CITMA Paralegal Conference 2024: key talking points
More than 150 paralegals, speakers and exhibitors packed into BMA House in London for a day of learning and building new connections.
Thank you to all our speakers – we have summarised some of the key talking points from the day’s sessions.
Why is case law important?
Michael Tennant took delegates through five cases with interesting and useful outcomes to note for CITMA Paralegals.
A question of morality was first up, with Michael noting the COVIDIOT EUIPO mark which was refused at the Grand Board of Appeal as it was contrary to public policy or principles of morality.
Genericide was discussed in relation to the DRY JANUARY mark. In the UK IPO case the hearing officer found that it could not function as a trade mark. Michael noted that in cases like Dry January it can be the case that the focus is on making the term famous, that the owner can forget about keeping the trade mark rights maintained.
Michel re-iterated the importance of trade mark management using the NKD v Naked case where the trade mark owner of the NKD mark “forgot” to renew her trade mark. L’Oreal had registered Naked and opposed the re-filed NKD mark.
Nestle’s Crunch trade mark was facing revocation action at the UK IPO and it submitted its evidence a day late, which caused a lot of issues – the mark was eventually revoked following a hearing on the admissibility of the late evidence. Michael noted that “mistakes can happen internally and externally, if they happen be honest and frank”.
Michael concluded with the Lifestyle Equities Beverly Hill Polo Club Supreme Court case, which “is the most impactful on UK practice this year”.
If that has inspired delegates to find out more about case law Michael shared some of the best places to find case law updates:
- UK IPO Decisions page
- CITMA Review
- Trade mark specialist blogs such as IPKat
- Press articles
- Your own company’s blog section
- Online databases including DARTS IP
Project management and data migration
Samantha Crellin, from conference sponsor WebTMS, shared top tips on how to onboard a new portfolio, migrating to a new IP management system and portfolio audits.
On mapping data – Samantha reiterated the importance of this process to the success of a migration. For example, making sure renewal deadlines are migrated to the correct field in the system. It could be labelled ‘renewal deadline’ in one system and ‘renewal due date’ in another.
Auditing the records is also a vital step – Samantha suggested visually comparing these against the IPOs or agent data to ensure the accuracy.
Samatha urged delegates to leave enough time for any onboarding or migration project and she suggested having a crossover period between the two systems to make sure that there is something to fall back on whilst you are getting used to it and making sure that everything has come across correctly.
The sneaky snake of stress
Rachel Culverwell shared some of the signs of stress and tips for reducing and combatting chromic stress.
“Exercise is a really amazing thing,” Rachel told delegates, as it increases brain chemicals that reduce feelings of pain and stress and make us feel happy.
Breathing exercises are “great at activating the relax, rest and digest response.”
Rachel suggested making time to get outdoors. “You can even bring the outdoors in,” she suggested – plants have been shown to increase productivity and decrease stress.
Rachel had some top tips for delegates:
- Stress isn’t necessarily a bad thing, however, too much stress is
- Eat well and don’t skip meals
- Be aware that smoking, drinking and sugary snacks add to your stress load
- Balance high intensity exercises with lower intensity exercises
- Take regular breaks from your desk
- Use breathing and meditation techniques to help calm you down
Own your career development
This session was chaired by Sarah Cantrill from D Young & Co and provided the chance to hear from three speakers, Ian Collier, Nick March, and Gail Nicol.
There was a focus on the various pathways you can take as a paralegal, as well as helpful tips and advice on how to progress and develop your career.
A key part of this was mapping out the wide-ranging roles within the industry, with a suggestion for reflecting on where your interests lie. Ian, Nick and Gail talked us through their own career journeys and how they got to where they are today.
You can read more about this in our feature article.
UK IPO transformation
The UK IPO’s Simeon Bowen provided an update on the biggest digital transformation in the UK IPO’s 170-year history, with an investment of more that £100m to transform its services.
The new patents service will launch in summer 2025, with trade marks and designs in 2026.
Work on the trade marks service is due to begin later in 2024 and will start with user research. Simeon urged delegates to get involved with user research and testing.
Intellectual property infringement online
Evelina Skrudyte from Appleyard Lees explored the growing concern of intellectual property infringement online, current prevention methods, and possible solutions to the problem.
The ease of access and sharing on the internet has led to a significant increase in IP infringement online. Various technological solutions to target the problem were covered, which included verification tools, digital watermarking, content ID systems and recognition software.
In addition to technological support, Evelina noted that a proactive approach is essential and delved into the frameworks and organisations you can work with to enhance enforcement efforts. These include the UK IPO Intellectual Property Counter-Infringement Strategy 2022-2027, the Anti-Counterfeiting Group (ACG) and Border Force.
Speaking about the future and possible impact on the industry, Evelina remarked: “I think the main change is going to be related to AI and the increased use of it. With the machines and software, they’re going to learn to recognise the fakes online. Maybe not more accurately, human input will always be required – you won’t be able to fully replace the way the human brain can spot things – but it will definitely be a tool to support.”
Recordals and assignments
Kate Cheney from D Young & Co shared in detail the key areas to consider when dealing with recordals and assignments. This included the benefits and drawbacks that come with zombie trade marks, an insolvent assignor, and what to look out for when asked to record a license.
When discussing insolvent assignors, Kate provided insight on trade mark cases where an assignor no longer exists, known as “bona vacantia”.
This was a particularly hot topic of discussion, enabling delegates to learn more about the process for buying a trade mark that is bona vacantia. Kate explained how it can be a slow process to apply to the Treasury Solicitor to purchase a trade mark, so gave helpful information to include in your initial request which may speed up the process.
Evidence of use
Erin Meakin rounded off the day with talking about proof of use and the importance of financial evidence, using the Big Mac and Wonder Woman cases as examples.
Further to this, she shared what good evidence looks like, whether that might be financial data, social media analytics or pictures of a product.
Thank you to WebTMS for their support of this event.
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