CITMA Autumn Conference 2024: key points and take aways
UK IPO examiners and tribunal staff joined some 100 delegates in Bristol for a unique opportunity to collaborate and learn.
Hosted at the Bristol Beacon, normally a music and arts venue, for a symphony of learning and networking opportunities.
We gave today’s delegates the opportunity to join small break-out groups with UK IPO examiners and tribunal staff.
The roundtable sessions, led by UK IPO staff, allowed attendees to gain key insight from examiners and the trade mark tribunal service on issues like training of examiners, quality of examinations, the current backlog in the tribunal service and specification limitations.
Prior to the UK IPO-led breakout sessions delegates were treated to a deep-dive into a number of important topics.
UK Case Law update
Chris Morris, Haseltine Lake Kempner, shared his insight on four recent UK decisions.
The Supreme Court case involving Lifestyle Equities CV & Anor v Ahmed & Anor demonstrated that “it isn’t impossible to establish accessory liability but it is more difficult because of the new knowledge requirement,” Chris remarked.
This is applicable to all IP infringement, not just trade marks, Chris added.
Chris then considered what the Easygroup Ltd v Easy Live (Services) Limited case means for the easyGroup’s approach to enforcement after there was “some pushback on broad enforcement of the word easy” – it remains to be seen but Chis remarked that it does at least provide some clarity when advising on marks that contain the word easy.
Acquiescence in the context of the Industrial Cleaning Equipment v Intelligent Cleaning Equipment case and when the five year clock starts to tick was the next port of call.
Before, Chris rounded things off with the recent Thatchers Cider Company v Aldi Stores decision – and urged delegates to look out for the appeal which is due to be heard in December 2024.
Design and Copyright: a 2024 update
Nicole Bollard, a Barrister from 3PB, took delegates through three important design and copyright cases.
First up was the well-known Lidl v Tesco case, which was taken to the Court of Appeal after the initial decision from the High Court found that Tesco had infringed Lidl’s copyright. Considering previous decisions made in THJ Systems Ltd v Sheridan and Wright v BTC Core, Nicole explained that the court had to be satisfied that that the author was able to express their creative abilities in the production of the work.
She said: “The fact that there is a low degree of creativity makes this difficult, however it was decided that superimposing the earlier mark and adding a blue background did involve time, labour and creative period.”
Nicole moved on to discussing the AGA Rangemaster Group v UK Innovations Group case, which focuses on copyright of AGA’s Design Drawing. This case brought into question the elements of design that are common place and dictated by function, with the UK Innovations Group (UIG) claiming a defence pursuant to the Copyright, Designs and Patents Act 1988.
The judge applied the summary and test of the Court of Appeal in Lidl v Tesco, considering the elements that were the author’s own intellectual creation. The judge was satisfied that the design was influenced by function, not dictated by it.
For the final case, delegates were taken through the M&S v Aldi trial, which investigated a claim brought by M&S that the bottles of Aldi’s Christmas gin liqueurs infringed its registered designs.
Nicole highlighted the importance in the effect of the grace period and priority date in the Court of Appeal’s decision.
Unpacking the Lidl v Tesco decision
Emily Roberts from Burges Salmon delved further into the Lidl v Tesco decision.
“Be as specific as you possibly can when talking about the objective circumstances that you're relying upon when you're alleging bad faith,” was the first of a number of key takaways.
“Evergreening, we all know it's a no-no, so don't do it. But do think about other forms of IP, whether they can help you. If you do ever need to refile for a genuine, legitimate commercial reason, then there has to be a point around keeping a record of your intention at the time of that filing.” Said Emily.
In the Lidl v Tesco case the judge leaned very heavily on the evidence presented, so “think about ways that you can creatively frame your case or present your evidence to the court.”
Online brand protection
Giles Lane from Dyson and Julia Dickenson from Baker McKenzie explored online brand protection, providing invaluable insight into the legal framework, as well as best practice strategies.
Drawing from personal experience, they explained the different types of infringement you may come across online and the possible action you could take to protect a brand. This included cheaper, cost-effective methods, such as notifications on instances of infringement, as well as more direct legal methods, like cease and desist letters.
In particular, there was a strong focus on how to best prepare for threats online, and whether we can apply a one size fits all strategy.
Giles remarked: “The trouble we all have is that threats are constantly changing. What the world looked like a few years ago is very, very different to today, and certainly, our strategy has changed so much.
“In the six years I've been at Dyson, I think we've rebuilt ours about three or four times. The challenges faced by different brands vary depending on your industry and depending on the jurisdictions you're active in, so you need a tailored approach.”
Giles and Julia wrapped up by looking at the importance of building relationships, whether that be with consumers or other stakeholders, and the benefits they can bring to your prosecution strategy.
Company Names Tribunal
Nathan Abraham from the UK IPO took delegates through the ins and outs of the Company Names Tribunal.
Since the first tribunal in 2008, involving Coca Cola, the Company Names Tribunal has been adjudicating on conflicts of company names.
The tribunal is housed at the UK IPO, but it is not technically part of the UK IPO, Nathan pointed out to delegates.
The UK IPO can ask Companies House to force the change of a company names if change not filed within one month – generally this is changed to the company number.
Appeals are only to the High Court, there is no appointed person route for company names.
On 1st March – the Economic Crime and Corporate Transparency Act 2023 came into force. With that the eligibility criteria for joining co-respondents changed from:
- ‘members/directors of challenged company’
- to
- ‘any person who was a member/director when challenged company name was registered’
“Company Names Tribunal is within scope for transformation at this current time” as part of the One IPO transformation project.
There have been year on year increases in the number of cases:
| Applications | Defences | Undefended decisions | Defended decisions | |
|---|---|---|---|---|
| 2020 | 259 | 18 | 67 | 11 |
| 2021 | 329 | 18 | 180 | 9 |
| 2022 | 396 | 30 | 260 | 21 |
| 2023 | 440 | 43 | 266 | 11 |
| 2024 (to Sep) | 465 | 20 | 254 | 9 |
Non-traditional marks
Oliver Morris from the UK IPO led a highly interactive session on non-traditional marks to conclude the talks for the day.
Touching upon the introduction of the Trade Mark Act 1994, Oliver explained that changes to the Act in 2019 removed the requirement for graphical representation, but replaced it with the need for the respective “any sign” to be:
“…represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor..”
Generally, this has permitted a more broad and flexible approach, where various types of sign are now allowed to be registered that protect brand owners against unfair competition.
To gain a better understanding of this, delegates were taken through examples of non-traditional marks, such as shapes, packaging, holograms, motion and sound, and asked to signify with a flashcard whether they think they can be protected as a trade mark or not.
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