IPPro Issue 006

issue 006

2nd October 2018

Drawbacks, copycats and the link tax

This year’s Marques conference in full Harness the power of Patent information with Minesoft ·

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In this issue

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Editor: Becky Butcher beckybutcher@blackknightmedialtd.com +44 (0)203 750 6018 Deputy Editor: Barney Dixon barneydixon@blackknightmedialtd.com +44 (0)203 750 6026

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Conference Report

Diversity in IP

Ben Wodecki analyses this year’s Marques Conference in Paris

Equality remains a high priority issue for intellectual property professionals

Brexit Trademarks

Trade War

Equivalence for UK rightsholders

The latest on the US-China trade war

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Junior Reporter: Ben Wodecki benwodecki@blackknightmedialtd.com +44 (0)203 750 6017 Designer: James Hickman jameshickman@blackknightmedialtd.com +44 (0)203 750 6021 Contributors: Jenna Lomax, Ned Holmes, and Maddie Saghir

EPO Update

EPO president Antonio Campinos recently met with CSC representatives

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Case Report

A David and Goliath story: Monsta Pizza v Monster Energy

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IP Portfolio Manager: Serena Franklin serenafranklin@blackknightmedialtd.com +44 (0)203 750 6025 Publisher: Justin Lawson justinlawson@blackknightmedialtd.com +44 (0)203 750 6028 Office Manager: Chelsea Bowles accounts@blackknightmedialtd.com Published by Black Knight Media Ltd Copyright © 2018 All rights reserved

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Trademark Screening

TrademarkNow’s Nadaline Webster remarks on the genesis of new brands

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Industry Events

Pick up your copy of IPPro at these industry events

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Trademarks · Latest News

EU trademarks and designs to be cloned regardless of deal on Brexit, says UK government The UK Government has revealed that, in the unlikely event of a no-deal on Brexit, rightsholders with an existing EU trademark or registered community design will be granted an equivalent right in the UK. According to the department for business, energy and industrial strategy, a no deal scenario is unlikely given the “mutual interests of the UK and the EU in securing a negotiated outcome”, and as part of a deal, the UK government is looking to allow rightsholders to hold trademarks and registered designs through the international Madrid and Hague systems.

However, with the threat of a no-deal scenario looming, the UK has announced that those with an ongoing application RWS IP PRO AD 0418 HERO.pdf

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at the point of the UK’s exit from the EU will have a period of nine months from the date of exit to apply in the UK for the same protections, retaining the date of the EU application for priority purposes.

The UK government said that the new UK right will be provided with “a minimal administrative burden”.

The trademark or design will then be treated as if it had been applied for and registered under UK law, which means that it will be subject to renewal in the UK, can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal, and can be assigned and licensed independently from the EU right.

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Patent Searches

Trade War · Latest News

The US is abandoning fundamental norms, says Chinese Information Office The Information Office of the State Council of China has accused the US of “abandoning the fundamental norms of mutual respect and equal consultation that guide international relations”.

In a white paper that aims to clarify the “facts” about the US-China trade war, the Information Office claimed that Trump’s administration has “brazenly preached unilateralism, protectionism and economic hegemony, making false accusations against many countries and regions”, most notably, China.

The white paper outlines China’s payments for the use of US IP and how drastically it has risen: between the years 2012 and 2016, China imported nearly 28,000 items of IP from the US, and its payments for US IP doubled in six years from $3.46 billion in 2011 to $7.2 billion in 2017. It also showed that China’s IP payments to the US accounted for a quarter of its total IP payments to foreign countries.

The white paper points out that China has set up three IP tribunals in Beijing, Shanghai, and Guangzhou to handle cross-regional IP cases, including those related to patents.

On top of this, China’s State Intellectual Property Office established a coordinated system with rapid review, rapid rights verification and protection, and built a nationwide 12330 network that provides assistance in defending rights and accepting reports and complaints.

It claimed the US’s practice of forcing other nations to accept the IP standards and market access requirements of the US, or face retaliatory trade sanctions as “aggressive unilateralism”.

The report concluded that China is “firmly committed to protecting property rights and IP rights”.

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Trump’s new Cyber strategy aims to quash IP thefts US president Donald Trump has released a national cybersecurity strategy that includes plans to “maintain a strong and balanced intellectual property protection system”.

