CITMA REVIEW Inside CITMA UNDERSTANDING THE AUTISM SPECTRUM p MARCH/APRIL MARCH/APRIL FORMAT RIGHTS LAW p ARGUMENTS FOR ADR p REVIEWISSUE MARCH/APRIL Signs of change Why it could be a landmark year for the protection of traditional cultural expressions Marion Heathcote p10 citma.org.uk 001_CITMA_MARCH/APRIL17_COVER.indd 4 23/02/2017 16:06 DpOBC_ITMA_Mar_17.indd Ahuja_CITMA_Mar_17.indd 1 1 15/02/201716/02/2017 16:5811:18 We’re in Good Company Look who trusts CompuMark to help protect their valuable brands. Bottom line, they trust us because we deliver for them. compumark.com 001_CITMA_MARCH/APRIL17_COVER.indd 5 23/02/2017 16:07 IFC_ITMA_Mar_17.indd 1 16/02/2017 11:17 WELCOME MARCH/APRIL Inside this issue Regulars Case comments CITMA Insider New IP minister EWHC Ch Irish representation update and more George Sevier counsels caution his year is shaping up to be Events Essential diary dates on keyword ad strategy as busy and exciting as the TM For Becky Knott all that’s EWHC IPEC last with negotiations missing is kittens Ben Evans considers who owns ongoing with the UK IPO the goodwill in a surname Tand UK Government on the IP landscape O// Maya Muchemwa postBrexit a formal CITMA delegation to Features warns that revocation dates must WIPO in Geneva and the imminent user serve the purpose of the objective group meeting with EUIPO in Alicante Moot hearing Jade MacIntyre O// Sharon Daboul We continue to emphasise CITMA summarises the lively arguments made off ers an update on a familiar members’ important contribution to IP during an educational afternoon even infamous trade mark decision in the UK and the need for early certainty Middle East As offi cial fee increases O// Désirée Fields reports on the law and rights of representation begin to bite Jon Parker suggests on why two parties share the rights However this edition of the CITMA Review an alternative route to securing in respect of a disputed mark highlights the breadth of other issues that rights in the region O// Charlotte Wilding occupy members with discussions on Industry issue Why this year condenses a complex television tangle traditional cultural expressions and could be a big one for the protection C/ Jessica Wolff welcomes format rights as well as practicerelated of traditional cultural expressions confi rmation of a fi veyear grace articles on fees CVs and mediation by Marion Heathcote period for genuine use IP Inclusive is a key focus for us this Inclusion Alison Madgwick T/ Tom Coop explains year I therefore very much welcome provides a clearer picture of why time was called on Go Sport the article from Alison Madgwick on what it takes to support a T/ Previous decisions held supporting neuroatypical colleagues neuroatypical colleague no sway writes Rachel Hearson I look forward to seeing many Entertainment Mark Cruickshank T/ Has the bar for of you at our Spring Conference highlights the soggy state of format establishing acquired distinctiveness another opportunity to catch up on rights case law moved up? Katie Goulding awaits the varied topics that make up the Mediation Why our UK and EU the answer day of a CITMA member experts think it is good to talk T/ & T/ EUIPO was Development Your CV still overturned on a pharmaceutical mark matters confi rms Bob Boad reports David Yeomans Kate O’Rourke CITMA President CITMA contacts Law & Practice Imogen Wiseman Account Manager Kieran Paul The views expressed in the articles General enquiries imogenitma@clevelandIPcom Art Director George Walker in the CITMA Review and at any CITMA CITMA th Floor Outer Temple Publications & Communications Designer Alix Thomazi talk or event are personal to the Strand London WCR BA Richard Hayward richard@citmaorguk Senior Subeditor Mike Hine authors and do not necessarily tm@citmaorguk represent the views of the Institute Tel Published on behalf of CITMA by CITMA Review CITMA makes no representations nor Think Capital House CITMA Review content is provided by warranties of any kind about the Committee chairs Chapel Street London NW DH members on a voluntary basis and accuracy of the information contained Education Policy & Development Tel reader suggestions and contributions in the articles talks or events Philip Harris pharris@stphilipscom wwwthinkpublishingcouk are welcome If you would like to Executive Chris McLeod Editor Caitlin Mackesy Davies contribute an article to a future issue © CITMA chrismcleod@elkfi fecom Advertising Tony Hopkins please contact Caitlin Mackesy Davies Events Maggie Ramage tonyhopkins@thinkpublishingcouk at caitlin@thinkpublishingcouk maggieramage@edwincoecom Group Account Director Polly Arnold citma.org.uk March/April CONTENTS | 003_CITMA_MARCH/APRIL17_CONTENTS.indd 3 17/02/2017 11:03 CITMA | INSIDER For further information