p6 p8 p24 monies monies coverage Membership Membership Handling client client Handling survey results Christmas party party Christmas Nominet case Nominet update p38 Hawkes Chris

gTLDs – brace – brace gTLDs impact! for p22Joanne Goodchild

p18 Interview: Rowan Steve Bader p14 Keven itma.org.uk 2014 February

407Issue Tania Clark p13 Clark Tania EU trade marks EU trade Change ahead for ahead Change THE JOURNAL OF THE INSTITUTE OF TRADE MARK ATTORNEYS INSTITUTE THE JOURNAL OF THE culture in a starring role role in a starring culture is casting media and popular media casting is This year’s spring gathering spring gathering year’s This

conference

Pop goes the goes Pop

REVIEW ITMA

ITMA REVIEW February 2014 itma.org.uk Now iN loN doN

MM_London.indd 1 10/29/13 10:57 PM IFC_ITMA_Feb_14.indd 1 07/01/2014 14:31 February 2014

ITMA contacts elcome to our February Meanwhile, the Northern lunch, General enquiries issue: 2014 is not a leap year, this time in Leeds, also had more ITMA O ce, 5th Floor, Outer Temple, but it is an even year, and guests than last year. Both outings 222-225 Strand, London WC2R 1BA W Email: [email protected] even years are times of change for the were memorable occasions – so let’s Tel: 020 7101 6090 ITMA offi cers. Further details will make the March Spring Conference Committee chairs follow soon! another event to remember! Executive: Maggie Ramage, One part of the ITMA year that I hope [email protected] will never change is the ITMA Christmas Events: Katie Cameron, [email protected] lunch, with its pre-lunch drinks kindly Education: Alison Melling, sponsored by Thomson-CompuMark. [email protected] The London lunch had even more guests Law & Practice: Imogen Wiseman, [email protected] than usual. Perhaps you can fi nd your Catherine Wolfe Publications & Communications: picture in the gallery within this issue? ITMA President Richard Goddard, [email protected]

Published on behalf of ITMA by: Think, The Pall Mall Deposit, 124-128 Barlby Road, London W10 6BL Inside Tel: 020 8962 3020 www.thinkpublishing.co.uk this issue Editor: Caitlin Mackesy Davies Advertising: Dalia Dawood, 18 Spring [email protected] Conference Group Account Director: Polly Arnold preview Get Account Manager: Kieran Paul a sneak peek Senior Designer: Clair Guthrie at what’s CONTENTS Senior Sub-editor: Gemma Dean planned for ITMA Review March’s event 03 Review content is provided by members on a voluntary basis, and reader suggestions and contributions are 36 Look-a-like lesson Lonsdale welcome. If you would like to contribute decision will interest other famous an article to a future issue, please contact Tania Clark by email faces, explains Nick Boydell at [email protected] and Caitlin Mackesy Davies at [email protected] 04 ITMA Insider Changes charted, 27 Baby case There is room for two in a member remembered, and more the doll’s house, writes Triona Desmond The views expressed in the articles in the Review and at any ITMA talk 06 Membership survey What you told us 28 Isdin A long-running dispute is or event are personal to the authors, about ITMA in our recent membership poll returned for review, reports Rupert Bent and do not necessarily represent the views of the Institute. ITMA makes 08 Christmas party coverage A look at 30 Water woes Delayed evidence no representations nor warranties of any kind about the accuracy of the how ITMA celebrated the festive season helped sink Jardibric’s argument, information contained in the articles, explains Joanna Lucas Munce talks or events. 10 Rules of the Games Robert Buchan advises on how to avoid aggro during 32 Bristol fashion IPEC’s fi rst case © ITMA 2014 the 2014 Commonwealth Games revealed a local trend. By Nina O’Sullivan 13 Evening Meeting Tania Clark summarises 33 Wishful thinking A venerable the concerns over EU trade mark reform rock moniker was defended, says Katy Cullen 14 Interview Keven Bader talks IP and the UK IPO with TMD Divisional Director 34 Zynga “Paella approach” was not Steve Rowan palatable, writes Laura Mackenzie 22 gTLDs Joanne Goodchild suggests 38 Nominet Chris Hawkes puts how brand owners can survive the media and entertainment cases domain-name explosion in the spotlight 24 Webinar Mark Caddle on handling monies 40 Cardi Airport Arguments didn’t fl y, explains Patricia Collis 25 Discretion dispute Late evidence played a crucial part in Rintisch, argues Carrie Bradley 41 Events Diary dates for ITMA members 26 Zoo to-do Decision sees sport marks 42 Media Watch Ken Storey’s regular

Cover Credits. Rihanna image: Credits. Cover ©landmarkmedia/Shutterstock.com image: Delevingne Cara ash/Shutterstock.com ©Featurefl su ciently similar, says Simon Miles round-up of IP and ITMA coverage

itma.org.uk February 2014

03_Contents.indd 3 08/01/2014 17:29 4-5_Insider2.indd 4 04 provide greater flexibilityandallow latestthe list ofWorking Groups. for ITMAoffice can contactthe contains moreinformation, oryou to list ITMAwebsite here,but the the reflect work ofITMA– too many currently activities andprojectsthat coverand these amultitude ofareas, haveGroups that beeninitially setup There areapproximately 40Working report to respective their committee. a numberofWorking Groupsthat committees these are underneath Delivering work much ofthe and Publications&Communications. Law &Practice, Events, Education, The Committees are:Executive, arenow and these upandrunning. workcore elementsofthe ofITMA are five Committeesthat cover the in any way to get intouch. interested inbecominginvolved new structure andtothe askthose to onceagain explainabitabout so we’re opportunity takingthis to volunteer broadenthe network, changes,informed and aboutthese to allmembersare ensurethat Dec/Janedition.Wein the arekeen in October 2013 andhighlighted ITMA structureITMA –charting thechanges W The new structure isdesignedto Under new structure, there the the volunteer network the changes, andto broaden members are informed about We are keen to ensure that all structure announced steps to new rolloutthe e have taken significant n sider Working Groupand Committee overseesthe that the does notnecessarily have to be Working Committee Group,the sit onaCommittee aswell asa Group. Ifanindividualwishesto Committee to sitonaWorking for anindividualto alsositona isnorequirementsit on,andthere Working Groupsanindividualcan time. of their whocurrently givethose sofreely we areextremely grateful to all professionand enhancingthe and will assist Institute the insupporting individual.Byvolunteeringthe you time orfor suits atimeperiodthat of ITMA,beitfor ashortperiodof get involved indelivering work the more opportunityfor membersto more information. Committees orCouncil,for any Working ofthe Groups,the are interested involunteering for contact [email protected] if you new structure. Please under this toforward working them with volunteers andwe arelooking interest fromanumberofnew established asandwhenappropriate. new Working Groupswillbe a limited periodofexistence and Some Working Groupsmay have There isnolimitto how many It hasbeenpleasingto receive vice versa vice . [email protected] contact Stuart Lumsden at please detailsofthis, further mailing list andwishto receive com). Again, ifyou arenotonthe Sir WilliamHoste CC(viscricket. of VisinSeptember to play the travelling to Croatianisland the CIPA-ITMASerbia, the CCwillbe success oflast year’s tripto And, following onfromthe 1, 8April 4March; 4 February; Lord’s (7-8pm): 18, 25March;15 April 11, 18, 25February; Oval (7-8pm): [email protected] mailing list, pleaseemail CIPA-ITMAalready onthe CC in attending andarenot per net.Ifyou areinterested cost around £8perperson welcome netswill andthe All standards ofplayer are details aresetoutbelow. nets for 2014 continueand CIPA-ITMA Cricket Club(CC) opportunities Cricket itma.org.uk February 2014 08/01/2014 15:23 4-5_Insider2.indd 5 itma.org.uk I when compared with its brevity, especially and user-friendly. Despite Fisher, isbothaccessible Alexander QCandMatthew by SirRobin Jacob, Daniel Publishing;Hart £19.99), Property (sixth edition; The of the hisassessment Mark Caddleoffers Hacon to IPEC welcomesITMA on the reputation of the Court.” reputationofthe on the will stand himin goodstead inbuilding said Wolfe. andexperience “Hisbackground tablets were Appledesign. notas“cool”the coverage whenheremarked Samsung’s that infringement, leadingto afl ofmedia urry iPad. InJuly 2012, BirssJclearedSamsungof infringed Apple’sCommunitydesignfor the Samsung’stabletdevices claiming that involved inApple’ssuitagainst Samsung, barristers recognised names.Hewasoneofthe as high-profile disputes involving internationally havethat often involved smallcompanies, aswell experience ofworking asabarrister onIPcases appointment isgreatly welcomed.” to becomeaHighCourtJudge, andsothis since April,whenJustice ColinBirssQCleft presidingjudge hasbeennopermanent there Enterprise Courtinearly October. However, IP includingitsrenaming asthe months, Patentsbe calledthe CountyCourtinrecent a numberofimprovements to whatusedto Wolfe.President Catherine “Therehave been specialist courtfor IPmatters,” saidITMA key(IPEC). “Thisisthe appointmentto the Reader review “We wishRichard well inhisnew role,” new judge ITMA ispleasedto the has seethat presiding judge of the IPEnterprisepresiding judge ofthe Court Richard Hacon’sselectionaspermanent TMA haswelcomed announcementof the Guidebook to Intellectual Guidebook to Intellectual February 2014 their career, are welcome to attend. Guidebook to Intellectual Property Property Intellectual to Guidebook Ball willtake place onSaturday 19 The Intellectual Property Trainees’ profession, atwhatever stage of THE IPTBALL July 2014 . Allmembers ofthe See IS BACK! for further details. for details. further itma.org.uk/events and IPpractitioners, given its inventors, aswell asstudents brand owners, designers and content isnotcompromised. substantive quality ofits respective IPfi eld, the introductory texts ineach the corresponding It islikely to beofuseto

Garry Mills Garry Mills In Memoriam: the basicsofIPlaw. manageable, guideto a complete, aswell as the authors have compiled dabblers inIPlaw. Insummary, as adeterrent to would-be can beappreciated, can act technical jargon, which, as avoidance ofunnecessary W Legal asHead of Trade cases. Hejoined Innovate in many notable reported the fi Garrywasinvolved rm, During nearly 15years at with thetrade marks team. 1995, where heworked closely he joined Cliord Chance in qualifying asaSolicitor, area shortly after and, undoubtedly his favourite York.in from theCollege of Law prior to which hequalifi ed degree atBristol University, as part of aMasters of Law couple of years. been fighting cancer for a Mills. Garrywas46andhad 2013, of IPSolicitor Garry Trade marks were Garry first studied IP JTA anniversary honoured Old Royal Salute to celebrate the25thanniversary of theJTA. The presentation was madeonbehalf on 19October report thedeath, e are saddened to Association (JTA) ofChivas withagift 21Year of ITMA by Atsushi Oshima,adirector ofthe ITMA was pleasedto beableto present JTA andanoverseas memberofITMA. President HorioftheJapanTrademark Contributed bySimonMiles will begreatly missed. centre He of his world. atthe Monty andElsie, children, Oliver, Florrie, wife, andfour Sarah, young devoted withhis family man, him willtestify, hewasa Emirates. As those whoknew Highbury andlatterly the regularlyfan, attending the fact hewasa keen Arsenal to notwithstanding bearound, among others. INTA andITMA events, his attendance atTIPLO, through his work, andthrough known intheprofession colleagues Hewaswell alike. was popularwithclients and knowledgeable lawyer, and December 2009. Marks andBrands in Hewasalways apleasure Garrywasaverycalm and 08/01/2014 15:23

05 ITMA INSIDER 6-7_ITMA Members.indd 6 06 important whoresponded, by those objective isnotconsideredas “increase inmembershipnumbers” the priority (seeFigure2).Although was onceagain highest consideredthe professional maintain their expertise Assisting Trade MarkAttorneys to response wassimilarto of2010. that When itcameto overall priorities,the Our priorities I its work anditisencouraging the that aspects asimportantthese elementsof priority (seeFigure3).ITMAsees allof sector” highest beingconsideredthe UKbusiness Attorneys the within 2010, “PromotingUKTrade with Mark answers the mirrored received in professionpromotion ofthe again to deliver itsstrategic objectives. organisation abilityofthe role inthe for membership,itplays the avital may notbeconsideredahighpriority work aim acrossallareas.Whilethis outits income to enableITMAto carry to providethe appropriate be sufficient for membershipnumbersto crucial the be discounted wholeheartedly, asitis shouldnot this it ismaintainedthat Thanks toThanks everyone whotook part. members(seeFigure1). from Ordinary majorityresponses, the ofwhichcame We were pleasedto receive 442 Responses to aquestion onthe feedback onitsfuturepriorities. a survey ofitsmembershipto get n September 2013, ITMAconducted membership what theythinkof its role andits work priorities Three years after ourlast survey, ITMAagain asked the ANSWERS

ITMA to Attorney. fromAdministrator path the events, andhelpto better illuminate a greater numberofeducational were requests ITMA organise that would beofinterest future inthe related to whatadditionalactivities has beenworthwhile. in to re-focus publication the suggests workthis the put that and support for ITMAReview the it isencouraging to increased see the objective Institute. ofthe However, reinforces supportfor main their the (see Figure4),notleast becauseit importance to profession the events” continues to beofsignificant educational activities, “running valueofother When assessingthe activities Important continuing to work areas. inthese membership issupportive ofITMA Among the specific comments specificcomments Among the publication hasbeen worthwhile the work putinto re-focus the Review increased support for the ITMA It is encouraging to see the andthis suggests that

