THOROUGHLY MODERN MARKS Jennifer Sander Assesses the Challenges of Brand Protection for Wearable Technology - DocsLib

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ITMA REVIEW 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

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

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IFC_ITMA_Sept_16.indd 1 10/08/2016 11:08 003_ITMA_SEPT16_CONTENTS.indd 3 tonyhopkins@thinkpublishingcouk TonyAdvertising Hopkins Editor CaitlinMackesy Davies wwwthinkpublishingcouk Tel ChapelStreet London NW DH Think CapitalHouse Published onbehalfofITMA by richard@itmaorguk Richard Hayward Publications &Communications imogenitma@clevelandIPcom Law &Practice ImogenWiseman maggieramage@edwincoecom Events Ramage Maggie chrismcleod@elkﬁfecom Executive ChrisMcLeod Committee chairs Tel tm@itmaorguk Strand London WCR BA ITMA Oﬃce thFloor Outer Temple General enquiries ITMA contacts © ITMA talks orevents information contained inthearticles of anykindabouttheaccuracy ofthe no representations norwarranties oftheInstitute ITMAmakes views and donotnecessarilyrepresent the or eventare personalto theauthors andatanyITMAtalk in theReview expressed inthearticles The views caitlin@thinkpublishingcouk contact CaitlinMackesy Daviesat to afuture please an article issue welcome Ifyou would like to contribute andcontributionssuggestions are basis andreader on avoluntary contentReview isprovided by members ITMA Review Sub editor Mike Hine Design Intern AlexHurst Designer AlixThomazi DirectorArt George Walker Account ManagerKieran Paul Group Account Director Polly Arnold

I Inside issue this says JonAtkins one ofushasto shouldersomeblame reasserted itsstrengthreasserted explains how theSupreme Court recently presentation ontheevolution oftheIPEC wearable technology the challengesofbrand protection for likely effect ondesigners recent changeto Section CDPA andits Philippines Inclusion Evening Meeting ECTA Heraldry Innovation Interview Legislation ITMASummerReception Features TM Events ITMAInsider Regulars UK IPOupdates amembermove andmore finally shoneforourpacked Julygathering law andpractice unique place ofcoats ofarmsintrade mark Annual Conference inCroatia is bringingafresh eye to IPReg Member isinacelebratory mood also welcomethecontributionfrom new topicmore ancient ofcoatsarms We storycover that isalsoattheheartofthismonth’s IPandtechnology between atopic planning andexplore theinteraction anupdatewill provide onourBrexit inBirmingham atwhichweSeminar autumn In October wehave theAutumn Also insideisadiscussionoftherather all lookingforward to abusyITMA thesummer over andthatyouare to relax andrecharge theirbatteries hadanopportunity hope everyone Deirdre Overseas Naessens Cheng Tan reflects ontheECTA What’s coming upformembers When it comes to bias every Whenitcomes to bias every Clive Cheesman reveals the New ChairCarolineNew Corby Jennifer Sander assesses JenniferSanderassesses JohnColdham explainsthe Jennifer DFajelagutan Presidential priorities Sarah Barber recaps a The sun

September the difference Oliver reports Tidman use saysChrisMorris interesting related issues to in¡country Volkswagen Delafaille believes Martin series markswithEUlaw saysNickSmee around thecompatibilityis certainty of unremarkable Disetdecision towardson alongjourney an T/ T/ T/ RENV T/ T / T / T / EWCA Civ EWHC O/ / O// O// commentsCase Glaxo win saysCharlotte Wilding beginning andend ofmarksledto designations isneeded notes SaairaGill the Opponent’s appeal whether there somesympathyfor was be diffi DominicFarnsworth cult reports policy to trumpIPrights Pescador seespotential forpublic not too UKcentric! meeting inCroatia to weare ensure Communities Trade Association Mark Europeanand ontherecent contributions from thePhilippines and Patents Act ondesigners Designs Section oftheCopyright and onthelikely effect ofchangesto oftheIPEC ontheevolution reports IPReg ChairCaroline Corby and Désirée Fields be considered atthefiling stage writes the Applicant’s unusualstrategy I amalsodelighted thatwehave Conceptual differences made Dregistration continues to Similarityatboththe Acareful approach to class Decisionfl up agged Aray oflightremains for The relevant public should Paul McKay speculates on Rosalyn wonders Newsome JoelSmithreflects ITMA President O’Rourke Kate Roberto At lastthere 10/08/2016 15:11

03 CONTENTS ITMA President 004-005_ITMA_SEPT16_INSIDER.indd 4

Kate O’Rourke MBE 04 am delighted thatwehave received this new pro bonoinitiative new andlaunchinga engagement member promoting result oftheEUReferendum play the inEUIPnegotiationsfollowing speech alsoaddressed therole ITMAwill ITMA’s RoyalCharter seepage her plansforthenexttwoyears her A ITMA’s key priorities Kate O’Rourke outlines On theRoyalCharter On Kate said“I Focusing of ontheimplementation September Pleasevisititmaorguk forinformationonhow to bid The ITMABenevolent Fund isrunningasilentauctionthroughout Silent auctionaction Kate O’Rourke MBErevealed ITMAPresident members ﬁrstspeechtoand inher t ITMA’s Reception Summer n sider

pages and ofthisissue on Receptioncoverage See ourSummer broadly to theinternational community ” andlookingmore members and student members particularly forouryounger engagement be promoting membership Sheadded“Iwill engagement member pro bonoinitiativeand launching anew UK’s exitfrom theEU ITMA’s statement mostrecent onthe the IPfamilyinUK” Seerightfor of members liaison withalloftheother ITMA will“ﬁghtforthebestoutcome in result saying EUReferendum recent that members ” Attorney allourRegisteredby Trade Mark continuing professional development system ofcompulsory andthefulﬁlment status andexcellent examination recognition ofourregulatedservice indicatesAttorneys ahighqualityof Chartered Institute ofTrade Mark ofthe business thatbeingamember andinternational IP colleagues clients status asakitemark to indicate to our grant toon thisroyal useourChartered itsmembers ITMA itselfinrepresenting the UKeconomyandimportanceof importance oftrade marksanddesignsin the quality oftheworkourmembers the trade marksanddesignsintheUK role for recognition ofourpreeminent Kate’s prioritieswillinclude other Kate the following reassured members “As aninstitute weintend to build

contact uswithyour concerns the meantime pleasedonothesitate to matters progress we willnodoubtneedmore helpas join thetaskforce Itisat capacity but engage withthemasmatters develop andoffer toto pledgeoursupport October Autumn Seminarin Birmingham on Roadshow onSeptember andour representatives willbeatourLondon dialogue andwe are delighted thatits rights intheUK continued protection ofEUregistered them ourearlywork ontheoptionsfor Rowan onJulyandpresented to Director Trade MarksandDesigns Steve Executive andDivisional SeanDennehey negotiations forthcoming stakeholder intheimportant and reiterated thatITMAwill bean TheMinister supportive discussion was stakeholders forahighlevel roundtable Baroness NevilleRolfe andotherkey Minister forIntellectual Property ITMA isinitiallyfocusingontwo areas IP system the widerIPcommunity andusersofthe postBrexit outcome forthe profession ensure thatwe obtainthebestpossible Government theUKIPOandothersto ITMA hasbegunconversations withthe Brexit update We In willinformyou of developments Thank you to allwhohave offered to We have written to WIPO andEUIPO The UKIPOiskeen to have aregular We alsometwithUKIPOActingChief On July ITMAmetwiththe practitioners before EUIPO rightsofrepresentation forUK Design rightsand marks andRegistered Community protection intheUKofEUtrade theoptionsforcontinued Our taskforce metfirstonJulyand itma.org.uk SEPTEMBER

10/08/2016 15:08 004-005_ITMA_SEPT16_INSIDER.indd 5 SEPTEMBER publications/trade mark forms and fees/trade mark forms and fees experience oftheMadridSystem andcanbefoundatgovuk/government/ deficiencies raised Theformhasbeendesignedto improve theuser’s following feedbackfrom customers andto reduce theamountof launch ofitsversion oftheInternational Application formMM MM onlineThismonthmarksthefi oftheUKIPO’srst anniversary intellectual property/law practice now be found undertheheadingofLawandPractice govuk/topic/ information thathadbeenincludedintheIPProfessional sectioncan preference doesnotindicatepreference avacancy yourarea of ifatpresent on even isanarea youarethere keen to work pages anddoputyourselfforward if are abletoon thetimethey offer flenjoy depending exible involvement too andthatvolunteers onerous can forvolunteerstime commitment isnot effectively We try to make sure thatthe ustowe doandallows more perform are attheheartofeverything members members of ITMA that This ensures rely onvolunteer from involvement working group requires eachcommitteeand time commitment We have alsotriedto estimate much how and workinggroup andwhateachdoes are vacancieswhoisoneachcommittee website to make there where itclearer workinggroup informationontheITMA We have updated thecommitteeand to ourstrategic achieve objectives avaluableresourceprovide forITMA ITMA’s committeesandworkinggroups vacancies Volunteering UK IPO updates IPO UK Member the publicUKIPOiskeen to reassure Professional contentIP Havingreceived anumberofqueriesfrom Please take web alookatthenew All committees andworkinggroups itma.org.uk david rose@mishcon com Contact David onorat Reya IPlegalteam inLondon asPartner David de RosehasjoinedtheMishcon ITMA Review ITMA

move readers thatthe stages ofpreparation before it becomes alegaldocument is undergoing thefinal ITMA’s Royal Charter mark owners’ association” the establishment of aEuropean trade steering committee thatcontemplated existence heserved as amember of the even before theorganisation came into Treasurer of theorganisation In where he was afounder member and longterm involvement with MARQUES community was best exemplified by his David’s commitment to thetrade mark both inhouseandprivatepractice sectors as aEuropean one His career encompassed a UKTrade Mark Attorney andsubsequently College LondonDavid practised initially as capacities After reading Law atUniversity him inbothhisprofessional andpersonal London andthisKat was proud to have met highly respected trade mark practitioner in blogspotcouk on June “David was a David’s lossontheIPKat blog ipkitten Wilkof posted thefollowing inrespect of of David Goldring attheage of Neil ITMA was saddenedto hearof thepassing DAVID GOLDRING can useandbenefit from it statusandhow younew asmembers soon bepublishingfulldetailsaboutour to checkitmaorguk forupdates We will date pencilledinshortly Pleasecontinue and we hopeto have anofficial launch the scenes inpreparation forthechange Institute ofTrade MarkAttorneys andcanbecome theChartered Charter when we willofficially receive theRoyal and we willthenhave aclearer ideaof is scheduledforcompletion inSeptember become alegaldocumentTimothy’s work the Greatto SealandfortheCharter in readiness fortheCrown Office to apply scribing ITMA’s Royal onto vellum Charter House ofLords iscurrently working on and illuminator to HMCrown Office atthe Calligrapher nearer moves Charter Our There isalotofwork goingonbehind In memoriam Timothy Noad ascribe 10/08/2016 15:08

05 ITMA INSIDER 006-007_ITMA_SEPT16_SUMMERPARTY.indd 6 06 ITMA EVENT launch of a new pro bonoinitiative launch ofanew ITMA’s Royal Charter andpromote the all ontheexciting of implementation play inEUIPnegotiationsupdate us tomembers outlinetherole ITMAwill O’Rourke firstspeechto MBEused her Kateto ITMAPresident theevent at the Institute of Directors in London touch to Reception theITMASummer addedalight setting bucolic garden chats butwelcomesunshineanda tonea serious to manyoftheevening’s exit from theEUmay have brought THE POTENTIAL IMPACT ofaUK PHOTOGRAPHY BY SIMON O’CONNOR PHOTOGRAPHY RECEPTION SUMMER ON SHINES SUN at ourannual July gathering Inevitably, Brexit was ahot topic Welcoming andguests members itma.org.uk SEPTEMBER 10/08/2016 15:07 006-007_ITMA_SEPT16_SUMMERPARTY.indd 7 President Kate O’Rourke used SEPTEMBER to outlinetherole ITMAwill her firsther speech to members play inEUIPnegotiations itma.org.uk of ITMAChrisMcLeod with Immediate Past President left inlively conversation TheUKIPO’s Steve Rowan logo greeted members and guests ITMA’s soon to be updated gathered to meetandmingle More thanmembers for professional leaders longest running organisation TheIoDistheUK’s Jonathan Smithersright and LawSocietyPresident President Tony Rollins left O’Rourke isflanked by CIPA ITMAPresident Kate networks withmembers sponsor WebTMS centre NickMarch from event provided alushsetting TheIoD’s beautifulgarden aspecialguestattheevent was MrJustice Arnoldright 10/08/2016 15:07

07 ITMA EVENT 008_ITMA_SEPT16_LEGISLATION.indd 8 08 LEGISLATION construed fairly narrowly aresult it isnot As are notoriously difficult to andare pindown key areas to beaffected These therepeal by of artisticcraftsmanship andsculptures are the industriallyproduced Worksworks thathadbeen way anew or earlier to pursuecopyists ofsomedesignsdatingbackto owners thes However theyearlimitcouldgive removing was rarely relied uponin thepursuitofinfringers the protection aresult it of product designAs no more usefulthanregistered designrightsfor Section hadthetaciteff ect ofmakingcopyright WHY ISTHISCHANGESIGNIFICANT? daterepeal Order Commencement a new andaJuly and started consultationThisresulted anew in inJuly thatOrder repealed the Government oficonicfurniture owners by a judicialreview date setarepeal Order ofAprilFollowing tofor therepeal take effect to fortheGovernment setadateremained forSectiontoprovided It berepealed Enterprise andRegulatory Reform Act the the CJEU’sdecisioninFlosvSemeraro In to order alignUKlaw withtheEUfollowing TIMELINE which istheartist’slifeplus years artisticworks than theduration forother registered designs Thiswassignifi cantly less in linewiththemaximumterm available for produced tothan articleshadbeen years exploited more anindustrialprocess where by protection forartisticworksthathadbeen through ordestroyed that may to infringecopyright now besold January forthefinal stocks ofproducts force onJuly It hasalongstop date of andPatentsDesigns ActCDPA cameinto THE REPEALOF Section only limited protection for copyright A consultationandresulting Commencement Section limited theterm ofcopyright Replica repercussions Section of the Copyright SectionoftheCopyright John Coldham explainstherecent changeto Section anditslikely effect ondesigners