The National Cyber Strategy will modernise the US’s cybersecurity infrastructure to “ensure continued economic growth and innovation in the digital age”.

The strategy offers plans to “foster a global IP rights system that provides incentives for innovation through the protection and enforcement of IP rights such as patents, trademarks, and copyrights”.

According to the plan, strong IP protections will “ensure continued economic growth and innovation in the digital age”. Also outlined in the strategy is the promoted protection of sensitive emerging technologies and trade secrets.

According to the paper, the US Government will “work to prevent adversarial nation states from gaining unfair advantage at the expense of American research and development”.

Trump’s National Cyber Strategy will aim to protect American ingenuity from IP theft to promote American prosperity and will “protect cyberspace as an engine of economic growth and innovation”.

The strategy specifically calls out China, arguing that the country has been engaged in “cyber-enabled economic espionage and trillions of dollars of IP theft”.

It claimed those who steal US IP are “adversaries” who are trying to undermine the US economy and “sow discord in our democratic processes”.

Patents · Latest News EPO dismisses employee under new controversial ‘incompetence’ provisions The European Patent Office (EPO) has dismissed an employee under controversial new provisions in its service regulations that allow dismissals based on “professional incompetence”.

The employee, an examiner working in the EPO’s office in The Hague, was dismissed following a procedure before the joint committee on article 52 and 53 of the service regulations.

Article 52 allows employees to be dismissed if they still prove to be “incompetent in the performance of [their] duties”, after undergoing procedures defined by the office’s president to “identify, deal with and remedy cases of lack of ability and efficiency in a timely and appropriate fashion”.

The dismissal came ahead of the Staff Union of the EPO (SUEPO) branch of The Hague’s first meeting with EPO president, António Campinos.In a message to members of the SUEPO, the union explained that the employee had been working at the EPO for more than 10 years.

The message added: “His daughter started at the European School of The Hague only last week. On Monday he was still working. On Tuesday he arrived at the office only to discover that his badge had been deactivated. He became aware of his immediate dismissal when he came to work and went to the reception desk to enquire about his badge problem.

We happened to bump into our colleague as he was being escorted out by two security guards in the evening after he had been given the opportunity to collect his personal items.”

SUEPO called article 52 “fundamentally flawed” and noted that the EPO’s Central Staff Committee (CSC) had sent a letter on 20 July to Campinos addressing this problem.

According to SUEPO, the CSC had pointed out to Campinos that the office “had not met its obligation to

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define procedures for the implementation of article 52 of the service regulations, contrary to the requirements of article 52(1), and stated that an ad hoc procedure, defined on a case-by-case basis (if any) cannot be (seen to be) fair to the concerned colleagues”.

The CSC appealed to have all pending cases put on ice until fair procedures were defined.

SUEPO said that this “clearly did not happen” and questioned whether the president was “ill advised when he took the decision to dismiss the colleague”.

The union added that the specific circumstances in the case raised additional questions, including the lack of a due notice period of the dismissal. SUEPO explained that the regulations in force allow for a nine-month notice period to dismissed staff.

It asked: “Why has management deemed necessary to give immediate effect to the dismissal?”

SUEPO also questioned why dismissal was chosen instead of classification to a lower group or downgrading.

It queried whether the employee was offered another position in the organisation before considering such a drastic measure as dismissal.

Finally, SUEPO asked why the management of the office waited until the “very last possible moment to inform our colleague” and made him go through the “humiliating steps” described in its message.

SUEPO said: “Is the office going to provide adequate financial compensation for the dismissal with immediate effect, including health insurance coverage, pension contributions, payment of school fees?”

Patents · Latest News

Campinos gives ‘strikingly different’ tone in EPO’s CSC meeting A recent meeting between the European Patent Office’s Central Staff Committee (CSC) and president António Campinos revealed a “strikingly different” tone from recent practice, according to the CSC. The meeting, which took place on 12 September following Campinos’s chairing of the statutory General Consultative Committee, revealed a different tone to recent actions taken by the office and Campinos showed himself as “open to discussion”, the CSC said.

In a report on the meetings, the CSC revealed some of the topics that were discussed, including recent “incompetence” provisions, disciplinary cases, the reward structure at the office, and the salary adjustment procedure.

