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International Trademark Attorneys’ meeting in Barcelona

About 10,500 trademark attorneys from all round the world gathered in Barcelona last week for the annual meeting of the International Trademark Association. I attended, because it was a good opportunity to catch up with some of our overseas contacts and learn about new developments and also because, well, it was Barcelona in May!

The size of the event can be intimidating. Even if you pack your day with a meeting every half-hour throughout the day and into the evening, as I heard some people claiming they had done, you could only hope to meet a tiny proportion of the number of people there. And whether you would remember any of them after such an exhausting schedule is open to doubt.

I decided that a more relaxed approach made sense for me. I scheduled some meetings each day, but left gaps where I could just see who I could chat to in the “hospitality areas” – the areas of the hall set out with tables and chairs around the self-service coffee stands.

 

Chinese attorneys seemed to be present in force, despite the 16 or more hour flights that most had had to endure to get here. For someone who can still remember the Chairman Mao era, it is clear that China is now a very different place in many – though perhaps not all- respects (I spoke to one young lady from Shanghai who had bought herself a Spanish SIM card for her smartphone because her Chinese one would not allow her access to Google and thus local information!) There were several exhibitor stands for Chinese attorney firms, and all were keen to point out that taking action in Chinese courts for infringement of western companies’ trademarks was not only possible – they pointed to many successful actions by western companies against Chinese infringers – but also less expensive than similar actions in the US or UK. Of course, the western companies need to get in and register their trademarks in China as early as possible, but this is not particularly complex or expensive.

I had a very interesting discussion with a US trademark attorney about the differences between the European and US trademark registration systems and about how our respective clients can get the best out of each. The fundamental difference is that the US system requires the applicant to furnish proof that the trademark is in actual commercial use in the USA in respect of all the goods and services specified before registration can take place, whereas the European system allows a more laid-back approach to the “intention to use” requirement. The EUIPO (and indeed the UKIPO) will not require you to prove use unless a third-party raises an objection, and such an objection can only be raised five years or more after the mark is registered. By basing the foreign registrations on their home registration/application, companies can be disadvantaged, US companies by having an unnecessarily narrow specification of goods and services in Europe, and European and UK companies by having difficulty in being able to provide the necessary proofs of use when a wide-ranging specification is filed. US law does permit “intention to use” applications and there are mechanisms for keeping such applications pending to enable US use to commence.

 

Opposing trademark applications in the USA can be very expensive compared with the corresponding procedures in the UK or in the EUIPO, largely because it must be done through the courts and not just in the USPTO. Registering early in the USA may therefore be very important

 

I had interesting discussions with attorneys from Germany, Australia, the USA, Turkey, Kenya, Canada and China on Brexit and its consequences. Even our friends from the US could not understand why we were doing it. It was a little awkward to have to explain that there had been no plan for what would happen to the UK effect of EU trademark and design registrations on our leaving the EU and to be able to offer little more than that their clients’ interests in the UK would be preserved by some sort of transitional provisions. I had to emphasise to some of the attorneys I met that the UK’s membership of the European Patent Convention will not end when the UK leaves the EU.

Barcelona has an excellent Metro system, and the organisers of the meeting had the forethought to provide each attendee with a “go-anywhere” Metro ticket covering the duration of the meeting. Judging by the long lines of taxis outside the Conference Centre each day, not everyone took advantage of this! To be fair, the nearest Metro station was a good 15 minutes’ walk from the Conference Centre. A pair of good walking shoes is essential for an event like this!

 

It was an interesting event, I met some very nice people and had many interesting conversations, and I learnt some things which will help us develop the best strategies for protecting our clients’ brands.

 

Keith Loven, 29th May 2017

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