UCL IBIL hosts expert discussion on the future direction of trade mark law

On 7 November 2024, the UCL Institute of Brand and Innovation Law (IBIL) invited members of the judiciary, Appointed Persons and UK Trade Mark Registry Hearing Officers, along with senior intellectual property (IP) practitioners and trade mark law academics to Bentham House for an expert roundtable to reflect on the 30th anniversary of the Trade Marks Act 1994.

The UK Trade Marks Act 1994 received Royal assent in July 1994, replacing legislation dating back to 1938. As the (then) new Act’s long title explains, its core rationale was ‘to make new provision for registered trade marks implementing Council Directive No. 89/104/EEC of 21st December 1988 to approximate the laws of the Member States relating to trade marks’ and ‘in connection with Council Regulation (EC) No. 40/94 of 20th December 1993 on the Community trade mark’. The UK had been an active participant in discussions that led to the Directive and Regulation, and during the period that followed pre-Brexit, the UK has been influential in shaping how harmonised EU trade mark law developed, including via numerous references to the Court of Justice of the EU.

The event, operating under the Chatham House rule, aimed to reflect on the UK’s interaction with the EU trade mark system and CJEU jurisprudence over the last 30 years, and to consider how harmonisation this is might, or perhaps should, continue to influence the development of UK trade mark law in future. The roundtable was also attended by representatives from the EU, who reflected on how EU trade law might fare without the UK's input. 

The roundtable was followed by a public lecture, UK Trade Marks Act 1994 at 30 - Going Forward, Looking Backwards: Lessons from Harmonisation, which reflected similar themes. This event was sponsored by the Chartered Institute of Trade Mark Attorneys (CITMA) and chaired by The Rt Hon Sir Richard Arnold, Lord Justice of Appeal. The audience, attending in person and online, listened to the panel, made up of Geoffrey Hobbs KC (One Essex Court), Kelly Saliger (President of CITMA), Professor Robert Burrell (University of Oxford) and Professor Annette Kur (Max Planck Institute), evaluate UK trade mark law in retrospect and prospect. The Chair then invited the audience to share their perspectives and questions around the issues raised by the panel.

The evening closed with a reception, which offered further opportunities to discuss the future development of trade mark law. The opportunity was also taken to raise a toast to Geoffrey Hobbs KC, who has recently stepped down as an Appointed Person, having held this role since it was introduced by the 1994 Act. 

Speaking after the event, Professor Ilanah Fhima, Co-director of IBIL, and event convenor commented:

"With its contacts with academia, the judiciary, practice and policy, IBIL is well-placed to convene roundtables that bring representatives from key UK stakeholders together, as well maintaining links with those from the European Union. These events were a unique opportunity to take stock and really think through what works well in our trade mark law as a result of EU harmonisation, as well as that which works less well. I have no doubt that what was discussed will shape priorities concerning which areas of trade mark law we should reassess post-Brexit.

It was also very special to have an opportunity to celebrate Geoffrey Hobbs KC’s remarkable contribution to UK trade mark law. His insightful decisions have shaped our understanding of trade mark law is so many areas."

Find out more

• Read more about the event
• Watch a recording of the event on our YouTube channel.