Campinos and the CSC also discussed the HR policy ‘Challenging People’, which it said has “poisoned the working atmosphere at the office”.

“In our interpretation, about 30 percent of staff are in principle targetable as ‘Challenging People’”, the CSC said, “we reported that more and more colleagues asked us for advice, because they happened to fall into these example patterns and were suffering from doubtful procedures”.

“In practice, this translates into statutory and human rights (for example, the right to strike) being ignored and conduct actually compliant with the Service Regulations being interpreted as disloyalty when it displeases management.”

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Campinos responded: “Staff should know what is expected from them and show engagement.”

“In some special cases, managers might need to learn and improve the way they treat their staff, because nobody is perfect.”

“Professional incompetence should be dealt with according to a ‘recuperation plan 12’ and a clear procedure needs to be established.”

He added that the HR policy ‘Challenging People’ belonged to the history of the office, which could not be changed.

But Campinos “clarified that the support of the colleagues should now be key, not the stigmatisation of staff”.

“Any misuse of the old patterns should be notified to the COOs, whom he expects to follow his opinion.”

The CSC said that Campinos “repeatedly referred to the EU regulations as the benchmark”, and that the meeting lasted longer than scheduled.

“A few small steps forward have been made, others not. We perceived it as a first move in the right direction.”

The CSC has been invited to summarise further issues in written proposals and a follow-up meeting has been pencilled in for the 16 November, following the next GCC meeting.

Patents · Latest News UK’s participation in UPC ‘not possible’ post-Brexit, says Max Planck Institute researchers The continued participation of the UK in the Unified Patent Court (UPC) and unitary patent will “not be possible” postBrexit, according to Matthias Lamping and Hanns Ullrich of the Max Planck Institute for Innovation and Competition. Lamping and Planck made the comments in a paper covering “the impact of Brexit on unitary patent protection and its court”.

In the paper, Lamping and Planck argued that the unitary patent system rests on two legally different but interconnected pillars. These are EU Reg 1257/2012, on the implementation of enhanced cooperation by the creation of unitary patent protection, and the agreement between the Member States of the EU on the establishment of the UPC. The UPC will have exclusive jurisdiction over invalidation and infringement actions concerning the European patent with unitary effect and/or the classic European (bundle) patent. However, as Lamping and Planck commented, the link between unitary protection of European patents and the UPC Agreement is not only one of jurisdiction, but also one of “substantive law”.

Many in the patent law community hope to overcome the disruptive effects the withdrawal of the UK from the EU will produce on both the territorial scope of unitary patent protection and on the UPC as a court common to EU Member States, they added. But they discussed that unitary patent protection cannot be dissociated from the general legal order of the EU’s Internal Market and extended to the UK once it has left the union.

Dennemeyer adds new Asia and Pacific managing director Dennemeyer has named Dallas Wilkinson as its new managing director for Asia Pacific.

Wilkinson will oversee Dennemeyer’s business activities in the region, including the existing offices in Japan, China, Singapore, and Australia. He will also be responsible for driving the development of new business through opening new offices across the region. He brings his extensive experience leading large global teams and will start by establishing a new Dennemeyer office in Sydney.

Commenting on his new role, Wilkinson said: “I am excited to join Dennemeyer, a company which has delivered impressive growth over recent years becoming a market leader in IP.”

Lamping and Planck stated: “Any such extension is incompatible with the autonomous character of EU law and its institutions, will result in a legally split unity for separate and separately regulated markets, and conflict with both the UK’s and the EU’s public interests in defining and implementing a patent policy of their own.”

“The Asia Pacific region has an exceptional team to service all our customers’ needs. It has incredible potential for growth across a broad product and service offering to establish Dennemeyer as the IP company of choice. I look forward to meeting with our customers to better understand their needs.”

They affirmed: “Since the core objective of the UPC Agreement is to establish for the adjudication of unitary patent protection a common court of EU Member States that, as such, forms part of the judicial system of the EU, continued participation in the UPC Agreement of the UK post-Brexit will not be possible. It would be incompatible with the EU’s foundational principle, which is integration by virtue of the operation of an autonomous legal order based on a complete system of legal protection by national courts acting as ordinary courts of the union and in cooperation with the Court of Justice of the EU.”

