Issue 052
  April 2015
Contents:
 

MARQUES welcomes EU trade mark reform deal

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The HouseMARQUES interview: David Goldring, Oakleigh IP

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Field Notes: An optical illusion mark creates waves

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Judges Meeting in Dublin on 5th June

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MARQUES Media Roundup

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OHIM IP Academy events

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Madrid System Users Meeting on 3rd May

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OHIM at the INTA Annual Meeting

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Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

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MARQUES welcomes EU trade mark reform deal

MARQUES has provisionally welcomed the agreement announced by the European Parliament, Council and Commission on trade mark reform, which incorporates many changes that MARQUES and other users associations had called for, and looks forward to examining the agreed texts in detail when they are available

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The HouseMARQUES interview: David Goldring, Oakleigh IP

For this month’s interview, James Nurton spoke to David Goldring, MARQUES Treasurer and one of the founders of the association


How did MARQUES come about?

In 1984 I was invited to go to a meeting in London, which John Murphy called together. Most of those present were in-house people working in trade marks and we talked about the fact that no organisation represented trade mark owners in Europe rather than the practitioner. The USTA (now INTA) was focused on American issues at that time.

There were maybe 100 people there, including Marius Knijff who went on to play a big role in MARQUES. I worked at the time for Allied-Lyons, which was an FMCG company, and we hated the fact that big industry owned hundreds of trade marks that they never used, and I got into a discussion with people such as David Tatham of ICI about whether or not a new organisation was needed. It was a very pleasant evening, with lively discussion.

Soon after that I was invited to another meeting, with no more than 10 people, and we became the steering committee which worked for two years to organise the first MARQUES conference in Vienna in 1986.

Where did the name come from?

It came before 1986. We wanted something recognisable that would stand out. We decided to use a fingerprint to show distinctiveness. The fingerprint logo has changed slightly but has remained in essence the same ever since.

What were the aims?

There were three or four. Lobbying was one. Education was another: we believed that many people in companies, not to mention the public, didn’t really understand trade marks – marketing managers for instance often want to call products generic names. For that reason we decided not just to have technical legal presentations at the events but also those looking at industry issues, such as marketing and brand development. Mixing and meeting with fellow professionals in other companies was another part of it.

We also realised that you needed to organise conferences in a way to give time for networking, so we had an elaborate social programme for people to get together. At some meetings if you don’t know anyone, you can be stuck on your own.

What was the first meeting like?

There were about 120 to 140 people there. We started off with the steering committee setting out our plans and there was a lengthy discussion on that. We had some objectors in the audience. A French delegation in particular said they didn’t see the need for the new organisation, and then walked out! Another individual said it was arrogant to come to Vienna and hold a conference in English.

Who was Lewis Gaze?

He was part of the steering committee, and was the in-house IP lawyer for Rolls-Royce Motor Cars. He became the first chairman and sadly died quite young, soon after he stood down. We established the Lewis Gaze Memorial Award to commemorate him. He was a big driving force along with Joan Vass of Mars. She brought in Philip Pettifor, who was the first MARQUES secretary. John Murphy had started the discussions that led to MARQUES, but he didn’t continue to be involved.

When did you become involved with MARQUES again?

I re-joined Council in 1996 after I had bumped into Tove Graulund at another conference and she felt that it would be helpful for me to talk to them about our original plans. I had been to all but one of the intervening conferences. Milan in 1990 is the only one I have missed since 1986.

Why did you become Treasurer and what does it involve?

I was appointed in June 2003 because Colin Grimes had resigned as secretary and Bob Seager had taken over. He felt the organisation needed a Treasurer who had responsibility for the financial matters and to oversee things. He asked me if he could suggest my name to the Council.

The Secretariat do the day-to-day bookkeeping but I am involved on a regular basis approving larger payments and in discussions about spending, budgets, future events costs, monitoring expenditure and so on. I get monthly management accounts and have regular meetings with the Secretariat, including an annual budget meeting.

I am also on the venue committee because considering costs is important in deciding where to hold the meetings. It does involve a significant amount of time, probably at least 10% of my working time. At the Spring Meeting I was elected for another two years.

How are the finances?

The finances are in very good shape. We look to break even each year in all our activities. We have to pay for all the work we do as well as all the events. Any profit can go back in to help developing more services, lobbying or activities. We have to work hard to be prominent in the IP world, and that costs money. We are doing well in that respect.

The Early Bird bookings for the conference are very important. Before we had that, we had to take out bank loans to pay deposits for meetings, sometimes years ahead. At least half of attendees pay up early and that really helps with cashflow. We only started doing that a few years ago.

Do you think MARQUES has lived up to the early expectations?

It’s matured into something much more than we might have expected. We never aspired to be as big as INTA but to be somewhere where people would meet and get to know each other. The influence we had is greater than we hoped for, and the numbers are bigger too.

Despite the growth, though, it’s important to remain friendly so that people don’t feel they’re one among thousands. That friendliness must be kept the same even though numbers are growing. One point is to remain as far as possible in a hotel environment rather than a conference centre environment. Even if we overflow into more than one hotel, they should be close together.

Tell us about your professional work?

I have had my own firm Oakleigh IP since 2011, having previously worked in much larger organisations, and that means I can devote time to MARQUES. The firm is named after the road I live in – I was working from home for the first six months though we have now moved to separate premises in Barnet. I wanted an uncommon name. I know there is Oakley sunglasses but that wasn’t likely to be a problem. My main partner is Alan Venner and my office manager is Tina Madigan and we do most of the work, though we call on other people if necessary.

What else do you like doing?

I am very involved in football administration. I am chairman of Old Woodhouseians FC and I have played for over 40 years. We run six teams plus veterans teams. I also referee and I’m chairman of the Amateur Football Combination, the biggest adult league in the UK with 90 clubs and 300 teams playing every Saturday. And I’m a life vice president of the county.

I now play mostly centre-back. My biggest claim to fame was that when I was 35 I had my best season ever, in a winning 2nd XI that went unbeaten for about 15 or 16 games that I played in. That was the only season I had a long run in the 2nd team!

I am also a Spurs supporter and went regularly to all home games until 1977. In that year they got relegated and I decided to play regularly on Saturdays and also became fixtures secretary. Spurs came straight back up but I haven’t been to watch regularly since.

Field Notes: An optical illusion mark creates waves

In the latest Field Note from the Outer Borders Team, Stella Syrianos of Robic and Lisa Pearson of Kilpatrick Townsend discuss the Sonos trade mark

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Judges Meeting in Dublin on 5th June

 

MARQUES Media Roundup

Don’t miss the next MARQUES Judges Meeting, which takes place in Dublin, Ireland on 5th June

 

Design patent abuse in Ukraine, Louis Vuitton in the General Court and a Kit Kat case in Portugal are among the issues discussed on the MARQUES IP blogs in the past month

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WIPO Madrid System Users Meeting on 3rd May

WIPO is hosting a Madrid System Users’ Meeting on Sunday 3rd May during the 137th INTA Annual Meeting in San Diego

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OHIM IP Academy seminars - reserve your place!

 

OHIM at the INTA Annual Meeting

MARQUES members have an opportunity to attend seminars hosted by the OHIM IP Academy

 

OHIM will be demonstrating its global trade mark and design tools and solutions, such as TMview, TM class and the Enforcement Database at the INTA Annual Meeting in San Diego

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