ITMA: DIGITAL RIGHTS
IP rights in a new digital world
Developments in technology are proving to be both a disrupter and an enabler for IP lawyers, but registered trademark attorneys are adapting to the many challenges, says Chris McLeod, president of the Institute of Trade Mark Attorneys (ITMA).
T
he discovery of a new, digital world is revolutionising the very nature and purpose of intellectual property. Of all the agents for change, the internet has been the largest for a generation. But in our profession, technology has revolutionised far more than working practices.
In the past 12 months there have been serious developments in the work of trademark and patent attorneys. Both a blessing and a curse, digital disruption has transformed the exercise of IP rights and the challenges facing their owners.
A major positive factor resulting from the internet is the ease in fi nding evidence of confusion in trademark cases. While historically, fi nding evidence of confused consumers may have been diffi cult, now it is simpler to fi nd evidence by consulting the internet and in particular unprompted expressions of confusion by consumers on social media. Alongside this, it is now easier to fi ll in the evidential gaps and to identify connections. A small element of ‘desktop detective’ has been added to the role of a lawyer, who must make
factual links from information that can be found online.
Less positively, the expansion of the internet has increased the number of infringers with which a brand owner may need to deal. T e internet allows ever smaller enterprises and an increasing number of private individuals to present off erings that seem impressive and professional, even where the means of the infringer are negligible. At the same time, the global nature of the internet means that infringers may come from any corner of the world and that a seemingly small but successful business may fi nd it has been copied in a far- fl ung country. Successful start-ups face the challenge of obtaining protection quickly enough to fend off these infringers without damaging their cash fl ow.
Court actions T e past year has seen plenty of online-related cases. Key among these is the continuing dispute between fl ower delivery company Interfl ora and retailer Marks & Spencer, in which the English Court of Appeal ordered a
40 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014
re-trial in November. It shows the diffi culty in applying the law to online issues, which demonstrates that IP lawyers will continue to face challenges in advising on how the law will respond to the developing digital world. A key element of the litigation was also the attempt to introduce survey evidence before the court, and the court’s reluctance to admit it. T e UK system has as the overriding objective that cases should be dealt with justly and at proportionate cost, and where possible should save expense. T is means that the parties will oſt en need to convince a court of the need for certain types of evidence (particularly where other evidence could lead the court to come to a largely similar conclusion). Yet digital developments have introduced the potential for new sources of evidence. T e decision of the English Court of Appeal in the design case Magmatic v PMS International, in which it ruled that PMS’s Kiddee Cases did not infringe Magmatic’s registered Community design for its Trunki children’s suitcases, is notable. It was surprising in relation to the enforcement of design registrations where
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