Dennemeyer’s CEO, Reinhold Nowak, added: “Today the countries in the APAC region still comprise some of the fastest growing and most innovative economies in the world.”

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“In order to participate from those growth rates, we need the support of experienced senior executives, such as Dallas Wilkinson, with a global management background, and the know-how of the local markets that our clients expect from us.”

Copyright · Latest News AIM reports five million piracy takedowns in four months The Association of Independent Music (AIM) has removed five million links to piracy sites in four months, using MUSO’s antipiracy platform, Protect.

MUSO Protect provides content protection, automatic takedowns, and an online dashboard that allows content owners to see all removals.

AIM represents more than 800 independent music companies in the UK. All of its label members have free access to the MUSO Protect platform as part of their membership.

James Marrs, digital delivery and data coordinator at one of AIM’s label members WARP Records, commented: “MUSO has proven to be an effective and simple tool to use.”

“We have been impressed with the results, having recorded over 250,000 takedowns in two months.”

Gee Davy, head of AIM’s legal and business affairs, added: “AIM’s partnership with MUSO began in May this year, and to see five million takedowns achieved already reflects the speed and efficiency with which MUSO has covered the catalogues across the independent music community.”

Russel Coultart, global head of music at MUSO, said: ”Digital piracy and unlicensed content is a major issue for musicians and their labels—it subtracts from revenues, eats into margins, and takes away control from the artist.”

“While piracy is detrimental to all musicians, it’s particularly tough on independent artists, leading to decreased productivity and ultimately less music being produced.”

“We’re delighted with the progress AIM has made with our technology in giving labels and artists more control over their content.”

+33 (0) 1 84 17 45 32 contact@ipzen.com www.ipzen.com

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Copyright · Latest News EU member states don’t house copyright infringing websites, says EUIPO Only a small number of copyright infringing websites are located on servers within the EU, according to an EU Intellectual Property Office (EUIPO) report.

The report titled “Identification and Analysis of Malware on Selected Suspected Copyright— Infringing Websites” showed that an overwhelming majority of infringing websites are hosted or have a domain named linked to hosting in the US. The EUIPO also found that .com and .net are the most frequent top-level domain names used by suspected copyright-infringing websites, as they don’t require identification of the user with a passport or other identification documents.

The report highlighted a number of techniques used by websites to deploy malware and potentially unwanted programs in order to obtain personal details of users.

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Examples included tools that claim to block ads, facilitate access to infringing content, or licence key files.

Of the websites identified by the report, “no profoundly harmful” malware samples, such as ransomware or botnets, were found. However, the most collected malware samples found by EUIPO researchers were trojans, keyloggers, network tampering efforts, and rootkits.

Researchers analysed over 2,100 domain names from 10 selected EU Member States.

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Monsta Pizza · Case Report

A sling and a stone A small town pizzeria fought a worldwide brand and won, but was its victory worth it?

Ben Wodecki reports David v Goliath is a tale as old as time. The underdog triumphant: the Battle of Agincourt, James Douglas beating Mike Tyson, Leicester City winning the Premier League. Now, an independent pizzeria from a small town in the UK has written its own story.

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In June 2017 Monsta Pizza applied to register trademark for the word ‘Monsta’, only to immediately receive a notice of opposition from Monster Energy via the UK Intellectual Property Office (UKIPO).

Chris Dominey and Chris Lapham, co-founders of Monsta Pizza, initially thought that the opposition was so

Monsta Pizza · Case Report ridiculous, that “it must have been a mistake, or maybe an automatically generated response to give them time to look at it more closely”.

However, it quickly became clear to the pair that this was no mistake, and they soon received a letter from Monster Energy’s legal representation, which was taking the situation “very seriously”.

Dominey and Lapham say they wanted to get on with running and growing their small business, and after a successful hearing, George Salthouse, hearing officer for the Registrar of the UKIPO ruled in favour of the pair, finding that Monster Energy had failed in its attempt to prevent Monsta using its name.

Dominey admits he “gained a certain amount of satisfaction in defeating them”.