Who responded? Membership categories represented Figure 1 Fellow Associate Allied Affiliate Administrator 6.9% 8.9% 1.1% 3.4% 7.3% % Response itma.org.uk Student Retired Overseas Ordinary Honorary February 2014 11.0% 1.8% 6.6% 52.4% 0.5% % Response 08/01/2014 15:39 6-7_ITMA Members.indd 7 itma.org.uk What doyou consider to bethemost important high-levelobjective of theInstitute? ITMA priorities Figure 2 400 seem to meet the needs of members. seem to needsof members. meetthe – includingLinkedIn –do andTwitter modesofcommunication our current other areasofactivity.other Meanwhile, Law and Practice area,aswell as members ofdevelopments inthe structure willalso helpto inform Committee andWorking Group in general. new the Itishopedthat and developments inLaw andPractice Lawby the andPractice Committee communicate work the undertaken , andhow we ITMAReview and inthe information posted website onthe balancebetweencarefully atthe to members.We willbelooking training andeducationare important overall survey message fromthe that Law andPractice,the whichreflects would like moreinformation on website.use ofthe Themembership to questions other chimewith that useful commentsmadeinresponse werecontent, there some although generally website content the with The membershipappearsto be Web presence recognition of the role of ITMA as roleofITMAas recognition ofthe website, etc) mainbenefit. wasthe , the received ITMAReview viathe said information (includingthat mainbenefit;while the 11 percent of arespected professional bodywas beingamember 35 percentsaidthat conferences) mainbenefit;and asthe training (includingCPD,events and 43 percentputeducationand main benefitsofITMAmembership: overwhelmingly highlighted two Finally, membership the Main benefit 200 300 450 250 350 100 150 50 0 There is,itwould seem,general numbers membership Increase February 2014 Attorneys Trade Mark registered expertise of professional Assist the

design marks and of trade as thevoice recognised Be

Please state thepriority you wouldgiveto thefollowing specific activities of theInstitute: feedbackthis over comingyears. the future. We to lookforward actingon Institute continuesto planfor the to concentrate development asthe existing activitiesandareasonwhich provided opportunitiesfor challenging ITMACouncil,and ofthe thoughts exercise. Ithasreinforced existing We’ve found survey the avaluable Valuable data Approvedthe Regulator. Trade MarkAttorneys andas representativethe bodyfor Promotion of the profession Figure 3 400 promotion of theUKprofession: Please state thepriority you wouldgiveto thefollowing areas of 200 Activities of the Institute Figure 4 300 450 250 350 100 150 and related organisations Promoting UKTMA withinGovernment Promoting UKTMA withintheUKpublic Promoting UKTMA withintheUKbusiness sector Promoting UKTMA internationally Answer options 50 0 overseas in theUKand Mark Attorney registered Trade the role ofthe and designs trade marks knowledge of Increase public events educational Running

events social networking/ Running the public profession by Mark Attorney of theUKTrade Increase use Review ITMA high-quality Producing

led events Government- Attending important important 1 –Most 2 3 4 important 5 –Least priority High 5 10 56408 6 55 190 157 6 165 166 5 4 3 407 2 3 46 356 4 22 2 407 7 52 202 146 Mark Attorneys body for Trade the representative role of ITMAas recognition of the generalseem, There is, it would visits overseas Undertaking priority Medium ITMA website. members inthemembers area of the analysis report is availableto ITMA November 2013.Thefullsurvey analysis report published on29 contains extracts from thesurvey The information presented here relevant organisations IPO, IPReg, LSB,other consultations from the Commenting on 67 priority Low Answered questions

Skipped questions 406 8 relevant Not Government Lobbying count Response 33 409 priority High priority Medium priority Low relevant Not 08/01/2014 15:39

07 MEMBERSHIP RESEARCH 8-9_ITMA_Xmas Party2.indd 8 08 Ostrowska (Cleveland) Rebecca Silva, Magda (Lane IP) Claire Evans, Matthew Macleer Leah Musana,Vicky Hampton, (Cerberus Investigations) Duncan Mee,Jennifer Eddis, JackWilde Michael Wakefield, Cameron Gowlett, Clark (8New Square) Tibor GoldMBE,Fiona Ann Wright (IPReg), Holiday cheer (LONDON) ANDCARIN BURCHELL (LEEDS) PHOTOGRAPHY BY STEWART RAYMENT events rounded o Two great festive the ITMAyear

David Yeomans (Dehns) Elizabeth Dunn, Julie Glendinning, Lindsay (LimelightCelebrity Management), Tom Redfern (Redfern Legal), Alison Alasdair Hume(Ancient Hume), Karen Gibson (Ancient Hume) Catherine Wolfe, Rigel Moss McGrath (WPThompson) itma.org.uk Giovanni Visintini (BP) Mike Keogh, February 2014 08/01/2014 15:48 8-9_ITMA_Xmas Party2.indd 9 itma.org.uk Murray, Alex Rushent Alan Fiddes, Sarah Atkinson, Graeme Chris McLeod, Bev Robinson David Sutherland,SallyCooper Patrick Cantrill,Laurence Thoo, David Sheppard, Timothy Letters, RachelHearson Leeds leads off support throughout the year. the support throughout Chris McLeodfor histremendous for organising day’s the lunch,and Williams andDickWaddington events region,Heather inthe work organising year’s this CPD Cullen andNatalie Brindlefor their opportunityto Katy the thank andtook north journey made the Wolfe& Grill.PresidentCatherine yet lively venue TheRestaurant Bar Report byCarinBurchell Report T Thanks to everyone who attended these enjoyable events! Leeds convening atelegant first-time Christmas lunchin a he seasonkicked with off February 2014

Rita Khaitan(GSK) Hannah, MaggieTilbrook, Viv Garven, Thomas Trix Ockeloen-Kruit (Knijff) Andrew VladRatza (Ratza &Ratza), der Lee MrOckeloen-Kruit, (Knijff), Liane Bulger (Squire Sanders), Riavan Triona Desmond,AmandaMcDowall, Rob Davey (Thomson CompuMark) Jeevan Retnam, Matthew Ansbro, IP), David Sheppard. Front row: Back row: Francis Preedy (Nucleus Orr (HaseltineLake) Corinna Hiscox, Heather

the year’sthe award winners: alsorecognised come. Catherine in 2013 exciting to andthe things changes seen recappedthe that enjoy Wolfe anaddressby Catherine to catch year’s uponthe news, and • • • • • Capital capers A

2013 Exam –Danielle Jeeves, Cleveland highest markinITMA Trade MarkAdministrators’ Prize donated by Thomson CompuMark for Course –Rigel Moss McGrath ofWPThompson. Intellectual Property Litigation andAdvocacy highest markby aTrade MarkAttorney inthe ChambersHogarth Prize for achieving the Withers &Rogers LLP and Copyright Law) –Edward Johnstone, with highestmarks inPaper D&C (UKDesigns Nick Wilson MemorialAward for thecandidate Warrilow, London IPLtd (Advanced Trade MarkSearch) –David candidate withthehighestmarkinPaper T4 Payne/Bennett MemorialAward for the – Charlotte Blakey, Keltie LLP (Advanced UKTrade MarkLaw andPractice) candidate withhighestmarks inPaper T3 Adrian Spencer MemorialAward for the members andguests met at HydePark, 600 morethan t London’sInterContinental

08/01/2014 15:48

09 ITMA CHRISTMAS 10-12_Glasgow Games.indd 10 10 S not take placeorattract international sporting events –events could that huge commercial draw ofglobal have beensold,demonstrating the onemilliontickets more than 23 July and 3 August. Already, 260medalsbetweenmore than athletes competing in17 sportsfor which will see 4,500 which willsee4,500 Commonwealth Games, is hosting 2014 the Glasgow factthat the Planet, inpartdueto to visitin2014 by Lonely third-best country the cotland hasbeenvoted Robert Buchan advises onhowto avoid aggravation during theXXCommonwealth Games liability. To assist advising on those themselves facingcivilorcriminal are beinghosted couldfi –they nd Games areasinwhichthe within locatedGames –particularly those to 2014 run-up andduringthe the canandcannotdoin what they and businessesareadvisedasto events. However, unlessbrand owners brand protection, afforded to such legal the protection, with including readers may berelatively familiar London Olympic Gamesin2012, financial sponsorshipandinvestment. signifiaudiences without cant Given the recent success of the Given recentsuccessofthe the Games protection isinplace. that provide anoverview 2014 ofthe protection isrequired andthen reasonswhythe additionallegal articlewillfi issue,this the rst consider passionate. Indeed,asevidenced by are for about whichthey something person’s inabilityto show support measures canbeseenasanother person’s legitimate brand-protection easy to overlook one factthat the close to hearts–itcanbe their whom brand protection isclearly For trade markprofessionals –for Why specialprotection? itma.org.uk February 2014 08/01/2014 15:52 10-12_Glasgow Games.indd 11 itma.org.uk February 2014 negative publicityfor anevent and difference inviewpoint cangenerate enforcement campaign in2012, this the presssurrounding some ofthe (Scotland) Regulations 2013. Games (Trading andAdvertising) Glasgowand the Commonwealth (Games AssociationRight)Order 2009 Commonwealth GamesAct2008 being implemented Glasgow by the main framework the Act 2008,with Glasgow Commonwealth Games The overarching legislation isthe Overarching legislation Games. the immediately preceding andduring particular, morelikely to beenforced is likely to catch peopleoutand,in that has beenputinplaceasitisthis specific additionalprotectionthat However, articlewillfocus this onthe can beenforced usualmanner. inthe mascot, “Clyde”. Clearly suchrights official image andnameofthe wordsthe “Glasgow 2014”, andthe Commonwealth Gameslogo, the role to play –for example protecting IP protection still have animportant marketing during atelevised event. for example, large-scale ambush a cleardeterrent message andavoid, negative publicity, butcan sendout may run-up generatein the some relation to event. hand the Afirm enforcement takes that placein will inlarge partbejudged by the to belegitimate andproportionate blocking accessto venues. myriadstreet traders ofunofficial safety isalsoprotected by avoiding a spectators involved, and publichealth And, given huge amount of the to allow futureevents to take place. legacy the ismaintained ensuring that made by sponsors,butalso current just aboutprotecting investments the The specialmeasurestaken arenot associated free-riding onthe goodwill. legal protection isrequired to prevent for suchhigh-profileeventsthat means necessity for significantsponsorship its (often large, corporate) sponsors. Meanwhile, traditional forms of measuresareseen the Whether However, the realityisthat the

Table A to giverise to presumption of infringement The tables belowcontain words are that,ifused incombination, likely Terms of infringement relates, for example, to indications useishonest occur wherethe and In addition,infringement doesnot 2010.coming into effect inJanuary continuous usepriorto Order the registered designortrade mark,or name oraddress,useofanexisting legitimate useofaperson’sown areseveralthere defences, suchas to AssociationRight. In addition, the infringement proceedingsinrelation of remedy for threats groundless track. The2009Orderprovides a closing ceremony inAugust 2014. Right lasts for after the sixmonths infringing materials. TheAssociation upordestruction of delivery the includes injunctive relief,aswell as of aninfringement actionthat maythe sharpend finditselfon prominent useof“Glasgow Games” wordsor moreofthe inTable B. any word inTable A,together one with out inTable A(above); contain orthat use ismadeofany two words ofthe set infringement: expressionsinwhich to give riseto apresumption of followinginfringement, the arelikely not conclusive, whenassessing legal team indicates although that, Order, 2014 guidance issuedby the to fallfoul rights. ofthese “Glasgowor the 2014” namearelikely in Glasgow Gameslogo by usingthe promote accommodationoractivities So, for example, websites lookingto impliesthat suchanassociation. goods themselves, packaging oforthe or words inadvertising, oronthe essence prevents useofimages the a widevarietyofactivities,butin Games.Thiscould coverand the goodsorservices personortheir that isanassociationbetween there that islikelythat to suggest to public the goods orservices,any representation business, apersonuses,inrelationto courseof Right. Itisinfringed if,inthe Commonwealth GamesAssociation legal rightknown Glasgow asthe 2010.January Itcreates anexclusive The 2009Ordercameinto effect in The AssociationRight XXth 2014 TWO THOUSAND ANDFOURTEEN GAMES However, itisnotonly aone-way Therefore, abusinessmaking the 2009 notspecifiedin Although Table B BRONZE SILVER GOLD SPONSORS MEDALS GLASGOW

08/01/2014 15:52

11 COMMONWEALTH GAMES 10-12_Glasgow Games.indd 12 12 COMMONWEALTH GAMES to believe they that had reasonable cause individual knew or except wherethat personal property, bodiesorcarrying their advertisements on attire, displaying wearing advertising specific exemptions for individuals promoting abusiness.Thereare vehicles costumes orfancy-dress free goodsaspartofasale,branded billboards, leafleting, providing zones. Itiswideandwillprevent event services orabusinessinthe advertising inrelationto goods, separatethe advertising offence. promotional material donotbreach have to displays ensuretheir of shops, areexempt, will albeitthey premises, suchasrestaurants or Buildings normally usedasretail or providing publicentertainment. prevents seeking charitabledonations sale ofgoodsorservices,butitalso prevent actualsaleoroffering for the eventthe zones.Not only doesit prevents street trading inoraround more ofachallenge. as trading standards offi cers) offi willact cers (essentially they appointedof the enforcement This islikely to make work the swimming events willtake place. an areainEdinburghwherethe in andaroundGlasgow, including Instead, are17 there event zones isnotacentralthere sportingvillage. Olympicthe Gamesof2012 isthat difference between 2014 Gamesand before, event. the Oneinteresting venues during,andfor aperiod outdoor trading vicinityof inthe committee to controladvertising and Essentially, allows organising this the “event Games. zones”duringthe trading andadvertising offences in marketing, 2013 the Ordercreates In aneffort to prevent ambush Trading andadvertising offences or broadcast Games. about the defence for usemadeinapublication practical pointofview, isalsoa there or services.Understandably, froma characteristicsor other goods ofthe purpose, value,geographical origin of kind,quality, quantity, intended The advertising offence prevents The trading offence iswideand as anIPspecialist by theLaw Society ofScotland. is anassociate memberofITMA, and isaccredited Robert specialises inIPandITdisputes inScotland, [email protected] is aPartner atBrodies LLP Robert Buchan and branding games summer. this interesting to sporting watch the both heavily intertwined, itwillbe protections. brands With andsports fallingfoul various without ofthe prominently advertise brand their advice inplaceabouthow can they sporting brands already have legal enforcement. No doubtsomelarger monitoring andappropriate willbeaneedfor there vigilant that and businessesislikely to mean audience for somebrand owners However, allureofaglobal the protections inplacewillassist. legal the a huge successandthat Gameswillbe the I amsurethat Interesting times or arelikely to becommitted. believethey offences have been articles orentering any placewhere of any offence by, for example, seizing powers to prevent commission the enforcement officers have wide offences punishableby fi ne, the marketing campaign. were participatinginanambush enforcement monitoring and a need for vigilant that there willbe likely to mean businesses is owners and for some brand global audience The allure of a As well ascreatingcriminal itma.org.uk February 2014 08/01/2014 15:52 13_Evening Meeting2.indd 13 O itma.org.uk of trade marks. of trade marks. translationof the ortransliteration offices to understand implications the burdenon This willincreasethe would beincapable ofregistration. official language ofany Member State, whentranslatedscript that, into an applications inaforeign language or Member States. Offi ces shouldrefuse fall foul oftrade marklaws inother trade would markapplicationsthat National offices oughtto objectto 3) Absolute ofrefusal grounds accompanying description. aseries ofstills rather than and an to berepresented by digitalmethods, as well asallowing for moving images of smellsandsoundsastrade marks, wording would acceptance the permit proposed facie the , itappearsthat new legislativethe provisions? Prima criteriathese oughtto bereflected in Markenamt, Case273/100. Perhaps in SieckmannvDeutschesPatent- und CourtofJustice EU(CJEU) by the ofthe to “graphical representation”setout well-known the with criteria relating protection afforded to itsproprietor.” precisesubjectofthe determine the competent public to andthe authority inamannerwhichenablesthe Marks Register ofEuropeanUnion Trade “capable ofbeingrepresented inthe representation” isto beamendedto: for asignto becapableof“graphical The defi requirement nition ofthe 2) Graphical representation Intellectual PropertyAgency”. be known “EuropeanUnion asthe Union Trade Mark”,whileOHIMwill “European the will bereplacedwith The CommunityTrade Mark (CTM) 1) Terminology Key proposals andconcerns highlighting the mainissuesinvolved.highlighting the (EU) trade markreforms, clearly into proposedEuropeanUnion the on EUtrade mark reform concerns raised atanITMAevent Tania Clark summarises themain Change ahead One question ishow sit willthis presented astimulating insight Wiseman ofCleveland IP n 29October 2013, Imogen February 2014 and isITMA Treasurer. Tania hasbeenaTrade MarkAttorney for thepast 15years, [email protected] is aPartner atWithers &Rogers LLP Tania Clark may leadto referrals to CJEUto the advertisement andinvestment. This – for example, communication, trade markfunctionsset outinL’Oréal is noacknowledgement other ofthe tradethe markinquestion. There must originfunctionof affect the services areidentical,infringinguse andgoodsor marks Where the 5) Doubleidentity dated priorto fi the ling date? sameevidence lessvalueasthe with fithe ling date, betreated shouldthis if evidenceissubmitted only after applicationprocess.For example,the evidence fromdifferent stages in to evaluate andplaceweight on relevantoffiburden onthe ces create anadditionaladministrative date application.Thiswill ofthe originates fithat fromafter the ling evidence ofacquired distinctiveness There oughtto beacceptanceof 4) Acquired distinctiveness in question of the trade mark origin function must a ect the infringing use are identical, goods orservices marks and Where the changes in the nextsixtochanges inthe 12 months. resulting ofthe breadth about the Council andwe oughtto know more European by the being scrutinised The proposedamendmentsarenow be omitted benefi fromthe t ofthis? But why EU shouldowners the within mark protected EU. outsideofthe anearlier might beconfusedwith contestedwhere the application EU applicationsinthe bad faith owners to ofearliermarks oppose The Commissionsupportsallowing 10) opposition Badfaith must have areputationinFrance. earliermarkcoveredthe CTM by the reputationof aCTM, based onthe objecting to aFrenchapplication action isbrought.For example, when MemberStatereside inthe wherethe reputationmustan earliermark,the reputationof Where casesrely onthe reputation with 9) Marks informative basis. searches andnotifications onapurely prejudicetowithout offices providing EU.across the However, would this be of relative examination grounds would uniform removal resultinthe examination to absolute This grounds. National offi ces oughtto limittheir 8) Relative for grounds refusal Translator decisionto becodified. Commission wishesfor IP the will beremoved. Inaddition,the of paying fees for upto classes three model current CTM applications;the There willbeindividualclassfees for 7) Goodsandservices ofdestination. country in the tradelong asthe markisregistered being releasedfor freecirculation,so counterfeit goodsinto EUwithout the mark owners to prevent import the of to introduceaprovision allowing trade The EuropeanCommissionwould like 6) Goodsintransit of atrade mark. scopeoffunction(s) true clarify the 08/01/2014 15:57

