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

  • Thursday, 20th June 2019
  • The Caledonian Club 9 Halkin Street London SW1X 7DR
  • 5 hrs CPD

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Answers to 14 thorny questions: Directly from 7 QCs and solicitors of outstanding ability

  1. Registration and coffee

  2. Chair's Introduction

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

    Chaired by: Robert Guthrie of Osborne Clarke

    Robert successfully acted for Expedia on the registration of HOTELS.COM as an EU trade mark. He is "a first choice adviser for any brand protection work" and is a member of the EU Trade Mark Reform Task Force.

  3. Acquired distinctiveness

    How do you establish acquired distinctiveness when surveys are out of fashion and expensive?

    Is recognition enough?

    Answered by: Jeremy Blum of Bristows

    Jeremy represented Mondelez in its successful opposition to Nestlé's trademark application for the shape of the four finger KitKat. "He is a great strategist and tactician who comes up with winning arguments."

  4. Defences

    Drawing on live cases, what is the potency of the "own name," "intervening rights" and "non-use" defences for alleged infringers?

    Answered by: Simon Malynicz QC

    Simon is "one of the best in the country for trade mark cases." "His star continues to rise." He acted for Twentieth Century Fox in the Glee litigation which tested the validity of television series marks.

  5. Morning coffee

  6. Jurisdiction

    How are the rules on jurisdiction and national-based trade mark infringements playing out in the UK courts?

    When can a website be said to "target" the UK/EU?

    Answered by: Paul Joseph of RPC

    Paul is an "accomplished deal-doer and seasoned litigator." He is actively assisting clients with trade mark licence agreements across multiple jurisdictions. He sits on the editorial board of the "Journal of IP Law and Practice."

  7. Parallel imports

    Which way is the wind blowing for parallel imports?

    Is there a widening of rights?

    Is the Mitsubishi case making a difference?

    Answered by: Douglas Campbell QC

    Douglas is "a born litigator: fantastically driven and an exceptionally good orator." Cases include Frank v Nike, London Taxis v Metrocab, Veuve Clicquot v Polistas. He sits as a Deputy High Court Judge, particularly in intellectual property cases (including IPEC).

  8. Overrun

  9. Lunch

  10. Blocking orders

    What is realistic and achievable for most brands when framing a blocking order for Internet trade mark infringement?

    Answered by: Simon Baggs of Wiggin

    Simon is "outstanding for ISP liability." He acted for Cartier, Montblanc-Simplo and Richemont in an appeal before the Supreme Court, over the blocking of subscriber access to websites selling counterfeit products.

  11. Big Mac case

    In the spotlight of the Big Mac case, what are the evidential requirements for proof of genuine use of a mark across jurisdictions?

    Answered by: Nicholas Caddick QC

    Nicholas is "an IP guru who is seriously impressive on his feet." He is co-author of ‘Caddick & Longstaff‘s User's Guide to Trade Marks and Passing Off’ and ‘Copinger & Skone James on Copyright’ and sits as a Deputy High Court Judge.

  12. Grey goods

    Why are criminal prosecutions for selling of grey goods on the increase?

    What factors distinguish a successful prosecution?

    Answered by: Mark Kramer of Shoosmiths

    Mark is advising easyGroup on the protection of its 'easy' family of brands, which includes easyJet, running cases before the Court of Appeal, High Court and IPEC. "He stands out for his creative solutions."

  13. Over-run

  14. Close of conference

All speaker quotes are taken from Chambers Directory, Who’s Who Legal or Legal 500

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