LEGISLATION will now need a licence ¡ needalicence will now protected itmay bethattheseorganisations ontheproduct iconic products Depending useimagesof they where and bookpublishers could affect architects CADsoftware producers affect Dimagesofprotected products which willalso possessionThisrepeal deal withmere clarifi sothatitexpressly doesnot ed theOrder However thiswaspointed when out theUKIPO shops forinstance couldhave caught been fortheir purchased replicas that hadpreviously toconsidered sobusinesses beaninfringement “possession”inthecourseofbusinesswas mere thatdraft resolved On been which hasnow Order draft ofthesecondCommencement interesting thefi questionarose following rst will“comebackfrom thedead”An copyright chance to buy” assomeoldworkswithexpired products asthe“last with manyadvertising appearto ofreplicas Sellers betakingnochances WHAT HAPPENSNOW? from thisrepeal that onlythemosticonicdesignswillbenefi t particular craftsmanship to make it?It islikely may beartistic forinstance butdoesitrequire to lay sometrickyhurdles down Something quality andaworkofcraftsmanship Thisislikely to claimthatits designisbothofhighartistic case However to willneed succeed theowner theLucasfia sculpture following lm costume than is a“workofartisticcraftsmanship” rather this route to willprefer claimthattheirdesign likely lookingat thatmost furniture designers designrightsare unavailableclaims where It is to anyfurniture designer forinstance to bring expected thefl willopen thatthis repeal oodgates [email protected] specialising indesignsandbrandslaw. is aDirector atGowling WLG John Coldham itma.org.uk SEPTEMBER 10/08/2016 14:48 Dennemeyer: the whole world of intellectual property

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009_ITMA_Sept_16.indd 9 10/08/2016 10:54 010-011_ITMA_SEPT16_INTERVIEW.indd 10 10 A FRESH P RPCTIVE PERSPEC eye to afascinating sector, as she told the ITMAReview IPReg Chair Caroline Corby isbringing an experienced Trade intheUK Attorneys Mark more interesting it even makesbright peoplewhichcertainly has thebenefi t ofbeingfullvery any business The profession also area andcriticalto thesuccessof because IPisafascinatinglegal It’s arole thatIwasattracted to the ChairofIPReg? to be Why didyou want and Ihave learnt somuchabout protecting brands whilemeeting There are approximatelyThere some of them including members includingmembers some ofthem of the ITMA leadership team of theITMAleadership the moment isdiscussion There legal regulatory at environment I have alsovisited anumber about whether there shouldbe there about whether of firms suchasStobbs IP and There’s a lot happening inthe alothappening There’s shadowed Tradeshadowed Attorney Mark Mark Caddle of Withers & CaddleofWithers Mark one regulator to allofthe cover in thesector? Rogers His Iamobserving Are you expectingchange Honour Judge HaconinOctober specialist area ofIP an As to thesector representing you asIcanandlookforward I amkeen to meetasmanyof legal fi elds includingthevery issued its preliminary report inJuly issued itspreliminary report consulting onthelegalsector and Markets Authority hasalsobeen regulator TheCompetitionand specialist anindependent remaining organisation IPReg seesthevalueof privatesector boards across a range Isatonmany during thatperiod I started intheCityand mycareer to release backinto thecommunity are safe prisoners decides whether of justiceandtheParole Board which which looksinto potential miscarriages Commission Criminal CasesReview inthefamilycourt children which looksafter theinterests of Court AdvisoryandSupportService director andFamily theChildren of IPReg a nonexecutive Iamcurrently Justice MoJ In additionto chairing of theMinistry by was overseen which m andemployees public bodywithanannualbudgetof TrustProbation anondepartmental Council the Nursing&Midwifery chairing interim hearingsfor order Counciland Optical for theGeneral Chair oftheInvestigation Committee expected ofaregulator from being role Ihave agoodideaofwhatis This isn’tmyfirst statutory regulatory What canyou bringto therole? I have alsochaired theLondon itma.org.uk SEPTEMBER 15/08/2016 14:53 A FRESH P RPCTIVE PERSPEC 010-011_ITMA_SEPT16_INTERVIEW.indd 11 SEPTEMBER regulation proportionate record for delivering has astrong track organisation that working for an I’m proud to be inexecutive from acareer viewpoint aninternationalwho offers business and technologyscience Steve Gregory with enterprise start up businessesin University ofSouthampton and works business incubationprogramme atthe Bream whomanagestheSETsquared laydo other includingDavid members asalaybut usefulviews member as Similarly Icanalsobringdifferent I canstandbackpauseandthink not too inanorganisation immersed experience mygovernance develop company Allofthishashelpedto board ofaUKconsumer products of industries onthe Iam currently As anon executiveAs director Iam itma.org.uk issues of concern toissues ofconcern them of workingandbefullybriefedon any theirways understand I couldbetter discussions withprofessionals sothat introduce myself It wasgreat to have Ivisited when recently firmsto in theCity ofthis Iwasreminded is familiarto mefrom my background work onclient attorneys applied by asset risksforthisarea theparticular and alsounderstand needs ofacompanyororganisation haveattorneys to address thebespoke in IPandalegalbackground These a specialisttechnical background acombinationof out indemanding the legalsector Theseroles stand regulatory approach to in others require adifferent Attorneys Trade andPatent Attorneys Mark boards?other regulatory How doesIPReg standoutfrom viewgovernance who bringsafinancialandcorporate Nick Whitaker accountant asenior IPregulation and profession views theengineering aspects andhow oneducational share aperspective Councilandcan the Engineering is Head ofPolicy andStandards at Seddonwho companies Deborah roles across globalautomotive However the hard workandeffort and highstandards are appropriatethat there safeguards environment Thisgivesconfidence operateIP attorneys inaregulated thatregulatedshould understand organisations to useBusinesses competition ortell which them of protection butwedon’tlimitthe intermsand whatitmeansforthem regulated andunregulated services between thedifferences understand non regulated advisor toof whether appointaregulated or informed decisionsontheirchoice business to thepublicto enable make competition forthepublicIt’s our the businessofregulators to limit wehaveframework setup have intheregulatory confidence consumers publiccan Thewider processes to and helpclients complaints procedures andother regulation We have acodeofconduct proportionaterecord fordelivering organisation thathasastrong track I’m proud to beworkingforan through IPReg? 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11 IPREG rand owners traditionally extremes is a range of specialist known for technology devices such as Fitbit activity trackers fashion luxury goods or dualpurpose devices such as Ringly sports equipment are jewellery which vibrates to identify increasingly becoming calls or messages from selected Bassociated with “wearable technology” contacts smart clothing for example At its most sophisticated this sports clothing that provides feedback emerging product set includes on body position and technology as fullblown computers in wearable fashion including Studio XO’s LED form for example the Apple Watch and miniscreendecorated couture and Google’s controversial Glass Whatever the complexity or At its most simple an inexpensive usefulness of the technology communication chip is added to an brand owners need to be aware everyday object For example Tile is a of the potential hurdles when Bluetooth chip that can be attached to registering trade marks for wearables an easytolose item such as a wallet and more generally the increased and transmits its identity in the hope risks of brand damage where technology its location is discovered by phones and especially connected data

ILLUSTRATION BY ALIX THOMAZI BY ILLUSTRATION running the Tile app In between these collecting technology is involved THOROUGHLY MODERN MARKS Jennifer Sander assesses the challenges of brand protection for wearable technology

012-015_ITMA_SEPT16_WEARABLES.indd 12 10/08/2016 14:16 012-015_ITMA_SEPT16_WEARABLES.indd 13 other partiesother may anticipate the It isimportant to seek outtrade SEPTEMBER type of marks thatwill beused mark protection early, since for wearable technology itma.org.uk includes “bracelets” aswell for themarkSAMSUNG GEARFIT For example aCanadianapplication particular electronic functionality this traditional product ashaving a toproduct name andthen define theirtraditional wearable goodsby date bodyand heart rates” internet information namelytime measuring anduploadingto the activity trackers fordisplaying namelywireless electronic devices includes goodsfor“multifunctional registration forthemarkFITBIT functionality For example aCanadian may theirspecifi bedescribed by c illustrates thispoint in associationwithwearable goods and registrations formarksused and awatch classified bothasaportablecomputer example a“smartwatch” couldbe description fortheproduct For the product aswellthetraditional technology integrated component in any trade markapplicationincludethe by thegoodscovered whether consider should and/or services Brand owners multiple classifi cations ofgoods item consumer typicallycross they withatraditional component products often combineatechnology isthat becausewearable consideration for wearable technology animportant Another approach istoAnother define In oneapproach wearable goods oftrade markapplications A review seekingtrade markprotectionWhen include bothbroad and smartphones” assistants and to digital personal communicate data and “watches that includes “wristwatches” the sameapplicationalso smartphones” Similarly assistants and to digital personal communicate data “bracelets that Such applicationsmay protection foriWATCH becauseit difficulty insecuringtrade mark For example Appleexperienced will beusedforwearable technology may anticipate thetypeofmarksthat protection early parties sinceother It isimportantto seekouttrade mark EARLY ACTION electronic technology as anymarksdirected to similar to goods aswell similarconsumer ofanymarksdirectedconsideration Clearance searches require careful aspects ofthewearable product to manner all in abroader cover clearance searches mustbeconducted into multipleproduct categories the product from individualsusing gathered that fl from thedatathatis ow mayThere alsobesecondaryservices with ahealthandfitness programme” tracking complianceandmotivation for managinginformationregarding FITBIT includes“computer software Canadianregistration for a further healthrelated such informationAs software applicationsfortracking wearable activitytrackers aswell FITBIT isusedinassociationwith wearable product For example mayservices fl from theprimary ow in theapplication for eachclassofgoodsandservices in thosejurisdictionsthatchargefees will typicallyhave fi higher ling costs mark applicationsforthesegoods with wearable products thetrade mayand/or services beengaged headsets andcases” headworn computingdevices computer namely peripherals descriptionof“wearable narrower of “computer hardware” aswella includesthebroad description GLASS application forthemarkGOOGLE or services For example aCanadian descriptionsofthegoodsand/ narrow Because thesegoodscross Secondary orancillarygoodsand Since more classesofgoods 10/08/2016 14:16 13 INNOVATION 012-015_ITMA_SEPT16_WEARABLES.indd 14 14 D printing and the Dprintingandthe pm Tea andcoffee break pm Technology andgraphical pm Brexit andtherepercussions pm Afternoon introduction pm Lunch pm Domain namesrights am Wearable technology am Introduction Kate am Registration and am FULL CONFERENCE PROGRAMME drinks andnetworking reception implications inaspecialsession wider IPsector We its willdiscuss will alsohave repercussions forthe tomorrow’s challengestoday share theirinsight to equipyou to face and domainnamesOurspeakers will trends including D printing wearables marks/designs consider theirimplicationsontrade of thelatest trends intechnology and The event will be followed by a The eventwillbefollowed by a Of course the EU Referendum result Our Autumn Seminarwilladdress Farabow Garrett &Dunner Finnegan Henderson BethFerrill property implications forintellectual Abraham UKIPO representation Nathan Collis Bird &Bird LLP contentious IPPatricia in theworld ofnon VicePresident Tania ClarkITMAFirst Payne Valideus Ltd Solicitors ChairandSusan HarrisWaterfrontMatthew available to brand owners other takedown remedies protection mechanismsand Gowling WLG Alexandra Brodie O’Rourke ITMAPresident refreshments important to keep on top to keep ontop important professionals it’s For all IP For allIP AUTUMN SEMINARTAKES ON NEW TECHNOLOGY Autumn Seminar inOctober –booking isopen now Find out more about the impact ofinnovation at ITMA’s BSBfourhours Ref ¡ • SRAfourhoursRef WT/ITMA • IPReg five hours • CPD NonmembersexVAT ITMAmembers exVAT • Drinks reception with canapés Drinksreception &canapés Twocourse seated lunch Coffee &tea breaks Delegate pack Allseminarpresentations postevent to allseminarsessions Entry Included inthedelegate fee NonmembersVAT exempt • ITMAmembersVAT • Delegate place BOOKING DETAILS area atthistime ofyear duetopossible highdemandinthe or analternative hotel asearly their bookingwiththeHyattRegency shopping centres exclusive Mailbox andBullRing and five minutes’ from walk the ofBirmingham opposite theLibrary hotel withaprimecentral location Birmingham amodernfourstar We return to theHyattRegency in OUR SEMINARVENUE Close pm Drinksreception pm andclosingwords Summary pm technology Oldlawandnew pm exempt Delegates are encouraged to secure SEPTEMBER BOOKING IS AMON THE DEADLINEFOR President Kate O’Rourke ITMA Chambers Hogarth market JonathanMoss remedies fi t astcentury how thelawofdamagesand the aimofminimising theriskof describe product classeswith use oftheirtrade marksintrade to shouldalsocomplain about They to forsuchchanges proactively lobby mayBrand owners seek therefore intoproducts’ entry themarketplace typicallylagsbehind and amendment trade markoffices buttheexpansion classification from variousnational proposals forchangesto theNice trackers” WIPOcontinuesto accept “smartglasses” and“wearable activity includes theterms “smartwatches” classforgoods goods andservices Nice international classification of products new consistentprovide terminology for toare attempting address the needto Tradebecoming generic markoffices an innovator company’strade mark classesofproducts tofor new avoid is aneedto names neutral develop atalaterservices date the descriptionofgoodsand/or refiproposeduse basisandthen ne products andfunctionalitiesona it may listingallpossible consider product linesthatwillbelaunched isunsure oftheproducts or owner abrand Where electronic device to describingthe functionalityofthe traditional designationinaddition their products are describedby Accordingly that oneshouldensure maygoods andservices notyetexist categories forclassification ofthe technology terms theproper or phase For wearable innovative products are stillintheirdevelopment marketthe consumer while generally advance oftheirproducts entering their trade markapplicationswellin for Apple a closelyguarded secret asistypical product is thelaunchofanew where may alsowishto delay registrations companies coursebrand owners Of individualsand other countries by was already registered inseveral In the current version ofthe In version the current For product typesthere innovative Traditionally manycompaniesfile itma.org.uk SEPTEMBER 10/08/2016 14:16 012-015_ITMA_SEPT16_WEARABLES.indd 15 SEPTEMBER IP their marksorother marketplace foranyactivityinfringing continuallymonitor they ensure the should infringement Brand owners increasing risksof and withthem bringingrivalproducts entrants market new launch Thisisattracting trackers inthefirst monthafter than onemillion“Blaze”fitness market Thisyear Fitbit soldmore Wearables are a hotandfastgrowing HOT MARKET the headofauser electronic display wornon device issuedtorecently Googleforits Watch andaUSutilitypatent was interfaces displayed ontheApple designs forthegraphical user registeredseveral Canadianindustrial technology For exampleApple has patents intheUSforunderlying the products andpatents andutility patents fortheshapeanddesignof rights industrialdesignsanddesign forms ofIPprotection suchasdesign other products shouldalsoconsider protection companieswithwearable In conjunctionwithtrade mark for nonfunctionaldesignfeatures guise egtrade dress intheUS colour soundanddistinguishing traditional trade markssuchas wearable products through non rights andregistrations the possibleimpactontrade mark to thesebusiness relationships and Accordingly shouldbegiven attention supplies straps fortheAppleWatch systemoperating andHermès Fossil watches have Google’sAndroid collaboration withTory Burch while is thecaseforexampleinFitbit’s brand andatechnology brand This two companiesespeciallyafashion marketed andcobranded between Wearable goods are frequently RELATIONSHIPS inactivity of thebrand owner’s asaconsequence genericisation invalidation onthebasisof It may alsobepossibleto protect itma.org.uk to ensure that “user experience” to experience” that“user ensure their choiceoftechnology partners shouldtakeBrand owners care over created expectations highconsumer and companiessuchasApplehave be unavoidable damage from datalossorhackingmay on to atechnology partner anybrand the financial liabilitycanbepassed of worldwideannualturnover if Even greater cent valueofmorfourper failure to protect dataatthe personal data collectionandsetthefines for for for obtaininginformedconsent hasincreased therequirements into force across theEUfrom May ProtectionData Regulation coming or whatislocated TheGeneral there coordinates combinedwithwho when informationsuchasGPS with other combined when that couldbesensitive credit card detailsetcfriends or weight fi hours sleep tness levels initselfsuchasheight personal datathatiseither typically collectuser risks of making their products “smart” andliability some ofthereputational IP shouldbeaware brand owners of trade marksandother Looking beyond BEYOND IP Getting technologyGetting rightisdifficult Wearable technology devices monitor the marketplace for any infringing activity infringement. Brand shouldcontinually owners products increasing and,withthem, of risks attracting market new entrants rival bringing Wearables are afast-growing market. This is co-authored this article. co-authored thisarticle. , atechnology specialistatGowlingMatt Hervey WLG intheUK, [email protected] is aTrade MarkAgentatGowling WLG inCanada Jennifer Sander attendant challenges attendant the is hopefullyworthovercoming customers Thisprizetherefore andits abrand owner between opportunities fordailyinteraction customer’s lifestyle andmay off er ina becomeembedded devices industry Secondgoodwearable ofthetimepiece the attention in thewatch market musthave got presence company withnoprevious millionAppleWatches a soldby theestimatedwearables isgrowing market First for demand consumer to whether choiceover enter the little toowners consider may andthey have EightyFourNineteen in themediawithGeorgeOrwell’s same ledto unfl comparisons attering smartTVs over concerns doingthe for search commands Lastyear be configured to listen continuously smartwatches and smartphonescan their customers For examplesome to out” that“creep bewaryofservices need and share databrand owners etc isappropriate to thebrand updates cycle theobsolescence lifemanagingsoftware battery including appdesigncompatibility Clearly ismuchforbrand there more products interconnectAs 10/08/2016 14:16

