Spring Conference 2025 - day one
We created a new song, and came together to learn, grow and connect with some 200 IP professionals at our Spring Conference.
In a fast-faced opening day of our Spring Conference we dissected the opportunities AI presents, as well as putting key topics like online enforcement and sustainability under the spotlight.
A new anthem is born
To provide a new perspective and energy to the conference, the audience co-created a rock anthem with the help of a band from the company Song Division.
Chartered Trade Mark Attorney and conference delegate Allister McManus was plucked from the audience to join the band on the stage to play the chords, while the audience voted on the genre, co-wrote the lyrics where were expertly put together by the Song Division team into a new anthem.
The song will be released soon, the chorus goes:
Be bold, for trade mark law
CITMA is here and ready to roar
IP is here to stay
Doing things…the CITMA way
Unfair advantage
Andrew Norris KC from Hogarth Chambers demonstrated the link between two recent landmark cases.
The Thatchers v Aldi case (Thatchers Cider v Aldi Stores [2025] EWCA Civ 5) which, on the Aldi side, was undone on a few points including the change in house style of the cider products.
“Aldi had existing ranges of ciders which didn't look anything like this. They, in fact, had added the lemons and added the colour palettes and changed the livery. And in doing so, they had significantly departed from the earlier house style,” Andrew told delegates.
While SkyKick v Sky (SkyKick UK Ltd v Sky Ltd [2024] UKSC 36) has given “bad faith a new lease of life, certainly for specification” – there are still a lot of approaches across the profession when it comes to specification drafting, Andrew noted.
“Of course being bad faith you need to show dishonesty and that dishonesty as we know from the Supreme Court needs to be viewed in the context of trade mark law and the essential function of trade marks,” Andrew remarked.
There is a “general trend towards a more tailored specification that is more in tune with what the client is actually doing,” said Andrew.
Andrew summarised these two key cases by saying: “What links these two is a question of intention – you don’t need to prove what was actually in the mind of the person who applied for it or who developed the brand.
“What you need to do is look at the surrounding materials to come up with enough surrounding material to allow the inference because the courts and the tribunals are readily willing to infer the necessary intention both the tort of unfair competition or that the specifications applied for were in bad faith.”
Artificial Intelligence: The good, the bad and the opportunity
This next session saw delegates participate in an AI gameshow: The good, the bad and the opportunity, with Abion’s Azhar Sadique acting as gameshow host.
With each round of the game, our panellists, Natasha Chick (UK IPO), Colm MacSweeny (Corsearch), Matthew Quigley (nDreams), and Ece Sarica (Coca-Cola), took us through the lifecycle of a brand and AI’s role in each of the key stages. This included looking at where AI can step in, whether it should, what we need to be aware of when using AI, and how it affects us.
In true gameshow style, panellists (or contestants) were able to raise the ‘human in the loop’ card at any stage of discussion, meaning it’s believed that human oversight is critical in the process.
The good
Throughout the session, it became evident that there are many positives to take from using AI. With almost 100 million trade marks globally, Colm highlighted the significant strain this puts on IP professionals to undertake more manual tasks. With more trade marks, comes an increased risk of infringement and greater attention on brand reputation damage.
This is where AI tools can be a more efficient way to protect our marks. From a searching perspective, it is said that AI can save up to 40% of time, allowing for more strategic high-level thinking.
Ece Sarica added to this point, “The register is so full, and the more marks there are, the harder it is to find a unique selling point. Using AI tools to assist in the creation of trade mark specifications will provide more time to talk to brands about their idea and work out what their unique selling point is.”
The bad
With the benefits, the panel also reminded us of the risks and concerns around using AI in the workplace. There are many areas where you need to tread with caution, and this is where the ‘human in the loop’ card would often come into play.
For example, many brands are using free logo creation tools, which are highly accessible but pose various questions, including who owns the IP rights.
Matthew also referenced a recent case in the US, where a lawyer from Morgan and Morgan admitted to using an AI program that "hallucinated" the cases, inventing fake case law. This raised a question around use of automated evidence and highlighted a need for responsible AI policies in law firms.
The opportunity
AI should assist you to do your job better, not replace you.
Over time there has been a shift in mindset and rather than looking at it as ‘AI vs Human’, more people are starting to consider it ‘AI plus Human’. However, to use AI effectively, it’s important to think about where you can add your own value and what works best in your own organisation.
Online enforcement
When it comes to online enforcement John Coldham told delegates that a strategic approach is needed.
Counterfeit products are rife, with the ONS reporting that in the UK 24,000 retail jobs have been lost due to the proliferation of counterfeit products. John pointed out that £1 in every £5 spent online is on Amazon – therefore that is where those selling counterfeit products want to trade too.
John shared his thoughts on the role of online marketplaces such as Amazon, which he didn’t doubt are doing a lot to tackle the issue of counterfeiters.
A takedown request on Amazon can be as effective as an interim injunction. “So what this means is that online marketplaces have become the new courts system - they decide whether a listing should be taken down or whether it shouldn’t.” John noted that “it’s where we are, but is it right?”