13 EVENING MEETING 14-17 Steve Rowan Interview.indd 14 14 other day wereother when Isaidthere 42classesof changes inpractice. However, Islippedupthe I’ve beenreadinginto recentcaselaw the and In many ways itallfeels fairly familiar, and interesting, asitisoneIhave asked myself. so I’mfeeling rightathome.Your question is have andthey with welcome, mademevery TMDteamsthe arehard-working, easyto work Trade andDesign Division). Thepeoplein Marks SR: and whatdoyou feel are themaindifferences? things are intheTMD since you last worked there, from 1999to 2003. How different do you think KB: Ialwayssomewhere that plannedto to. return enjoyed timeIspent inTMDanditwas the up to becomeaPrincipalHearingOfficer. Ireally TribunalSection–andIworkedas the my way 1997, working Law inthe Section –now known Trade andDesigns Directorate Marks (TMD)in Review ofIPatTheTreasury. Strategy Unit andworking Gowers onthe time onsecondmentto PrimeMinister’s the During my IPO,Ihave timeinthe alsospent issues and,most recently, copyright policy. designs. I’ve also worked onIPenforcement and policywork acrosspatents, trade and marks representafairbalanceofoperations but they worked inanumberofteams Office, acrossthe Steve Rowan: and trade marks inparticular? Keven Bader:Whatisyour background inIP, As for trade marks and designs, I joined the As for trade anddesigns, I joinedthe marks First, to itisgreat bebackinTMD(now the We worked together intheTMD Law Section ITMA CEOKeven Badertalks IPwithSteve Rowan, Divisional Director of theTrade Marks andDesign Division, abouthis historyDivision, andhis future plans RETURNS I joined the IPOin1991I joinedthe andIhave ROWAN

and the TMD. TMD. and the has overall responsibilityfor Patents the Division Deputy CEO,heldby SeanDennehey, whonow roleof isthe despite titles).Oneofthose three Comptroller General andRegistrar” (oneperson, create two seniorrolesjust below “CEOand the to external customers. Themainchange wasto but most changes willbefairly ofthese invisible SR: main responsibilities? of TMD andtheIPO, andwhatare your is anew post. How doesitfitinto the structure KB: The post ofDivisionalDirector intheTMD use TM10! some decisions,soIneedto betrained how to affect you.enhancements to services that the feedback, whichwillenableusto make further our customers andwe aregrateful for your project. Iknow, too, itmeantchanges for that to ITandbusiness-improvement bringinthis TMD, Iknow whataneffort itwasfor staff allthe butoutside Office, the As someonefromwithin recording assignmentsandchanges ofname. to examination andtribunalcases,through way we allwork, fromnew applications,through TM10as the project).Ithasradically altered the for processingtrade (known marks internally introduction of full is electronic the case working mistakethat again. arenow there 45.Iwon’ta colleaguethat make goods andservices,waspolitely corrected by I will be taking some hearings and writing I willbetakingsomehearingsandwriting The mainchange sinceIwaslast inTMD The IPOhasrestructured itsexecutive board, itma.org.uk

February 2014 08/01/2014 16:00 14-17 Steve Rowan Interview.indd 15 itma.org.uk Designs Division Trade Marks and functions of the policy andtribunal of the operational, to-day running to oversee the day- responsibilities are My main February 2014 might alsohelp uscomprehend ourcurrent Getting abetter understanding ofcustomers will impact way IPOandthe we onthe work. projects like and MyIPOareclearly partofthat, delivering customer whatthe IT wants.Current we’reus shapeourservicesandtargets, sothat wantandwhen.Thisshouldhelp – whatthey immediately struck me. have bigchallenges that arethree say there that SR: youopportunities seeinyour new role? KB: Whatare thebiggest challenges and of major ITprojectslike TM10. and experiencessuchasTMD’simplementation cross-cutting issues,suchascustomer visits Patentscolleagues fromthe Divisionon Office. Iwillalsobelookingto work with Sean’sDirectoratewithin wider andalsothe designs issues. to Minister the for IPonany trade markor to ourcustomers, includingproviding advice to deliver best very try servicewe the can Designs Division.Iwork colleaguesto with Trade and and tribunalfunctionsofthe Marks day-to-daythe operational, ofthe policy running Tribunal Functions. relevant policyareasand,ofcourse,alsohave Division andTMDareresponsiblefor their Patents the asboth that but itismorethan The first isto better understand ourcustomers I alsofeed into seniorleadershipteam the So my mainresponsibilitiesareto oversee likeThis looks anoperations directorate, That’s abigquestion. Seven weeks inIwould I left TMDandtwoI left recentvisitsto OHIMhave also interesting. Thingshave changed alotsince increaseindemand. challenges of this widerIPOsowe TMD andthe canmeet the planning andtraining, anddevelopment across I’ll wantto colleaguesatsuccession lookwith training successful candidates the year. early this new trade markexaminersandwe planto begin recently ran projectfor anexternal recruitment decisions onoppositions,etc. we Aspartofthat, rights andto issuetimely andhigh-quality capability to examineandregister high-quality capacityand make necessary sureTMDhasthe changes ofname,assignments,etc. We needto oppositions andpost-registration recordingof work isfl hearings, owing into through exparte 10 to 12 days fromfi increasein ling, butthis moment,we’reAt the still examiningataround five years, teams. isputtingpressureonallthe which hasbeengrowing year-on-year for past the don’t know why, highlevel andthis ofdemand, 50,000 trade year. markapplications this We previous September. we’ll Ithink hitaround September filings were up26percentonthe last 20percenthigherthan year.running on demand–whichfor trade iscurrently marks compared systems? to Frenchand German the UK’sdesignsystem the is itthat isunderused plan better andalsotarget oursupport.Why understand whatdrives ourdemand,sowe can lack ofdemandfor designs.I’dlike to to try high level ofdemandfor trade andthe marks Finally, international dimensionis the Ithink That takes meneatly onto my second point 08/01/2014 16:05

15 INTERVIEW 14-17 Steve Rowan Interview.indd 16 16 particular Division in and Designs the Trade Marks andwith IPO have with the such asITMA organisations relationship that the already strong I’d liketo buildon ideas andpolicies? initiativessupporting from theIPOorchallenging representative organisation for theprofession in KB: Whatrole do you see,ifany, for ITMA asa is interesting. a potential DiplomaticConference ondesigns Marrakeshthen DiplomaticConferences, so I’ve UKdelegation ledthe to Beijing the and Treaty onDesignLaw. past Inthe two years proposedWIPO mark reform inEuropeandthe IPBill,trade challenges current suchasthe international contacts.Myfocus hasbeenon representative bodies andindividuals,also roles. Externally, I’ve beenlookingto meet to get to know variousteams the andtheir SR: to change orfocus onintheinitialmonths? KB: a roleintargeting itssupportinkey markets. IPOtohere atthe make TMDisplaying surethat ourcustomerswith international team andthe brands markets.their inother Iwantto work critical to ourcustomers andto successof the The international andEuropeanmarkets are common practice EuropeanUnion. across the practice by working OHIMonestablishing with on important issuesoftrade mark anddesign Trade Directive Marks andRegulation –butalso debate recastingthe onissuessuchasthe ofthe TMDinfluences or inEurope,anditisvitalthat Internally, I’ve concentrated ontrying Are there thingsyou any particular are looking internationally is now set frameworkthe work is.Muchof important this years, Iknow how policy for several international worked on work.the Having dimension to and international European the importance of increasing the my view on reinforced

further, andwe’re committed to doingthat. identify. We know our servicescanbeimproved youthat continueto us you flagupissueswith resolve issues,butIwould the alsoaskthat So I’daskfor you to beto bepatientwhilewe changes are beingpackaged upfor release. system known the the issueswith andvarious stillsome ofthese exist. We areworking on TM10 with that been teething difficulties and question inany have detail.Iknow there that SR: proceedings andregistrations? easier for theIPOinrelation to UKapplications, that Trade MarkAttorneys could doto make life KB: Whatare thethree things most important to continueto levels meetourcurrent ofservice. demand. We’ll ifwe needmoreskilledstaff are commentabout the IPO.Ittiesinwith the within righttimeandcanseeacareerpath the division have accessto righttraining the at peopleworking sure that inallpartsofthe means working outwhatwe need to doto make anddevelopmentlearning for That allstaff. knownthe teething issues,Iwantto focus on TM10 isbedding inandwe’re starting to address and effort fromeveryone team. inthe Now that TM10 took ahuge amountoftime,resource TMD. issuesIwantto the of the addresswithin anddevelopment toplearning arerightatthe ITMA hasoverhauled itstraining. Training and SR: for Trade MarkExaminers? follow suitanddevelop asimilararrangement Mark Attorney. Doyou thinkthattheIPOmight education programme for qualificationasa Trade KB: The Institute hasoverhauled thetraining and look athow we canwork together oninitiatives. all goodideascanbeimproved. I’dalsolike to other. No onehasamonopoly ongoodideasand sidescanchallenge each relationship,both that particular. It’sequally important within that, TMDin the ITMA have IPOandwith the with strong organisations relationshipthat suchas discussions. I’dlike to already buildonthe uses itsservices,orwhohasaninterest inpolicy and constructive everyone relationshipwith that SR: I think it’stooI think early for meto answer this I’d beinterested moreabouthow inlearning IPOhasanopen the itisvitalthat I think itma.org.uk

February 2014 08/01/2014 16:00 As someone returning to TMD, I’d also and Directive have been a huge success and welcome comments from people asking that OHIM has been a key part of that success. questions or pointing out issues for me to Equally, I think it became clear very early on look at. We’re planning on doing some work that improvements to the system could be made. on what we call “customer insight” soon. This All legislation needs to be kept under review will be an important piece of work and help to make sure that it is meeting the policy us to understand better what you want. In objectives it set out to achieve. That’s why the UK the meantime, just write to me and tell me. welcomed the review and has been working hard to make sure that the outcome is good for UK KB: Your opposite number in the Patents business and promotes growth. It is important Directorate used to, and I presume still does, that we get this right, as I doubt there will be take hearings. Do you think it’s important for the another opportunity for many years. There is Divisional Director of the TMD to do the same? still some way to go on the review and time is SR: I don’t think it is essential. Some of my ticking with the European Parliament elections predecessors took hearings, others didn’t. The scheduled for May. We’re working hard with all

legal side of the trade mark work has always the European partners to push this dossier along INTERVIEW interested me, so I plan to take hearings when as quickly as possible, but, as I said, we’re very

I can. I’ve just been allocated my fi rst case – it’s mindful that what we agree must be right; it 17 on my desk as we speak – and the eight-week has to improve the current system and not be deadline for issuing the decision is ticking! a backward step. Any changes in the Directive would have to be refl ected in UK law. So once KB: The Trade Marks Act 1994 will have been we know what the Directive looks like, we’ll have in place for 20 years in 2014. Do you think it to consider what changes we need to make. is still fi t for purpose or it is time for an overhaul? Will the European Commission’s review of the European trade marks system force the UK to review its own trade mark legislation? SR: I am pleased to be rejoining TMD at a time when this issue is centre stage. I’ve discussed the current planned reforms with colleagues in the IPO and with colleagues from other Member States, the European Parliament and ITMA CEO the European Commission. I don’t think anyone would disagree that the Community Trade Mark Keven Bader