15 INNOVATION 016-018_ITMA_SEPT16_HERALDRY.indd 16 16 of PRIVILEGE POSITION POSITION C arms and their unique place intrade mark practice Herald Clive Cheesman reveals the role ofcoats of Reprising his Spring Conference address, Richmond are thosewhowork attheCollegeof heralds Commonwealth therelevant Northern Ireland andmuchofthe “offi ofarms”Incers EnglandWales or theheralds behalfby Crown’s of armsisadministered onthe andstandingsign ofgoodreputation sector a represent thismeansthey In today’s worldforthecorporate technically inthenature ofan honour are also andtheirusesincethey them The registration anduseofcoats operates control over of arms TheCrown branch oflaw thelaw regulated theirown by specific formofmark oats ofarmsare a a regulatory authority on heraldic in andsinceithasbeen The Collegewasfirst incorporated REGULATORY AUTHORITY as Team GBseeFigure collectivelyknown Associations andParalympicthe BritishOlympic computergaming companyand an unincorporated association a amajorpublicschool university aCommonwealth anniversary celebrating theirth universities including localauthoritiesEnglish to corporate bodies orimpersonal formally initiated ofwhichare grants ofarmswere new Arms inLondonIn thefirst halfof itma.org.uk SEPTEMBER 10/08/2016 14:12 016-018_ITMA_SEPT16_HERALDRY.indd 17 SEPTEMBER Thecontextarms asone’sown will that doesnotamountto usingthe someone else’scoatofarmsina way bonafiof armsallows de display of “use”and“display”between Thelaw isthedistinction practitioners One surprisingtobe alittle trade mark Some ofthefeatures ofthiscasemay v Manchester Palace ofVarieties caseofManchester Corporation judicial statement ofthefactisin England isclear the mostconvenient law ofarmsasapartthelaw of assetsheraldic theplaceof While ways to andprotect usedeploy their advise proprietors ofcoats ofarmson unofficially created version thanthe looks manytimesbetter and legitimate coatofarmsinvariably designIn heraldic suchcasesthenew was uncomfortablycloseto an existing coat ofarmsto amarkthat replace has ledto theregular grant ofanew authority intervention aheraldic by Trumpthat ofDonald seeFigure emblems In somecasessuchas marks thatsampleorhintatheraldic coatsofarmsincluding or resemble to register to marksthatare identical applications with theUKIPOover The Collegeisinregular contact INTERVENTIONS before beingusedpublicly ought to be subjectto grant aproper on theextent oftheresemblance heraldicstyle mark which depending of armsinthejurisdictionifnotitisa itislegallyrecognised asacoat there arms Ifa coatofarmsisonrecord criterion forthelegalityofacoat official records constitutes the defi ning jurisdiction Inclusion intheCollege’s andindividualswithintheir entities coatsofarmstogrant new appropriate the delegated to prerogative royal matters Its offi three senior havecers Offi ofarmsalsofrequently cers itma.org.uk and licensing that toand licensing itscontractors of theartworkcoatarms protect retaining ownership itselfby council Thecouncilcanofcourse with” alongsidethenameof private contractor andsays “working a dustcart thatgivesthenameof arms ofalocalcouncilontheside and regular forinstanceto seethe authorityrelevant It isquite normal a longterm relationship withthe undertaken private by contractors in are in whichsomanypublicservices ownership Thisishelpfulinanage thetrue labelling thatconveys displayed withexplicit others by itcanbe but inlinewiththeabove orcollaboratorpartner organisations even others foruseby be licensed unless itisexpressly transferred body donotreceive thecoatofarms assets andliabilitiesofthegrantee alltherightsobligations taking over defined instatute as orotherwise body those Successorbodieseven to theCrown by transferred another arms willcontinueto to refer itunless the grantee ceasesto existthecoatof if Even which doessometimeshappen substitution fortheoriginalone of diff ofandin armsinlieu erent agrant by behalfperhaps Crown’s onthe ortheheralds the Crown the grant isexpressly cancelledby divest itselfofitscoatarmsunless thegranteeby body Nor canagrantee alienated granted onto athird party note are thatacoatofarmscannotbe coatofarmsown usingtheir an instanceofaperson to create theimpression thatthisis thatare likelyseals andletterheads buildings vehiclesflags corporate of unlabelleddisplay suchason are wellestablishedmodes there affect whatconstitutes usebut A coatofarmscannottechnically law features ofheraldic Other to International Golf Club Scotland Ltd, Figure :Coat of armsgranted to the Team GBinthe Rio and subsequent Arms ofthe University ofOxford inuse Figure :Three of the many versions of Oxford usedby Oxford University at the University Press and Elsewhere of the coat of arms of the University Olympic and Paralympic Games. British Olympic and Paralympic Press. From Representations ofthe granted by the Scottish heraldic Figure :Coat of armsof Trump Associations in ,for useas authority in . (Oxford ). 10/08/2016 14:12 17 HERALDRY 016-018_ITMA_SEPT16_HERALDRY.indd 18 18 HERALDRY with youandyourlegitimate partners one thatpeopleseeandassociate thatthisisthe and youcanensure specific artworkofyourcoatarms inatleastsome possess copyright of heraldry It islikely thatyouwill tothat are closelyrelevant therole trader points It alsoincludesseveral nature rightsandattributes ofthe the regulation whichcovers Trading Regulations especially ProtectionConsumer from Unfair in trade may alsobesubjectto the of armsbelongingto someone else on harmandgoodwillUse ofacoat criteriaif youcanmeettherelevant someone usingyourcoatofarms for passingoff may lieagainst ActTMAAnaction Marks SectionoftheTradeunder are expressly protected statute by common orstatutory arms Theroyal partsofthelawfrom other either of armscanbenefit from protection component parts includingthe component originating grant It treats themain to inthe thecolourslaiddown are automatically treated asidentical white colour orinshadesofanother blackand coat ofarms whether ofagiven that monochrome versions of arms Colourisignored inthesense words whatconstitutes thesame coat approach to typeidentity inother mark practice becomesimportant andtrade heraldry approach between diff another This iswhere of erence or preferably ofit versions several of armscanregister itasatrade mark And ofcoursetheproprietor ofacoat DIFFERENT APPROACH As thispointmakesAs clear coats Heraldry takes laidback avery precise copiesbutalso“anyimitation Here thelaw prohibits notjust TMA is enacted domestically inSection ter ofthe Paris which Convention hallmarks protected Article under andoffiemblems cial signsor may notapplyisinrelation to state the trade markpointofview than isbroader pointofview heraldic trade marklawunder Evidently the wouldbetreatedthat they assuch pointofviewheraldic butitisunlikely from a page wouldbeidentical seeFigureUniversity ofOxford ofthearms representations artistic style Thus three very diff erent it hasregard to content than rather protected Andmostimportantly andindependently as severable shield crest andanysupporters across diff versionserent reinvented stylistically One area where this observation thisobservation area where One retaining itsidentity One coatOne of arms can beendlessly or artistically, Clive spoke onthistopic attheITMASpringConference inMarch. [email protected] is RichmondHeraldattheCollege ofArms Clive Cheesman potential to workinpartnership the worldoftrade markshave great toexaggeration say and thatheraldry diff ofapproach itmayerences beno this infinite reinventability Despite registering marksitalonecanexploit itcomestoof armsatleastwhen body hasinrelation to coat its own privileged positionthatthegrantee diff looks toerent Due theexclusively quitewhile achieving radically It across versions retains itsidentity reinvented stylisticallyorartistically one coatofarmscanbeendlessly individual coatofarmsmeansthat takesheraldry to ofan theidentity marks andtheflexible approach that wellastrade Coats ofarmsworkvery PARTNERSHIP POTENTIAL versions ofcoatsarmsversions the selectionofappropriate andcorrect the CollegeofArmscanbehelpfulin ofit versions advicefrom Professional betomust therefore register arange of arms andwishesto use itcommercially The adviceforabodythathascoatof relating to state onthispoint emblems withthat mark practice willconverge time beingatanyrate trade thatwider inconsistent Anditisunlikely forthe rather judicial applicationhasbeen ismuchdiscussedandits provision application Butthemeaningofthis wide invitingavery apparently pointofview” from aheraldic itma.org.uk SEPTEMBER 10/08/2016 14:12 019_ITMA_SEPT16_ECTA.indd 19 S awaited from EUIPO have are posedandanswers been also beexcluded suchquestions Many give substantialvalueto goodscould tartan designsandred soleswhich examplessuchas purpose Other duetoperfume itsarguablyfunctional some likely exclusions applyingto taste aswere considered markswere Examplesofsoundsmelland attention criteria considerable the new given were mark system surrounding Discussions latest changesin thereformed EUtrade and fastchanging issuesinIP to focusthemind onthechallenging Waves andCrosswinds” was intended SEPTEMBER strategy Ninoslav Babi impact onacompany’senforcement destruction costshave asignifi cant storage where compensation and the balancingactofcostsagainst valuableinsight on and provided procedure discussed smallconsignment ChanelFranceDepartment Trade andAntiCounterfeit Mark Counsel goods SylvieHarding Senior within thetimescaleprovided option thanfi ling adeclaration the timecomescouldbeabetter when thatpartialsurrender attitude This may bearefl ection ofaprevailing EUIPO declarations received by overwhelming withabout have provided services notbeen to reflect more accurately thegoods/ declarations to specifi amend cations EUTMRitwasnoted that Council Regulation ECNo / theissueofArticle On PERTINENT CONTENT Most dedicated sessionswere to the On the issue of seizure of counterfeit theissueofseizure ofcounterfeit On under the banner of “Rogue of“Rogue thebanner under ECTA AnnualConference Trade Association Mark the European Communities et instunningDubrovnik itma.org.uk of Croatia’s ofCroatia’s on thescopeoffairuse exception andtheUSdebate InfoSoc Directive¥ of Intellectual Rights¥the Property onTradeRelatedAgreement Aspects Marrakesh Treaty ¤¥ Article ¤ of the to£this withfairusereference the exceptionon copyright andcontrasted Finally NiklasBruunspoke Professor being authorsofcopyrighted works and posedquestionsonsmartobjects andtheinterneton copyright ofthings inGermanypiracy spoke LéonDijkman has ledto asignifi cant declineinsuch legalactionagainstinternethow piracy digitisation inthemusicindustry and insightintoprovided of thechallenges three speakers FlorianDrücke Dr I wasparticularlyimpressed by networked world” future ofintangibleassetsinadigital on“Thepastandthe presentation Associates Croatia gave acharismatic Vukmirand Mladen ofVukmir & gave theinspiring keynote speech CEO AtlanticaGrupa Croatia priortoCroatia even joiningtheEU approach adoptedcommonsense by in transit andcontrasted thiswiththe customsrecent ofgoods enforcement application ofPhilipsvNokia inthe Customs Directorate discussedthe During a series of split sessions ofsplitsessions aseries During Emil Tedeschi and President Of rogue waves and crosswinds and [email protected] is aSeniorAssociateatLewisSilkinLLP Cheng Tan timing of discussions ofEUchange timing ofdiscussions Cheng Tan reflects ontheironic an aptdescriptionofthedays beyond tooand crosswinds” wouldserve as that“rogue waves didweknow Little vote wasannouncedonitslastday outcome oftheUK’s EUReferendum EU ironic thatthe soitwassomewhat ofthe members as oneofthenewer elegant galadinner cametoThe conference withan anend the world’sfi rst quarantine compounds attheLazareti complexoneof evening onCopacabanaBeachandan reception ¨ EUTMR andtheapplicationofArticle Unilever expounded thecaseofIron &Smithv SimoneandPartnersDe Italy ECTA Councilmember andAttorney refusal Meanwhile Fabio Angelini ofabsolutein assessment grounds of comparing thepositionofcourts of AppealEUIPOwashelpfulin Christoph Bartos Member Boards of AppealandtheCourtJustice by an update onthe caselaw oftheBoard was especiallyworthwhile In addition on thefunctionsoftrade mark” andtheeffa oftheDirective ect Article under Arnold “Infringement afternoon’s Justice sessionwithMr delegatesMany remarked thatFriday APPRECIATIVE AUDIENCE The ECTA hailed Croatia Conference includedawelcome events Evening 10/08/2016 13:03