He says: “The fact that they are a worldwide company wouldn’t have been relevant, except for the fact that this particular company appears to make a habit of bullying other businesses and took a very unreasonable approach to the negotiations, flatly refusing our perfectly reasonable offers to settle, instead dragging it out to maximise the pain and cost for us. We’ve created a brand which works and our customers seem to like, so I’m very pleased we’ve managed to avoid having to scrap it and start again.”

However, the win was not without its drawbacks, and the pair explain that the process of defending their mark had cost them over £10,000. The cost awards in the case are capped, meaning Dominey and Lapham only received £2,100, leaving them out of pocket by £8,000.

Despite this, Dominey says that you should “always stand up to bullies … If you know you are right, don’t be afraid to take them on”.

But the financial strain has hit Dominey and Lapham’s business, resulting in Dominey calling for the rules to be reviewed to prevent this sort of conduct.

He says: “Monster Energy unfairly opposes countless businesses and although it loses many of its oppositions, many of its victim’s businesses are severely or fatally damaged as a result of its actions.”

Michael Downing, a patent and trademark attorney and head of Downing IP, represented Dominey and Lapham in their dispute. According to Downing’s website, he enjoys defending clients against flawed threats of IP infringement proceedings

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and is committed to securing a fair outcome for those who need their ideas protected.

According to Downing, the first step you need to take as a small company in a trademark dispute is to keep the dispute in the Registry. He notes that this one step reduces your costs by “about 90 percent”. By keeping it in the Registry, it could make the difference between a company being capable of fighting the dispute at all and having no choice but to give up, he says.

He explains: “In Monsta’s case, the dispute was already in the Registry because they’d had the good sense to file a trademark application, but in other cases, we’ve had to take steps to ensure that the dispute can be heard in whichever part of the UKIPO is relevant.”

Next on Downing’s tips: be bold. He says that there is often a validity angle to these disputes, and if that is the case, then “go for it”. He argues that using the validity angle “sends a strong message—that you’re not fazed by the size difference”.

Arguing validity also gives you the chance to choose the forum and get the dispute into the UKIPO. Once the dispute is up and running, Downing says you need to be ruthless about its conduct.

“If a field of research is not yielding anything useful, stop,” he says, “there’s always a temptation to keep hunting, especially when you’re looking into the validity of a patent, but you have to keep reminding yourself that you’re here to help the client and that bankrupting them in the process of getting a positive result isn’t going to be that useful to them.”

In the Monsta dispute, Downing explains that they “hit on a huge seam of third party uses of ‘Monster’ to describe food and drink portions” and he says it was tempting to continually keep documenting and adding more and more to their evidence. If this had been done, their evidence would have been “‘overwhelming’ instead of merely ‘persuasive’”, but would have added to the costs without making a difference to the result.

Downing concludes by suggesting that Monster Energy “injects a little realism into its outlook”.

He says: “Whatever they might like to think, they chose to trademark a dictionary word and that comes with baggage. In this case, there is a whole raft of other meanings of the word that is out there, in use, and available to anyone. So they don’t have the monopoly over the word that they might wish they did. This case is a reminder of that fact.”

Monster Energy has since filed an appeal in the case. IPPro

Trademark Screening · Feature

Perfecting the in-house trademark screening process TrademarkNow’s Nadaline Webster remarks on the genesis of new brands and how trademark searching tools can help marketing teams find innovative solutions Aligning activities from every department with the overall goals of the company is a sound strategy for success. However, these are general, overarching goals, and while it is relatively straightforward to connect these bigger objectives to everyday actions, aligning smaller ideas with each other can be problematic. Nowhere is this more true than in the creation of new brands.

the essence of who their customers are and what it is that they really want. Perfectly conceived products and their branding generates a need and a hunger within their potential end consumers to obtain the transformation that only this product can achieve. At the core, marketing needs to create brands that tug at their consumers heartstrings whilst hoping they are firmly tied to their pockets.

No one department within a company is ultimately responsible for the genesis of a new brand. The idea for a new product or service can come from anywhere—product development, marketing, existing clients, or a throwaway comment on Twitter. Anyone can shout “let there be light”, but once the evolution has begun, it is often largely down to both marketing and legal departments to flip the switch.

The end consumer is not so much a concern to the legal department as is the company itself. Whatever the essence of any brand that a company might move forward with, the critical point for legal is safety. For a brand to be safe, it needs to be registrable, protectable and above all else distinctive.

