Thinking Clearly about Trade Mark Clutter

About this event

The number of trade mark applications filed each year remains on an upward curve. Once registered, trade marks can stay on the register indefinitely, providing the renewal fees are paid. While some marks will be revoked and others will expire, the rate of removal of marks will never keep pace with new registrations, so the stock of registered marks keeps growing year on year.  The trade mark registers around the world are becoming cluttered.
 
Trade mark cluttering occurs when a large quantities of unused marks and overly-broad registrations remain on the register unchallenged. As the size of the register grows, later applicants struggle to find a distinctive yet appealing mark of their own. As search and creation costs rise, so the chances of securing registration falls and applications take longer to process as registries struggle to manage higher volumes of disputes. Applicants may then file for more marks than they intend to use in the hope that at least one will succeed, or may apply for more classes than they strictly need to ensure that potential future markets are not blocked by a later application. In this way, clutter begats more clutter, and the problem spirals.
 
Few contest that trade mark cluttering undermines the effectiveness of a trade mark registration system, but gauging the true nature and impact of clutter is challenging. And even if there is a problem, it is unclear what measures can be put in place to tackle the issue effectively. Has the system swung the balance too far in favour of applicants and owners? Are registry fee structures and practices unwittingly encouraging applicants to frame their applications too broadly and for more goods and services than they really need? The UK Supreme Court’s long awaited decision in SkyKick UK Ltd v Sky Ltd will have the final say of when and to what extent that filing an application with an overbroad specification of goods and services is made in ‘bad faith’.
 
In this event, our distinguished panel will seek to explore issues arising from clutter from a number of different perspectives.

Confirmed Speakers

• Alicia Chantrey, Associate General Counsel, Intellectual Property – Associated British Foods plc
• Professor Dev Gangjee, University of Oxford
• Dr Georg von Graevenitz, Queen Mary, University of London
• Andy Bartlett - Deputy CEO and Director of Services, UK Intellectual Property Office

 
Chair: Daniel Alexander KC, 8 New Square, Appointed Person

Schedule

17:30 Registration and theatre opens
18:00 Event begins
19:15 Q&A
19:30 Reception
 
This event will be held in-person but will also be live streamed.

Fees:

Fees are charged for this event from £8 - £35.
Free of charge for UCL students, members of the judiciary and full time academics.

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