Trade Marks: Shaping New Law into Solution-Focused Advice for Clients

Tue 6 February 2018

The Caledonian Club 9 Halkin Street London SW1X 7DR

Answers to 12 Thorny Questions on the Fringes of the Law: Directly from 3 QCs and 3 Solicitors of Outstanding Ability

5hrs CPD

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  1. Registration and coffee

  2. Chairman's Introduction

    Trade Marks: shaping new law into solution-focused advice for clients

    Chaired by: Robert Guthrie of Osborne Clarke

    Robert is "a trademark litigator with an outstanding track record". He went to the Supreme Court to successfully defend Sky’s Now TV in a passing-off action filed by a Hong Kong company.

  3. Parallel Imports

    How are the cases widening the rights of parallel importers to use registered trade marks?

    What is meant by control of an exhausted trade mark?

    Is there a new avenue of argument?

    Answered by: Guy Burkill QC

    Guy is “celebrated for his white-hot intellect and superior instincts". He is "the complex technology guru" and co-editor of “Terrell on the Law of Patents”, the practitioners’ textbook.

  4. Blocking Order

    When you are faced with an Internet trade mark infringement, how do you frame the blocking order to maximum effect (with reference to servers and geo-blocking)?

    Answered by: Roger Wyand QC

    Roger is "a brilliant asset with exceptional knowledge of everything IP-related". He is authorised to sit in the Intellectual Property Enterprise Court and the Registered Designs Appeal Tribunal.

  5. Morning Coffee

  6. Graphical representation

    Will the removal of the "graphical representation" requirement in the EUTMR make a difference when registering non-traditional marks?

    Answered by: Jeremy Blum of Bristows

    Jeremy is a "great strategist who frequently comes up with winning arguments". He represented Mondelez in opposing Nestle's application to register the four finger shape of the KitKat as a trade mark.

  7. EUIPO Torpedo

    How newsworthy is the so called EUIPO Torpedo?

    When is its use going to make a dramatic difference to your case, NVidia v Hardware Labs and Sky plc v SkyKick?

    Answered by: Simon Malynicz QC

    Simon is "the top trade mark lawyer at the London Bar". "He is in a league of his own right now”. His "knowledge of international trademark law is unsurpassed". "His advice is crystal clear".

  8. Over-run

  9. Lunch

  10. Shape Marks

    What is the threshold for establishing acquired distinctiveness of shape marks under Article 3 (1)(e) Trade Mark Directive?

    In terms of evidence, how does “perception” differ from “reliance”?

    Answered by: Victoria Jones of 3PB

    Victoria is "the number-one choice for IP counsel in the West of England". She is "a creative problem solver". She acted in the dispute over the Royal Mint's application to register the word "sovereign" as a UK trade mark.

  11. EU Wide Relief

    What is attainable in terms of EU wide relief in EUTM infringement cases?

    Is the unitary character of the EUTM a mistaken belief, Combit v Commit?

    Answered by: Roland Mallinson of Taylor Wessing

    Roland is "a consistently brilliant trade mark lawyer" - "the pick of the bunch in London". "He is magnet for complex instructions". You get his gut feel, rather than just the black-letter law".

  12. Grey Goods

    Where is the line when it comes to using and applying the criminal sanctions associated with selling grey goods?

    Answered by Miles Bennett of 5 Paper Buildings

    Miles has prosecuted for FACT Ltd, BSkyB, the Premier League and MPS Ltd. High profile cases include the use of a Virgin Media domestic system to show live Premier League football in commercial premises.

  13. Over-run

  14. Close of Conference

** All speaker quotes are taken from Chambers Directory, Who's Who Legal and Legal 500