The crux of the issue for legal is that they should never have to engage in a process of explaining why a brand the company has invested substantially in is no longer available for use, or how big the impending lawsuit might be.

In theory, the goals of both of these departments in creating and protecting this glossy, new brand are the same. In practice, however, they are often sat in diametrically opposing positions.

It is marketing’s job to create an evocative and resonating brand: one which supports the kind of messaging that catches

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You would think that these two criteria would align perfectly.

Surely everyone involved wants both of those things? Of course they do, but that doesn’t mean it is easily achievable.

For one staggeringly simple reason: the kind of brand names

Trademark Screening · Feature that are evocative, resonating and engaging are also almost always difficult to register and protect. The kind of brand names that are easier to register and protect are often more difficult to market as effectively. As each industry and market becomes more populated, finding the name that meets both criteria gets increasingly more difficult.

It is not an unsolvable problem, it is more that the resolution of the issue consumes a great deal of every key resource a company prizes the most. Having legal work through lists of unlikely names provided by the marketing team is rarely a good use of their time, and in the time it takes for legal to work through that list, it is far from uncommon for marketing to have progressed with their favourite of those names in terms of ideas, messaging and even packaging. After all, the clock is ticking for the team and they don’t want to sit idly. None of this is any consolation should it prove that the name they have been using as a ‘working name’ is not suitable nor available for use from a legal perspective.

Up until now, it has been difficult to see a more permanent fix. Investing time and money in training marketing personnel in basic IP issues, particularly that relates to trademarks, can help. As can involving the in-house trademark practitioners or outside counsel in the branding discussions. Both of these options are cumbersome and expensive.

Is there a reasonable alternative?

Today, legal technology offers solutions to many in-house problems and promises even more in the future. Creating an in-house preliminary trademark search process that is fast, efficient and effective is no exception. At TrademarkNow we’ve

Nadaline Webster is the director of content at TrademarkNow, which provides intelligent web-based trademark management to enterprise companies, law firms and branding agencies.

Nadaline sits on the International Trademark Association’s Trademark Reporter Committee and serves as an editor for the association’s law journal.

She can be found blogging at www.trademarknow.com/blog Twitter: @tmnadaline

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developed a new tool, ExaMatch Basic, which gives marketing departments unlimited searches and the ability to instantly assess ideas as they come up against trademark data.

ExaMatch gives access to data from two of the most critical global registries, EU IP Office and the US Patent and Trademark Office.

The screening search is intuitive, easy to use, and has two distinct advantages for marketing teams. The first is that, while no search, clearance, or otherwise can even come close to replacing advice from a trademark attorney as to whether a mark is free to use, it can show the team the volume of use for the word or words they are experimenting with across two major markets for most companies. In doing so, it reduces the number of names going to the legal department for clearance and increases the likely strength of those candidate names.

Secondly and of equal importance, use of an effective screening tool which harnesses trademark data from the IP offices by the marketing team over time, educates them about the kind of potential marks which are more difficult to register and/or use. They begin to see patterns in words, phrases and ideas and develop an intuitive sense of the hallmarks of a stronger name candidate.

Perfecting the in-house preliminary trademark search refines and streamlines the entire naming process right at the start across both marketing and legal, resolving an age old problem for companies of all sizes. Head over to our website to get use ExaMatch now: https://www.trademarknow.com/freetrademark-search IPPro

The kind of brand names that are evocative, resonating and engaging are also almost always difficult to register and protect

Marques · Conference Report

Marques 2018: Drawbacks, copycats and the link tax Discussion at this year’s Marques conference covered a range of topics, including the EU’s new copyright law, plain packaging and trade secrets Ben Wodecki reports Audrey Hepburn once said that “Paris is always a good idea”, and as a location for the 32nd Annual Marques conference, Paris was a great one.

The French capital played host to a number of intellectual property lawyers, who came together at the Paris Marriott Rive Gauche Hotel to discuss some of the most pressing issues in Europe at the moment.

In the event’s opening session, National Anti-Counterfeiting Committee president and French senator Richard Yung called plain packaged cigarettes “a drawback”.