All legislation needs to be kept under review to make sure that it is meeting the policy objectives it set out to achieve. That’s why the UK welcomed the review and has been working hard to make sure that the outcome is good

itma.org.uk February 2014

14-17 Steve Rowan Interview.indd 17 08/01/2014 16:00 18-19 Spring Conference_v2.indd 18 18 T these new areas,andwillprovidethese and developing law andpractice in conference current willexaminethe in societalbehaviour andnorms. have following occurred changes even to new situations that dealwith technologicalby those advances,or problemscaused to the dealwith place for many decades,areneeded principles, whichmay have beenin stream oftechnological advances. everyday life, fuelledby anon-going As a key theme this year,As akey this theme the Difficulties arisewhenlegal (course codeWP/ITMA); 8 Law Societyhours 8 BarStandards 9 IPReg hours; Board hours Board hours important partof forms anincreasingly media its guises,the a starring role.Inall will cast mediain the Spring Conference international ITMA his March,the muses onmodernissues in muses onmodernissues in Our SpringConference in London. has to fi beone ofthe nest locations Abbey andParliament, truly this amazingviews ofWestminsterWith St James’s Park Underground stations. distance Westminster ofboth and mainvenueCentre asthe for event. the secured ChurchHouseConference location. We aredelighted to have we continueto enjoy central avery Hosting event the isanew home,but Historic new home focus on remediesandsolutions. trade aparticular markissues,with programme willfeature arange of continuetosituations that arise. novelto the dealwith, legal oradvisingclientsonhowwith, andadviceondealing thoughts a new historica new home Church House is within walking walking Church Houseiswithin And ofcourse,asever, the venue for ITMAconference. the a historic buildingandavenerable war.remainder ofthe Thistruly is twothe HousesofParliament for the building wasrefurbishedfor useby was soimpressed the that by this Prime Minister Winston Churchill but only minimal damage wasdone. early partofWorldin the War II, King George Vlon10 June1940. Baker, andwasopenedby HisMajesty was designedby architect SirHerbert Queen Victoria. building Thecurrent to commemorate GoldenJubileeof the accomplished speakers. presentations fromanarray of a historic backdrop to somefabulous England’s General Synod, willprovide Churchof Assembly Hall,homeofthe The building suffered a direct hit The buildingsuffered adirecthit The originalChurchHousewasbuilt From 20-21 striking March,the itma.org.uk February 2014 08/01/2014 16:24 18-19 Spring Conference_v2.indd 19 itma.org.uk speaker presentations USB containing all Thursday 20March at OneGreat George Street on Drinks Reception andGalaDinner 20 andFriday 21March Conference LunchesonThursday Canapés onWednesday 19March Welcome Drinks Reception and shown inprogramme Co ee andtea breaks as All conference documentation conference sessions Attendance atall INCLUDED WHAT’S AND POINTERSFORBRAZIL HOW DIDRUSSIADO, AN OLYMPIC UPDATE – AN INTERNATIONAL VIEW YOUR WELL-KNOWNBRAND– USING COPYRIGHTTOPROTECT IN OPPOSITIONPROCEEDINGS RELYING ONWELL-KNOWNMARKS BRAND GOESBAD WHAT TODOWHENTHE HISTORIC NAMES REGISTERING FAMOUS AND HIGHLIGHTS PROGRAMME CONFERENCE GOLDSPONSOR February 2014 OPTIONS ACCOMMODATION meet the needs of the businessandleisuretraveller. needsofthe meet the Eye, hotel this (below) features several servicesto Parliament, LondonAquarium London the andthe numerous attractions, Housesof includingthe idealcentral Offering the Londonlocation,near 4* ParkPlaza Westminster Bridge local quarters: ITMA ispleasedto o er theseoptionsfor rates anddetails See itma.org.uk for create superbandspaciousaccommodation. renovated interior ahistoric within buildingto Its prestigious façadecomplements abeautifully London hotel islocated heartofWestminster. inthe BusinessTravellerat the Awards 2013, luxury this Voted asBest New BusinessHotel World inthe 5* InterContinental Westminster individuality ofaboutique guesthouse. facilities ofalarge hotel, whileoffering the St boasts grand spacesandmodern Ermin’s the 4* StErmin’s Hotel and sumptuous dining. spa amodern Experience Edwardiangrandeur with 4* Crowne Plaza London StJames on 7March 2014 Registration closesat5pm 6090 +44 (0)207101 registration fees orcall money withourearlybird at itma.org.uk to save Book by 14February TO REGISTER? ARE YOUREADY

08/01/2014 16:25

19 SPRING CONFERENCE 2014 20-21 Spring Conference Guide_v3.indd 20 20 © IWM (Imperial War Museums) iwm.org.uk 9.30am to 6pm(lastadmission at5pm); Adult admission £17.50. Opendailyfrom Blitz. during the bunker sheltered Government that the King CharlesStreet. wartime Visitthe Churchill War Rooms VISIT 3.30pm, 20-213.30pm, March. Entry:£18withaudioguide. Open 9.30am to 6pm,19March; 9.30am to soldiers, poetsandpriests. resting placeofkings,queens, statesmen, most important royal occasionsandisthe This 700-year-old structure haswitnessedthe Westminster Abbey This year’s conference venue puts visitors atthe heart of theUK’s greatest political andhistorical highlights. Here are afew of the unique ways to take advantage of your stay public shelters. waypointing the to underground outside number8–afadedsign See aremnantofWorld War II and many politicalplayers. other Prime Minister HaroldWilson statelythis street washometo row country”, ofhousesinthe Said to most be“the political Lord North Street Go to parliament.ukfor detailsandbooking. or you canwatch live politicaldebate publicgalleries. inthe of politicalpower. Available areguidedtours, andeven tea, afternoon Book onlineandinadvanceifyou’d like to take atour UK’sseat ofthe Houses ofParliament Saturday; 11amto 6pm, Sunday. 5pm, Monday to Friday; 10amto 6pm, Adult admission £13.50. Open10amto movies”. magicbehindthe the Go just river acrossthe to “discover County Hall,QueensWalk, Bank. South London Film Museum Entry free. Open 10amto 6pmdaily. best and the ofBritishart. Enjoy revived the building now re-openeditsdoors. homeofBritisharthas the million renovation, Millbank. After a£45 Tate Britain itma.org.uk February 2014 08/01/2014 16:27 20-21 Spring Conference Guide_v3.indd 21 itma.org.uk make amust-visit this venue. including impressive cut-glassmirrors, back for akey vote. Originalfeatures, Bell scatters drinkers needto that rush TV, channel isonthe andaDivision 48 Parliament Street. BBCParliament The Red Lion enjoyed on asunny day. “restaurant for allseasons”.Best of Whitehall andsettledown inthis central BlueBridge view for afairytale St James’s Park. Travel park’s acrossthe St James’s Park Inn thePark, [email protected] Contacts: +44(0)207821 1899, Sriram Aylur (aformer law student). direction ofChef cuisine underthe focuses on south-west coastal Indian Michelin-starred scale, this restaurantthe 41 endof BuckinghamGate. other Onthe Quilon drawn Londonspectrum. fromacrossthe customers95 percentofthe areregulars establishment was founded in1947, and fifare. Featured inthe lm Layer Cake,this sliceofold-schoolBritishcafé legendary 17-19 Regency Street. queue Jointhe for a Regency Café FOOD & DRINK February 2014

A Tony-award-winning musicalabout a revolution in a city of the future. a revolution future. inacityofthe St JamesTheatre,12 Palace Street. hosted hitmusicalWicked since The nearby ApolloTheatrehas 2006. Bookatatgtickets.com OUT OF stjamestheatre.co.uk HOURS Urinetown Wicked

9.30am to 5.30pm;Friday, 9amto 4pm. you.with OpenMonday to Thursday, and take abit of Parliament home tea Mustard mug oraHomeSecretary pot ofHouseCommonsGunpowder 12 Bridge Street. Nipoutquickly for a Parliament shop Houses of to Friday; 10am to 6pm,Saturday. 1730”. Open9.30amto 6pm,Monday CourtofSt Yearthe James’sSincethe of TheFinest Perfumes &Toiletries to St James’sPark to “Purveyors visitthe 89 Jermyn Street. Venture of north Floris 10am to 6pm, Saturday. Friday; 9amto 7pm,Thursday; 6pm, Monday/Tuesday/Wednesday/ fishing merchandise.Open9amto square feet ofhunting,shootingand 170 years, shopoffers over this 6,500 for outdoorpursuitsfor morethan 9 Pall Mall.Outfi discerning tting the Farlows details. Open9.30amto 5pm. Go to royalcollectionshop.co.uk for selling royally appointed merchandise. Royalvisit the CollectionTrust shop, want to gather aroyal remembrance, 7 BuckinghamPalace Road. Ifyou Trust shop Royal Collection SHOPPING 08/01/2014 16:28

21 SPRING CONFERENCE 2014 BRACE FOR IMPACT! Joanne Goodchild advises on how brand owners can survive the domain name explosion

nce domain name Trade marks will be vital to applications can be safeguarding interests in the new accepted under the domain space and Trade Mark new generic Top- Attorneys should be advising now Level Domains that budgeting for defensive (gTLDs), the online measures will be justified if they landscape will be prevent, or make it easier to take vast. The first few action against, misuse of a trade gTLDs are already operational (at the mark in a new gTLD. This is one of Otime of writing, four non-Latin script the reasons we register a trade mark gTLDs) and the remainder are expected in the first place, and the registration to roll out over the next two to three of a trade mark opens up many of the years. However, there remains an air rights protection mechanisms that of complacency in the business world have been woven throughout the that could be explained by the lack gTLD process. While big brands will of easily digestible information on have the security of control over how businesses can preserve and their own gTLD, such as .gucci, the optimise their position in the online majority of businesses will not, so marketplace when the new registries it is even more important that they are open, as well as the risks they understand the implications of the could face if they do not. introduction of the new gTLDs and

22-23 GTLD Update.indd 22 08/01/2014 16:32 22-23 GTLD Update.indd 23 itma.org.uk and anasset. as well asbeingamarketing tool, might save clienttimeandmoney, the is alsoapre-emptive measurethat ofinterest eachregistry names within important trade asdomain marks opened generally. Registering itsown domain namebefore gTLDis the client to corresponding grab the evidenceofusewillentitlethe with preferably registered, trade mark benefiaccess the ts of: to TMCH the Log trade with marks Trade MarkClearinghouse(TMCH) arenaatpresent. limitation inthis is noconceptofgeographical purposesofgTLDaction,asthere the registration seekingaswift those for should beparticularly attractive to fastestbeing oneofthe world, inthe The UK trade mark registration system, mark protection assoonpossible. trade andfi marks ll any gaps intrade Clients shouldidentifyallimportant Portfolio review gTLD explosion? to avoid involved risks the inthe So whatactionshouldbetaken Preparation be anactionablecombination. cellular.mototherefore that would caused confusion.Itissuggested legally registration responsibleiftheir gTLDwould.moto themselves be the seeking domainnameswith domainnameregistrants the that confusion. Beyond itwasstated this, as agTLDinitselfwould notcause meaninganduseofthis dictionary was dismissedbecause“moto” hasa objection causing confusion,butthe domain namessuchascellular.moto possibilityof aboutthe was concerned description for motorcycles. Motorola asa itchose.moto its claimthat of “moto” wasconsistent with MOTOtrade the mark,butitsuse TLD HoldcoLtd:LRO 2013-0054). Trademark HoldingsLLCvUnited gTLD(Motorolarelating to .moto the gTLDobjectionwindow,during the arose rights objectioncasethat confusion asreferred to inalegal will begreater scopefor contextual a domainname(asatpresent),there inclusion ofaclient’strade markin specifically for brand owners. havemeasures that beencreated take defensive advantage ofthe Registration . Loggingavalid, Applicantknew about Here, the In additionto riskofmere the February 2014 Joanne Goodchild [email protected] is aSeniorAssociate atAppleyard Lees be prudent to be prudent identifyeachgTLDin infringements. At present,itwould orto them policepotential within want to acquire domainnames they clientscanseewhether that gTLD registries areopeningso that A closeeye shouldbekept onthe Monitoring period. name after this registering aconfl icting domain willbenotifi they that ed ofanyone also subscribeto awatching serviceso clients It istherefore advisablethat after eachgTLDbecomesoperational. facility lasts only for alimited period trade mark owners and notifithe cation domain nameregistration accessfor early haslimitationsinthat The TMCH Watching what, ifany, actionshouldbetaken. determine be informed. Itcanthen registration, trade the markowner will not deterred andproceedsto by this labels” have fi Applicantis led. Ifthe any “abused successfulactionsthat to register, together detailsof with areseeking domainnamethey the to correspond that TMCH the with notified aboutany trade logged marks gTLD action the purposes of registration for seeking aswift attractive to those be particularly should the world, of the fastest in being one system, mark registration The UKtrade Notifi cation. Applicantswillbe action required. Rapid SuspensionSystem). Resolution Policy Uniform andthe Uniform(the Domain-Name Dispute- dispute resolutionproceduresinplace be preparedto take actionusingthe mark owner istoo late, itshould then to prevent it.However, trade ifthe diffi cult to positionthan remedythe registration seemspossible.Itismore if opportunistic orcompetitor would obviousprecaution bethe names relevantto brand. their arebestTMCH placedto get domain owners the rightslogged with with business.Trade enhance their mark gTLDto domain namesinthat action accordingly: followingterms ofthe andtake application-result/applicationstatus found at: https://gtldresult.icann.org/ statusfor current canbe and their effective gTLD strategy. Attorneys onputtingin place an Trade guidance fromtheir Mark businessescouldbenefirisks, t from marketplace, but,given potential the globalonline opportunities inthe emanate fromasinglesource. legitimate the communications adviser, clients canbereassuredthat atrustedservice through trade mark and/or subscribingto awatching TMCH the By loggingrightswith domain namenever materialised. partyandtheir to third act,the tradewhere the markowner declined domainnamefithe rst. Inmany cases applicationby registeringblock the suggested Registrar by the wasto Thesolution“helpfully” marks. to tradenames corresponding their toparties were register trying domain by Registrars third “advising”that introductions, clientswere contacted rounds ofTop-Level Domainname causing issuesfor clients.Inprevious partiesarealready from third Unsolicited communications A word ofcaution Neither opportunity northreat.NoNeither opportunity threat.RegistrationA potential . ClientscanregisterAn opportunity A full list of the gTLDs applied A fulllist gTLDsapplied ofthe The new gTLDscouldopenup 08/01/2014 16:32