He said “The move away from the courts makes me feel slightly uncomfortable, we need to make sure that there are safeguards and that the role of law enforcement structures that we already have such as the courts ensure that brand protection continues to be fair whilst also being effective.”
Design protection and enforcement
Michael Conway from HLK and Rob Katz from Banner Witcoff took delegates through the key comparisons between US and UK/EU approaches when it comes to design law.
To start with Michael discussed the latest EU design law reforms, explaining that from 1st May 2025:
- “Design” definition has expanded: to include “the movement, transition or any other sort of animation of those features”
- “Product” definition expanded: “regardless of whether it is embodied in a physical object or materialises in a non-physical form”
He then moved onto EUIPO guidance, referencing the ongoing challenges in protecting animated screen designs in the EU and the need for some visual connection between animated GUIs.
In terms of protecting designs in the US, Rob described the system to be very different, relying on one statute created in 1952 as part of the Patent Act.
35 USC 171 – Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
The difficulty here is that a GUI must still be an active and integral component in the operation of a computer, leaving modern designs such as VR, AR and projected designs in a difficult area.
Michael and Rob wrapped up with a functionality comparison, highlighting the differences between essential characteristics and features of appearance.
China: A UK practitioner’s perspective
Dr. Lucy Dugmore from the UK IPO and Dr. Catherine Wolfe from Boult Wade Tennant shared their insight on Chinese trade mark practice.
They started by giving some important background on the Chinese system, including:
- China is a first-to-file territory
- Registered rights are overseen by the China National Intellectual Property Administration
- China has a sub-classification system
With almost 50 million trade marks being filed in China every year, an increasing amount of businesses are seeking support with registering their mark in Chinese.
Catherine explored various popular marks in Chinese, such as Burger King, New Balance, and Coca-Cola, homing in on the Chinese language and how you can use it to your advantage. This may mean translations, transliterations, or a combination of both.
Catherine concluded: “If you trade in China, if you visit China, you will have a Chinese name.”
If you’re looking for further guidance on the Chinese trade mark system, you can reach out to the four-strong attaché team in Beijing and Shanghai. Contact the IP Attaché: [email protected]
Advertising under scrutiny: navigating the ASA, trade marks
Michael Coley from Gough Square Chambers delved into the Advertising Standards Authority (ASA) and the role they place in trade mark enforcement.
He highlighted that the authority is bound by the Committee of Advertising Practice (CAP) and the UK Code of Non-broadcast Advertising and Direct & Promotional Marketing (CAP Code), as well as UK Code of Broadcast Advertising (BCAP Code).
Both members of the public and industry can make a complaint to the ASA, but the defining question will be whether the codes have been breached. Michael took delegates through a range of case studies, including the Gibraltar (UK) Limited and another v Violet Limited [2024] EWHC 777 (Ch) case. This case focuses on a series of advertising campaigns ran by the defendant on its website that offered the claimants’ trade marked products (namely, veterinary nutraceuticals) for sale.
This case was found to be in breach of Regulation 4 of the Business Protection from Misleading Marketing Regulations 2008, under comparative advertising.
Creating opportunities from sustainability
Our sustainability panel offered delegates practical guidance on the value of implementing environmental initiatives in their firms.
Maria Hall from Mewburn Ellis revealed they've secured substantial levels of new business where sustainability credentials played a significant role. "We track where work has come in where our sustainability credentials are a considerable factor," she explained.
Maria emphasised the value of external validation through certifications such as EcoVadis. "It gives my partners something really tangible to talk about with their clients," she explained, noting they're the only IP firm worldwide with a platinum rating.
Mathew Healy from Bates Wells highlighted how sustainability has become a powerful business differentiator, bringing in new clients that directly aligned with their values.
Their sustainability reputation has also helped Bates Wells attract and retain staff with shared values. Mathew described how their ‘Climate Perks’ scheme—providing extra leave when employees choose sustainable holiday travel—delivers significant returns despite the cost.
Both firms have seen increasing client demand for sustainability, with many pitches now including specific questions about environmental commitments.
"Start thinking about it and start integrating it into your business strategy," advised Maria.
"Future-proof your business and make sure that you're in a position that when clients come to you and ask where you're planning on being in five or ten years' time, you have an answer," she added.
Alastair Cameron from the Law Society of England and Wales highlighted their climate change resolution which outlines expectations for the profession to create decarbonisation targets.
The speakers agreed that sustainability has moved beyond a "nice to have" to become a significant business differentiator for IP firms.
To round the day off
The day was rounded off with a keynote address from Andy Bartlett from the UK IPO who shared the latest updates on the One IPO digital transformation project, AI and revealed that the UK IPO is expecting this year to be the second highest on record for UK trade mark filings.
Andy also previewed the upcoming review of the designs system and encouraged the IP profession to complete the survey that is currently open – the results of the survey will help shape the consultation that will be published later in the year.
Delegates were excited to continue the networking and building new connections at our Spring Party in the iconic Sky Garden.