http://ipkitten.blogspot.com/2025/04/retromark-2025-event-report-part-2.html
Hot
on the heels of my Event Report [here], Katfriend Darren Meale of Simmons & Simmons
reports on the outcome of his “survey” of last week’s event’s audience:
the sixth annual Retromark: the conference last week, more than 180 of you
showed up to experience an afternoon of trade mark law and practice. But not
just that, the audience also participated in a short “interview” which I
conducted to try to understand the views of the UK trade mark profession.
I
posed eight questions with the help of the interactive presentation software Menti: four on the state of play of
trade mark rights before the UK court; two on the differences between the UKIPO
and UK court practices; and two on bad faith following the Supreme Court’s
decision in SkyKick.
what the audience told me.
The
state of play in the UK courts
Did the Aldi product take unfair advantage of the reputation of the Thatchers
mark?
before our first panel discussion of the Thatchers
v Aldi lookalike case in detail (click the link for a reminder of the
mark and sign), I asked the audience who was right – the trial judge who had
found no infringement by way of unfair advantage, or the Court of Appeal which
had reversed that and found against Aldi.
The vast majority of participants were with the
Court of Appeal on this one:
then asked about another high-profile case in which the Court of Appeal had
overturned the trial judge’s finding of no infringement…
Was the trial judge or the Court of Appeal right in Iconix v Dream Pairs?
of course, was the case
in which a big part of the reasons given for overturning the original decision
was Lord Justice Arnold’s conclusion that, in the post-sale context, the Dream
Pairs logo would be viewed from above at an angle, making it look more like the
Umbro logo.
the audience was with the Court of Appeal, but not by such a wide margin:
The audience was then asked
to consider how strongly pro-defendant or pro-TM owner the courts used to be before
the recent wave of reversals in the Court of Appeal (let’s say, 2-3 years ago),
and whether they felt the balance had shifted following that wave of cases. To
do that each participant rated the position on a scale of 1 (strongly
pro-defendant) to 5 (strongly pro-TM owner). The results (averaged out) were as
follows:
no statistician – but these numbers suggest the audience felt the courts have
moved from a fairly balanced position to one significantly in favour of TM
owners.
The
UKIPO versus the Court
is no secret that the vast majority of trade mark disputes in the UK play out
in front of the UKIPO in an opposition or cancellation action. It is also no
secret that the UKIPO’s hearing and decision backlog is only getting worse,
with it now requiring as many as three years to take an opposition from filing
through to a first instance decision – and maybe even longer. I therefore
wanted to explore what improvements the profession might like to see at the
UKIPO (beyond speeding things up) and what measures might be adopted by the
Court to encourage more disputes to be settled there – at least while the UKIPO
clears its backlog.
Would you like to see the UKIPO adopt any of the following court-like
processes?
For this question, participants were given five
court processes, and asked whether they would like to see them adopted by the
UKIPO on a scale of 1 (strongly against adopting them) to 5 (strongly for
adopting them).
picture is fairly mixed. The strongest reaction was in favour of the suggestion
that poor behaviour should be punished in costs. Hearing Officers are entitled
to award off-the-scale costs to deal with unreasonable behaviour but, in my
opinion, show a real reluctance to do so. Clearly, I am not the only one to
have been disappointed in this way.
disclosure – although already theoretically available before the UKIPO – was
not particularly popular and neither was more cross-examination of witnesses at
final hearings, also already available but rarely used.
judgment was the next most popular measure, perhaps reflecting the current long
wait for final hearings. However, after my interview I was assured – by someone
who should know – that the UKIPO is already empowered to give summary judgment
under its general case management powers, should a party ask for it. But in
practice, and for now at least, a request for a summary judgment hearing would
face the same lengthy delays as final hearings.
What might persuade you/your clients to bring a claim in the courts rather than
merely rely on an opposition?
this question, I asked the audience which of six/seven UKIPO-like things which,
if adopted by the courts, might persuade them to bring a claim there. Two stood
out. The first (with a score of 4.3 out of 5) was guaranteeing that the judge
is a trade mark expert – not guaranteed in the court, but by definition all
UKIPO Hearing Officers are trade mark experts. So this is clearly important to
us. The second, with a score of 4.2 out of 5, was guaranteeing a faster
resolution than before the UKIPO. No surprises there.
As I confessed to the audience, this was
slightly a trick question, as many of these things are already available in the
IPEC and the IPEC Small Claims Track. Although I am biased because I
occasionally sit as a judge in it, the IPEC Small Claims Track could be the
perfect venue for trade mark cases looking to escape the UKIPO’s backlog: many,
if not all, of the judges there are IP experts; the costs risk is minimal; an
injunction and even damages are available; and procedure is straightforward.
Why then does the track see so few trade mark cases in comparison to the UKIPO?
Bad
faith
ended the interview with two quick-fire questions on SkyKick and bad
faith.
Will SkyKick lead to a reduction in filings for long specs and broad terms?
To
my surprise, the audience was feeling very optimistic about the impact of the
Supreme Court’s decision in this case – an optimism I am not sure was shared by
the panel discussion that followed.
How do you think we should deal with “computer software”?
With
the final question, I looked for a practical answer to the problem of the broad
term “computer software”, until now a regular constituent of class 9 trade mark
specifications at the UKIPO and the EUIPO. I offered four options, but almost
no one picked the first two, the gist of which is that there is no problem left
to fix. That is somewhat inconsistent with the answers to Q9, so perhaps
practitioners aren’t so convinced by the Supreme Court’s decision after all…
insights all round!
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