19 E C TA 020-021_ITMA_SEPT16_EVENT.indd 20 20 I INNOVATION and attempt toand attempt replicate itssuccess take thekey attributesoftheIPEC designed to were that theschemes September SirColinexplained oftwoyearsuntilfor aperiod since October andwillcontinue apilotfortheseschemesoperating in theRolls Buildinghave been trialsand earlier Thecourtssituated of judgesseekingto shorter achieve aworkinggroup by recommendation Trial a whichfollowed Scheme Shorter Trial andFlexible Scheme the impetusforintroducing the and protocol andhandsonapproach procedures streamlined processes ongoing successto itswellstructured In particular hecredited theIPEC’s timescaleon amore commercial potential to off disputeer resolution diff pointsoflaw erent andits and examinationofarange of multitude ofcases itsencouragement noted theIPEC’s abilityto handlea courtforumsin other SirColin learned from itcanbeimplemented thelessons years andhow in recent EnterpriseProperty CourtIPEC speaker forums explainedtheevolution oftheIPEC andothercourt Sarah Barberattended ourrecent event atwhichourhonoured The Judge touched then upon the successofIntellectual Colin Birsslooked backon in theRolls Building Justice Mr changesandinitiativesrecent n hislatest talkoutliningthe courtcontrolled approach In contrast adoptsamore traditional the former Rulesof theCivilProcedure isthat N Direction Practice by governed Trial both ofwhichare Scheme Shorter Trial andthe Flexible Scheme adoptedbe permanently are unlikely they the schemes to noted thatifpartiesdonotuse off thatthey management er He streamlined procedures andcase and fullytake advantageofthe toin order supporttheconcept theschemesof partiesconsidering however highlighted theimportance Flexible Trial SirColin Scheme and nopartiesyetadoptingthe Trial atthetimeofwriting Scheme caseshaving adopted theShorter litigants withonly by schemes uptakea relatively slow ofboth systems of allnew hasbeen there expectedAs withtheintroduction UPTAKE ENCOURAGED expert evidence expert extensive disclosure orwitness and businesscasesnotrequiring cost andare intended forcommercial shorter oftime atareduced period to resolve disputes inasubstantially seek to off partiestheopportunityer in theHigh Court Bothschemes The key diff the between erence in theHigh Court replicate itssuccess IPEC andattempt to attributeskey of the designed to take the Trial Scheme were Scheme andFlexible The Shorter Trial itma.org.uk SEPTEMBER 10/08/2016 13:00 020-021_ITMA_SEPT16_EVENT.indd 21 SEPTEMBER principal partof thecasebeingput crossexamination withonlythe oftime a controlledmanagement Equally promote theschemes astrict four days includingreading time from thetrialbeingcontainedto also benefi schemes The new t CONTAINED PROCESS sixweeksthereafterjudgment with conference management than eightmonthsafter thecase having atrialdate fixed notmore features includetheadvantageof notablecase managementOther judgestoallowed participate inactive successful intheIPECandhas thathasbeenduration aconcept possible assignedthecasefor whois asfar expertise relevant judge adesignated judgewith opportunity to be assignedadocketed Shorter Trial includingthe Scheme the variousbenefits ofusingthe RulesProcedure theCivil forunder provided the fulltrialprocedure currently in amore expedited procedure than arbitration proceedings resultingby approach favouredand consensual isthusbasedontheflscheme exible thepartiesbetween Thelatter adopting theoutcomes agreed andthe courtusuallyenforcing thelitigationprocess withover the partiesmaintaingreater control theFlexibleTrialunder Scheme Mr JusticeMr Birssalsodetailed itma.org.uk will not replace the requirement to therequirement will notreplace file CEFileand assistlitigantsinperson filing willsimplifylegalproceedings ofelectronic that theimplementation internalimprove efficiency It ishoped accessible andsearchable databaseto thecourtwithaneasily also provide parties interact withthecourtand the system isto theway modernise electronically Theobjectiveof courtcorrespondence general court withforms applicationsand it mandatory forfirms to the provide Rolls Building CEFile issetto make be extended to allforumswithinthe Court and from October will the Technology andConstruction the court CEFile wasfirst piloted in partiesinteractimpact onhow with efiling system whichwillhave an ofthisnew for theimplementation theframework Oprovides Direction system management CEFile Practice electronic file anddocument initiative theintroduction ofanew Rollsdiscussed afurther Building will beassessedsummarily will notbeapplicableinstead costs to thejudgeLastly costsbudgeting On the theme ofeffi thetheme On ciency SirColin Richard Parsons, AssociateSolicitor, co-authored thisarticle. [email protected] is anAssociate Solicitor atRGC Jenkins&Co Sarah Barber its objectives toprepared to beinnovative achieve to adaptto litigationand is modern that theRolls Buildingisevolving entertaining andinformativetalk access to justiceforlitigantsinperson streamline theprocess andimprove to which itishoped will forum forsmallervalue claimsup of anonlinecourtto anew provide also discussedtheimplementation workload oftheHigh Court SirColin Appeal itwillundoubtedly add to the pressurerelieve ontheCourtof to reduce thiswill thecaseloadWhile from theCountyCourt inanattempt Court beusedastheforumforappeals It proposed istherefore thattheHigh effi andqualityare maintained ciency will beneededto thatitsfuture ensure capacity over operating andreform Appeal It wasnoted thattheCourtis workloadoftheCourt the current whichanalysed Briggsreport recent JusticeMr Birssalsodiscussedthe FURTHER CHANGEAHEAD however onthecourt’sradar bundles paper hardcopy Thisis It was clearfrom SirColin’s

ALAMY 10/08/2016 13:00

21 EVENING MEETING 022-025_ITMA_SEPT16_BIAS.indd 22 22 LINK WE ARE the weakest When it comes to bias,every oneofus has to shoulder some blame. Jon Atkins explains why

itma.org.uk SEPTEMBER 10/08/2016 12:58 022-025_ITMA_SEPT16_BIAS.indd 23 SEPTEMBER We have spent too long considering and notenough time focusing on the financialreturns from D&I the weakest linkinthechain: us itma.org.uk I which peoplefeelvaluedandrespected need oneSurely creating aculture in you’ve gotto askyourselfwhy weeven andbuildfuture leadersidentify and are timesmore likely to performance people forimproved will betimesmore ableto coach intheirindustry leaders as innovative are timesmore likely to beseen athreeyear period over employee per cashflow timeshigher experience development leadership into talentmanagement strategies and D&I organisations thattrulyembed published in concludedthat clear Deloitte Atwoyearstudyby andinclusionD&Iare diversity inclusion asastandard struggle to fairnessand achieve slowbeen Most organisationsstill toa genius realise thatprogress has in mostorganisationsitdoesn’ttake training existsinoneformoranother debated been fordecadesanddiversity While thisbusinesscaseisstrongWhile Nonetheless of thebenefits diversity andinclusionhavediversity ofequalitythe concepts hasstalledWhile movement willadmitthediversity leaders HR professionals andbusiness are beinghonestmost f they that wehave too spent progress inthisspaceis The key reason forslow for D&I? why doweneedone health andsafety so a businesscasefor We to don’tseem need simply commonsense? dois for whatthey Herein lies the issue Herein liestheissue

the March/April issue ofthe article in ChristianScheier’s Dr foronethatiseasierproblem our mindssubstitute acomplex ourmindsworkInhow thisinstance using foryearsto insightinto provide illusions thatpsychologistshave been This isoneofmanypuzzlesand PSYCHOLOGICAL PUZZLE correct answer and and youarriveatadifferent starting pointoftheballcostingp total thesamewith of Do bat mustcost leadingto agrand answer the Iftheballcosts pthen Work backwards from yourinstinctive wrong Lookagain Theballcostsp p Andlike mostpeopleyouare instincts willtell youtheballcosts If you’re like mostpeopleyour Take alookatthispuzzle ‘SIMPLE’ PROBLEMS the reality canbequite different makingsuchdecisions and fairwhen think ofourselvesasrational objective ignore andwhoto supportorexclude to hire orfire whoto withor engage ones whomake thedecisionsonwho chain us humanbeingsweare the As focusing ontheweakest linkinthe time from D&Iandnotenough thefinancialreturns long considering As readers may remember from may readers from As remember cost? ball How the much does ball. the bat costs moreThe than .. cost together aball A bat and Unfortunately asmuch as welike to

10/08/2016 12:58

23 INCLUSION 022-025_ITMA_SEPT16_BIAS.indd 24 24 experiences of chequerboards dark of chequerboards experiences trawls through hugedatasetsofpast the reality Instead ourunconscious the unconsciouspartofourminds of youwillbesurprised! them outandcompare me cutthem believe shadesofgreyidentical Ifyoudon’t darker are infact thansquare B they Technology square While Alooks Institute atMassachusetts of Science ofVision Edward Adelson Professor This isanopticalillusioncreated by asthesquare markedof grey “B” looks darker lighter orthesameshade yourself ifthesquare marked “A” to into biascreeping ourdecisions the way wethink andthiscanlead judgments We lazyin are inherently System usingintuitionto guideour in reality wetend to defaultmore to we shouldrely onSystem However to selectfrom around ofinterviews approacha more egwho considered objectively In situationsthatdemand analysing andcomputingdatamore and effort to complexproblems allocates more consciousattention contrast System thinking “slow” decisions quicklyandonautopilot By toa tendency approach situationsand work System “fast”thinkingis ourminds illustrating how further “System thinking”asways of the terms “System thinking”and Kahneman coined Daniel Professor Nobel Prizewinning ITMA Review However westruggleto convince andask Look atthepicture below attention means you spend the means youspend attention confirmation biasandselection on System thinkingcoupledwith sociallyweird” Areliance and alittle people tend to be“geeky analytical and have builtastereotype thatsuch ofpeoplefrom Company X experience Youworked forCompanyX have past from theirCVthatonecandidate has capability However younotice and a fairdecisionbasedonmerit candidates Your desire isto make are interviewing ofdiverse anumber situationinwhichyou recruitment decisions atypical Consider lead usto make faulty biased even mind processes informationandcan our just asmallillustration ofhow critical data information leadingusto overlook unconscious isconstantlyfiltering accurate decision butinreality our that wethinkneedto make an ourselvestoattune information Inselection attention effect we potential source ofbiascalled three times Thisisanother “of” I wouldbetthatyoumissedtheword who spotted three youare notalone issixForThe correct answer those “F” appearsinthesentence below manytimestheletter count uphow in front ofus than objectivelyinterpreting whatis often unconsciousconclusions rather to lookforthings thatconfirm our confi rmation bias oratendency see Suchexpectationsleadto expectations ofwhatweshould are andusestheseto guideour appear darker probably thatthey the eff makingthings ect ofshadows squares nextto lightsquares and THE EXPERIENCE YEARS OF WITH COMBINED STUDY FIC SCIENTI OF YEARS OF SULT RE THE ARE FILES FINISHED Taken together theseexamplesare Let’s do another exercise Let’s doanother Quickly Whenidenticalapplication Inaminute jobinterview the Women are justaslikely to have Someresearchers ittakes suggest IN SELECTION UNCONSCIOUS BIAS RESEARCH ROUND UP: rejected RameshPatel selected AndrewEvans but top companies percent forms were sentto TheTimes’ salarya higherstarting likely to getthejobandreceive Tall goodlookingmenare more reinforcing thatdecision The rest ofthetimeisspent is madeinthefi minutes four rst decision whetherto hire someone to fairer selectiondecisions panels forexamplewilllead thatdiverse interview the view a genderbiasasmenchallenging else aboutthem recognise thisbefore anything colour ofsomeone’s skinWe to unconsciously identifythe approximately milliseconds itma.org.uk

