'This week, I had the privilege of speaking at the CITMA Paralegal Conference 2024, and I would like to extend my thanks to CITMA for hosting such a productive event. It was fantastic to engage with over 150 delegates, speakers, and exhibitors, and share my thoughts on some significant trade mark cases. ' Mike Tennant, Chartered Trade Mark Attorney

My Presentation: The Importance of Case Law

During my session, I walked through five key cases that offered valuable insights into the complexities of trade mark law. I began with the COVIDIOT case, which was refused by the EUIPO’s Grand Board of Appeal for being contrary to public policy and principles of morality. This case reminds us that certain marks, regardless of how popular they may seem, can challenge societal values and are thus unregistrable. 

Next, we discussed genericide, using the DRY JANUARY mark as an example. Here, the UK IPO ruled that the mark could not function as a trade mark, as it had become too widely recognised as a generic term. This highlighted how careful brand owners must be when using trade mark rights and preserving the exclusive status of their brands. 

I then mentioned the NKD vs Naked ongoing opposition, as reported in the press. In this instance, an original NKD mark was not renewed in time, which allowed L'Oréal to have earlier rights to the mark "Naked" and subsequently oppose the later-filed NKD mark. This case underlined the importance of having professionals manage your portfolio. 

The Nestlé Crunch case, where evidence was submitted late, served as a cautionary tale. Mistakes like this can have significant consequences, as the mark was ultimately revoked due to the late submission. It’s a reminder that procedural errors, however small, can lead to serious outcomes. 

Finally, I explored the Lifestyle Equities Beverly Hills Polo Club case, which I believe is one of the most impactful rulings for UK practice this year. This case shows the high stakes involved in cross-border trade mark disputes and how vital it is to stay up to date on relevant case law. 

Other Highlights from the CITMA Paralegal Conference 

Beyond my own presentation, the day was filled with incredible insights from other speakers: 

• Samantha Crellin from WebTMS shared practical advice on migrating IP portfolios to new management systems. Her emphasis on proper data mapping, auditing records, and allowing enough time for system transitions was incredibly useful for anyone involved in large-scale IP management projects. 

• Rachel Culverwell’s talk on stress management was timely and resonated with many. She offered actionable strategies for reducing stress, such as incorporating regular exercise, taking breaks, and even bringing nature into your workspace. It was a reminder that managing mental health is just as crucial as managing our workloads. 

• The Career Development Panel, led by Sarah Cantrill, provided valuable insights from Ian Collier, Nick March, and Gail Nicol. Each shared their unique career journeys, and the session gave attendees an opportunity to reflect on their current careers and potential future pathways for themselves. 

• Simeon Bowen from the UK IPO offered a glimpse into the upcoming digital transformation of the UK’s intellectual property services. With an investment of over £100 million, these changes are set to revolutionise the way we manage trade marks and patents, and it’s an exciting time to be involved in the IP profession. 

• Evelina Skrudyte tackled the issue of IP infringement online, discussing the impact of digital platforms on trade mark enforcement. She also made fantastic points about the Apply for Action (AFA) program and the Anti-Counterfeiting Group (ACG). 

• Kate Cheney’s session on recordals and assignments was a detailed look at the challenges of dealing with zombie trade marks and insolvent assignors. Kate’s practical tips for speeding up processes when purchasing trade marks classified as “bona vacantia” were particularly useful. 

• Erin Meakin closed the event by sharing insights into proof of use in trade mark disputes, using the Big Mac and Wonder Woman cases as examples. Her breakdown of what constitutes strong evidence – from financial data to social media analytics – was an excellent conclusion to a day filled with learning. 

Final Thoughts 

It was an honour to participate in the vibrant and informative CITMA Paralegal Conference. The discussions and insights shared were a testament to the dynamic nature of our industry and the dedication of all those involved. I look forward to future opportunities to connect and share knowledge within the IP community. 

For more information on the event, you can read the official key points here.

Do you have a question relating to any Trademark issues - we are always happy to help. Please get in touch.