Welcome from Thomson Reuters

  • Michelle Wheeler Head of Practical Law, IP & IT and Media & Telecoms, Thomson Reuters


Introduction from the Chairperson


Plenary 1: The Impact of Brexit on Trade Marks

  • Where are we now?
  • Representation rights during transition and post Brexit
  • The shape of the UK’s relationship with the EU after the transition period – progress
  • The shape of IP law in the UK in the longer term
  • How is the UK IPO gearing up for Brexit?
  • How should IP lawyers and in-house IP teams prepare for Brexit?
  • Revocation for non-use post Brexit


Morning Break


Keynote: Recent Trade Mark Cases

Recent cases of interest to IP lawyers and trade mark attorneys will be reviewed in this session. Cases to be considered by the speaker, will be decided nearer the time of the conference.


Morning Breakout Sessions

A choice of one of the following options

Option 1: China: Trade Mark Registration Issues and Counterfeit Challenges

  • Combatting the manufacture and trade of counterfeit goods and services
  • Registration issues and first-to-file rule
  • Combatting online infringement
  • Proving international reputation
  • Ensuring you have sufficient trade mark protection in reality
  • Checklist of key problems and differences
  • Practical takeaways

Option 2: Trade Mark Portfolio Management: Improving ROI and Performance

  • Practical tips on making cost and time efficiencies and improving ROI
  • Using software tools and machine learning to reduce costs and improve overall performance of your trade mark portfolio
  • Trade mark registration strategy
  • Clearance searches – techniques and tips to save time and money


Lunch Break


Afternoon Breakout Sessions

A choice of one of the following options

Option 3: Design Law and Interface with Trade Mark Law

  • Practical protection strategies around design and product shape
  • Distinction between trade mark and design protection – no-use requirement and grace periods
  • Relative merits of (four) current design regimes
  • Designs post Brexit:
  • 1st disclosures
  • impact on enforceability
  • UK IPO approach
  • protection of unregistered designs

Option 4: Social Media and Brand Protection, Use and Reputation

  • Practical insights on brand protection and anticounterfeiting
    • how do you prioritise?
    • what are the quick wins?
    • in-sourcing, outsourcing and using AI tools
    • blocking injunctions
    • protecting hashtags
  • Brand use and reputation – letters before action
  • Monitoring domain names to protect your brand
  • The role of influencers and the requirement to disclose sponsorship


Afternoon Break


Plenary 2: Global Protection and Enforcement of your Brand

  • Generating an IP protection programme in an international company that rolls out its products globally
  • Developing and implementing a global trade mark enforcement strategy
  • Strategies for combatting unauthorised content and infringement online
  • Trade mark litigation in multiple jurisdictions – practical insights, challenges and pitfalls (Hummel Holding v Nike case)


UK implementation of 2015 Trade Marks Directive

  • Results of consultation and progress
  • Brexit implications


Registration of Non-Traditional Trade Marks

  • Rules on types of trade marks you can register at EUIPO
  • Removal of “graphical representation” requirement – will this make a difference?
  • Case law update on 3D and colour marks, including Christian Louboutin trade mark red soles case


Chair’s Closing Remarks and End of Conference

*Please note the agenda is subject to change

The page will be updated with further details on the agenda once they are confirmed.