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Yung said that plain packaging laws on cigarettes in France “creates a dangerous precedent” and “is a drawback”.

The laws were implemented in 2017, in a bid to help consumers quit smoking.

He explained how brands contribute to the European economy and discussed the role branding has to play in guaranteeing quality and prestige.

In terms of protecting products from copycats, associate professor from the Vrije Universiteit Amsterdam, Femke Van Horen, said that consumers are more likely to choose a copycat product based on its thematics, rather than its

Marques · Conference Report features or type and that this is where enforcement should be aimed. She added that blatant similarity in copycat products is disliked by consumers and subtle similarity is liked. But, in the litigation world, the focus is on high similarity copycat products because it is easier to prove that they are infringing in relation to confusion, she said. However, Van Horen highlighted that some blatant imitation products can have a positive effect for brands as they could raise the positive association of the imitated brand.

Van Horen, who has been studying product imitation for over a decade, said that those in the IP industry need to be “much more aware of these subtle imitations” as “consumers think differently to how lawyers think they do”.

Elsewhere, Donal O’Connell of Chawton Innovation Services said that the subject of trade secrets was so overlooked in most IP training sessions conference topics, that he used to consider it the “neglected stepchild of IP”.

O’Connell said that, previously, trade secrets were “off the radar” but in the last two years, the “world of trade secrets has been transformed” and has become “sexy, exciting and fashionable”.

He highlighted that changes to the law have seen trade secrets become recognised as a form of intangible asset. He said: “I think that in the long term, the taxman taking note of intangibles is going to have a massive impact.”

In another session, Franz Gernhardt, senior counsel at Bird & Bird warned that articles 11 and 13 of the EU’s controversial copyright directive could be difficult to enforce.

I think this year’s Marques conference is really special because more law firms and companies outside of Europe attended the conference

Xingqian Han, patent attorney, Right & Able

Article 11 brings a so-called ‘link tax’ that would allow publishers to secure licence fees from search engines and other intermediaries who use their content for up to 20 years from publication.

Article 13 shifts the burden of responsibility for copyright infringement to the platforms, forcing them to readjust their content protection mechanisms and take down user content at the request of rights owners.

Gernhardt said it will be “interesting” to see how the articles are implemented.

According to Gernhardt, Germany already has a similar law but is finding it very difficult to enforce. Gernhardt described article 13 as “very detailed but also difficult”.

I was delighted to attend the Marques conference in Paris, and speak on the trade secret panel. The event was very well organised, with a large diverse list of participants Donal O’Connell, managing director, Chawton Innovation Services

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He warned that if the legislation is adopted then it would “likely be adopted for other IP rights, even if it is not very comparable”.

He added: “Usually copyright laws are implemented first, and then trademark law applies this after.”

Conference excursions saw attendees heading for an evening of culture, canapes and clinking glasses at the Musée des Arts Forains.

Here attendees enjoyed evening funfair games located within the Pavillons de Bercy, as well as a wonderfully whimsical Black Tie Gala Dinner, which likely left a few with sore heads the next morning. IPPro

Diversity in IP · Feature

Equality for all Despite advances in equality in the workplace, professional diversity is more important than ever, and intellectual property professions are no different Ben Wodecki reports Intellectual property professions are more diverse than some, but there is still a lot more to do. Nowadays, firm’s are attempting to bridge the gaps and break the ceilings in any way possible to showcase how such an important sector is also a diverse one.

Although there is a lot to work on, in the UK this situation is much better than other jurisdictions.

One of the UK’s diversity champions is former Chartered Institute of Patent Attorneys (CIPA) president and current leader of IP Inclusive, Andrea Brewster Brewster received an OBE in the Queen’s Birthday Honours for services to IP in June 2017. She has pushed inclusivity in the UK’s IP landscape for years and calls IP Inclusive “a call to action”.

The IP Inclusive Charter, which to date has won two awards, was launched in 2016 by a cross-profession task-force and encourages IP professionals to do “at least one thing, however small”, to improve diversity and inclusivity in the IP professions.

“It might be an in-house event or something larger; it could be as simple as a discussion over coffee and cake, or listening to one of the IP Inclusive webinars together, or making a

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commitment to change the organisation’s diversity and inclusivity policies.”

