taskforce met first on ­ July and ITMA itself in representing its members ITMA is initially focusing on two areas “As an institute we intend to build ­ the options for the continued on this royal grant to use our Chartered protection in the UK of EU trade status as a kitemark to indicate to our marks and Registered Community IP colleagues clients and international Design rights and business that being a member of the rights of representation for UK Chartered Institute of Trade Mark practitioners before EUIPO 04 Attorneys indicates a high quality of On ­ July ITMA met with the service recognition of our regulated Minister for Intellectual Property status and excellent examination Baroness NevilleRolfe and other key system and the fulfilment of compulsory stakeholders for a highlevel roundtable continuing professional development discussion The Minister was supportive by all our Registered Trade Mark and reiterated that ITMA will be an Attorney members ” important stakeholder in the ITMA President Kate reassured members following the forthcoming negotiations Kate O’Rourke MBE recent EU Referendum result saying that We also met with UK IPO Acting Chief ITMA will “fight for the best outcome in Executive Sean Dennehey and Divisional t ITMA’s Summer Reception liaison with all of the other members of Director Trade Marks and Designs Steve and in her first speech to the IP family in the UK” See right for Rowan on ­ July and presented to members ITMA President ITMA’s most recent statement on the them our early work on the options for Kate O’Rourke MBE revealed UK’s exit from the EU continued protection of EUregistered herA plans for the next two years Kate’s other priorities will include rights in the UK Focusing on the implementation of launching a new pro bono initiative and The UK IPO is keen to have a regular ITMA’s Royal Charter see page her member engagement She added “I will dialogue and we are delighted that its speech also addressed the role ITMA will be promoting membership engagement representatives will be at our London play in EU IP negotiations following the particularly for our younger members Roadshow on September and our result of the EU Referendum promoting and student members and looking more Autumn Seminar in Birmingham on member engagement and launching a broadly to the international community ” October new pro bono initiative We have written to WIPO and EUIPO On the Royal Charter Kate said “I See our Summer Reception coverage on to pledge our support and offer to am delighted that we have received this pages and of this issue engage with them as matters develop Thank you to all who have offered to join the taskforce It is at capacity but we will no doubt need more help as Silent auction action matters progress The ITMA Benevolent Fund is running a silent auction throughout We will inform you of developments In September Please visit itmaorguk for information on how to bid the meantime please do not hesitate to contact us with your concerns itma.org.uk SEPTEMBER 004-005_ITMA_SEPT16_INSIDER.indd 4 10/08/2016 15:08 Volunteering Our vacancies Charter ITMA’s committees and working groups provide a valuable resource for ITMA to achieve our strategic objectives moves We have updated the committee and workinggroup information on the ITMA nearer website to make it clearer where there are vacancies who is on each committee Calligrapher Timothy Noad a scribe and working group and what each does and illuminator to HM Crown Offi ce at the We have also tried to estimate how much House of Lords is currently working on time commitment each committee and scribing ITMA’s Royal Charter onto vellum working group requires in readiness for the Crown Offi ce to apply All committees and working groups the Great Seal and for the Charter to rely on volunteer involvement
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