The Shape of Things to Come
14 February 2018, 6:00 pm–7:30 pm
The Shape of Things to Come: Predicting the Trajectory of Design and Trade Mark Protection of Product Shapes. Speakers include David Musker (QMUL), David Stone (Allen & Overy LLP), Martin Senftleben (Vrije Universiteit Amsterdam / Bird & Bird LLP), Thorsten Gailing (Nestle UK). Chaired by The Hon Sir Richard Arnold
UCL Laws Events
Gustave Tuck Theatre, UCL Wilkins Building (2nd Floor), Gower Street, London WC1E 6BT
About this event
With the expansion of the definition of registerable signs and designs, the distinction between trade mark and design protection has become increasingly blurred.
Once perceived as the 'Cinderella' of IP rights, design law has caught policy makers’ attention. As appropriate levels of design protection is now deemed a vital component in a thriving economy, existing protection regimes are being scrutinised for their fitness for purpose. While the European Commission’s recent Legal Review of Industrial Design Protection reports on progress towards harmonisation, it also pinpoints the aspects of EU design law which are proving problematic to resolve.
Closer to home, the UK Supreme Court has considered its first design case. In PMS v. Magmatic  UKSC 12, the Court (albeit regretfully) confirmed that the registered design for the popular Trunki ride-on case was not infringed by a copycat emulation. The outcome has leant weight to the perception that the UK appeal courts are design-right-unfriendly. Are design holders rightly feeling short-changed by the narrow scope of protection which even the most creative designs seem to enjoy?
In the early years of EU-harmonised trade mark law, trade mark protection seemed to provide a useful supplement to design registration. After all, the Trade Mark Directive specifically includes the shape of goods as a type of sign which is eligible for registration. Some 25-years on from its implementation, businesses which do devise innovative product shapes to differentiate their products now struggle to identify when a shape mark will be validly registered.
Few product shapes seem to represent a significant-enough deviation from the 'norm' to be deemed inherently distinctive, and even the most iconic product shapes have been denied registration in the UK, because the long-standing use failed to engender the 'proper' kind of origin association. Having reviewed the 'natural' shape and 'added-value' shape exclusions, in Hauck v. Stokke, the CJEU seems to indicate that more product shapes, than previously thought, should be denied protection altogether, as 'functional'.
UCL's Institute of Brand and Innovation Law has brought together a distinguished panel to navigate the complex legal landscape which governs the registration of product forms:
- Professor David Musker (Queen Mary, University of London)
- David Stone (Allen & Overy LLP)
- Professor Martin Senftleben (Vrije Universiteit Amsterdam / Bird & Bird LLP)
- Thorsten Gailing (Nestle UK)
- The Hon Sir Richard Arnold - CHAIR
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