SEPTEMBER 10/08/2016 12:58 022-025_ITMA_SEPT16_BIAS.indd 25 SEPTEMBER engagement increases inemployee as beingmore inclusivewillsee whoare recognisedthat leaders inclusive leadership Research shows effective behaviour anddemonstrate talent management systems and theapplicationofrobust frameworksinclusive competency example through theuseof people related decisions for for fair objective andconsistent create conditionsthatare favourable seeitthey It is also importantto biaswherepeople canchallenge create inwhich anenvironment canhelpand contactwithothers motivate people to changeTraining biasesown to identify andmanagetheir accept but individualshave aresponsibility it canhave Legislation hasitsplace theimpactbiased andacknowledge Well fi thatweare allrst accept WHAT CANYOU DO? the risksofunconsciousbias actions youtake to mitigate against us are theconscious matters What our upbringingandthesocietyaround biases are products ofourevolution all biasedAndthisisnatural Such and unconsciousbiases? did youjustrely onstereotypes youmakeDid afairdecision?Or did youmake therightdecision? indeed aweirdo thatthecandidatejudgment is your unconsciousbeliefsandintuitive to informationthatsimplysupports yourself whole interview attuning Finally itisupto to leaders model It upto isthen organisations to The research onthisisclear We are However askyourselfhonestly itma.org.uk assessment leadership development and diversity and inclusion leadership developmentanddiversity andinclusion assessment For the past years Jon has worked with organisations on selection and jatkins@pearnkandolacom Psychologist is aChartered forPearn KandolaLLP Jon Atkins challenge ahead challenge we canreally getto gripswiththe decisions andforgerelationships that wethinkmake ofhow understanding Itenough isonlythrough abetter are not are allvaluableButthey raising awareness of thebusinesscase strategy training onlegislationand approaches creating adiversity we take inthisspaceThetraditional the way D&Iandtheactions weview and creative organisations needto beinnovative workforce so adiverse developing unchecked itcan create to barriers Left stillthere but isnevertheless become more subtleandunconscious of biashassimplychangedit have goneaway Instead thenature stereotyping thisdoesnot mean they tolerant ofexplicitprejudice and ofstaff levels lower turnover of productivity andcreativity and and discretionary eff levels ort higher Ultimately weneedto change So whilesocietyhasbecomeless Find outmore at implicitharvardedu excellent insight into thereality ofourunconscious biases may notlike to thinkwe have anunderlyinggenderbiasthistest provides may naturally associate menwithwork andwomen withfamily Whilewe careercentric words itcanpickuponasubconscious linkwhereby you of words are associatedatanunconscious level egmalenameswith or words associated withcareers Byrecording thespeedwithwhichpairs example maleandfemalenamespaired withwords associated withfamily freetodo test asksyou to pairwords associated withtwo constructs for wellproven tool forunderstandingourown unconscious biasesThissimple University’s implicitassociationHarvard test isalongestablished and UNDERSTANDING YOUR BIAS: A SIMPLE STRATEGY have gone away does notmean they and stereotyping, this of explicit prejudice become less tolerant societyWhile has 10/08/2016 12:58

25 INCLUSION 026_ITMA_SEPT16_PHILIPPINES.indd 26 26 PHILIPPINES I be allowed registration be allowed andheldthatBarrioFiesta’s application toorder determine confusing similarity asawholein both marksare considered The CAadopted theholistic test whereby petitioned theCourtofAppealCA application Unsatisfied BarrioFiesta andrefused BarrioFiesta’sof NutriAsia Philippines IPOPHLfoundinfavour of theIntellectual Offi Property ce ofthe mark inbadfaith to andBarrioFiesta NutriAsia filed its of BarrioFiesta’s markwouldcausedamage approval mark anditsvariationsthereof to theexclusive useofitsregistered PAPA Barrio Fiesta markwouldviolate itsrights earlierregistered ofthe markapproval confusingly similaritsmarkwasan grounds themarkswere the following belowBoth marksare shown sauce inclass opposedtheapplication for bananaketchup alia is registered inter of thePAPA marksincethe s which Incsubsidiary ofNutriAsia andproprietor Filipino condiment UFCPhilippinesInc a associated withBarrioFiesta’s products extensive goodwillwouldinadvertently be to leadto publicconfusionandNutriAsia’s among consumers wouldbelikely Approval stores andnotsubjectto great attention likely to ingrocery befoundneareachother regarded aseveryday allpurposeproducts thedecisionofIPOPHL in reversing test thenature oftheproducts and given inadoptingtheholistic that theCAerred upheld theIPOPHL’s findings TheSCruled which foundinfavour and ofNutriAsia CourtofthePhilippinesSC the Supreme wasescalatedThe matter alltheway to ESCALATION In theBureau ofLegalAffairs oppositionwasbasedon Nutri Asia’s The SC held that both products were The SCheldthatbothproducts were for “Papa markinclass anddevice” Boy Corporation soughtto register the n BarrioFiesta Manufacturing lechon roast pork sauce a popular Battle over the PAPA bottle Jennifer DFajelagutan explainshow thePhilippines Supreme recently Court itsstrength reasserted enjoying further IPrightsandprotection further enjoying include lechonsauceandacquiring from expandingitsscopeofbusinessto NutriAsia prevent it wouldalmostcertainly if BarrioFiesta’s registration allowed were notional fairuseIt that wasconcerned products may thepublic beconfusedby recollection meantthattheoriginofboth memoryconsumer’s Imperfect consumer woulddominatethe phrase “papaboy” a of consumers TheSCalsoagreed that drawingmark andtherefore theattention word “papa”located atthetop ofthe feature ofBarrioFiesta’s markwas the with theIPOPHLthatdominant the significance oftheIPOPHL’s decisions theCourtofAppeal”Thisshows weight by in thisfield shouldhave greater given been agency theIPOPHLwhichhasexpertise “The findings offactthehighly technical and extensive goodwill amongconsumers since thesestablishingawareness usedcommercially that themarkhadbeen ofthebrand Neriowner Papa It noted reflected thefamilynameoforiginal that thePAPA NutriAsia registration by suffi distinctivenesscient TheSCreiterated ketchup aff whichtherefore ords themark hasnologicalbearingtoA father banana term “papa”couldbeusedinthisregard Ironically itheldthatthiswasjustwhy the couldnotclaimexclusiveAsia ownership whichNutri wasaword over a father finding that“papa” acommonterm for The SCruledthattheCAwaswrong in IRONIC RULING The SC also considered the concept of theconcept The SCalsoconsidered In similarity considering theSCagreed The SC in its judgment statedThe SCinitsjudgment that ltd co-authored thisarticle. Loh Eu Joe,Trade MarkExecutive atmirandah asia(singapore) pte [email protected] is aPatent andTrade Mark Attorney atmirandah asia(philippines)inc Jennifer DFajelagutan confused bythepublic both products maybe ofthat theorigin recollection meant Imperfect consumer itma.org.uk Respondent’s mark Petitioner’s mark SEPTEMBER 15/08/2016 14:47 027_ITMA_SEPT16_INITIALARGUEMENTS.indd 27

SERGEY KOHL / SHUTTERSTOCK.COM SEPTEMBER clearly acknowledged that Volkswagen’s that theHearing Offi hadnot only cer QC Alexander AP Daniel concluded a nonstarter TheAppointed Person in VW However was thisargument weight to ofitsgoodwill thestrength Hearing Offi didnotgivesufficer cient appeal wastwofold. Section5(4)(a),rights under andthe Volkswagen relied onitspassingoff TWOFOLD APPEAL THIS WAS AN of light for Volkswagen, despite aloss Martin Delafaille believes there remains aray public would perceive themark public wouldperceive ofthe members conclusions onhow not agree withtheHearing Offi cer’s Volkswagen’s appealwasthat itdid Trade ActThethrustof Marks Sections aandbofthe The grounds ofoppositionwere motor mirrors” carsand rearview vehicles motor carsfor racing racing automobile wheels fuellinesfor for“automobile steering wheels mark VWDERRINGTON inclass to anapplication fortheword decision to reject itsopposition AG againstthe Hearing Offi cer’s Volkswagen carmanufacturer by Initial argumentsInitial First Volkswagen arguedthatthe goodwill was very stronggoodwill wasvery buthad also rejected the Applicants’ This line of argument This lineofargument claims that they had earlier hadearlier claims thatthey misrepresentation misrepresentation unregistered rights that there wasno that there the Appointed Person UKIPO May VWDERRINGTONO/ / Appealto wrongly concluded contended thatthe of themarksandso proper comparison proper failed to a perform Hearing Offi had cer unsuccessful appeal itma.org.uk Second Volkswagen had to fail clearly notwrong inthattheappeal inprincipleandhewas he didnoterr decision wascarefully considered theHearingare reviews As Offi cer’s wayare notby ofarehearing but reaffi rmed thatappealsofthiskind Volkswagen However theAP recognised asatrade markof surprising thatVWiswidely given At fi rst glance thisoutcome is perhaps TAKEAWAY POINTS V WDERRINGTON VWand on thedistinctionbetween wasunlikelyconsumer to beconfused Offi conclusionthattheaverage cer’s purchasing decisionsledto theHearing makingtheir good dealofcare when of motor take vehicles generally a distinctive” thefactthatconsumers held thattheVWmarkwas“strongly to Sectionb Althoughitwas and Volkswagen theApplicants economic linkbetween deceived into wasan there believing wouldnotbe ofconsumers number He concludedthatasubstantial Volkswagen orsubbrand dealership with initials”andnotforexamplea as“aname mark wouldbeperceived of thesurnameDerrington meantthe and hisconclusionthattheaddition the Hearing Offi detailedanalysis cer’s also failedastheAPagreed withboth The AP applied the same reasoning The APappliedthesamereasoning & Partners LLP,& Partners co-authored thisarticle. Jake Campbell, [email protected] atKempner LLP is aPartner &Partners Delafaille Martin

Solicitor atKempner not lostforVolkswagen for passingoﬀ whichmeansthatallis This couldgiveriseto acauseofaction in adiﬀ colourtoerent DERRINGTON thanor for exampleifVWwaslarger it couldbeusedinan“unfairway” £ have atrade markthatincludesVW highlighted while theApplicantsnow launch anappeal choicebutto probably hadlittle the oppositionfailedVolkswagen their applicationHowever since immediately cave inandwithdraw thattheApplicantswould owners famousbrand as wouldmanyother In any event as the AP rightly astheAPrightly In anyevent It islikely thatVolkswagen expected 10/08/2016 12:49

27 CASE COMMENT 028_ITMA_SEPT16_MAGNEXT.indd 28 28 but theappealfailedoneach claim Merck appealedonfi ve grounds each butwasunsuccessfulunder andoftheTrade Act Marks fi led onthebasisofSectionsb of NATURE’S BEST was Opposition basis ofitsprioruseandregistration onthe Healthcare theOpponent Merckwas opposedby Consumer Limited theApplicant which and inthenameofPharmMed SELLERS! logoinclasses SUPERFOODS NATURE’S BEST UK applicationNo for VISUAL SIMILARITIES THIS DECISIONCONCERNS the interdependency principle principle the interdependency was afailure to correctly apply applied theprinciplesofMedion the Hearing Offi hadcorrectly cer Person concludedthat APtherefore appealtheAppointed markOn earlier itandthe gapbetween conceptual in theApplicant’smarkcreated a however the allusion to SUPERFOODS similarity existed themarks between thatsomeconceptual acknowledged NATURE’Selement BEST It was towith noreference theoverlapping tobe referred as SUPERFOODS as theApplicant’smarkwaslikely to Applicant’s mark visuallydominantinthe was deemed oftheshield The additionalelement complex logomarkseeright NATURE’S BESTandtheApplicant’s word mark theearlier between degree ofvisualsimilarityexisted Thomson andconcludedthatalow applying theprinciplesofMedion v Comparisons ofthemarksoccurred for the Opponent’s appeal, despite adecision to dismiss Rosalyn Newsome wonders whether there was some sympathy powerful provesShield Another ground for appeal ground forappeal Another low” The aural similaritywas“very UK IPO May AppealtoSELLERS! theAppointed Person SUPERFOODS NATURE’SO/ / BEST

the level of attention likely ofattention the level to bepaid and/or reputation suffi tocient supportalleged goodwill without context goingto are never be thatfactsandfia starkreminder gures Thisis theOpponent share heldby no indicationofunitssoldorthemarket created Similarly salesfi gures provided and thustheexposure theadverts around thecirculationprovided fi gures wasnocontext ¡¡¢¡ there from innationalnewspapers adverts examplesof provided the Opponent of acquired distinctiveness Although only secured registration onthebasis which wassupported thefactthatit by a relatively weakdistinctivecharacter concluded thatNATURE’S BESThad was dismissedTheHearing Offi cer the associated goodwill Thiscriticism ofitsmarkand the distinctiveness Offi forfailing tocer adequately evaluate rejected thisground ofappeal Hearing Offi and evaluation cer’s goods Again theAPsupported the nature ofsomethe the identical likelihood ofconfusion arising despite wasno features thismustmeanthere ofdistinguishing with anumber only had a very low degree of similarity and concludedthatasthetrade marks GoldwynMayer andSabelvPuma Offi CanonvMetro referenced cer In makingadecisiontheHearing Finally asto adiscussionfollowed criticisedtheHearing The Opponent [email protected] andTradeis aPartner MarkAttorney atBarker Brettell LLP Rosalyn Newsome UK applicationNo decision under Section Section decision under wasnoscopetothere the overturn of contextual industryinformation andthelack submitted in theevidence Possibly butdueto thedefi ciencies sympathy withtheOpponent? Section” kind required by albeit fallingshortofalinkthe tochosen make asubtleassociation designation whichmay have been likeseemed artifi asomewhat cial the term NATURE’S BESTSELLERS applied forwasslightlyoddinthat thecasethatmark considering that¥“Itobserved struckmein In dismissingtheappealAP AP SYMPATHETIC? the assessment wasupheld the assessment meant be “reasonably considered” conclusion heldthepurchases would thefactthatoverall assessment word “average” intheoriginal theAPwascriticalof While be atleastreasonably considered” is thatsuchpurchases are likely to concluded that“theaverage position average consumer TheHearing Offi cer to the by nutritionalsupplements Did this mean the AP had some thismeantheAPhadsome Did itma.org.uk SEPTEMBER 10/08/2016 12:43 029_ITMA_SEPT16_DILEMMA.indd 29 a Section revocation claim a Sectionrevocation use forthepurposeof ship isgenuine useonboard a afresh whether consider Person itnecessaryto APconsidered of landnonuseonly theAppointed reached hisconclusionsonthebasis its territorial waters andseemingly theUKasalandmassand between appeared to draw adistinction in theUK donotconstitutearound theUK use carry UKcustomers andtravel inand that restaurants oncruiseships which contended thatitwaswrong to find must becancelled Johnny Rockets they marks intheUKand therefore wasnouseofthe found thatthere aforeign fl under operating ag marks wasonboard cruiseships all theusemadeofchallenged inthecasewasthat unusual element restaurant services The logo covering variants ontheJohnny Rockets name/ Johnny by marks owned Rockets all actionsagainstUKtrade revocation SEPTEMBER ship waspassing through theUK’s whilethe of trade ieinfringement was usingatrade markinthecourse A finding thatashipboard third party and the concept of “innocent passage” ontheLawConvention oftheSea inthe if acustomer buysservices b it iscleartheTradea MarksAct The APfoundthat CONSIDERATIONS CONCERNED THIS CASE what constitutes in-country use,says Chris Morris This decision upagged interesting issues related to dilemma An original Because theHearing Offi cer At first instance theHearing Offi cer The AP then referred to referred The APthen theUN the UKthismightbeuseinUK UK whichitenjoys outsideof in UKwaters and extends and appliesto foreign ships the Appointed Person UKIPO May JOHNNYROCKETSO// Appealto itma.org.uk nonuse company’s share ofthemarket and todiscussed above increase thecruise as relevant andsalesserved Adverts company’s UKwebsite wasalsonot at Johnny Rockets onthecruise Rockets isnotmaterial would likely have dinedatJohnny Hearing Offi thatUKpassengers cer thefiis notrelevant the ndings by Having concludedthatuse“atsea” DECISION while theshipisdocked inthe UK free gifts to decisionsaround thatofearlier position of“allinclusive”cruises theAPlikenedestablishment the restaurant market foranonboard share foracruisecompany notthe That purchase increases market the UKwasadecisionto take acruise transaction thattook placewhilein while onboard isnotrelevant The a shipandhave provided services the factthatUKcustomers may board use of assessinggenuine taken into accountforthepurposes is notuseintheUKandcannotbe passagethrough UKwatersinnocent in a foreign shipthatisengaged any useofatrade markonboard thatbasis passage On with innocent territorial waters wouldinterfere Promoting diningopportunities Promoting A markis however usedintheUK In terms ofbooking thecruise [email protected] in theIPteam atBurges Salmon LLP is anAssociate andTrade MarkAttorney Chris Morris marks revoked beingmade reservations There was no of evidence predeparture was not relevant to restaurant services travel twoUKports between ship’s workloadsubstantiallyinvolved geographical locationorifaforeign “British territory” regardless of though controversially it rendering aBritishflsailed under ag potentially may have diff been hadtheships erent national rights? ship constitute ofany infringement woulduseonboard a marks when limits of territorial protection for trade It raises thequestionof in theUK useisnotselfevidentlycases where actionsandpassingoffrevocation This caseisaninteresting twiston INTERESTING TWIST The appealwasdismissedandthe The APdidstress thatthedecision 10/08/2016 12:33