She says that you only have to look around you in the IP professions to see that we are not yet as diverse as we could be, by any number of criteria, regardless of quantitative data on the subject.

Brewster remarks: “There is still work to be done in improving the mix of people we have in our community, and in ensuring that the IP professions are sufficiently inclusive to attract, welcome and retain a more diverse range of professionals.”

“The more noise we make, the more conversations we start, the more people we enthuse to join our cause, the better able we are to make positive changes.”

IP Inclusive has its own week long event between the 12 and 18 November, alongside the Women in IP, IP Out and IP&ME support groups. Brewster and her team encourage not just supporters and charter signatories to attend, but also the people who have not so far been involved but want to help create a more diverse and inclusive profession, both during IP Inclusive week and throughout the year.

For women in the UK, the trademark law industry is an attractive field and 53 percent of chartered trademark attorneys are women. However, Tania Clark, president

Diversity in IP · Feature of Chartered Institute of Trade Mark Attorneys (CITMA) and partner at Withers & Rogers, says that although the trademark industry doesn’t have issues attracting women, as a profession, trademark attorneys must “encourage as much diversity as possible, to ensure that we attract and keep the best talent available in our profession”.

According to Stonewall’s LGBT in Britain Work Report, 58 percent of participating 18 to 24-year olds in the UK alone admitted to hiding or disguising that they’re LGBT at work because they were afraid of discrimination.

Clark’s first step towards this would be to “talk about it more”.

Davey says that workplaces “need to ensure that they are makingthose people aware that they are places that they would be comfortable being themselves”.

She adds that “being inclusive isn’t just attracting women” and that it’s important to remember that it covers all sectors of society.

He highlights a lack of role models in the industry being the biggest hurdle for entry into the trademark world for those from the LGBTQ community.

Clark says that she has followed in the footsteps of some excellent past presidents and that a number of CITMA presidents have been women, so it has been “less unusual” for a woman to be president of CITMA. She reiterates that she wants to see “more diversity, not just focused on more women”.

At CompuMark, Davey says there are employee resource groups where people from different diversity groups can come together to celebrate diversity and to make sure that there is joint support.

“To me, that wouldn’t be my aim or what I’d be looking for.

Diversity at large is what I’d wish to see, with people coming in from different sectors. That is the true meaning of diversity, because then you will tap into the public at large and benefit from the talent of different people.”

“It is difficult because these are challenging times for our clients in trying to advise them and provide them with security when we don’t actually know what going to happen with Brexit.”

He points out that the groups are organised by the employees themselves.

Rob himself is the leader of Spectrum for LGBT+ people at CompuMark, and says the groups are something supported centrally.

In order to encourage diversity in the IP landscape, Davey says that there needs to be more visibility. He explains that both LGBT and senior leaders at companies need to be speaking about this.

She added: “However, the international aspect of our day to day job has become more relevant which has been positive.”

CompuMark’s parent company, Clarivate Analytics, hosted a Spectrum Pride Week Panel on 26 June.

“All of us have had to take it on board that, going forward, we’re going to be getting out into the EU far more and working with EU attorneys.”

Davey says that the event was “about allies” and said that he thinks “everyone in the leadership team of an organisation should consider themselves an ally of LGBT employees and to speak up and make it clear that minorities are supported and included”.

For the LGBT+ community, Rob Davey, senior director of managed solutions and global market at CompuMark highlights that the IP community needs to “encourage people to discuss their sexuality and make it clear to people entering the industry today that there are LGBT+ people out there”.

He said: “I think there is a fair number of people who are out in their personal lives and probably to their close colleagues, but not making that clear beyond those that they are very close to.”

“I think some people feel that’s a personal issue for them, which I understand, but I think without that representation it will be difficult for people leaving university or looking for careers to see that this is a career that people like them are in.”

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According to the Wisconsin LGBT Chamber of Commerce report, of 88 companies polled, those with LGBT+ people in senior leadership roles report a greater business outcome compared to those who do not.

Davey says that it is clear “there are good business reasons for doing it as well as the obvious societal improvements that would come along with that as well”.

In terms of diversity, the IP industry is in a better place than most. But that still doesn’t mean it’s perfect.

There is still a long and winding road ahead to travel in the fight for true equality. IPPro

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