on the exam, visit bit.ly/IrishTMExam. Brexit update: Irish A candidate needs to obtain a 50 per cent pass rate on each of sections A (Irish trade mark law), representation option B (trade mark practice) and C (EU trade mark practice). CITMA’S BREXIT Task Force continues that, to be entitled to act as an Irish The Irish Patents Office has also to look at the issues and options with trade mark agent, an individual recently announced that the exam regards to rights of representation. A must also be resident in an EEA will, for the first time, include one subgroup has been set up to consider the Member State. optional question on industrial designs. options for qualification as an Irish trade The UK may leave the EEA as well For those interested, Bloomsbury mark agent, something that we know as the EU, and the Irish Patents Office Professional is offering CITMA some CITMA members are considering. has the authority to remove an existing members a 20 per cent discount on CITMA is still committed to trying trade mark agent from the Irish register the recently published fourth edition to ensure representation before EUIPO if that agent loses their entitlement. of Intellectual Property Law in Ireland. is not lost, and continues to raise the As such, a CITMA member currently The discounted price will be €196, matter at every opportunity. We have qualifying as an Irish trade mark plus €5.50 postage. Please contact been discussing the issue with the UK agent may lose their entitlement [email protected] IPO and have recently written to the and be vulnerable to having their to place an order. Ministry of Justice (MOJ), which has name removed from the Irish register. We have recently sent members an interest in rights of representation an update on the other work we for the legal profession more generally. UPCOMING EXAM have been doing with regard to The Law Society has submitted to the Nevertheless, for those interested registered rights, and updating the Department for Exiting the European in qualifying as an Irish trade mark information in the resources section Union and the MOJ a report that raises agent, qualification is by a single of the CITMA website. For more the issue of rights of representation. exam, set this year for 25th April 2017. information about rights of reputation We are also seeking to meet with Applications need to be submitted by and analysis of potential post-Brexit both departments to discuss the 31st March 2017 (exam fee: €200). scenarios, visit citma.org.uk situation for Chartered Trade Mark Attorneys specifically. In the meantime, we hope the following provides some useful information in relation to qualification in Ireland. REQUIREMENT RECAP Article 93 of Council Regulation (EC) No 207/2009 requires that a professional representative before EUIPO must be: (i) a national of a Member State in the European Economic Area (EEA); (ii) entitled to act before a trade mark office of a Member State of the EEA; and (iii) have a place of business in an EEA Member State. However, s86 of the Irish Trade Marks Act, 1996 adds a further requirement 04 | INSIDER March/April 2017 citma.org.uk 004-005_CITMA_MARCH/APRIL17_INSIDER.indd 4 17/02/2017 12:41 Member moves New IP minister appointed Tomkins has announced that it has welcomed Seamus Doherty and Judy McCullagh as partners They can be contacted at sdoherty@tomkinscom CITMA welcomed the appointment in January of Jo Johnson MP and jmccullagh@tomkinscom respectively as Minister for Intellectual Property. CITMA President Kate O’Rourke commented: “We are looking forward to working closely with Jo Johnson MP, and we would like to congratulate him on the new appointment. Collaboration when planning for Firms expand operations the challenges that lie ahead, including the UK’s exit from the EU, will be vital.” • Appleyard Lees has opened a new offi ce in Cambridge. The fi rm currently works FAST FACTS JO JOHNSON MP with UK and multinational businesses across • Johnson has been MP for Orpington since May 2010, and was all continents and technical areas, and has appointed Minister of State for Universities, Science, Research a strong presence in the university sector. and Innovation in July 2016. Cambridge is considered to be a key • He began his schooling in Brussels and speaks French. location to enable the fi rm to provide • He was a scholar of modern history at Balliol College, local support to some of the country’s University of Oxford, receiving a fi rst-class degree. most innovative companies. • He has previously worked as an investment banker at Deutsche • HGF has opened a second Dutch offi ce. Bank. Johnson joined the Financial Times in 1997, serving in two Its Amsterdam offi ce opened in January foreign posts and becoming Associate Editor in