29 CASE COMMENT 030-031_ITMA_SEPT16_PLAINPACKAGING.indd 30 30 without adequate compensation expropriation oftrade markrights the Regulations amounted to an relatein thejudgment to whether grounds discussed the mostrelevant principle ofrespect forproperty Regulations andtheviolationof theproportionality ofthe covered Itthe consultationperiod also tobacco companies wastreated during the by to provided theevidence how on whichtheRegulations are based legality oftheEuropean Directive array ofgrounds ranging from the intheUKtheClaimants producers thefourbiggesttobaccolaunched by the judicialreview whichwasjointly Justice mammothdecisionon Green’s a potentially decisivepointwithMr Regulations theRegulations reached Packaging ofTobacco Products TheStandardised implementing by a third party as argued by the athird partyasarguedby by example to useofthemark prevent rights are negativeinnature for trade mark ofwhether consideration involveda Theargument destroyed substance ofthetrade markswas manner meaningthatthe“real world” their abilityto usethe marksinsucha rights astheRegulations curtailed expropriation oftheirtrade mark Regulations constituted a The Claimantssubmitted thatthe CONTROL OFUSE EXPROPRIATION V THE LONGROAD new perils new Plain packaging: this long-awaited decision policy to trump brand owners’ rights following Roberto Pescador sees the potential for public For thetrade markcommunity wasbasedonalarge The review State For Health HighCourt May Tobacco UK Ltd Of &OrsvSecretary EWHC BritishAmerican taken towards de facto de

from theRegulations’ implementation clear thatsuchfunctionswillsuffer or advertising At firstsightitseems mark functionssuchasinvestment trade ofthelossother no mention was on theoriginfunctionandthere notable thathisfindingsfocusedsolely and asabadgeoforiginHowever itis terms unauthoriseduse ofpreventing attributed to EUlaw by them bothin thefunction marks couldstillperform tomanufacturer thepackaging name andtheoftheirown to entitled remained affixabrand farfrom totalwere astheClaimants of theClaimantsandrestrictions theproperty the trade marksremain amountedmerely to control ofuse expropriation andtheRegulations and inastandardised font circumscribed manner albeit inavery variant to appearwithin thepackaging forthebrand andtheproduct allowed astheRegulationsdestroyed still wholly thatithadnotbeen considered substantiallydiminishedhe even significantlyand rights hadbeen that thesubstanceoftrade mark use However althoughheconceded their abilityto exclude athird party’s marks lay withtheiruseaswell that theeconomicvalueoftrade theClaimantsby exploitationasargued commercial for exampleto bethesubjectof orpositiveinnature Government Secretary ofState onbehalfofthe The Judge indicated thatthetrade In theJudge’s view wasno there Jagreed withtheClaimants Green

There was nomention trade mark functions, such asinvestment of thelossof other itma.org.uk or advertising SEPTEMBER 10/08/2016 12:27 030-031_ITMA_SEPT16_PLAINPACKAGING.indd 31 identifi oforiginontheir own ers anabilitytodeveloping as be seen concluded prevented nonword marks tobacco products which theJudge legal restrictions onadvertising word marks This isbecauseofthe to complementary of timehasbeen havethey played alongperiod over he stated role thatthe commercial rights property theory independent that nonword trade marksare in or figurative marks heaccepted While are word they regardless ofwhether collectively viewed trade markswhen findings appliedto theClaimants’ use altogether Regulations eff their ectively prevent rightsandthe important property aff and ected are independent they marks wouldbemore severely in relation to word marksfigurative Court’s reasoning above was legitimate ifthe Claimants arguedthateven to The seems controversial bevery SEPTEMBER purchasing apacketwho when of yearsoldwhosmokeover and ofthepopulation be themembers carried out publicwould Therelevant public was therelevant by perception principles oftrade marklaw difficult to reconcile withbasic relation to nonword marksare In my view J’sfi Green ndings in DIFFICULT REASONING The Judge concluded thathis ofnonword marks The treatment First basedonthe noassessment itma.org.uk grounds ofnonuse theregistrations cancellation ofregistrations onthe and features measures to the prevent oftrade markrights preservation Regulation whichrelates to the Jstatedat allGreen thatfollowing be usedinrelation to theproducts cannot they can retain anyvaluewhere It fi isalso unclearhow gurative marks VALUE RETENTION brand oftherelevant elements maintained forsometimedistinctive word marksbut companies removed tobacco sponsored by of whichwere ofFormulathe liveries carsmany as badgesoforiginFor example raising awarenesswas usedonitsown s thegetup oftobacco brands introducedproducts inthelate were tobacco on restrictions advertising made In factwhen the initial hasbeen noadvertising and where appearontheirown they when even would likely recognise those identifi ers particular product Thisdemographic asidentifidesert oforigina ers ofacamelintheEgyptian depiction the red orCamel’s roof ofMarlboro cigarettes would for example identify for PhilipMorrisin relation to plain-packaging issues. Bird & Bird wasnotinvolved inthiscase,buthaspreviously acted [email protected] is aSeniorTrade MarkAttorney atBird &Bird Roberto Pescador the plainpackagingsaga chaptermight seeyetanother in an appealofthedecisionsowe of theClaimantsare considering sugarydrinksorfastfood beverages inrelation towhether alcoholic This wouldhave aneffect onbranding impact onthehealthofconsumers types oflifestylethathave aproven industries thatpromote particular other health grounds coulddeprive public whereby also setaprecedent mark rightsalongtheway It might rightssuchastrade trumping other be heavily publicpolicy by driven toAll inallthedecisionseems POLICY PRECEDENT claim relied uponinareputation the markswillretain anyvalueto be unlikelyproducts anditseems that able to inrelation to usethem tobacco use to willnotbe theirowners They theseregistrations canbeofany how itisdiffijudgment cult to understand mimic theexpression usedinthe of view butinthe“real world”to be thecasefrom atheoretical point as suchare notaffected Thismight However it alsoappearsthatsome 10/08/2016 12:27

31 CASE COMMENT 032-033_ITMA_SEPT16_GLEE.indd 32 32 show Glee show Corporation Fox hitTV over Foxwith Twentieth Century Film Comic initslongrunningdispute victory forComicEnterprises Ltd means thatthispractice cancontinue marks registered inthisway and validity oftens ofthousandsUK the over theuncertainty removes and objectivemanner Thedecision accessible intelligible durable in aclear selfcontained easily must becapableofbeingrepresented thatatrade mark the EUrequirement doesnotcontravenemarks asaseries that thepractice ofregistering trade February theCourtofAppeal passing off that itsactivitiesdidnotamount to infringed Comic’strade marksbut the High CourtfoundthatFox had in September In February passing off proceedings againstFox It brought trade markand UK inthe comedy andmusicvenues Comic operates achainoflive THE APPEAL THE COURTOFAPPEAL these marks with EU law, as Nick Smee explains At last there iscertainty around the compatibility of series marks marks series for grace Saving The decision also marks another The decisionalsomarksanother Fox appealedthedecisionandin Court ofAppeal May Ltd vTwentieth Century Fox FilmCorporation EWCA Civ Comic Enterprises has held mark law interpreted were the by Trade Directive Marks meaning ofArticlesandthe “graphically represented” withinthe sign and/orisnotcapableofbeing ofbeingasingle “a sign”inthesense markisnot mark beingaseries applicants adiscounted filing fee and inreturn theUKIPOoff ers streamline theexaminationprocedure canhelptotrade marksasaseries identity Thepractice ofregistering nondistinctive ways notaff ecting their material particulars anddiff onlyin er asto eachother that resemble their oftrade marks Act asanumber in SectionoftheTrade Marks oflivecomedyandmusic provision relating tofor arange ofservices the registeredthat hasbeen since of series two marks depicted opposite Comic istheregistered ofa owner SERIES OFTRADE MARKS issue to beheard anddecided passing off butleaving onefi nal and both trade markinfringement upheld theHigh Court’sfindings on These requirements ofEUtrade These requirements Fox contended thatComic’strade oftrade marks”isdefiA “series ned identify a“singlepoint ofcomparison” identify It thatitwasnecessaryto followed of “thetrade mark” inthesingular toof Sectionrefer theidentity particular thattheconcludingwords Arnoldhadnotedtrade markMr in took effect asaregistration of a single Ericsson Fox marks arguedthatseries wasinSony Arnold QCashethen Following thereasoning ofRichard EU PRINCIPLES requirements arguedFoxrequirements marksfallfoulofthese Series protection afforded to itsproprietor” ofthe precise subjectmatter the publicto determine theclearand thecompetentenables authoritiesand on theregister which inamanner must becapableof“beingrepresented whichrequires thatasign Directive Trade inthenew enshrined Marks havethese requirements sincebeen objective way” It isworthnotingthat accessible intelligible durable and clear precise selfcontained easily being “represented graphically” in“a clear thata“sign”mustbecapableof Sieckmann Thedecisionsmadeit with “exotic” marksstarting with ofdecisionsdealing CJEU inaseries itma.org.uk SEPTEMBER 10/08/2016 12:22 032-033_ITMA_SEPT16_GLEE.indd 33 kind ofrightwasbeingcreated a basisforcontending thatanew of Section wastoo flimsy mark” inthesingularatend interpretation andtheuseof“trade consistentadded were withthis oftrade marks” emphasis “a series towords inSectionreferring SEPTEMBER generis sui not purportto create and anew and registration systems It does eff oftheapplication ective operation intendedprovision to facilitate the expressed to beasupplementary of signs”whileSectionisclearly mark as“anysign”andnot“aseries particular Sectiondefines atrade of theTrade ActIn Marks including thewording andstructure manyfactorsCourt considered trade mark as anyother precise” criteria inthesameway satisfying theEU’s“clearand capableof that suchmarkswere of individualmarks It followed of trade marksgivesriseto abundle the Comptroller holdingthataseries The CourtofAppealagreed with MEETING CRITERIA EUlawmark under protection afforded to trade every towhich isindividuallyentitled the a singleregistration number eachof individual trade marksalbeitunder of trade marksisactuallyabundleof arguedthataseries The Comptroller Trade to Marks thehearing attend ofPatentsGeneral and Designs of Appealinvited theComptroller ofthisissuetheCourt repercussions EU principles and sowascontrary to theestablished exercise anuncertain was inevitably infringement Fox contended thatthis forthepurposeofassessing series allofthemarksin between In reaching thisconclusionthe thepotentiallyGiven widespread kindoftrade markThe itma.org.uk Nick acted asleadassociateforComic Enterprises Ltd in thecase. [email protected] is aSeniorAssociateatGowling WLG Nick Smee the CourtofJustice to wasnoscopeforareference there Trade Consequently Directive Marks registration the are notharmonisedby registration procedure andtheformof Court ofAppealnoted of thatmatters made inthefuture diffi being culty insuchassessments a series TheCourtcouldseeno separately asto thoseregistered as in thesameway to marksregistered Court ofJustice inIlPonte applied the by decidedpreviously had been asa“family”which be considered circumstances inwhichmarkscould appeared ontheregister separately to amuchgreater extent thanifthey theircommonelements so emphasises existence ofthemarksasafamily and registration highlightsandstresses the of trade markstogether asingle under Fox submitted thatthepresentation misleading andiscontrary to EUlaw the trade markregister them renders which suchmarksare presented in theformin bepreferred as aseries interpretation ofmarksregistered that shouldtheComptroller’s trade marksregistered asaseries holding orinterested inholdingUK brand owners be widelywelcomedby dispute withFox It isalsoexpected to victory forComic initslongrunning This decisionmarksanimportant IMPORTANT DECISION The Comic marks In reaching itsconclusionsthe The CourtofAppealdisagreed The Fox arguedinthealternative registration number albeit asingle under individual trade marks, actually abundle of of trade marks is argued thataseries The Comptroller 10/08/2016 12:21

