The Taylor Wessing Brand Forum 2023 Conference offered valuable insights into trademark law, copyright cases, and the evolving challenges faced by brands, especially in the post-Brexit era. Here are some key takeaways from presentations by Anneka Dalton, Aaron Hendelman, and Allan James.
Anneka Dalton - Bad Faith in Copyright Case Law Post-Brexit
Anneka Dalton delved into the complexities of copyright case law, with a focus on bad faith issues in the UK and EU post-Brexit. Noteworthy cases included:
Sky v Skykick
Issue: Overly broad trademark specifications.
Outcome: CoA found no bad faith, awaiting Supreme Court ruling.
Challenge: Determining the correct approach if bad faith is established.
Lidl v Tesco (Evergreening)
Outcome: Largely successful copyright infringement case.
Challenge: Shifting the burden of proof to the claimant in bad faith claims.
Best Practices for Brands
Consider the commercial reasoning behind trademark filings, stress-testing breadth of specifications, formal audits of trademark portfolios, and mindfulness of red flag indicators of bad faith.
Post-Brexit Prior Rights
RIVIERA Case: Prior right only needs to exist at attached UKTM priority/filing date.
IPO Guidance: UK rights relevant if the decision date aligns.
Indo European Foods: Passing off conflict still relevant during the transition.
Allan James - UKIPO Senior Hearing TM Officer / Head of TM Tribunal
Allan James, drawing on his extensive experience, provided insights and answered questions on trademark registrations:
Cluttered Register: Acknowledged the cluttered nature of the trademark register.
Skykick Decision: Wide specifications open to prima facie case for bad faith.
Trademark Filings for Virtual Goods: Preexisting physical goods registrations may not suffice. Refiling for virtual goods may be necessary.
Aaron Hendelman - Wilson US TM Law
Aaron Hendelman shared insights into US trademark law, focusing on the Jack Daniels v Bad Spaniels case and other relevant issues:
Jack Daniels v Bad Spaniels:
Limits of parody and dilution by tarnishment.
SC decision unanimous, applying Lanham Act to foreign conduct.
Trader Joes Co v Hallat 2016:
“Some effect” enough for territorial jurisdictions of the US.
Failure to Function:
Lizzo case - initially refused for failure to function.
Taco Tuesday filing by LeBron refused.
Things to Watch:
Ongoing collision between 1st amendment and TM.
Contributory TM infringement.
Clarity on brand use in virtual goods, as seen in the Nike club StokX case.
Linda Marquardt - Opportunity and Risks of Brand Expansion
Linda Marquardt explored the opportunities and risks associated with brand expansion, emphasizing the importance of strategic partnerships, licensing, collaborations, and careful consideration of touchpoints.
The conference provided valuable insights into the complex legal landscape that brands navigate, requiring vigilance and strategic thinking to protect their intellectual property rights effectively.
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