Key takeaways from the IP Enforcement Forum 2016
Managing IP's first IP Enforcement Forum took place in London on October 5. Topics discussed included designs, EU trade mark reform, online counterfeits, trade secrets, trade dress, social media and the Digital Single Market
Successful design protection
Nick Kounoupias, chief counsel of ACID, pulled no punches in a discussion on the Trunki case, saying the ruling "has shifted the law very much in favour of infringers" by giving "too narrow an interpretation of what a registered design protects". He added that the law on designs had become too complicated, with five different regimes in the UK alone: this is a burden to the majority of design companies that have only a small number of employees.
Ruby Kakati, senior IP counsel of Lucozade Ribena Suntory, agreed that the Trunki decision has "narrowed the scope" of protection but said designs could still have a role to play in a diverse portfolio, particularly for the shape and outward appearance of products and packaging.
Elizabeth Ferrill, a partner of Finnegan, compared European and US approaches to designs. She does not recommend filing CAD drawings at the USPTO, as protection will likely be narrower, and that it is important to include many drawings (often more than the seven views allowed for RCDs). Reflecting on the recent US accession to the Hague Agreement, she noted that usage is still low, partly due to the lack of harmonisation in practice: "You have shading and non-shading countries, for example."
The panel, which was moderated by Philip Cupitt of Finnegan, also compared designs and trade dress, looking at case studies such as the Coca-Cola bottle. The recent Advocate General's opinion in the Rubik's Cube case came in for some criticism; the CJEU's judgment in that case is due on November 10.
EU trade mark reform
There will be minor differences between EUIPO practice and that of national offices until around January 2019, which is the deadline for EU member states to transpose the new Trade Mark Directive, said Steve Rowan, divisional director trade marks and designs at the UK IPO. He said the UK office will consult on changes necessary, in particular regarding the removal of the graphical representation requirement. This could include changes to filing requirements (for example, the UK does not at present accept sound files), IT systems and databases. Dirk Wieddekind, a partner of Taylor Wessing, discussed convergence initiatives and recent cases on issues including black-and-white/colour marks and figurative marks with a word element (such as the BioID case). He agreed with earlier speakers that EUIPO is now taking a more restrictive approach than it used to.
Taylor Wessing partner Roland Mallinson moderated a wide-ranging discussion that covered over-long specifications of goods/services, disclaimers, harmonisation and new means of representing marks, such as fly-through animations. Antje Ehrlich, senior trade mark counsel of Merck Group, said the abolition of the graphical representation requirement might spur pharma companies to file more 3D marks, for goods such as laboratory equipment.
Web monitoring, prioritisation, education, new gTLDs and blocking mechanisms such as the UK Section 97A orders were discussed by a panel of industry representatives, moderated by Anna Reid of D Young & Co.
Leo Longauer, director of global IP enforcement at Swarovski, said his company started systemic monitoring last year and "we were hit by the numbers". The monitoring had led to categorising and "applying the right legal tactics" to each case, he added. Charlotte de Jouffroy, IP counsel of Pernod Ricard, highlighted the role played by investigators and educating the public, saying: "We did not dare talk publicly about counterfeiters. But we changed our approach - the consumer is also a victim and an ally."
Simon Bourn, head of litigation, enforcement and anti-piracy at PRS for Music, said Section 97A orders were an important element of a "multi-pronged campaign" against music piracy, but that technological solutions to disrupt unlicensed services also have a role to play. For example, PRS has reported 250,000 sites to Google for de-listing: 92% of these have been successfully removed from search results and 130 sites have come down altogether. Daniel Bennett, CEO of Yellow Brand Protection, explained how technology can help filter sites based on the level of risk, and answered a question from the audience about the Chinese service WeChat. "It's roughly where eBay was 10 years ago," he said.
Trade secrets grow
Peter Koch, a director of Gowling WLG, introduced a discussion on trade secrets with a review of the EU Directive and some of the questions it raises, such as: what are "reasonable steps" to keep something secret? And how can you maintain secrecy during court proceedings?
The panellists - Emily O'Neill, IP and litigation counsel at Spectris; Tony Thiaray, director of legal, London City Airport; Maria Lampert, information expert - IP, The British Library; and Stephen Robertson, head of IP strategy and valuation, Metis Partners - agreed that getting into a position where you need to enforce trade secrets is the "worst-case scenario" and emphasised the need to take steps to educate employees, control access to information and stick to a corporate policy.
Trade dress, designs and copyright
Overlapping IP rights was the subject of the post-lunch panel, and Michael Moore, partner of Keltie, provided an illustration of how brands could be protected under different IP systems. "It's more difficult to be a one-dimensional trade mark attorney!" he noted. The session was moderated by Ben Britter, a partner of Keltie. Graphical user interfaces (GUIs) provide a good example of a technology where different IP rights have a role to play, and Noam Shemtov, senior lecturer in IP at Queen Mary University of London, examined the merits of patents, trade marks, trade dress, unfair competition, registered designs and copyright in a discussion that covered cases including Apple's slide-to-unlock feature and the pending dispute Microsoft v Corel (over Microsoft Office) in the US.
Duncan Hinnells, a solicitor with Aston Martin, gave a practical and lively presentation on enforcement of various rights noting that litigation involves choices: "Be clear what your case is. What are your goals? Which ones do you care about?" For example, in the UK unregistered designs might be more potent than registered design rights given the standard for infringement. He emphasised the importance of assembling evidence early, studying contracts carefully and going after the infringer's weakest link: "Think from the opponent's point of view!"
It was my pleasure to chair a session on social media featuring Alexia Willetts, chief operating officer of Wistla, and JoAnna Emery, IP manager of Williams grand Prix Engineering. In entertaining presentations, they covered topics including the IP practices and procedures of the main social media sites, the role of social media managers, tensions between IP protection and free speech and the role of hashtags. The recent controversy over the Olympics and Rule 40 was a particular focus.
There were a number of interesting questions from the audience covering both trade mark and copyright issues, such as ownership of photos, how best to deal with infringers and appropriate corporate policies.
Digital Single Market
In the day's final session, Roya Ghafele of Oxfirst and Michael Loch of GSMA discussed injunctions in standard-essential patent cases under the EU Enforcement Directive, while Jane Hyndman - group general counsel of Compact Media - discussed copyright-related issues in the EU Digital Single Market agenda, including portability.
The panel broadly agreed that one impact of all these changes is that "the future will see more economics in the courtroom".
The Forum was attended by about 100 in-house counsel and other IP specialists, and was held at the Le Méridien Piccaddilly. For more information, see our dedicated page.