Trade Mark & Passing Off Actions - A Guide for Litigators
This full day course will provide you with an opportunity to explore trade mark and passing off litigation before both the Intellectual Property Enterprise Court (IPEC) and the Intellectual Property List (ChD) of the Business and Property Courts (BPC). The course will also consider the Company Names Tribunal (CNT) mechanism.
Assuming a good working knowledge of UK trade mark and passing off law as well as general litigation principles, this course is aimed at both solicitors and trade mark attorneys.
What You Will Learn
This course will cover the following:
- An account of Business and Property Courts (BPC) procedures and arrangements for trade mark and passing off actions. Might a case management conference, or even the trial, actually take place out of London?
- IPEC’s important jurisdiction. Does IPEC’s Small Claims Track really have a trade mark jurisdiction?
- The sometimes vexed issue of court fees in IP matters - what might the correct amount be?
- The great importance of complying as far as possible with the Pre-Action Conduct. Potential problems and sanctions for non-compliance. Special provision in IPEC as non-compliance
- Trying to reconcile the Pre-Action Conduct with the post-2017 trade marks unjustified threats regime. A discussion on letters before action, including the case of a putative combined trade mark and passing off action
- How to present evidence of: use; the mark, sign or get up as used; the likelihood of confusion and actual confusion; and reputation and goodwill. Is social media evidence acceptable and is it given any weight by the courts?
- Survey evidence - Court practice and procedure on seeking leave to adduce survey evidence. What might acceptable and proportionate survey costs be in practice?
- The position of expert witnesses
- Cross-Examination - restrictions on its scope. Are there any differences in IPEC?
- Scale costs in IPEC proceedings. When ‘off-scale’ costs might be awarded
- What has to be pleaded, why and how? Detailed consideration of sample trade mark and passing off pleadings, including Particulars of Claim and Defences, and for trade mark actions Counterclaims and Objections
- An outline of the practice, procedure and costs of the Company Names Tribunal (CNT). Is the CNT in practice becoming an ‘alternative’ in appropriate cases to traditional passing off or even trade mark litigation?
Please let us know if you wish to be notified.
Please let us know if you wish to be notified when new dates are added for this programme