The IPKat’s 20th Birthday Conference Reports – Part 3

After the opening part and the keynote speech, reported by Eleonora here, and the first panel on the best and worst copyright and design cases of the past 20 years, reported by Anastasiia here, the second panel of The IPKat’s 20th Birthday Conference held earlier this week in London, focused on the best and worst trade mark and geographical indications (GI) of the past 20 years.

Amanda Michaels opened the panel by introducing the developments in the law of trade marks and GIs especially according to the decisions by the Court of Justice of the European Union (CJEU).

Jan Jacobi started with an overview on colour marks by recalling the very first decisions where a colour mark was accepted. He then discussed the case related to the colour mark filed to wrap chocolates (Cadbury 2013, EWCA Civ 1174) and two other past cases, Heidelberger Bauchemie GmbH (C-49/02), concerning a combination of the colours blue and yellow, and Dyson (C-321/03), concerning a transparent bin.

Darren Meale followed on by discussing how to allow the registration of a colour ad pointing out how such registration should be narrow and specific. He engaged in a discussion with the audience by showing an example a fluorescent product and asking how distinctive it could be.

As best and worst case he then recalled L’Oréal (C‑487/07) where the central question was how competitive the law should be and where to draw the line between investment in trade marks and lawful competition between undertaking.

Léon Dijkman then presented some bad faith cases. He started with Koton (C-104/18). He then commented on the practice to “refresh” non used trade marks with new filings, therefore creating a new monopoly and suggested a possible application of the proportionality doctrine as in patent law. He then recalled the principle affirmed by the CJEU on the intention of use when applying for a trade mark registration.

The panel then discussed Sky v. Skykick (C-371/18), which will be decided soon by the UK Supreme Court.

Anastasiia Kyrylenko presented the notion of GI and the concept of “evocation” as considered in the Cambozola case (C-87/97) as the first case in which the CJEU provided an interpretation of the notion of “evocation”. She then moved on to the Queso Manchego case (C-614/17). As worst case she listed Morbier (C-490/19) where the contested producer for that cheese had to change the name of the product but kept going on producing the cheese. She then focused on the problem of registering GIs and free riding.

Amanda Michaels closed the panel discussion by recalling Champagner Sorbet (C‑393/16) as possible, reasonable middle way approach.

Now over to Henry, who will cover the best and the worst of patent and SPC cases of the past 20 years as discussed during the event!