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New Technology and IP – ITMA Seminar Review

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watchesITMA held its annual Autumn Seminar in Birmingham on 6 October 2016. The theme of the event was New Technology and IP.

The first talk by Alexandra Brodie of Gowling WLG reviewed wearable technology and its implications for IP. Alexandra initially considered the meaning of wearable technology and noted that it is no longer only stuck on a wrist, but also woven in to fabric, for example, and is becoming increasingly design led. Wearable technology is not simply about the technology itself, but also the aesthetics. We were treated to some shots of models and film stars wearing the latest fibre optic LED dresses by top designers such as Richard Nicoll and Zac Posen, giving a new meaning to the ‘sparkly dress’ and demonstrating the enthusiasm for use of new technologies in high fashion.

In terms of what this means for IP, Alexandra rightly stated that it is not possible, or advisable, to focus on one area of IP only. Instead, an awareness and collaboration of all aspects of IP is required as there may be patentable material, designs, trade marks and data protection issues. Another important consideration is the ownership of rights given that wearable technology is often the result of design collaborations and brand tie ups.

Although the nature of wearable technology changes quickly, the consensus of the room was that some IP protection is always better than none. However, the nature of the IP protection would depend on the level of generality in the technology and how well you can find the value in said technology.

Further, when seeking trade mark protection, thought needs to be given to future use of the mark to ensure that the specification provides sufficient cover both now and in the future (being mindful of the requirement to have an intention to use in the UK and elsewhere). After Alexandra’s talk, the question and answer session looked more specifically at the issue of trade mark specifications and classifications. For example, if the wearable technology is a watch, should it seek protection under Class 9 (tech goods) or Class 14 (watches)? Nathan Abraham of the UK IPO noted that classification can be tricky as the purpose of a product could take over the nature of the product. Unfortunately, no hard and fast answer could be provided as it would be assessed on a case by case basis.

We then moved to Matthew Harris of Waterfront Solicitors, Susan Payne of Valideus Ltd and Victoria Baxter of King to consider domain names.

Matthew considered pre-ADR (alternative dispute resolution) and litigation options such as a letter before action, contacting the Internet service provider (ISP), contacting ICANN, or the relevant body, where false details are provided to have the domain name removed (if the correct details cannot be found), Uniform Rapid Suspension System (URS) and Uniform Domain-Name Dispute Resolution Policy (UDRP). The general consensus on the panel was that the URS system, whilst cheaper, was not particularly attractive to complainants given the stricter tests applied and the complex rehearing and appeal provisions and was not being widely used. The UDRP was still the most popular pre-litigation option.

Susan then considered other rights protection mechanisms in connection with the new gTLDs, and focussed on the benefits and draw backs of the Trade Mark Clearinghouse.

Finally, Victoria gave an in-house perspective of domain name strategy and enforcement. This highlighted the importance of choosing the right battles: dealing with fan sites in the right way and focussing on those websites and domains being used for commercial gain or causing consumer harm.

After lunch, Patricia Collis of Bird & Bird LLP gave a presentation on Brexit and the repercussions in the world of non-contentious IP. The overall message was that we can only really wait and see what will happen. However, this does not mean that attorneys should take no action; it is a good opportunity to review clients’ portfolios to ensure that they are sufficiently protected both in the UK and EU and to consider the terms of existing and future contractual arrangements, particularly licences and coexistence agreements to ensure a clear understanding of governing law, territory and rights covered.

Patricia also reminded the room that the EU Trade Mark Directive must be in force in the UK by January 2019. Whilst the Prime Minister’s recent announcement that Article 50 would be triggered by March 2017 suggests that we will be leaving the EU by March 2019, it is expected that all changes required by the Directive will be in force in the UK prior to this date. In this regard, Nathan Abraham of the UK IPO gave a presentation about the changes to the EU Trade Mark Directive and the UK IPO’s progress in implementing the changes. In particular, Nathan concentrated on the changes to the requirement for a trade mark to be ‘graphically represented’.

Once the EU Trade Mark Directive has been implemented, the UK IPO will be able to accept sound, video and CAD files, for example, meaning that there will likely be an increase in ‘non-conventional’ trade marks, such as sound marks. Whilst the UK IPO is still to decide whether traditional forms of graphic representation will be still be accepted, such as sonographs and descriptions (the draft new EU regulation mentions that the trade mark can be represented in ‘any appropriate form using generally available technology’), Nathan feels that such representations will likely continue as they do not want to prejudice applicants. However, it is recommended that applicants take advantage of the new systems in order to accurately reflect the mark in use/as intended to be used.

3D printing was next up on the agenda and Beth Ferrill of Finnegan, Henderson, Farabow, Garrett & Dunner LLP provided us with an overview on its implications for IP.  Like wearable technology, Beth noted that there is a combination of IP rights associated with 3D printing and the item produced. Beth highlighted that it is, and will likely continue to be, difficult for companies to take action against unlicensed 3D printing of their goods. Companies previously concentrated efforts on products produced in factories. However, with the availability of 3D printing at home meaning infringers are probably customers, it is becoming increasingly hard to prevent and take action against infringement. Given that 3D printing has been around for a long time, it is unlikely that companies will be able to prevent the 3D printing process itself. Instead, companies must look towards other methods to control 3D printing of their products, such as better control of the design files which enable products to be printed.

Indeed, if embraced and exploited correctly, companies can use the technology to reach out to their customers in new ways. As an example, Beth described how Hasbro has teamed up with Shapeways, a 3D printing business, to launch ‘SuperFanArt’ which allows certain fans of Hasbro’s toy characters to create new art and products featuring those characters. We expect there will be more examples of these sorts of collaborations in the near future; 3D printing is here to stay!

Finally, Jonathan Moss of Hogarth Chambers discussed the law of damages and remedies. As technology advances, we should consider carefully the nature of any remedy sought and the probability that it will deal effectively with the infringement, bearing in mind in particular electronic sales and the speed at which information can be transmitted from country to country online (the high profile injunction granted in ‘PJS v News Group Newspapers Ltd’ was given as an example of this).

In the future, rights holders may have to consider injunctions which are limiting rather than blocking to meet the realities of the Internet and other technological developments.

Charlotte Wilding and Jo Lucas-Munce 13 October 2016

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