Arnaud Folliard of EUIPO kicked off the day’s formal sessions with practical advice for litigants in CJEU cases, noting that the Court confirms decisions in about 80% of cases (90% in ex parte cases). He highlighted seven common errors made by parties and/or representatives:
- Thinking the chance of success is high
- Bringing an appeal to correct mistakes
- Underestimating the intervenor
- Lodging an appeal at the General Court to gain time
- Thinking that winning the appeal means winning the case
- Believing that an appeal to the Court of Justice is just another round of review
- Expecting that court proceedings are cheap
Timme Geerlof of Ploum Lodder Princen and Roland Mallinson of Taylor Wessing provided further tips from a litigator’s perspective. Timme echoed some of Arnaud’s points, emphasising: “There is no room for new evidence [at the General Court] unless related to generally known facts (such as dictionary definitions of known words, or new case law).” Roland stressed the limited trade mark experience of most of the 75 CJEU judges, saying that only five General Court judges have had more than five IP cases, and none have had more than nine in the past few years.
The speakers also emphasised the need to stick to the rules on details such as time limits, length of submissions and exchanges of pleadings. Arnaud reminded the audience that the judges place high importance on the internal consistency of their own case law. The discussion was moderated by Cristina Duch of Baker & McKenzie.
Design dilemmas
The importance of design rights, Customs recordals and criminal actions were all stressed by Erik Lindevang Madsen of lamp maker Louis Poulsen in a session devoted to design rights. Noting that “counterfeiters don’t care about borders”, he said the company’s priority was tackling counterfeiters, ISPs and payment providers rather than end users, adding: “We try to be very reactive. You can’t hit every time but where there is adequate legislation we file criminal complaints where possible.”
The strategy has been successful, with several cases resulting in prison terms and confiscations. In the latest case, involving 15 IP rights holders which took 10 days in court, a decision is due on 7th October.
Sara Söderling of Setterwalls Advokatbyrå set out the advantages and limitations of design rights in the light of recent case law, while Kelly Bennett of EUIPO discussed a recent study on the review of the design system in Europe, concluding: “The study is relatively conservative. There are no ground-breaking proposals warranting a change in the Directive or Regulation.”
The speakers and audience, led by chair Sebastian Fischoeder of Bird & Bird, discussed what they would change about the current system. Suggestions included bringing it closer into line with the EUTM Regulation, providing clarity on priority, making it easier to establish validity, and adopting a more concrete approach based on products themselves.
Workshops
As usual at the Annual Conference, Thursday afternoon was devoted to workshops. One on rebranding took place in the Meliá, and attendees discussed a case study involving the rebranding of Benidorm.
The other three workshops took place at EUIPO, with the participation of EUIPO staff. They covered:
- The European Observatory and the Enforcement Database
- Mediation
- Classification and Searching Tools – A Vision of the Future
Gala Dinner
Thursday morning began with a breakfast meeting for corporate members, led by Emma Stopford of British American Tobacco.
In the evening, the annual Black Tie drinks reception and Gala Dinner took place alfresco at the Meliá hotel, and was followed by dancing to the ever-popular band Mad Hen.
During the Gala Dinner, MARQUES Chair, Uwe Over, spoke of the sudden loss of David Goldring in the summer and paid tribute to the significant role he had played both formally as Treasurer and informally in the support provided to MARQUES members and volunteers over many years.
Uwe also announced that the Council had decided to establish an annual award for voluntary service in David’s honour, and that the first such award would recognise David’s own contribution. He presented it to David’s wife, Dee Goldring, who was attending the Dinner.
Issue 069
Events lined up in the coming months include three workshops on the USPTO, an arbitration/mediation workshop and the second Luxury Brand Seminar