23 GTLDS 24_Evening Meeting Webniar.indd 24 24 WEBINAR C money”). Office money includes,for is notattributable to fi the (“offirm ce As ageneral itisallmoneythat rule, work, payment ofdisbursementsetc). up-front costs for aspecifi c pieceof or received from,aclient(for example isheldfor,Client moneyisthat Basic principles guide the undertaking of such duties. undertakingofsuch duties. guide the infl areprinciplesthat there uence and client monies.Asonewould expect, handlingof when consideringthe duties areoffundamentalimportance protect best their interests. Such we owe adutyofcareandmust them by IPReg. Asfiduciaries to our clients, monies areimposed profession onthe regulated profession, onclient rules accounting principles. to avoid givingadetailedinsightinto focusthe wasoncoreissues,hevowed process. Tounderpinning this ensure bestclient moniesandthe practices general careof the issuessurrounding webinaraims in this were to introduce handlingofclientmonies. His of the management, particularly inrespect advanced knowledge of client care and law, Beanlandhasdeveloped an practitioner fi inthe eld ofinsolvency ITMA/CIPA webinar autumn. inthe handling clientmonies,aspartofan mustthat beadheredto when Mark Caddle wasoneof those hangingonourwebinar speaker’s words Given we that arepart ofa Through hisexperienceasalegal WITH CARE about handlingclient monies. Heprovides this report the the guiding principles for ITMAmembersof insightful overview Law, provided an at TheUniversity of Associate Professor a Solicitor and hris Beanland, HANDLE mark anddesign clearance, prosecution andenforcement. the firm’s London o ce. Headvisesonallaspectsoftrade Mark isapart-qualified Trade MarkAttorney basedin [email protected] is anAssociate atWithers &Rogers LLP Mark Caddle 1) Client moneymust be: out onitsbehalf. a billpaidby aclientfor work carried example, moneyreceived inrespectof client monies handling of considering the importance when of fundamental Such duties are best interests. protect their and must a duty of care we owethem to ourclients, As fiduciaries client bankaccount); (ie there must be at leastone separate kept separate from thefirm’s money terms and conditions is vital. terms andconditionsisvital. out clear, accurate andunderstandable Therefore, Chrisemphasised, setting charges related to apieceofwork. for example, official fees andservice areinstructed that client– by the disbursements andany payments afithat canmakerm payment of terms andconditionsmay stipulate from itsaccounts.For example, the govern whenmoneycanbewithdrawn timeofengagement clientatthe the by areauthorised and conditionsthat principlesareflthe effect. uid in their accounting department.Therefore, are likely to careofan beunderthe monies,which handlingthe those obligations isto bedetermined by followed. Compliance these with must that be are noprescribedrules 5) 4) handlingclientmonies to:of those 3) 2) In handling client monies, the terms terms In handlingclientmonies,the principles,there In applying these responsibility itisthe Furthermore, individual ledgers for eachclient);and client; thiscanbesatisfied by having a separate bankaccount for each bank account (thisdoesnotrequire identifiable andkept inaseparate used for clientmatters only. responsible for clientmonies. systems andprovide training to those establish proper internal controls over accounting systems; and establish andmaintainproper itma.org.uk February 2014 08/01/2014 16:35 25 Rintisch.indd 25 Discretion dispute itma.org.uk 207/2009 – the CommunityTrade 207/2009 –the replaced by CouncilRegulation (EC) Council Regulation (EC)No 40/94(now had discretionunderArticle74(2) of ODnoritself stated the neither that TheBoA decision hadbeencorrect. opposition, fi OD’s the nding that meritsofthe assessingthe without which promptly appeal dismissedthe BoardofAppeal(BoA)OHIM, Fourth timeallowed. the within failed to substantiate opposition the regard.this TheOpponent,however, and translations were required in evidence further Opponentthat the ODhadadvised Opposition, the hadnotbeentranslated.since they date couldnotbetaken into account submitted indicated that arenewal onlineextracts time, andthe registrations were relevant valid atthe suffi cient to earlier establish the that registration certificates were not translated the considered that nor translations TheOD thereof. registered 10 morethan years ago, certifi cates marks inrespectofthe but hadfailedto provide renewal into proceedings, language ofthe the certificates, together translations with relevantregistrationcopies ofthe opposition. support ofthe relieduponin earliermarks of the existencelimit set,the andvalidity had failedto prove, time the within Opponent the that ground on the The ODhadrejected anopposition Opposition Division(OD)decision. Union (CJEU)inrespectofanOHIM in opposition proceedings related to late submission of evidence Carrie Bradley reports onadecision T The Opponent appealed to the The Opponentappealedto the Upon Notice of receiptofthe The Opponenthadsupplied of Justice of the European of Justice European ofthe wayall the upto Court the anappeal his caseconcerned February 2014 CJEU, 3October 2013 C-122/12 P,Bernhard RintischvOHIM, and dispute resolution. Carrie adviseson allaspectsofIPprotection, enforcement [email protected] and DesignsatLOVEN Patents &Trademarks Limited is aSeniorTrade MarkAttorney andHeadofTrade Marks Carrie Bradley with the General the Court(GC),butthe with contestedannulment ofthe decision exercise itsdiscretionto overrule it. practical BoAcansimply effect ifthe opposition, couldceaseto have any rejectionofthe namely the legal consequence for defi this ciency, (EC) No 1041/2005) outliningthe laid down inCommissionRegulation provision the (expressly was that point purpose. Itsreasoningonthis periodsetfor ofthe that expiry the in supportofanoppositionafter was submitted account evidencethat Mark (CTM)Regulation) to take into The Opponentsoughtan [2008] ECRI-10515, para 121). British Aggregates vCommission pointCaseC-487/06 P also onthis it willbedeemedinadmissible(see appeal,failingwhich support ofthe arguments specifically advancedin set aside,inadditionto legal the to appellantseeks have the that contested judgment elementsofthe an appealmust state precisely the case. in this for BoAto the exercise itsdiscretion translation, offered nojustifi cation failed to submitittogether a with proofofrenewal, but necessary the Opponentwasinpossession of the justifying delay. the Thefactthat circumstances arecapableof surrounding it willonly dosoifthe BoAtothe admitlate submissions, discretion hasbeenconferred upon requisitepractitioners whilethe that, This caseserves asareminderto Conclusion other suchlegalother grounds. rejection waswell founded on GC’s judgment,sincethe of that could notleadto settingaside the concerned error on to the deemthat taken into CJEUwent account,the evidencefrombeing supplementary what circumstances preclude Regulation. However, inconsidering Implementingof Rule50(1)the provided subparagraph third by the enjoy suchdiscretion,asexpressly BoAdoesinfact the determined that judgment underappeal.TheCJEU inlaw vitiatedbeen anerror that the GC. to decisionofthe setasidethe asked CJEU Opponentthen the the action.Consequently,dismissed the BoAand the with GC concurred This casealsoconfi that rms The CJEU found that there had The CJEUfound there that 08/01/2014 16:39

25 CASE COMMENT 26_Zoo Sport.indd 26 26 O Zoo to-do • • deciding that: BoardofAppeal’sdecision, the General the Courtupheld marks, conceptual similaritiesbetween the visual,phoneticand In lookingatthe says SimonMiles marks su ciently similar, Decision sees two sport General Court decision as awholewere different. should have signs found the that law Board the by ZooSportwas that remaining goods.Thesimple pleain appealasto and dismissedthe the (being different to goodsinclass25) appeal for goods“sportsbags” the Board ofAppealallowed ZooSport’s decision of9August 2012, OHIM the goodsinclasses18of the and25.Bya earlierfion the gurative mark,for all Regulation, insofarasitwasbased pursuant to CTM Article8(1)(b)ofthe opposition Division upheldthe covering classes25,35,36and41. page, registeredthis on8June2007, CTMshown the on on, amongothers, CTMRegulation). K-2Corprelied (the Council Regulation (EC)No 207/2009 opposition pursuantto Article41 of June 2010, K-2Corpfi led anoticeof 35, shown page (top). onthis On29 “zoo sport”covering classes18, 25and application for fi the gurative mark

elements ofthemarks, thefont, and including theposition ofthevarious The dierences between themarks, incommon.the element“sport” element “zoo”. The marks alsohad “zoot” or“zooz”, are thesameas element oftheearlierfigurative mark, of thedominantandmostdistinctive visual similarity. The first three letters The marks hadanaverage degree of On13 May 2011, Opposition the Community Trade Mark (CTM) Limited (“ZooSport”)fi led a 2010,n 24February ZooSport 16 October 2013 CJEU, General Court (First Chamber), T-455/12, Zoo Limited vOHIM, Sport • • • that the Board of Appeal was correct BoardofAppealwascorrect the that marks. “sport” or“sports”onthe word useofthe caused by the low ofconceptualsimilarity degree is nottotally neutralised by the elements “zoo”and“zoot”,which difference owing to useofthe the have marks the that aconceptual Karen Lee, Associate atEdwin Coe LLP, acted asco-author. on allaspectsofIPlaw, emphasisonbrands. withaparticular Simon isaSolicitor andaTrade MarkAttorney, andadvises is aPartner atEdwin Coe LLP. [email protected] Simon Miles

part ofthecommonpart vocabulary. addition, theterm “zoot suit”isnot as meaningazoological garden. In would notbeunderstood by thepublic garden, “zoo taken sport” asawhole “suit” andthelatter beingazoological creative syntax oftheEnglishword dierent, withtheformer beinga “zoot” and“zoo” were conceptually While Zoo argued thattheterm Sport common element“zoo”. from thepronunciation ofthe the globalsimilaritiesresulting or“z”didnotolast letter “t” set thephoneticimpactof In short, or“zoozsports” sports”. in thegraphic form isthus“zoot perception, thatmarkpresented this was unlikely. Inthepublic’s registered form, “sports-zoot-sports”, mark mustbepronounced inits arguments thattheearlierfigurative Notwithstanding Zoo Sport’s mark were considered to beminor. appears twice intheearlierfigurative the fact thattheword “sports” Ultimately, General the Courtheld The General Courttherefore found THE CONTESTED MARKS di erence a significant did not establish the comparison the marks, and similarity of and phonetic average visual There wasan where conflict occurs. similarities anddifferences ofmarks visual,phoneticandconceptual up the of asystematic approachinweighing between them. establish asignifi cant difference comparison didnot marks ofthe andconceptually marks, the the visual andphoneticsimilarityof were wasanaverage identical,there Thegoodsinclass25 marks. the likelihood ofconfusion between wasa to there concludethat This case highlights the importanceThis casehighlightsthe itma.org.uk February 2014 08/01/2014 16:42 28-29 Isdin2.indd 28 28 Isdin isbackinplay I Rupert Bentreports dispute is returned for review. A long-runningpharmaceutical 2) 1) overlapping classesareasfollows: in classes3,5and42. 2005 asaCommunityWord Mark Bial registered ZEBINIXon14 March treatmentofepilepsy.used inthe knowna drug asZEBINIXcurrently company, whichin2008developed SA (“Bial”),isalsoapharmaceutical word ZEBEXIRinclasses3and5. Trade Mark(CTM)relating to the for registration the ofaCommunity April 2008,Isdinfiledanapplication for dermatological conditions.On between two the marks. was alikelihood ofconfusion CTM Regulation), it believed there Regulation (EC)No 207/2009(the asperArticle8(1)(b)ofCouncil that, prior to Isdin’sapplication,and had registered markZEBINIX the Bial factthat was baseduponthe ZEBEXIR asatrade mark.This Isdin’s applicationto register Division inanattempt to deny

 The specifications the for The Defendant, Bial-Portela &Ca Bial appliedto Opposition the C fungicides, herbicides”. preparations for destroying vermin; teeth, dentalwax; disinfectants; for dressings; material for stopping food for babies;plasters, materials substances adapted for medicaluse, and sanitarypreparations; dietetic hair lotions,dentifrices”; and perfumery, essential oils,cosmetics, and abrasive preparations, soaps, use, cleaning,polishing,scouring and othersubstances for laundry C company develops that products case,isapharmaceutical in this Claimant sdin SA(“Isdin”),the lass 5–“Pharmaceutical, veterinary lass 3–“Bleaching preparations 17 October 2013 C-597/12, IsdinSA vBial-Portela &CaSA, CJEU, General Court includedthat: pointof law.the the Key findings of concerning but wasinagreement an orderto OHIMwasinadmissible, Bial’s request for courtto the issue typicalEUconsumer.of the issueofconfusiononbehalf the correctly whenconsidering grounds Board ofAppealhadnotappliedsuch registration. Bialcontended the that which atrade markmay berefused relative under out the grounds CTMRegulation, whichsets the infringement ofArticle8(1)(b) raised asinglepleainlaw, alleging refuse to register Isdin’smark. and anorderrequiring OHIMto Firstreached by the BoardofAppeal, seeking an decision annulment of the EuropeanUnionCourt ofthe (EU), Bial took matter the to General the of confusion. to excludesufficient alikelihood differences were these and that differences between marks, the were phoneticaswell asvisual there factthat was baseduponthe appeal initsentirety. Thisdecision which onceagain rejected Bial’s First BoardofAppealOHIM, CTMRegulation. Articles 58-64ofthe 13 October OHIMunder 2009with Bial therefore filedanappealon Appeal process application wasallowed to proceed. between trade andsothe the marks wasnolikelihood there ofconfusion found OppositionDivisionthat by the The General Courtheldthat To supportitsappeal,Bial Undeterred, on16 July 2011, The issuewasconsideredby the This oppositionwasrejected. Itwas 3) 2) he two marks shouldbeconsidered 1) its decision-makingprocess. into accountsuchproductsin The General Courtdidnottake to beactively marketed to customers. many listed underclass5)were markZEBEXIR(specifically the productsbeingsold under all ofthe above, itshouldbenoted not that individual components mark. ofthat mark shouldbe assessed,rather than overall purposesofconfusion,the the hand. Whenconsideringamark for correctly law apply the to issueat the General the Courthadfailedto that judgmentwaserroneous. the Isdinthat with OHIM, whichagreed Court. Thisappealwasendorsedby General judgmentofthe set asidethe EuropeanUnionthe (CJEU)seeking to Isdin appliedto Court ofJustice the of Isdin andCJEU  In relation to the third point In relationto third the The key basisofIsdin’sappealwas likelihood ofconfusion. a view to determining theoverall significance ofvisualsimilarity with of importancewhenassessing the (for instance insupermarkets) was actively beingmarketed to customers bearing themarkZEBEXIRwere  T so asto create confusion. phonetically was sufficientlyclose  T consumer ofanEUmember. confuse thereasonably observant similarity thatwould inalllikelihood marks created animpression of word, “ZEB”, was duplicated inboth The fact thatthefirst halfofthe differences referred to by OHIM. visually similardespite theexisting T he fact thatsomeoftheproducts he pronunciation ofthewords itma.org.uk February 2014 08/01/2014 16:49 28-29 Isdin2.indd 29 itma.org.uk CJEU has referred the issue backtoCJEU hasreferred the set asideon17 October 2013. The Generaljudgment ofthe Courtwas The appealwasallowed andthe Decision such adistinction. reasons why ithaddecidedto draw under anobligation to setoutthe werewhich they marketed), itwas mannerin in class5(basedonthe distinction between variousgoods had taken itupon itselfto draw a mark,rather onlyof the partofit. overallconsidered the impression likelihood ofconfusion.Ithadnot coming to the itsdecisionconcerning when soldatapharmacy) those markZEBEXIR(such as under the would notbemarketed to public the somegoodsunderclass5 factthat the General the Courthadnotconsidered CJEU.the Statuteso, asperArticle36ofthe of mark, itmust give reasonsfor doing between certainelementsofatrade to drawis necessary adistinction Further, whereacourtdoesfeel it Second, as the General Second, asthe Court First, therefore, Isdinalleged that of that mark than individual components mark should beassessed, rather purposes the overall of confusion, consideringWhen amark for the February 2014 [email protected] is Legal Director for Pinsent Masons LLP Bent Rupert established within that class”. established that within ofgoodswhichithad each group for regard itsdecision with to General Courtto setout reasons “itwasincumbentonthe and that trade markapplicationatissue” directly] whicharecovered by the notmarketed5 [those to consumers class goods inthat regards other the suchanassessmentislackingas that The casehasyet to belisted. Generalthe Courtto bereconsidered. It was ruled that “itmust that beheld It wasruled 08/01/2014 16:49

