Event report: Retromark – the conference

On Wednesday 27 March Simmons & Simmons’ partner Darren Meale joined forces with leading IP blog the IPKat to host the second annual Retromark conference - 'Retromark: the conference - an afternoon of trade mark law and practice'.

The conference, which developed from the popular IPKat blog series Retromark (Volume 4 here), continues the series’ tradition of exploring the most noteworthy and exciting developments in trade mark law and litigation.

This year’s event consisted of two moderated panel discussions, a keynote address delivered by Mr Justice Arnold on the topic of the SkyKick case (over which he presided) and the “Retromark Awards” - a review of the year’s most notable trade mark cases. The full agenda for the afternoon can be found here.

Many thanks to all our panel members, moderators, Mr Justice Arnold and the audience for participating. If you were unable to attend or simply wish to relive the excitement of the day’s events, a brief overview of the topics and discussion can be found below.

Panel 1 - “It’s ok to use someone else’s name and logo to refer to them, right?" Exploring the boundaries of honest nominative use.

Moderator: Elenora Rosati

Panellists:

• Mark Cruickshank, Managing IP Counsel, The Royal Bank of Scotland Group
• Dev Gangjee, Associate Professor at the University of Oxford
• Lindsay Lane QC, Barrister at 8 New Square
• Rebecca Pennington, Senior Counsel at Snap, Inc

Elenora opened the panel by inviting Dev to discuss the broadening out of referential use in Art 14(1)(c) of the TMD 2015.

Dev noted that following recent changes in the law referential use may now clearly cover spare parts and accessories, product reviews, media reportage, parallel imports, comparative advertising, resale, parodies and incidental/background use. The honest practices proviso also has the potential for being specifically adapted to each of these categories of referential uses, while also recognising the legitimacy of the defendant’s use (for instance, considering the defendant’s speech interests in an expressive parody under honest practices).

Mark then discussed the BMW v Technosport Limited case in relation to the specific use cases discussed there (use on t-shirts, use on the van, use on the Twitter account). In this case the context in which the mark was used proved definitive.

Elenora asked Rebecca to provide the audience with some insight into Snap’s approach to enforcing its own trade marks. Rebecca explained that Snap wants people to be able share its mark to talk about its products and services, provided such sharing is done in a way that is consistent with its Brand Guidelines, and provisions in its terms of service.

Lindsay used the case of Carrefour v Alimentaire (C 562/15) to discuss the status of the law regarding comparative advertising. This case concerned asymmetric comparison (which Lindsay helpfully termed “comparing apples v pears”). The CJEU held, amongst other things, that to avoid being misleading adverts must provide information in the body of the advert showing the basis for any comparison.

The Retromark Awards

Presented by Darren Meale, the Retromark Awards recognise the cases that have gripped, surprised and disappointed this year. The following cases won their respective categories:

• Anti-climax of the year – Cartier International v BT – This case marked the conclusion of ten years of exciting litigation regarding website blocking orders. The anti-climax came in the UK Supreme Court where it all came down to a relatively small costs point – the Supreme Court holding that implementation costs lie with infringers rather than ISPs.
• Epic saga award – Nestle v Cadbury – The series of disputes between Nestle and Cadbury (regarding both the shape of the KitKat and Cadbury’s colour purple) have the (dubious?) honour of appearing in every edition of Retromark so far. Long may they continue.
• Missed opportunity of the year – McDonald’s v Supermac – This was a case deemed so unfortunate that it deserved a category of its own. The case underlines the dangers of complacency and the importance of evidence, even when the point in dispute (has the mark BIG MAC been used for hamburgers) appears a simple one.
• Contribution to the Art Award – Frank Industries v Nike – Frank Industries’ brave fight against the bigger and badder Nike in securing an interim injunction over Nike’s use of LNDR (and then following up with a win at trial a short while later) won this award.
• Case of the year – Sky v SkyKick – this case was the topic of discussion for the keynote address and the second panel.

Keynote address: Mr Justice Arnold, the High Court of England and Wales

After a short break we were lucky enough to hear from Mr Justice Arnold regarding the SkyKick case. His address specifically considered the key issue of the case: whether the lack of clarity and precision of specifications of goods or services and bad faith though lack of intent to use were grounds of invalidity. Mr Justice Arnold took the audience through the background of the case and the pleadings from both Sky and SkyKick. The judge took us through the five questions he referred to the CJEU, before concluding that no date had yet been set for the CJEU’s answer, which may come no earlier than 2020. We await the CJEU’s response and Mr Justice Arnold’s ruling thereafter with great interest.

Panel 2 - “Drafting, enforcing and attacking trade marks following SkyKick and Fidelis: how should we write, prove use of and scope the boundaries of protection of registrations?"

Moderator: Darren Meale

Panellists:

• Richard Goddard, Trade Mark Counsel, BP, and First Vice President of CITMA
• Stuart Baran, Barrister at 3 New Square
• Thomas Hannah, Senior Counsel Legal Brand Protection, GSK
• Adrian Smith, Partner at S&S

Darren opened the discussion with the question of whether we should allow terms like “computer software” and “financial services” in trade mark specifications.

Richard argued that the terms are too variable to be compatible with the function of a trade mark and that the length of the monopoly right granted for such broad use classes is beyond the legitimate interests of a commercial party. He also commented that the class system as currently constituted is representative of an “early twentieth century shopkeeper mentality” which is no longer appropriate.

The panel then discussed whether five years is too long a time to allow people to claim broad monopolies without any actual use. Stuart considered that five years is not necessarily too long for a mark holder to claim a monopoly right if there is a genuine intention to use the mark. He noted that it is the element of bad faith that undermines the arguments in favour of duration. He gave the example of the evergreening phenomenon and commented that “if revocation can be ducked by a simple act of CTRL + C and CTRL + V then the system is failing”.

The panel finally tackled the controversial question of whether if bad faith is found a mark should be totally invalidated. There was a range of views as whether this was the correct outcome, one panellist added that if so, there should be a caveat that ‘bad faith’ should be a high threshold and not lead to infection (i.e. minor bad faith in relation to one element should not invalidate a mark). Richard was nervous about the “wholesale felling of marks” but agreed with the principle that sanctions “should have teeth”.