IP in Retail Programme outline. Tuesday 17 th November The Barbican, Silk Street, London, EC2Y 8DS

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IP in Retail 2015 Tuesday 17 th November The Barbican, Silk Street, London, EC2Y 8DS Thursday 26 th November HGF Limited, Belgrave Hall, Belgrave Street, Leeds, LS2 8DD The Conference is free and

40am How well is trade mark law adapting to the fast moving world of online retail? An online presence is for most retailers a vital part of their business.

1 IP in Retail 2015 Tuesday 17 th November The Barbican, Silk Street, London, EC2Y 8DS Thursday 26 th November HGF Limited, Belgrave Hall, Belgrave Street, Leeds, LS2 8DD The Conference is free and will attract 5 CPD hours Programme outline 8.30am 9.00am Registration and breakfast Welcome and introduction: Antony Gold 9.00am 9.40am How well is trade mark law adapting to the fast moving world of online retail? An online presence is for most retailers a vital part of their business. To date the Courts have had varying degrees of difficulty applying trade mark law to online infringement and many of the cases have involved businesses at the forefront of the online retail arena. We shall consider what the state of play is in 2015 and look at some of this year's cases, which have flagged up the potential danger of remaining offline as well as the value of evidence of confusion gathered online.

Speakers: Rachel Fetches, Partner Rachel is a litigation Partner at HGF and has worked with clients across a broad range of sectors. Rachel joined the HGF London office in August 2015. 9.40am 10.

How far is it legitimate for brands to be criticised, mocked and commented on by competitors and customers? What are the boundaries?

2 Speakers: Rachel Fetches, Partner Rachel is a litigation Partner at HGF and has worked with clients across a broad range of sectors. Rachel joined the HGF London office in August am 10.25am Brand criticism & comment: Where are the boundaries? The 2015 Aldi Shmaldi campaign by Bargain Booze created many headlines and has been described as quite brilliant by commentators. How far is it legitimate for brands to be criticised, mocked and commented on by competitors and customers? What are the boundaries? Over a year since its introduction has the parody exemption to copyright infringement made it easier to criticise brands? What is the latest on sucks sites? We will also consider the appropriate way to respond to an attack on your brand. Speaker: Martyn Fish, Partner Martyn is an experienced IP litigator who has considerable experience in the retail sector. He has acted for a number of retailers in branding disputes and works for major brands such as Lil-lets, Toyota and Unipart am 11.00am Break 11.00am 11.40am Distinctiveness redefined We consider the many recent developments in the law in this area the case which have considered the circumstances when even extensive use of an essentially descriptive mark does not lead to acquired distinctiveness,- this includes the Tesco CLUBCARD decision as well as the recent Go Outdoors decision and the Kit Kat case. We offer practical tips for helping turn inherently descriptive lead into the gold of a registerable and enforceable trade mark. Speakers: Lee Curtis, Partner Lee is a trade mark attorney who focuses on supporting clients in the retail sector and works with many leading brands. Lee has a particular interest in the trade mark issues surrounding keyword advertising and also has extensive experience of working with retailers in protecting IP in their supply chain.

Speakers: Richard Wylie, Senior Trade Mark Attorney, Jocelyn Wheeler, Trade Mark Attorney and Lauren Somers, Trade Mark Attorney Since joining HGF in 2005, Richard has worked for clients across a

3 11.40am 12.20pm Social media tips for brand owners #handsoffmyhashtags Cases such as the applications in France to register Je suis Charlie (Hebdo) have pushed social media towards the forefront of trade mark law. We look at the new ways in which retailers are reaching out to consumers via Instagram and social media (including the use of celebrity #spons and bloggers) and also brand focussed apps themselves. We consider the registration of hashtag marks such as #freecheesefriday. Speakers: Richard Wylie, Senior Trade Mark Attorney, Jocelyn Wheeler, Trade Mark Attorney and Lauren Somers, Trade Mark Attorney Since joining HGF in 2005, Richard has worked for clients across a range of industries, including household names in the food and medical field, high profile entertainment clients, leading universities and international engineering companies. Jocelyn has 8 years experience working for a wide range of retailers and has experience in brand clearance, portfolio management, and global expansion, including worldwide co-existence agreements and local use investigations. Lauren has worked with retailers in a range of fields, including fashion, home furnishings, automotive, shoes and handbags. Lauren has prepared and delivered training to the management, marketing and design teams of a number of leading UK retailers pm 1.30pm Lunch 1.30pm 2.05pm What s the use of a trade mark without use?