29 CASE COMMENT 30-31 Jardibric.indd 30 30 O Water woes for tubesorpipingused for watering “junctions orconnections ofmetal, in respectofgoodsclasses6 (for applicationforupheld the invalidity distribution ofwater” in class 11. covering “apparatus for the (stylised) dated 7December 1998 registration for VAQUA FLOW on Aqua Center’s Spanishnational 17 and21. Theapplicationwasbased covered CTMinclasses6,11, by the CTMinrespectofgoods of the for adeclaration ofpartialinvalidity Center”) lodged anapplication Aqua Center EuropaSA(“Aqua 2001 andrenewed on17 May 2009. Registration wasgranted on6March valves andaccessoriesrelatingthereto. systems andinstallations, tubes, 11, 17 and21 for arange ofwatering alia,classes6, respect ofgoodsin,inter Community Trade Mark (CTM) in mark AQUA FLOW (stylised) asa Joanna Lucas Munce argument, explains sink theApplicant’s Delayed evidence helped The CancellationDivisionofOHIM On 12 May intervener, 2009,the for registration trade ofthe (“SFC”) fi led anapplication n 5May 1999, SFCJardibric 23 October 2013 T-417/12, SFC Jardibric vOHIM,CJEU,General Court, Center’s acquiescence. anyDivision with evidenceofAqua had failed to provide Cancellation the continuous periodoffive years. SFC CTM inSpainfor useofthe a in the ithad acquiesced basisthat on the CTM underArticle54(2)CTMR declaration ofinvaliditythe was prevented fromseekinga AquaSFC’s submissionthat Center Cancellation Divisionrejected CTMRegulation –CTMR). (the Regulation (EC)No 207/2009 Article8(1)(b)ofCouncil with under Article53(1)(a)inconjunction metal, for suchtubesandpiping…”) not ofmetal,valves, junctions,notof “flexible tubes,notofmetal,piping, of goodsinclass17 (for, alia, inter butrefuseditinrespect diffusers…”), below sprinklers,sprayers, ground, systems, mobileorfixed, above or and 21 (for, alia,“watering inter watering orirrigation installations”) 11ground”), (for “water supply, mobile orfixed, above orbelow or for water supply; watering systems, In reaching its decision, the In reachingitsdecision,the THE CONTESTED MARKS: itma.org.uk Aqua Center SFC Jardibric February 2014 08/01/2014 16:52 30-31 Jardibric.indd 31 itma.org.uk beginning of the cancellationaction. beginning ofthe on appealwere known to SFC atthe submitted before it for fi the rst time in fi facts and evidence the nding that taken into account. not argueagainst matter the being latethe submissiontakes placedoes stage the that of proceedings at which to outcome the ofproceedingsand material the isrelevant considers that facts andevidencefiled late whereit OHIM isjustified intakingaccountof contextthe ofinvalidityproceedings, disregard suchfactsorevidence.In CTMR, OHIMhasawidediscretionto remains possibleunderArticle76(2) parties to proceedingsbefore OHIM submission offactsandevidenceby late whilethe The Courtheldthat, Article 54(2) Article8(1)(b). conjunction with Articles54(2)and53(1)(a) in both Board ofAppeal’sdecisionunder The General Courtupheld the The General Court the marks underArticle8(1)(b). marks the likelihood ofconfusion between Division’s assessmentofthe Board confi Cancellation the rmed of Article54(2)CTMR.Further, the meaning acquiescence the within did notfulfi conditions of l the event, SFC’sstatements inthemselves evidence filed late by SFC.Inany equitable to take accountofthe itwasnot appealholdingthat the to Aqua Center by SFC. trade mark,includinginvoices sent aware AQUA ofitsusethe FLOW Aquaevidence that Center hadbeen BoardofAppealfor fithe the rst time appeal,SFC fisupport ofthe led before 8(1)(b) andArticle54(2)CTMR.In infringement ofArticle including the decisiononseveralthe grounds, In this case, the Board was correct Board wascorrect case,the In this SFC appealedto General the Court. The BoardofAppealdismissed SFC filed anoticeofappealagainst February 2014 in arange ofindustries,including IT, food anddrink, andretail. manages several international trade markportfolios for clients prosecution, registration andenforcement matters. Shealso Jo isexperienced indealingwithtrade markclearance, is aDirector atKeltie LLP. [email protected] Joanna LucasMunce Center: the fact that AquaCenter: factthat Center the had acquiescence partofAqua onthe were notsufficient for afi nding of byforward SFC,inthemselves, into proceedingsonappeal. the equitable to evidence admitthat proceedings.Assuch, it wasnot the of acquiescence outcome andthe of face ofit,wasrelevantto issue the evidence,onthe the conclude that questions madeitimpossible that to Center, gave this andthat riseto new relationship between SFCandAqua complexity commercial ofthe evidencedemonstratedthe the It wasalsorightto concludethat in Spain the use thereof it acquiesced in of the CTM orthat that itwasaware mark didnot mean Jardibric’s trade goods SFC under had purchased Aqua Center The fact that Moreover, argumentsput the possible stage. earliest argumentsatthe their known to partiesandrelevantto the all information anddocumentation and confi importance the rms offi ling and evidenceinproceedingsbefore it, matter late ofthe submissionoffacts ofOHIM’sapproachto the summary relevant public. before distinguish marks the the earlier mark,were sufficient to letter beginningofthe “V”atthe aswell presenceofthe marks, asthe differences inpresentationofthe rejected the SFC’sargumentsthat Unsurprisingly, marks. the Court the ofphoneticsimilaritybetweendegree conceptual similarityandahigh an average ofvisualand degree such goods. can befittings andsparepartsfor CTMinclasses6and21,by the which goodsspecifi goodsandthe those ed average ofsimilaritybetween degree isan there class,andthat in that were identicalto ofSFC’sCTM those Center’s earliertrade markinclass11 goodsdesignated the bythat Aqua confusion. existencethe ofalikelihood of infiof Appealhadbeencorrect nding The Courtconfi Board the that rmed Article 8(1)(b) in Spain. itacquiesced usethereof that inthe itwasaware CTMor that ofthe mark, AQUA FLOW, didnotmean purchased goodsunderSFC’strade The decisionprovides ahelpful Further, to itwascorrect find It wasrightto take view the 08/01/2014 16:52

31 CASE COMMENT 32_Bocacina.indd 32 32 O Bristol fashion would beany estoppel orabuseof at low cost. there Hedidnotseethat enterprises disputes inresolving their of assisting smallandmedium IPEC’soverridingthe objective approach wasinaccordancewith Enterprise this that Judge thought but to reserve itsposition.The claim to cover new incarnation, this new venture).who wasbehindthe Bistro Café”(itwasnotwholly clear premiseschanged toat those “Bica café trading nameofthe andthe 2013, fi the rst Defendant ceased a UKtrade mark.At somepointin registered as BISTRO CAFE BOCA Bocabar).They miles fromthe which isalsoinBristol (aboutthree inPortuguese),“mouth” in2012, a Portuguese (“Boca”means theme BocaBistro moreof the Café,with per year. TheDefendants started a turnover £1million ofmorethan 2005, inrecentyears ithasrecorded inBristol.and gallery Openedin successfulBocabar,the arestaurant The Claimant,Bocacina,runs Background for actualwitnesses. need the goods orservices,without consumer ordinary cases concerning view asto likelihood ofconfusionin will often beableto form itsown court the decision isareminderthat between two Bristol venues. The straightforward case passing-off (IPEC) issueditsfirst decision,a as NinaO’Sullivanreports a local trend incafé names, IPEC’s first case revealed Bocacina decidednotto amendits Property Enterprise Court constituted Intellectual n 14 October, newly the sitting asanEnterprise Judge), 14October 2013 Intellectual Property Enterprise Court (Daniel Alexander QC, Limited (2)Dercio deSouza Junior(3)Malgorzata deSouza, [2013] EWHC3090(IPEC), BocacinaLimited v(1)BocaCafes and enforcement andwrites regularly ontheseissues. Nina hasexpertise across allforms ofIPprotection [email protected] at King&Wood MallesonsSJ Berwin is aProfessional Lawyer Support intheIPdepartment Nina O’Sullivan of the other… or otherwise derived orotherwise other… of the oneisanextension sensethat “in the businesseswere the associated,think somewould inthat and RAJAMAMA of confusionbetween WAGAMAMA Justice Laddiehadfound alikelihood City CentreRestaurants [1995] FSR713. Judge noted, similarto Wagamama v services offered. Thecasewas,the typeoffood businesses, andthe and proximity names,the ofthe of the two businessesdueto similarity the wasaconnectionbetweenthere the would beconfusedinto that thinking asignifithat cant numberofpeople Bristol area. surrounding andthe itdidnotextendthough beyond goodwill, whichwassubstantial, Trade Act1994.the Marks was invalidundersection5(4)(a)of accordingly, Defendant’s the mark –and, Bistro Caféwaspassingoff Defendant’s nameBoca useofthe The Enterprise the Judge decidedthat Passing o have over use. permissible alleviate any may they concerns always apply for adeclaration to litigation; Defendants andthe could process ifBocacinabegan future Further, wasareallikelihood there requisiteBocacina hadthe support for the Court’s conclusions. support for Court’sconclusions. the evidence submitted provided suffi cient tested undercross-examination),the of confusion(andithadnotbeen wasonly limitedwhile there evidence samesource”.Further,from the their similarities businesses dueto between the two a connection that there was into thinking would beconfused ofnumber people a significant likelihood that There wasareal so in several of those other cases. so inseveral cases. other ofthose dispute, a settlementofthe ithasdone case,itdidnotleadto while, inthis opinions infi ve PCC; orsixcasesinthe indicated hehadgiven that such settlement. At arecentseminar, BirssJ tools to reducecosts andpromote early 2012, Court’s anditisoneofthe he hadinstigated practice this in Patentsthe CountyCourt(PCC)Judge, claimwaslikely the that to succeed.As non-bindingindication a preliminary to Defendants given whichthe agreed) was) had(following Bocacina’srequest, His HonourJudge BirssQC(ashethen case-managementAt stage, the Early opinion itma.org.uk February 2014 08/01/2014 16:56 33_Powell2.indd 33 Wishful thinking itma.org.uk 1) The Signswere not identicalandthe claiming that: The Defendant deniedinfringement Signs”). wishboneash.co.uk (“the domainname Wishbone Ashandthe – relatingto useofMartinTurner’s CTMRegulation (CTMR) 207/2009 –the (c) ofCouncilRegulation (EC)No pursuant to Articles9(1)(a),(b)and CTM claiming infringement ofthe The Claimantissuedproceedings Claim andcounterclaim moniker, writes Katy Cullen unable to use avenerable rock The Defendant wasdeemed Wishbone Ash. bandMartinTurner’s formed the a related website. Hesubsequently wishboneash.co.uk andestablished registered domainname the Community Trade Mark (CTM). to register WISHBONEASHasa letter useceased. andthe Claimant issuedacease-and-desist a bandin1983. time,the At that ex-guitaristthe Ted formed Turner Ash, save for abriefperiodwhen attempt to nameWishbone usethe The departingmembersdidnot only originalmemberremaining. and by 1994 Claimant wasthe the ownership name. ofthe bandregarding membersofthe the madebetweenwas noagreement many era, with bandsofthe there T In the sameyear,In the Defendant the In 1998, Claimantapplied the The line-upchanged over time any likelihood ofconfusion. use ofMARTIN TURNERdispelled formed in1969. Incommon Wishbone Ash,whichwas he caseinvolved band the February 2014 Court, 24 October 2013 Turner, Intellectual Property Enterprise [2013] EWHC3242 (IPEC), Powell v Ash name. Wishbone goodwillinthe in the 4) 3) 2) he was the “lasthe wasthe manstanding”, but name.Thiswasnotsimplythe because soleowner goodwillin was the ofthe The CTMwastherefore valid. to prevent Claimant’suse. the sought namenorhadthey under the not appearinterested inperforming The remainingoriginalmembersdid only partyusingWishboneAsh. the CTM wasfi Claimantwas led, the Articles 9(1)(b)and(c)CTMR. infringement under hadoccurred CTMwasvalid and It washeldthe Decision Katy Cullen [email protected] Attorney withWalker MorrisLLP is anAssociate Solicitor andRegistered Trade Mark The Defendant alsoclaimedashare As to goodwill,in1998 Claimant the Regarding whenthe badfaith, use permitted by Article information andwas honestdescriptive The website contained factual distinctive character oftheCTM. There was nodetrimentto the that hewas entitledto doso. name withoutany reasonable belief when hefiled theCTM inhissole of acceptable commercial behaviour dishonest orfellofthestandards short 52(1)(b) CTMR. The Claimant was grounds ofbadfaith underArticle The CTM shouldberevoked on 12(b) CTMR. Walker for acted theClaimant Morris longrun. uncertainty inthe position couldsave expenseand sour, clarifyingthe anagreement collaborations, relationships ifthose ofartistic antithesis might seemthe legalbands. Although agreements duecause. without competing usewould causedetriment Defendant’s a reputationandthe likelihood ofconfusion.TheCTMhad or nomeaninganddidnotprevent the qualifi hadlittle er “MartinTurner’s” or itschangingline-ups.Therefore, the knowledge WishboneAshband ofthe The average consumerdidnothave similar andwere for identicalservices. Signswere werethe notidentical,they Claimant’s exclusive use. ownership hadacquiesced to the contendersbecause allother for of confusion the likelihood did not prevent or nomeaning and qualifi hadlittleer therefore, the identical services… and were for they were similar were not identical, Although the Signs This is a salutary talefor music This isasalutary In assessinginfringement, although 08/01/2014 17:00