33 CASE COMMENT 034_ITMA_SEPT16_SWEETSURVEY.indd 34 34 origin ofthegoods the functionofidentifying its essential Further themarkwasunableto fulfi l forthegoodsatissue and essential common since square shapeswere mark didnotaddto itsdistinctiveness thattheshapeof its assessment correct in held thattheBoAhadbeen law forDmarkswasapplicableand EC No / EUTMR Article CouncilRegulation inaccordance with distinctiveness not make aclaimofacquired Interestingly theApplicantdid conducteda survey inGermany in itsdecisionnotto take into account designs and iii theBoAhaderred unusual andstood outfrom other hillsagainstablueskywas snowy according to theApplicantdepicted diagonal across thepackagingwhich norms ofthesector ii thecurved from the that shapedidnotdepart added to if even itsdistinctiveness that i thesquare shapeofthemark alia The Applicanthadarguedinter Court GC upheldtheBoA’s decision of Appeal BoA theBoard thatwasupheldby a view to ofdistinctivecharacter bedevoid confectionary goodsinclass arange of covering below the EUforafi gurative mark shown international registration designating KG Storck fi led anapplicationfor confectionary companyAugust Storck THE APPLICANT on the Applicant’s unusual strategy Paul McKay ismoved to speculate falls short survey Sweet The GC took the view that the case The GCtook that thecase theview Upon appealtheGeneral further foundthemark EUIPO’s examiner CJEU General Court May T/ August Storck KG vEUIPO German

element representedelement thesky hillandtheblue a snowcovered that thewhite represented element the descriptionbutdidnotspecify Applicant hadsetoutthecoloursin could notbetaken into account The not expressly setoutintheapplication characteristics ofthemarkthatwere EUTMR the study did not do this thestudydidnot dothis EUTMR Article under distinctiveness had notmadeaclaimofacquired use madeofit SincetheApplicant accustomed to themarkthrough the didnotneedtothat consumers become mustshow distinctiveness inherent inthecontext evidence the survey of TheCourtstressed that surveyed familiar withthemarkbefore being majority oftheparticipantswere responses hadindicated thatthe required However thesurvey ofdistinctiveness the minimumlevel distinctive orthatitatleastpossessed argued thatthemarkwasabinitio respect oftheEU TheApplicanthad distinctive character ofthemarkin was notappropriate to establishthe which evidence survey of theGermany confiThe GCfurther rmed therejection EVIDENCE LACKING The judgesconfi rmed thatany [email protected] is aTrade MarkAssociate atBaker &McKenzie’s London offi ce Paul McKay

extend itsdomesticmarket beyond Applicant may have didnot known whichthe of acquired distinctiveness thananargument of theEUconsumer more representative be considered marks to distinctivewould beinherently the believing consumers that German Article however itmay have felt why theApplicantchosenotto rely on country letalonetheEU It isunclear ofthat size isnotrepresentative is inadequate especially ifthesample Relying ononecountry evidence survey ofthediffireminder culties surrounding may wishto rely uponatalater date aspects ofthemarkthatapplicants is advisableto add adescriptionofany toorder beregistered It notes thatit the normsandcustoms ofthesector in signifimark mustdepart cantly from appropriate notdeemed were participants andextent ofthesurvey In additiontherestricted scope The Storck mark This decision also serves as a asa This decisionalsoserves The decisionreiterates thatashape itma.org.uk SEPTEMBER 10/08/2016 12:14 035_ITMA_SEPT16_FIGHTORFALL.indd 35 SEPTEMBER that thetermevidence “Ultimate almost years wasalsoclear There Fighting Championshipbrand for could have aware been oftheUltimate intheUKandIrelandthat consumers showed The Applicant’sevidence territory use throughout therelevant through from aparticularundertaking appliedforasoriginating or services had to beableto thegoods identify public proportion oftherelevant use notingthatatleastasignificant through acquired distinctiveness themarkappliedforhad whether descriptive EUIPOconsidered not make theexpression anyless of thelaudatory term “ultimate” did “fighting championship” The addition competition whichclearlyinvolveda “identification ofamixed martialarts” asan CHAMPIONSHIP served the markULTIMATE FIGHTING CourtnotedThe EUGeneral that ULTIMATE DEBATE IN OCTOBER, at the ling stage, writes Désirée Fields The relevant public should beconsidered dismissed theApplicant’sappeal use EUIPO’sBoard ofAppeal through acquired distinctiveness found thatthemarkhadnot EC No / EUIPOalso and cofCouncilRegulation Articlesb under services in relation to therejected goodsand ofanydistinctivecharacterdevoid applied forto bedescriptive and classes andfinding themark and themajorityofgoodsin the applicationinrespect ofclasses and In May EUIPOrejected CHAMPIONSHIP inclasses word markULTIMATE FIGHTING mark EUTMapplicationforthe the Applicantfiled anEUtrade Fight Fight Court May FIGHTING CHAMPIONSHIPCJEU General T / Zuffa LLC vEUIPO ULTIMATE itma.org.uk Zuffa LLC or fall the markULTIMATE FIGHTING marketedthe applicationwere under by covered the goodsandservices to aspecific competitionandthat martial artsfansthemarkreferred specialist publicconsistingofmixed However thatforthe it proved publicintheEU speaking general suffi fortheEnglish renown cient that themarkappliedforhadacquired wasinadequatethe evidence to show could betaken into account FIGHTING CHAMPIONSHIPand topublic asequivalent ULTIMATE specialist therelevant regarded by or “Ultimate Fighting” wouldbe use ofthemarksuchas“UFC” Court foundthataslightlydiff erent with theacronym UFC TheGeneral CHAMPIONSHIP often appeared the markULTIMATE FIGHTING submitted theevidence Within PUBLIC PERCEPTION arts competition toreferred aspecific mixed martial termsacronym “UFC”were that “Ultimate Fighting” the oreven “Ultimate Fighting Championship” of fanswhowouldrecognise that towas wellknown thespecialistpublic Court foundthatthecompetition and notastyleoffighting TheGeneral a specific martialartscompetition Fighting to Championship” referred The General Courtconcludedthat The General Désirée’s practice focusesontrade marksandbrandprotection. desiree.fi[email protected] PiperUKLLP is aLegal Director atDLA Désirée Fields chances ofregistration public may significantly increase the is actually known among that specialist forwhichthemark goods andservices are desirable applyingfor and services broadWhile specifications ofgoods of theirapplicationsatthefiling stage thescope applicants shouldconsider are targeted ataspecialist public inuseandgoodsservices been markshave public Where the relevant of will beassessedthrough theeyes ofacquired distinctiveness evidence that Applicants shouldremember SPECIALIST OPPORTUNITY fans intheEU Englishspeaking mixed martialarts for aspecialistpublicconsistingof intendedcompetitions thatwere featuringmixedDVDs martialarts and in classesandsuchasCDs respect ofthosegoodsandservices acquired distinctivecharacter in EUIPO foundthatthemarkhad CHAMPIONSHIP Accordingly 10/08/2016 12:11

35 CASE COMMENT 036_ITMA_SEPT16_SUPECO.indd 36 36 over class over questions More and offi ce functions” businessadministration management business “advertising which covered inclass opposition onservices below shown ElCorte basedthe fi also gurative markSUPERCOR with itsEUTMregistration forthe Council Regulation ECNo / Articlebof confusion under opposition claimingalikelihood of Inglés SA ElCorte fi led anoticeof Augustclass On ElCorte in andretail services “auctioneering” Protection wassoughtfor alia inter figurative markSUPECO below shown trade markEUTMapplicationforthe Maxor SLGrupSupecofi led anEU ON APRIL expressly listed inthenoticeof ElCorteby waslimited to services the scopeofoppositionbrought and retail services TheBoAsaidthat uphold the opposition for auctioneering decisionto Division’s Opposition appeal annullingandaltering the Appeal BoApartiallyupheldthe against thedecision TheBoard of use ofclassheadings / ofJune the concerning basingthisonCommunicationNo included inthealphabeticlistforclass had intended to allofthe services cover tookDivision thatElCorte theview registration theOpposition the earlier thescopeofprotection considering of the contested inclass In services and refused theapplicationforallof SUPERCORandSUPECO between wasalikelihood there ofconfusion upheld theopposition fi nding that partially Division The Opposition EUIPO DECISIONS was proved to benecessary, notes Saaira Gill Once again, acareful approach to class designations Grup Supecofi led anoticeofappeal General Court May Grup Supeco Maxor SLSUPECO CJEU T / ElCorte Inglés SAvEUIPOand Grup Supeco GrupSupeco opposition is based Rule opposition isbased Rule onwhichthe the goodsandservices the noticeofoppositionmustcontain No /EUTMIRrequires that of CommissionRegulation EC notice ofopposition Rule f for classheadingsalsoappliesto the alone thatthebroad interpretation from theCommunication be inferred / TheCourtnoted thatitcannot Court invokingCommunicationNo El Corte appealedto theGeneral GENERAL COURT APPEAL dissimilar were inquestion found thattheservices specifically listed TheBoAaccordingly thanthose other based onanyservices claimedthattheoppositionwas never of opposition andthatElCorte had notlisted were services inthenotice opposition It noted thatauctioneering ‘clarity andprecision’ The Court noted that as bindinguponthe the requirements of must beregarded opposing party [email protected] is anAssociate (Trade MarkAttorney) at Bristows LLP Gill Saaira The ElCorte mark The GrupSupeco mark list is trimmed as proceedings progress list istrimmedasproceedings progress the thepriormark ensuring by covered opposition onallgoodsandservices is based or ifindoubt basethe uponwhichtheopposition services to thegoodsand carefully consider foropponents asareminder This serves TRIMMING REQUIRED accordingly dismissed the appeal accordingly dismissedtheappeal to TheCourt itsdefence prepare applicant fortheopposedapplication decide ontheopposition andfor EUIPOto for thepurposesofallowing upon whichtheoppositionisbased the designationofgoodsandservices upon theopposingpartyinrelation to precision” mustberegarded asbinding of“clarityand that therequirements not met Furthermore theCourtnoted Rule under fis requirement will berejected asinadmissibleifthe EUTMIR states thattheopposition itma.org.uk SEPTEMBER 10/08/2016 12:08 037_ITMA_SEPT16_WOLFOIL.indd 37 EU designationforCHEMPIOIL EUTMR againsttheIntervener’s Regulation ECNo / pursuant to Article ofCouncil Applicant filed anoticeofopposition January Wolf Corpthe Oil for goodsinclasses andOn designating theEUforCHEMPIOIL the international registration Lubricants theIntervener obtained relating to andsimilargoods identical CHAMPIONof theword element and afigurative markconsisting theword markCHEMPIOILbetween was nolikelihood ofconfusion an oppositionholdingthatthere upheld anEUIPOdecisionto dismiss SEPTEMBER THE EUGENERALCOURT reports Oliver Tidman Conceptual di erences made the di erence, Oil mark slips up slips mark Oil On March UAB March On SCT General Court June SCT LubricantsCHEMPIOILCJEU T/ Wolf OilCorp vEUIPOandUAB itma.org.uk has Champions Leagueandto thesong the BoA’s to reference theUEFA to washighAs its distinctiveness demonstratedhad notbeen that andthatit ofdistinctiveness level markhadanaveragethat theearlier In particularb EUTMR it found Article themarksunder between wasnolikelihoodthere ofconfusion the BoAhadcorrectly concludedthat similarities theCourtagreed that Despite theirvisualandphonetic ULTIMATE DECISION appealed to Court the General TheApplicant proven use hadbeen applicablegenuineand where CHAMPION whoseexistence theApplicantinrespect ofby rightsrelied onand theearlier CHEMPIOILconfusion between wasnolikelihoodthat there of rejected theoppositionconcluding theInterveneran appealby and the Board ofAppealBoAupheld October opposition On the respective marksandupheldthe a likelihood ofconfusion between was concludedthatthere Division similar goodsinclasses and belowreproduced and foridentical for thefigurative markCHAMPION registration designatingtheEU internationalApplicant’s earlier The oppositionwasbasedonthe On JulyOn theOpposition Oliver specialises in IP and technology matters. Oliver specialisesinIPandtechnology matters. [email protected] is aSeniorSolicitorPaull atBurness LLP Oliver Tidman in variousfields word “champion”iscommonlyused thattheexamples thefactremains ofthosetwo either does notknow public ifpartoftherelevant even theApplicantCourtsaidthatby oftheEUpublicwasdisputedeyes whosefameinthe thebandQueen by “We are theChampions”performed The Wolf OilCorp mark as avariantoftheword “champion” and “oil”itwouldnotbeperceived associated withthewords “chemical” publicAlthoughitmightberelevant capable ofbeingunderstood the by have aspecific meaningimmediately particularly sport extensively invariousfields Estonia asitisused andSlovakia in allEUMember States including is widelyunderstood consumers by to find thattheword “champion” differences TheBoAwasentitled conceptual are considerable there phonetically similar However are visuallyandcommon they in themarksshare sixletters As CONCEPTUAL CASE In contrast CHEMPIOILdoesnot 10/08/2016 12:07

