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

  • Tue 23rd March 2021 until Fri 23rd July 2021
  • On-demand, United Kingdom
  • 5 hrs CPD

£149 + VAT

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Answers to 11 thorny questions: Directly from 7 QCs, Senior Juniors and Solicitors of Outstanding Ability

  1. Bad Faith

    How are the courts interpreting evidence of "bad faith" following the spate of recent cases, including the Skykick litigation?

    What counts and what is making a difference?

    Answered by: Nicholas Caddick QC of Hogarth Chambers

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

  2. Defences

    Against a backdrop of recent cases, what is the potency of the "own name," "intervening rights" and "non-use" defences for alleged infringers?

    Answered by: Simon Malynicz QC of Three New Square

    Simon is "one of the best in the country for trade mark cases." "His star continues to rise." He acted for 20th Century Fox in litigation which tested the validity of television series marks.

  3. Distinctiveness

    Is there a shift in the wind over inherent and acquired distinctiveness following the Jaguar v Ineos and Louis Vuitton Malletier v EUIPO cases?

    Answered by: Jeremy Blum of Bristows

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

  4. On-line platforms

    What is realistic and achievable when enforcing trade mark rights on Amazon, eBay and Alibaba?

    Is there a silver bullet?

    Answered by: Ian Silcock of Hardwicke

    Ian is one of the top 10 most frequently instructed counsel in hearings before the UKIPO. Formally, he specialised in IP litigation in the legal department of The Body Shop PLC.

  5. Remedies

    How has Merck v MSD changed current thinking on the granting of declarations and publicity orders as remedies for trade mark infringements?

    Answered by: Mark Kramer of Shoosmiths

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

  6. Post Brexit

    To what extent have UKIPO and EUIPO matched their promises over the cloning of marks, re-filing of EU applications and changes in representation?

    What is the UK's value to existing EU rights owners?

    Answered by: Robert Guthrie of Osborne Clarke

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

  7. Colour marks

    Now that the Glaxo Group Ltd v EUIPO has been decided, what are the unresolved issues over colour marks?

    Where will the challenges come from?

    Answered by: Victoria Jones of 3PB

    Victoria acted for Jaguar Land Rover in a trade mark infringement and passing-off action. "She is unfailingly approachable, commercially minded and always provides added value."

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

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