33 CASE COMMENT 34-35_ZYNGA.indd 34 34 C-273/00) ofwhat amountsto asign Sieckmanncriteriaapplied the (case Civ1174).EWCA judgments Both Nestlé UK Limited SA v Cadbury [2013] colour purple(SociétédesProduits UKregistrationCadbury’s for the of previousdecisionsto cancel CourtofAppealreversalbeing the two separate other judgments;the This wasaconjoinedappealagainst Background writes Laura Mackenzie distinctiveness wasnot palatable, The “Paella approach” to Trade Mark(CTM)applicationform. limitation onaUKorCommunity amarkdescriptionor in drafting importancethe ofexercising caution Directive). Thiscaseisareminderof 2008/95/EC of22October 2008(the European Trade Directive Marks compliance Article2ofthe with its tilemarkwasinvalidfor non- T High Court’s decision that High Court’sdecisionthat Mattel’s appealagainst the he CourtofAppealdismissed 3 Court ofAppeal,4October 2013 Mattel IncandMattel UKLimited vZynga Inc, [2013] EWCA Civ 1175, JWSpear&SonsLimited, on this counterclaim,on this whichwas 2012 judgment applied for summary TileMarkandon26Octoberof the Zynga counterclaimed for revocation WITH FRIENDSgame. Inresponse, TileMarkinitsSCRAMBLE of the Zynga Inc(“Zynga”) for infringement board games). and exhibitions,allrelatingto and 41 (organisation ofcompetitions of boardgames), 28(boardgames) classes 9(computer game adaptations no 2154349 for goodsandservicesin trade mark(“TileMark”)–registration validityofMattel’sthe SCRABBLE competitors to know whatiscovered. registrarobjectivity for the both and self-containment, durability and have required the clarity, precision, signmust representationofthe the so asto beregistrable: namely that capable ofgraphical representation Mattel originally claimedagainst This caserelates to achallenge to bringing usto presentdecision. the Article2.Mattelwith appealed, Tile Markinvalidfor non-compliance Mr Justice whodeclaredthe Arnold, granted on28November 2012 by not meet these requirements as the requirementsnot meetthese asthe of Trade [2007]ECRI-687). Marks undertakings, asinDysonvRegistrar ofother undertaking fromthose goodsorservicesofone the sign must becapableofdistinguishing the conditionbeingthat third (the is capableof“graphic representation” sign “sign” andrequirement the that were satisfi requirement ed: the ofa fithe rst two conditionsofArticle2 indeterminingwas irrelevant whether Mattel hadintended to prove attrial) distinctiveness TileMark(which ofthe wrong to the decidesummarily that Jhadbeen Mattel Arnold arguedthat Arguments onappeal Zynga TileMarkdid the arguedthat itma.org.uk February 2014 08/01/2014 17:03 34-35_ZYNGA.indd 35 was claimed in the subjectmatter was claimedinthe of entiretyofwhat did notcapture the graphical representation which the sign. Dysonwasdescribedasacase in different forms isuncertainandnota of beingrepresented inavarietyof any iscapable deciding that markthat which, itargued,didnotgoasfar as agreed. Sir JohnMummery to assessingdistinctiveness. stages order, andinthat prior must bedecidedseparately, in fi the Article 2;thus, rst two conditions so-called “paellaapproach”to previouscaselawthe rejected this is. Zynga, however, arguedthat know whatitsdistinctive character to signyou determine the must first so independently ofoneanother; are interrelated andcannotbeviewed requirements three ofArticle2 the to mark’sdistinctive the character. reference of precisionwithout appropriate determine the degree Therefore, itisimpossible to in itsgraphical representation. variation ofpermissible degree forand that any isa markthere itself anditsdistinctive character, of atrade mark markdependsonthe precision required for registration assessmentofArticle2. the relevance ofdistinctiveness in usualwayin the to determine the case shouldbeallowed to goto trial the judgment;itargued that of the nature Mattel summary wasthe (see illustration, below left). orbenon-distinctive marks third-party of whichwould clearly overlap with a widerange some ofpermutations, description mightbeemployed across ways TileMark of the inwhichthe Zynga providedSCRABBLE. examples trade for marks game tilesusedin Mattel alreadyhasthree-dimensional somewhere onitsupperface. alettersize with andanumeral dimensional tileofindeterminate three- concept ofanivory-coloured representations –effectively the a patent, acrossalarge varietyof mark,muchlikemonopoly ofthe registration soughtto extend the itma.org.uk Mattel soughtto distinguish Dyson, Further, Mattel arguedthat of degree the It alsoarguedthat A key focus appealfor ofthe February 2014 Laura Mackenzie designs andpatents. Laura specialises intrade marks, copyright, [email protected] is anIPSolicitor atBrowne Jacobson it isdistinctive onitsown whatever to aninstance ofclass,because and self-contained,asopposed isprecise,intelligible sign that word register markonthe isasingle Zynga, however, observed a that layout andcombinationsofeach). of ways (ieasto typeface,size,colour, represented inaninfinite number be cantheoretically but that word forming isrecognised, the that sequenceresides inthe ofletters word distinctiveness mark,wherethe numeral arepresented. no example ofhow letter the andthe TileMark gaverepresentation ofthe Dyson, asthe was moreextremethan Zynga, however, case this arguedthat classcompletely.which capturedthe graphic representation, scope ofthe did notcover anything outsidethe TileMarkrepresentation argued, the case, Mattel class); whereasinthis represented didnotcapturethe that application(only examplesthe were are presented and the numeral of howthe letter gave noexample of the Tile Mark representation asthe Dyson, extreme than was more that this case Zynga argued Mattel gave example the ofa

letters andnumbersinvolved. different be madebecauseofthe registration ofaseriescouldnot registration. Here,however, way,in that eachbeingaseparate of upto may sixmarks bemade tradeof the mark.Registrations substantially identity affecting the non-distinctive character not and differ only asto matters of astoone another material particulars resemble “series oftrade that marks” governing representationofa the 41 Trade Act1994, ofthe Marks reference to provisions the ofsection submission wassupported by representationofit.This the emphasis ornot. you intended itto begiven this as graphically represented, whether scopeofanapplicant’smark the willbeusedindefiform, asthis ning UK trade markorCTMapplication description orlimitationona mark their cautious indrafting applicants shouldbeparticularly purple”case, “Cadbury the decisionin concurrent the decision,and In lightofthis Comment precision andobjectivity. requirements metthe ofclarity,that secondconditionofArticle2 by the representation ofasignasrequired registrations.of the subjectmatter ofthe permutations many signsachieved by numerous by Article2andpotentially covers was notasingle“sign”asrequired by him. stated by himto factsfound the law Jhadmisappliedthe Arnold that of Appealrejected Mattel’s criticism Court The appealwasdismissed;the Decision Further, wasnographic there It reiterated TileMark the that 08/01/2014 17:03

35 CASE COMMENT 36-37_Lonsdale.indd 36 36 1994 (TMA). of section5(3)Trade Act Marks basis mark applicationonthe opposition against MrErol’strade Officer’s decisionto reject its class 25 (the “Mark”). class 25(the andrelatedof clothing items in for registration of amarkfor articles Erol filed aUKtrade markapplication Background J (“Lonsdale”) against Hearing the appeal by Lonsdale SportsLimited ustice Norris recently allowed an Limited vErol, HighCourt, 4October 2013 [2013] EWHC2956 (Pat), Lonsdale Sports Look-a-like lesson that willinterest those representing Nick Boydell takes note of acase being the 554 Mark and the 127 554 Markandthe Mark. being the represented Lonsdale’sstrongest case, opposition, whichinherview on whichLonsdalehadbasedits Officer selected two marks ofthe Hearing reaching herdecision,the Offi cer rejected opposition.In the 935Mark. and the 127 554Mark,the Mark class 25:the allregisteredmarks, for goodsin basisofvarious 5(3) TMAonthe under section5(2)(b)TMAand On 27 February 2013, On 27February Hearing the The Markwasopposedby Lonsdale famous faces The Erol mark THE CONTESTED MARKS: confusion between them. was nolikelihoodand there of outweighedmarks any similarities However, differences between the the 127between Markandthe Mark. the ofvisualsimilarity was adegree HearingOffithe cer found there that opposition undersection5(2)(b) TMA, regarditself”. With to Lonsdale’s word Lonsdaleandnot“asof the been usedinconjunctionwith ithadonly basisthat 554 Markonthe hadbeennogenuine useofthe there The HearingOffice found that “554 Mark” marks The Lonsdale itma.org.uk “935 Mark” “127 Mark” February 2014 08/01/2014 17:06 36-37_Lonsdale.indd 37 itma.org.uk and of itself”. Norris J considered the and ofitself”.Norris Jconsideredthe wasnouse“as there basisthat the 554Markon no genuine useofthe inlawerred infi was there nding that Hearing Offer had the Lonsdale that elongated “L”. with Norris Jagreed itislook-a-like that think branding. is fromLonsdale.Instead will they product the be undernoillusionthat averagedecision, the consumerwill purchasing but, whenmakingthe onaLonsdaleproduct, something first glanceappearto besimilarto wordthe “London”. Thetext may at bears of anitem that ofclothing likely to beconfusedasto origin the word arenot the “Lonsdale”, they becauseitdistinctivelyclothing bears sinceconsumersknow that Lonsdale likelihood ofconfusion.Norris Jstated outcome regardnot affect the with to However, did Norris Jfound this that dominant feature Mark. ofthe word the “London”,whichisthe in particularbecauseitcontained Lonsdale’s opposition.Thiswas to take into accountwhenassessing bestthe caseselectionofmarks 935Markshouldhavethe beenamong Lonsdalethat with Norris Jagreed Findings ofNorrisJ • • • • followingon the basis: HearingOffiof the cer, including decision Lonsdale appealedthe High Court appeal be diminished by the Mark. be diminishedby the distinguish Lonsdale’s goodswould for Lonsdale’sregistered to marks wasnoreasonwhy capacity there the gain fromhisregistration; andthat unclear whatadvantage Erolwould HearingOffithe cer found itwas that opposition undersection5(3)TMA, The HearingO cer was wrong to The HearingO cer erred infi nding The HearingO cer was wrong to fi nd The HearingO cer erred inselecting given any grounds for thisdecision. advantage gained by Erol, andhadnot conclude thatthere hadbeennounfair that elementwas notdistinctive. dominant elementoftheMark,since that theword “London” was the not beenused“as andofitself”. the 554Markonbasisthatithad that there hadbeennogenuine useof the marks selected. was unableto address thetribunalon considered the935 Mark;andLonsdale for consideration, andshouldhave only the554Markand127 Mark The 554Markrepresented an With regardWith to Lonsdale’s February 2014 focus ontrade marks andbrand management. Nick works onawiderange ofIPmatters, withaparticular [email protected] is aSolicitor atBird & Bird Nick Boydell it isdistinctive. ornot can bedominantwhether Erol’s contention “London” that rejected argument,andaccepted this was notdistinctive. However, Norris J HearingOffithe element this cer that Mark,sinceitwasacceptedof the by dominantelement “London” wasthe Hearing Offi inficer erred nding that signs, Lonsdalesubmitted the that actual outcome.did notaffect the HearingOffithe this cer had erred, elongated “L”. Therefore, although products simply becauseofusethe perceive Lonsdaleasassociated with consumers wouldno evidencethat to 554Mark,andinparticular the particular distinctiveness attached Norris Jfound noevidenceofany perceived asbeingindicative oforigin. use to begenuine use,itmust still be used “asandofitself”.However, for ithadbeen basisthat 554 Markonthe prevent Lonsdale fromrelying onthe registered,another to it wasincorrect a separate markinconjunctionwith a registered useof mark,andfromthe from useaspartoforacomponent of character canbeacquired both registration. Sinceadistinctive has beengenuinely usedfollowing amark use whenassessingwhether criteria sameasthe foris the fi nding distinctiveness priorto registration finding usegivingriseto acquired criteria the for heldthat authorities Holding AG [2013] ETMR34.The [2005] ETMR96andinColloseum EuropeanUnionthe inNestlé vMars CourtofJustice judgments ofthe of With regardWith to comparison the of brand, woulddilutebrand, that brand rather a nity with the Lonsdale proclaim distinctiveness, but circulation products that donot Norris Jheld that putting into assessment oflikelihood ofconfusion. of atrade markwhenperforming the dominantcomponentcannot bethe it doesnotmeanthat mark sense,this trade markisnotdistinctive inatrade whereanelementofa mark; andthat, as component registered ofanother shown ofamarkeven whereitisused genuine usecanbe is areminderthat under section5(3)TMA.Inaddition,it infringement actionmay succeed like products,anoppositionor a famousbrand’s andlook-a- marks a likelihood of confusionbetween courtsmaythe beunwillingto fi nd representing famousbrands. While be particularly usefulfor those to look-a-like will productsthat demonstration court’s approach of the The caseisaninteresting Demonstration appeal undersection5(3)TMA. brand.that brand, would undoubtedly dilute but rather affi Lonsdale the nity with donotproclaimdistinctiveness,that puttinginto that circulationproducts reputation. Inaddition,Norris Jheld to coattailsofLonsdale’s rideonthe wasaclearintention there itself that Mark faceofthe was plainfromthe it Lonsdale’ssubmissionthat with case ofduecause.Norris Jagreed Erolhadadvancedno Furthermore, MarkandLonsdale’smarks. the into account,alinkexisted between in Intel Corporation [2009]RPC15 factors takingthe Norris Jheldthat, Norris Jtherefore allowed Lonsdale’s In relationto section5(3)TMA, 08/01/2014 17:07