37 CASE COMMENT 038_ITMA_SEPT16_MAGNEXT.indd 38 38 Hit forHit six mark isregistered based uponidentity in theterritory inwhichtheearlier likelihood thepublic ofconfusionby proprietorearlier existsa ifthere an of amarkuponoppositionby / Thisprecludes registration b ofCouncilRegulation ECNo “toys” relied uponArticle Diset mark MAGNET whichalsocovered Spanishword on thebasisofitsearlier SA opposedthe application Diset “toyscovering andplaythings” Diset EU trade markEUTMinclass the word markMAGNEXT asan Mega Brands appliedto register In Mega Brands International BACKGROUND FOLLOWING REFERRALOF towards an unremarkable Diset decision Joel Smith re ects onalong journey likelihood ofconfusion the appliedformarkinassessing to take into of accountallelements be procedurally flawed inthatitfailed The originaldecisionwasfoundto Spanish registration forMAGNET as anEUword markbasedonaprior application to register MAGNEXT decision rejecting oppositionto an Courthasissuedarevised General case backfrom theCJEU theEU Conceptual difference phonetic similarities even cancelling, the marks’ visualand counteracting, or was capable of CJEU General Court June Zweigniederlassung ZugvEUIPOandDisetSAMAGNEXT T / RENVMegaBrands International Luxembourg the the in the earlier mark in theearlier character ‘magnet’” oftheelement thedominant concerning assessment upon “aninsuffi substantiatedciently likelihood ofconfusion wasbased suchitsfi markAs earlier nding of “”inthe the impactofnumber the Courtdidnottake into account In particular inassessing similarity in assessinglikelihood ofconfusion to themarksintheirentirety consider to beprocedurally flawed asitfailed The CJEUfoundtheCourt’sdecision CJEU ANALYSIS appealedtoBrands then theCJEU a likelihood ofconfusion existed Mega similar “to amedium degree” andthat dissimilar visuallyandphonetically althoughconceptually two signswere the oppositiononbasisthat to annulEUIPO’s decisionupholding dismissed Mega Brands’ application or services mark andthemarks’respective goods with orsimilarityto trade the earlier of “”whichwouldbevisibleand the markslargelydueto thepresence phoneticsimilaritybetween low” degree ofvisualsimilarityand“very of similaritybaseduponthelow itsassessment the Courtrevised Following theCJEU’sjudgment REVISED DECISION In its original judgment the Court In theCourt itsoriginaljudgment Victoria co-authored, aSeniorAssociate, Horsey thisarticle. [email protected] SmithFreehills LLP atHerbert is aPartner Joel Smith moving EUTMprocedure moving that are often created theslow by for branding andmarketing strategy illustrates thepotential uncertainties oftheseproceedings the length clearlegalprinciple aseemingly While be discounted inassessingsimilarity ofamarkmaynegligible components truly minor components Only diff they where even apparently by er assessinglikelihoodwhen ofconfusion to marks intheirentirety consider therequirement This casedocuments SLOW PROCESS rejected opposition Diset’s application wasfiled theCourt More thansixyearsafter the the purposesofArticle b was nolikelihood ofconfusion for phonetic similaritiessothatthere cancellingor even theirvisualand marks wascapableofcounteracting diffthe conceptual the between erence character theCourtultimately found markhadonlyweakdistinctive earlier word Taking into accountthatthe Spanishspeaking publicasa“fanciful” MAGNEXT a by wouldbeperceived thesign whereas magnetic properties MAGNET would suggestapplicable thatgoodsbranded a perception dissimilarconceptually basedupon It maintainedthatthemarkswere mark“cuatrothe earlier ” inSpanish pronounced asaseparate in element itma.org.uk SEPTEMBER 10/08/2016 11:57 039_ITMA_SEPT16_LOOPS.indd 39 in the slammer the in marks Shape SEPTEMBER onthis pagethatitisunusual shown shape oftheLoopstoothbrush It from lookingatthe isapparent UNUSUAL SHAPE their cost as variousbrands have foundto partofCJEUjurisprudence is now Nevertheless principle theabove goodswithbrandsshapes ofcertain shape ofgoodsandassociate the do infactpay to attention the industry wouldarguethatconsumers toin order indicate origin the normsandcustoms ofthesector signifisought mustdepart cantly from and shapesforwhichregistration is origin ofproducts from theirshape the are notinthehabitofidentifying on to state however thatconsumers undertakingsthose ofother It went thus distinguishthosegoodsfrom those ofaparticularundertaking and for whichthemarkisappliedasbeing tomark mustserve thegoods identify registration ofashapemarkisthatthe The Courtconfirmed thatthetest for THE LOOPS REGISTRATION LOOPS LLC not whether thefunctionalitydoesnot whether norms andcustoms of theindustry signifishape departs cantly from the the registrability isofcoursewhether suitable to weaponisation thetest for a toothbrush that isparticularly “weapon proof” design” whichresults initbeing and notableforits“nonshank of inmates and correctional offi cers” to itswebsite forsafety “engineered of atoothbrush whichisaccording even higher bar, reports DominicFarnsworth Registering ashape mark now means scaling an No doubttheproduct design While onemightstruggletoWhile imagine is the manufacturer is themanufacturer General Court June T / Loops LLC vEUIPO CJEU itma.org.uk are seekingto itmay register abottle unlikely to beregistrable Soifyou whatever kindofproduct itisis is immediately recognisable asbeing for theproposition thatifashape arguable thatthisdecisionisauthority HoweverEUTMR itisatleast amended objective intherecently it couldhave forsuchan provided to limitregistrability ofshapemarks levels HadtheEUlegislature wanted of product shapesto unachievable is takingthebarforregistrability In theauthors’view thisapproach UNACHIEVABLE STANDARD itaccept didtacitly theargument endorsing norm TheCourtwhilenotexpressly signifidid notdepart cantly from the was apresumption thattheshape toothbrush So theBoAsaidthere identifiable asbeingthatofa fact thattheshapewas“immediately” its decisionpartly onthe itseems the marklacked distinctive character Appeal’s BoA’s that assessment the appealupholdingBoard of Accordingly theCourtdismissed to becapableof indicatingorigin suffidepart from thosenorms ciently of a“normal”toothbrush itdidnot decided thatbeingsimplya“variant” features oftheshapeCourt However after assessingthekey Interestingly theBoAhadbased Oliver Fairhurst, anAssociate,co-authored thisarticle. many oftheworld’s agencies. leadingbrandsandadvertising Dominic isajointlyqualified Solicitor/Trade MarkAttorney, advising [email protected] is aPartner Dominic Farnsworth The Loops LLC registration those seekingto utilisesimilardesigns toowners mitigate or againstcopycats best available protection to brand availablewhere the wouldprovide off andunfaircompetition copyright unregistered rightssuchaspassing a shapemarkThisinadditionto oforinadditiontoa designinlieu ofseekingtothe attraction register invalidate themarkwith relative ease? wouldnotbeabletothe “infringer” confihow bethat canthatowner dent category ofproduct itisegacar recognisable asbeingwhatever mark withashapethatisinstantly ofatrade foranowner distinctiveness aboutacquired aside anyarguments Leavingdecision willbeaconcern to theirshapemarksthis enforce chocolate barand soon… The sameapplieswithacar a immediately recognisable asabottle be unlikely to beregistrable ifitis This decision will therefore increaseThis decisionwilltherefore For whoseek thoserightsholders 10/08/2016 11:55

39 CASE COMMENT 040_ITMA_SEPT16_GLAXO.indd 40 40 CASE COMMENT the middle the in Stuck to pay costs EUIPO the oppositionandorder that itannulthedecision reject Courtrequesting action attheGeneral brought an MWFCsubsequently Board ofAppeal BoAonMarch theSecond appealed anddismissedby the opposition Thisdecisionwas registration forMIVACRON inclass UK / inrespect ofitsearlier b CouncilRegulation ECNo registration onthebasisofArticle Glaxo opposed theclass April Glaxo On Group Ltd for MITOCHRONinclasses and applied to register an EUtrade mark Franchise &Consulting Inc MWFC high level of attention andalimited of attention high level publichasboth a that therelevant inconsistentpublic were itstated regarding therelevant arguments public intheUK confusion onthebasisofrelevant correct inassessingalikelihood of UKmark theBoAwas has anearlier Further ofattention level asGlaxo allofwhichhaveconsumers ahigh and medicalsectors end andgeneral of professionals inthepharmaceutical publiciscomposed that therelevant The BoAheld andtheCourtagreed public Relevant factorsin respect ofthefollowing theBoA’sThe Courtreviewed fi ndings to find alikelihood ofconfusion meaning thattheBoAwaswrong ofArticle b infringement MWFC relied ononeplea SINGLE PLEA ON SEPTEMBER meant awinfor Glaxo, says Charlotte Wilding Similarity at both the beginning and endofmarks The Opposition Division upheld upheld Division The Opposition The Court found that MWFC’s The CourtfoundthatMWFC’s General Court May v EUIPOandGlaxo Group Ltd MITOCHRON CJEU T/ Market Watch Franchise &Consulting Inc Market Watch the visual similarities were dismissed the visualsimilaritieswere the phonetic dissimilarities outweighed that MWFC’sarguments Therefore precisely whatthediff are erences noted thatMWFCfailedto indicate intheirtotalities considered theCourt the marksare dissimilarwhen are phoneticallydissimilar suchthat impression ofphoneticsimilarity syllables are insuffi tocient alter the thediffsilent inthemiddle erences “h” ofthemarkappliedforbeing withtheadditional virtually identical the fi andlastbeing rst beingidentical in themiddleofmarks are impression becausethey overall letter didnotalter thoseletters the applied foralsocontainsanadditional andthemark third andfourthletters Although themarksdiff intheir ered chron” andare ofasimilarlength “cron/ “mi” andlastletters letters share theirfivisually similarasthey rst The BoAheldthatthemarkswere Comparison ofmarks and sotheCourtdidnotassessthis andpartlysimilar partlyidentical were Neither partydisputed thatthegoods Comparison ofgoods confi rmed thepositionofBoA way Either simply MWFC’sarguments oftrade marks and vaguememory While MWFC argued that the marks MWFCarguedthatthemarks While themarkshaveAs three syllables [email protected] is aSeniorAssociateatKeltie LLP Charlotte Wilding phonetically similar considered visually and elements,end will likely be similar beginningand andwith similar length, Marks of thesameor finding alikelihood ofconfusion when BoA wasrightinitsassessment dismissed theactionandheldthat theCourt In oftheabove view Likelihood ofconfusion visually andphoneticallysimilar the BoAwasrightto fi nd themarks meaning thiswasnotassessed consistency in arguments advanced inarguments consistency marks forsimilarityduringsearches reviewing when should beconsidered visually andphoneticallysimilar This willlikely elements end beconsidered same orhighlysimilarbeginningand withthe of thesameorsimilarlength This casereiterates the factthatmarks CONSISTENCY NEEDED Accordingly theCourtheldthat themarkshave As noconceptual It also highlightstheneedto ensure itma.org.uk SEPTEMBER 10/08/2016 11:53 More details can be found at itma.org.uk

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041_ITMA_SEPT16_EVENTS.indd 41 10/08/2016 11:50 042_ITMA_SEPT16_TM20.indd 42 42 TM husband lastyear Despite whatshe the tragic andsuddendeathofher description ofthefirst daysfollowing real inspiration formecamefrom her interestingmade forvery reading the Women Work andtheWillto Lead of Facebook WhileherbookLean In Sandbergmoved meisSheryl COO people Someonewhohasrecently I ammostinspired by… positive Mark Attorney at thesametime Technology andqualifyingasaTrade in lawfrom theDublinInstitute of inobtainingadiploma and supported bothencouragedfascinating andwas accidental Ifoundthework entering theIPworld purely was were While even inmyvocabulary! I don’t thinkthewords “trade mark” Trade Before MarkPartners then Dublin IPfirm asPA to oneofthe employedin Iwas ataleading I becameinterested inIPwhen… well you’re onlyonce right? organising notone butthree parties this year andamconsumed with excited Icelebrate aspecialbirthday My current state ofmindis… Administration Management at whichtimeItransferred to worked asanAttorney until Attorney in Isubsequently in DublinIqualified asaTrade Mark Mark Attorney withanotherIPfirm Before aTrade thisrole Iwas… & Co inDublin specialising intrade marksatTomkins I work as…Formalities Manager THE MARK TRADE off today” beautiful andglamorous butit’s my day My favourite mugsays…“I’m usually coasterglass from company arenewals files handcream and apersonalised from theusual On mydeskis…apart never happen! error Ofcourse Ihopethiswill ofmakinganirremediablepossibility In myrole Imostdislike… the stafftraining new andproblem solving no two days are thesameIalso enjoy In myrole Imostenjoy… thevariety trauma trulyamazing was and elegance at atimeofgreat personal give something back To have such poise goingthroughwas shestillwanted to in acelebratoryin mood Overseas Member, is Deirdre Naessens , of trade marks abreast oftheeverchanging world and onaprofessional level keeping friends level makingsomewonderful member ofITMAis…onapersonal The bestthingaboutbeinga all myloved onesaround me still behappy and healthyandhave In thenextfive years Ihopeto… make jewellery the ChampionsLeague and/or withmyhusbandotherthan TV to relaxWhen Iwant I…watch given read is… “always thefile” The bestpiece ofadvice I’ve been and tissues In mypocket are… keys gloves a lieinandnooverthinking My idealdaywould include… I can’t live without…lotsofsleep more making creative inmyjewellery The talentIwishhadis…to be continuous change is…keeping upto dateindustry with challengefacingtheIP The biggest acatinformerlife I thinkwas that or perhapsjustplainnosey I would be…Felix Iamsoinquisitive If Iwere atrade markorbrand sunny climate is…Alicantebusiness sunnypeople My favourite place to visiton itma.org.uk SEPTEMBER 10/08/2016 11:49 Patent and Trade Mark Attorneys

Newly Quali ed Trade Mark Attorney Brighton

Dehns is one of the largest ﬁrms of patent and trade mark attorneys in Europe and we are looking to welcome a newly qualiﬁed trade mark attorney into our substantial trade mark practice. We are consistently recognised by the Legal 500 for providing an impeccable service to our clients, and our attorneys are well known in the industry for their commitment and passion for quality and innovation.

The trade mark team, including those attorneys based in our Brighton office, works with a diverse range of clients from individuals and SMEs to blue chips and multi-national corporations, who originate from a whole host of industries including entertainment; tourism; finance; fashion and beauty; medical technology; publishing; food and beverage; and engineering. We invest heavily in our visibility and our attorneys are encouraged to actively network, speak at conferences and contribute to firm/industry publications. With this in mind, we require our attorneys to be passionate, commercially minded and comfortable working closely with high profile clients from day one.

You will be responsible for handling all aspects of trade mark work, including the initial stages of clearance searching, the ﬁling and registration of trade mark applications, dealing with domain name disputes, passing off and infringement issues, as well as the continuing management and enforcement of your clients’ portfolio. You will be expected to work closely with your clients, guiding them through each stage of the process and offer commercially sound and pragmatic advice to ensure they are fully protected against any eventuality.

Ideal candidates will have recently passed the Professional Certiﬁcate in Trade Mark Practice course, although those with up to 1 year’s PQE will also be considered. You will need to have an impeccable academic track record, with excellent results achieved at GCSE, A Level and degree level.

Please contact Helen Joseph, HR Ofﬁcer, at [email protected] for further information, or visit our website to apply online at www.dehns.com.

Deadline for applications - Tuesday 4th October 2016

www.dehns.com

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