Trade Marks Law & Practice: Shaping New Developments into Solution-Focused Advice for your Clients

Programme

1. Chair's Introduction

   Trade Marks Law & Practice: Shaping new developments into solution-focused advice for your clients

   Chaired by Carrollanne Lindley of Kilburn & Strode

   Carrollanne is named an ‘IP Star’ for Trade Marks and one of the World’s leading 250 Women in IP. “She is quick-witted, commercially savvy, hands-on and an absolute pleasure to work with.”

2. Honest Concurrent Use

   How potent is "honest concurrent use" as a defence in light of the decision in Match Group v Muzmatch [2023] and how do you gain an edge for your clients?

   Answered by Thomas St Quintin of Hogarth Chambers

   Thomas is Co-author of Morcom on Trademarks and acted in Lifestyle Equities v Amazon litigation in the Supreme Court. "He is incredibly clever, totally unflappable and extremely effective in court.”

3. Acquiescence

   What is the latest judicial thinking on "acquiescence", including the deliberate departure from the CJEU in Industrial Cleaning Equipment v Intelligent Cleaning Equipment [2023]?

   Answered by Douglas Campbell KC

   Douglas is "a great advocate and brilliant on his feet – someone you want on your side, especially for trade mark infringement disputes. He wins cases." He sits as a Deputy High Court Judge.

4. Trade Mark, Design and Copyright

   What is the interplay between trade mark, design and copyright in recent cases, and which practical legal strategies will help protect new products in the real world?

   Answered by Sean Ibbetson of Bristows

   Sean acted for Thomas Pink in trade mark infringement proceedings against Victoria’s Secret in relation to the PINK brand. He is “one of the best for trade mark/copyright/design right law.”

5. Passing off by Equivalence

   How far can you push the court over "passing off by equivalence" following the spate of recent cases, supported by real-life examples of what will and won't work?

   Answered by Mark Kramer of Potter Clarkson

   Mark stands out for his "vast experience and creative solutions." He is instructed by Astellas Pharma on global litigation strategy – due before the Supreme Court in March 2024.

6. Intermediary liability

   What counts and will sway a court over intermediary liability for trade mark infringement and what are the implications of Samsung v Swatch for practice and client advice?

   Answered by Guy Tritton of Hogarth Chambers

   Guy is IP Junior Barrister of the Year and Chief Author of "Tritton on Intellectual Property in Europe." "He is a go-to barrister for all types of IP work, with a particular focus on trade mark and copyright issues.”

7. EU Rights

   To what extent can you rely on EU rights as Brexit progresses, in terms of proving use of a comparable UK registration, demonstrating a reputation and the impacts of prior rights?

   Answered by Louise Popple of Taylor Wessing

   Louise is an expert on the impact of Brexit for brands. She is the Editor of "Brands Update and Advertising Quarterly" and a Contributor to "A User's Guide to IP in Life Sciences."

8. Context

   What do recent cases reveal about "context" in trade mark disputes, how are judges reacting and how do you use context to turn the scale in your client's favour?

   Answered by Professor Mark Engelman

   Mark "goes above and beyond for his clients, getting into the deeper implications of the IP disputes he works on." He advised Dunlop, Slazenger, The Body Shop, Specsavers etc.