37 CASE COMMENT 38-39_Nominet.indd 38 38 M&E marks itsterritory is anabusive registration. respondent, handsofthe name, inthe domain domain name;andb)the isidenticalorsimilar tothat the rights inrespectofanameormark a)ithas balance ofprobabilitiesthat: requires acomplainant to show onthe valueinM&Ebrands.capitalise onthe any attempts by cybersquatters to how DRScanbeusedto the counter M&E brands may betargeted, and article demonstrates ways inwhich entertainment (“M&E”)sector. This brand owners mediaand inthe unsuccessful. Allwere broughtby successful, one decisions: three nor itsweak submissions saved it. HMVbrand,terms alongsidethe Respondent’s useofgenericthe Complainant wassuccessful–neither to abusive registrations, the on how domainsamounted the evidence provided to Expert the goodsubmissionsand and with registered andunregistered rights, awell-pleadedWith caseonits Respondent.domains by the opportunistic registration ofthe sought to take actionagainst the later acquired HMVchain,rightly the HMV entered into administration. much-lovedon whichthe retailer 15 2013, January samedate the registered Respondent by on the Thesewerehmv-shop.co.uk. and names hmv-go-online.co.uk domain the GEECOM concerned Palm GreenCapitalLimited v Delay pointdismissed the common threat of cybersquatters that show howrights owners are taking on Chris Hawkes reviews recent DRSdecisions T In summary, the DRS policy In summary, DRSpolicy the Palm GreenCapitalLimited, which (DRS) complaints full with four Dispute Resolution Service his articlebriefly summarises DRS 13271, Safepay MaltaLimited vCharity King,13November 2013 2013; DRS13310,BritishTelecommunications plcvMrQureshi, 18November 2013; World Wrestling IncvOversee Entertainment, DomainManagement, LLC, 24 October DRS 13248, Palm Green CapitalLimited vGEECOM, 9October 2013; DRS13280,

accepted Expert. by the wweshop.com. Theserights were trade anditsownership marks, of particular itsWWEandWWESHOP and domainnames)inWWE, companymarks, name,trade name complaint onrightsitowns (trade Dancemusicduo). German beingafamous (ItaloBrothers brand 4Music),andItaloBrothers.net com (reminiscentofChannel4’s Respondent isregistrant of4Musiic. the timeofwritingthat at the brands, itisinteresting to note itdoesnot target its responsethat itclaimed in domains. Although – itowns approximately 397,000 of massregistration ofdomainnames its own business admission)inthe of around$768 million. impressive market capitalisation Stock Exchange andenjoys an is publicly traded New onthe York Wrestling Entertainment –which leading wrestling brand –World wweshop.co.uk. domainname the concerned Inc vOversee Domain Management World Wrestling Entertainment, successSport DRS 8634,Emirates vToth). endofparaExpert atthe 6(citing DRS complaint wasprovided by the (unreasonable delay) may apply ina how equitable the doctrineoflaches a briefbutusefuldiscussionon Expert, point wasdismissedby the this DRS.Although bringing the Complainant’swas the delay in Respondent didraise, however, The Complainant basedits caseis(of The Respondent inthis acronym world’sWWE isthe ofthe One interesting pointthe after the launchofBTTV. after the domainnamesfour ofthe days three in May 2013. The Respondent registered umbrella brand BTTV, whichlaunched and arenow incorporated underthe publicised by BTfromaround2006, haveare offerings that beenwell 23 July 1998). BTVISIONandSPORT [1998]and others Civ1272, EWCA vOneInAMillionLimited and others case (BritishTelecommunications plc involved “OneInaMillion” inthe domain nameproceedings,being brands UK,isnostranger inthe to btvisionhd.co.uk btvhd.co.uk and btsporthd.co.uk, domain names:btivision.co.uk, severalv MrQureshiconcerned British Telecommunications (BT) plc Beaten by BT reflectedthe Expert’scleardecision. in amounted to beingabusive. Thiswas on how Respondent’s registration the DRStestlimbs ofthe andinparticular and concisesubmissionsonboth DRS policy. criteria undersection3aofthe to abusive satisfythe registration made falserepresentationssufficient caused initialinterest confusion,and Respondent’s registration the that (seiko-shop.co.uk), Expertfound the inkjet-cartidge.co.uk) andDRS248 successful. CitingDRS3027(epson- and misleadingcontent. click site, andfor itsunauthorised maythat containads)andpay-per- “parking site” (aplace-holderpage website’sits corresponding useofa registration wasabusive, aliafor inter BT, most possibly oneofthe famous The Complainant clear madevery Ultimately Complainant the was The Complainant stated domain the itma.org.uk February 2014

08/01/2014 17:10 38-39_Nominet.indd 39 itma.org.uk thought, be moresuitably satisfithought, ed. DRStestthe couldnotperhaps,atfirst classes 9,41 fi and42),the rst limbof 28, 35,38,41) (CTMin andBETSAFE 35, “betsafe.com” (CTMinclasses9, Trade Mark(CTM)“betsafe” inclass trade markrightsinCommunity Complainant owning registered be easytargets. how M&Esector bignamesinthe can co.uk. Again, decisionhighlights this domainnamebetsafe. the concerns Safepay MaltaLimited vCharityKing Evidence issue given Complainant’s the reputation. for registrations the to belegitimate too acoincidence great was otherwise case–it be expected factsofthe onthe Respondent’s responsefailed,aswould stood for “HOLIDAY DESTINATION”,the acronym HD of“BIGTIME” andthat entertaining BTwasan claimsthat cybersquatting be exposed to profi willlikely le, their high public brands, given entertainment that media and These cases show On this occasion, with the the occasion,with On this Despite Respondent’s somewhat the February 2014 Chris Hawkes prosecution andenforcement work. copyright and onlineIPissues, andleads acquisition, Chris advises on abroad range oftrade mark,design, [email protected] is aSolicitor atStobbs IP asserted Registered CTMs. earliest Complainant’sthe ofthe domainregistrationthe predated as evidencewasnecessary, given test,limbs ofthe andparticularly evidenceonboth Expertwith the Complainantthe didnotfurnish Registered rightsposition. strongnotwithstanding the in favour Respondent, ofthe to decision went expectation,the was insuffi contrary cient, thus, asserting trade markrightsalone occasion, proceedings. Onthis outset ofDRS and evidenceatthe allpertinentinformation with needtothe provide DRSExperts The Complaint failedbecause However, casehighlights this parties to take advantage ofthem. to counter –any attempts by third to alertitto tools which –andthe with and have inplace checks allnecessary should ensureitsbrands areprotected a change oradditionto itsbrand(s) launching anew brand orsub-brand. any transition ortransaction, orwhen cybersquatting whengoingthrough profile, willlikely be exposedto brands, given highpublic their These casesshow M&E that Exposed position 6.4 to 6.6. Expert’s DRSdecisionatparagraphs what canandcannotform partofan Therefore, any company considering The Expertgave usefulguidanceon 08/01/2014 17:10

39 CASE COMMENT 40_Cardiff Airport.indd 40 40 I Air pair principle of equal treatment, as other principle ofequal treatment,asother hadbeenabreachofthe there that Applicantswere byforward the services. of the geographical originordestination seen asmerely anindicationofthe arelikelysuch services,asthey to be also non-distinctive) inrelation to descriptive areboth (andthus marks first instance, the wasessentially that HearingOffiwas upheldby the cer at parking services.Theobjection,which including taxiservicesandcar and travel-related servicesinclass39, 1994 asregards varioustransport Trade Act section 3(1)(c)ofthe Marks were raised undersection3(1)(b)and servicescovered,of the objections registrable inrelationto majority the sameservices. the INTERNATIONAL AIRPORT, covering an applicationfor markBELFAST the International AirportLimited fi led sameday,43, and45.Onthe Belfast services inclasses35,36,37, 38,39,42, AIRPORT,CARDIFF covering arange of trade markapplicationfor mark the International AirportLimited fi led a legalguidance –rather than rule. IPO’s practice guidanceis just – that UK the of new applications,andthat registrabilitywhen consideringthe Registerof the islargely irrelevant statePerson, the remindsusthat Appointed Annand, sittingasthe Patricia Collis major UKairports, explains Arguments didn’t fly for two The main grounds of appeal put ofappealput The maingrounds were marks deemed While both 2011,In February Cardiff two UKairports,Professor Ruth applications for namesof the n acaseinvolving trade mark Appointed Person RuthAnnand,17September 2013 No 2573142 by Belfast Limited, UKIPO, International Airport Limited andinthematterInternational ofApplication Airport O/386/13, Inthematter ofApplicationNo2573146 by Cardi across arange ofindustries. to contentious andnon-contentious trade markmatters Patricia specialisesinproviding strategic advice inrelation [email protected] is aTrade MarkAttorney atBristows LLP Patricia Collis drawn practice inthe guidancewas line the whether concluded that, Appointedairport names,the Person did notcontainany legal error. equal treatmentpoint.Thisapproach own merits,andhadconsideredthe applied for marks onits each ofthe HearingOffithe cer hadexamined ofappeal,shepointedground outthat practice. current Indismissing this the examined before introduction of the itmaymeant that have been application timingofthe fourth, the considerations applied,and, for the different distinctivenessmeant that inclusion ofadditionalmatter the marks, for ofthese that, three services inquestion. Shecommented hadbeenaccepted that formarks the examplesthe raised ofairport Appointedthe Person considered of airportnames. not acceptablefor consisting marks werewere that acceptableandothers between certainclass39servicesthat Officer, distinction drew anarbitrary had beenfollowed Hearing by the Registrar’s Practice Guidelines,which servicesinquestion,the the andthat hadbeenacceptedairport marks for Considering the practiceConsidering the asregards As regards equal treatment,

relation to servicesinquestion. the encounter registrability objectionsin more easily, andarelesslikely to to achieve commercialaimmuch this registered astrade arelikely marks, are well marketed to consumersand Offi cial logosfor airports,which the descriptively services. inoffering their from referring to airportnames the would nothave prevented such parties Registrations for word the marks who operate servingairports. carparks consumers to andfromairports, parties whooffer servicesto transport aim. Therewillalways be“unoffi cial” have madeiteasierto pursuethis registrations for word the would marks questionable obtaining whether understandable consideration, itis isan airports.While this serving the unoffi cial services,suchascarparks confusion between offi cial and in question wasto prevent consumer had soughtprotection for services the Applicants reasonsthe One ofthe Comment was therefore also dismissed. was therefore alsodismissed. servicesinquestion.the Thisground are actually registrable inrelationto marks the issueofwhether affect the ornot,itdidnotultimatelyarbitrary itma.org.uk February 2014 08/01/2014 17:13 41_ITMA_Events.indd 41 29 April 19 March 20 May 18 November 28 October September 25 September 23-26 23 September 22 July 19 July 24 June INTA 136th 10-14 May 20 March 19-21 March 18 February Date More detailscanbefound atitma.org.uk Evening Meeting ITMA London Conference Marques Annual Event Trainees’ Ball Intellectual Property Reception** ITMA Drinks Evening Meeting ITMA London Evening Meeting ITMA London Seminar* ITMA Autumn Evening Meeting ITMA London Evening Meeting ITMA London Evening Meeting ITMA London Evening Meeting ITMA London Annual Meeting ITMA GalaDinner** Conference** ITMA Spring Jon LangMediation Ltd andJonLang, Michael Cover ADR by MichaelCover, Methods inIPDisputes Modern Mediation Evening Meeting ITMA London

Surgeons, London Royal College of TBC London TBC Location London Westminster, Conference Centre, Church House Surgeons, London Royal College of Surgeons, London Royal College of Surgeons, London Royal College of Birmingham Hyatt Regency, Copenhagen Surgeons, London Royal College of Surgeons, London Royal College of Surgeons, London Royal College of Surgeons, London Royal College of Hong Kong Street, London One Great George 1 1 1 1 1 1 1 1 CPD hours ** Goldsponsor *Kindly sponsored by annual GalaDinneron20March George Street willhostour The Great HallatOneGreat 08/01/2014 17:16

41 EVENTS 42_ITMA_Media Watch.indd 42 42 MEDIA WATCH from FARM Africaandone Back, “A goatisfor life…” for life…” fromSproutsBite slogan, suchas“Sproutsare DogsTrust built aroundthe enjoyed slogans someofthe minds.” Iparticularly helpsitstickthat inpeople’s about initially, butIthink Ithought not something and easily customisable – said: “It’s simple, memorable slogan, the came upwith was headofPRwhenshe many times.Baldwin, who slogan hasbeencopiedso as acompliment the that owners, charitytakes the it to change this.” We arecontinually seeking dogs. also apparentwith sameperceptionis the wears Unfortunately, off. Christmas novelty whenthe afewthem weeks after market, only to discard latest fadortop toy onthe of childrenpleadfor the year hundredsofthousands ortoys. dogs asgifts Every consequences the oftreating aims to raise awareness of longstanding campaign is still asrelevanttoday. The Chief Executive, in1978 but created by ClarissaBaldwin, on itswebsite: followingby includingthe ago, celebrated occasion the phrase the 35years up with The DogsTrust, which came life, notjust for Christmas.” saying,of the “A dogisfor tale to report. beginthis break, Ipicked outafestive winter reminder ofthe However,marks. asa stories trade concerning T Unlike many trade mark “Our famousslogan was Many ofyou willbeaware period for news was arelatively quiet he holiday season quickly...” Thismeansthat atit when onelooks word the isScrabble that logo “gives impression the curly letter Zynga Minthe the that logos. Heruled confusion between the wasalikelihood there of names, butconsideredthat confusion between two the wasno there that ruled mark. MrJustice Peter Smith trade infringes itsSCRABBLE WITHFRIENDS SCRAMBLE Zynga’sCourt claimingthat Mattel went to High the trade mark. SCRABBLE Mattel, whichowns the company calledZynga and disputethe between a quite abitofcoverage was attractedone story that givingofpresents, and the for life…” Eachto own! their has mebaffled –“A rabbit is from AnnSummers,which Staying festivities the with rather than on the streets. streets. onthe rather than courtroom settled inthe matter Let’s hopethe is headsymbols. to death the “confusingly similar” shirts andvests are that making andsellinghats, store Dillard’s, whichis department line andthe Young Jeezy’s8732Apparel taken actionagainst rapper and patch. HellsAngels has head winged-skull logo trade for death marks the Sunday : HellsAngels’ US attention Mailon the ofthe attracted story that another it intended to appeal. against andsaid ruling the expressed disappointment a spokesperson for Mattel comment fromZynga, but co.uk wasunableto get any name itself.Manchesterwire. game’sthe logo,butnotthe Zynga willhave to change Logos alsofeatured in Ken Storey’s latest news review Deep winter is cheered upby Media Watch ILLUSTRATION BY PHILLIPCOUZENS this media report. media report. this which towith signoff business.” Anaptmessage be crucially important to effective IPstrategy can an early stage. Having an it pays to get experthelpat toolsthese make it clear that commercialvalueofIP,the saying “Byfocusing that: on Younger inENFor Business , was quoted alongsideLord WolfePresident Catherine protected by IPrights.ITMA couldbe identify assetsthat intended to helpbusinesses toolkit, IPEquip, whichis recently launcheditsnew bear diedin2011. Knudthe factthat the but omitted to mention judgment detailofthe the setout Journal Solicitors reared by keepers. The itwasbeinghand- that fact andthe by itsmother bear abandonment ofthe andsubsequent birth the much publicityfollowing in 2006.Therehadbeen in captivityofapolarbear dolls, following birth the games,books, toys and a CTMfor goodsincluding which ithadregistered as similar to name“Knud”, the itwastoo that grounds Berlin Zooobjected onthe mark “Knut-derEisbär”. IP Management for atrade (CTM) applicationfromKnut Community Trade Mark which hadobjected to a forin avictory BerlinZoo, resulted Union that ruling Justice European ofthe reported onaCourtof Journal tail. TheSolicitors atwistcomes with inthe story. But,sadly, one this setting. – probably ineither I know whoIwould back Finally, UKIPO the And soto amorecuddly itma.org.uk February 2014

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