The issue of trade mark use can be a complicated area for retailers aiming to devise a strategy for trade mark protection both nationally and internationally.

This presentation will consider: Making Genuine/sufficient use of a CTM, following the Sofa Workshop case in 2015.

4 The issue of trade mark use can be a complicated area for retailers aiming to devise a strategy for trade mark protection both nationally and internationally. Having a good knowledge of the impact of use on trade mark protection can add value to a brand. This presentation will consider: Making Genuine/sufficient use of a CTM, following the Sofa Workshop case in Non-use periods How the issue of use differs from country to country The Impact it has on asserting registered rights in infringement or opposition actions Ensuring the lifecycle of a registration in terms of its non-use challenge fits in with the strategy on brand expansion What practical steps can be taken to address the use problem Speaker: David Potter, Partner David is Head of the Trade Marks Team at HGF and has 20 years experience of working with major brands such as Ben Sherman, Innocent Drinks, Deb Skincare and Robbie Williams. 2.05pm 2.40pm Effective handling of damages claims in retail disputes A decision of the Intellectual Property Enterprise Court this summer in relation to case Harveys furniture stores provides a helpful illustration of the approach which the courts take when assessing damages in intellectual property disputes involving retailers. We examine the principles and issues in this often underexplored area of law and explain the key practical points for both claimant and defendant retailers who are negotiating (or litigating) damages. Speaker: Antony Gold, Partner Antony is a lawyer who specialises in brand protection and other intellectual property issues for retailers. Antony is highly raked as an intellectual property litigator in the independent guides to law firms. Antony acted for Specsavers throughout its widely reported dispute with Asda, the outcome of which significantly developed a number of important areas of trade mark law for retailers.

5 2.40pm 3.00pm Break 3.00pm 3.45pm The criminal dimension to IP infringement Sale of counterfeit goods via social media rose 15% in 2013/2014 according to the annual IP Crime Report produced by the UK IPO. IP crime continues to rise as the number of retail environments on social media increases, adding new locations for the sale of counterfeits. Brand owners often react with recourse to civil provisions. Used appropriately, however, the criminal IP provisions can provide both cost-effective and impactful measures. Drawing from over 40 years experience in trading standards, Bryan Lewin MBE will consider IP enforcement from a trading standards perspective and provide an insight into what they are doing in reality (versus theory) to support brand owners and tackle counterfeits. It has been said of Bryan that he knows more about criminal IP law in practice than anyone else in the country. Speakers: Katie Goulding, Trade Mark Attorney and Bryan Lewin MBE Katie works with leading retailers in fashion and e-commerce. Katie assists retailers with online brand monitoring and removal of counterfeit listings from online retail platforms. Bryan retired at the end of January 2009 as Head of Trading Standards with Northamptonshire County Council after 44 years in local government. He was Chairman of the Trading Standards Institute (TSI) in 2007/08 and has been honoured with Fellowship, and by being made a Life Member, of TSI. For many years he was an adviser to Local Authorities Coordinators of Regulatory Services (LACORS) and was Chair of the LACORS Law and Evidence Focus Group from its inception until In 2010, Bryan was awarded the MBE for his services to consumers and business. Bryan continues to provide trading standards training and law consultancy and is a Door Tenant of 36 Bedford Row. 3.45pm 4.00pm Close and refreshments

6 About HGF s Retail Team HGF is one of the fastest growing and largest full service IP practices in the United Kingdom. When ranked by the number of Community Trade Mark filings (a commonly used metric) we are presently the third largest trade mark practice in the UK and the ninth largest in Europe. HGF s Retail team works with a growing number of national and international retailers. The team, led by Antony Gold, provides support and advice on the full suite of IP needs including brand creation; searching and clearance; filing and prosecution of trade mark and design applications globally; trade mark and design portfolio management, including renewals; oppositions, appeals and other disputes at trade mark offices around the world; domain name registration and maintenance; design and brand protection including anti-counterfeiting, dispute management, enforcement and litigation; In addition to our expert advisors, many of whom are highly ranked in legal directories, we support our clients with leading edge, bespoke portfolio and document management software allowing full online access to files as well as specialist renewals and formalities teams. For more information please contact Antony Gold on +44(0) , agold@hgf-law.com.

IP in Retail. Thursday. 18th October. Wednesday 10th October. Thursday. 1st November

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