Lawyer Monthly - August 2021 Edition

Rigel Moss McGrath Partner, HGF 4th Floor, Merchant Exchange, 17-19 Whitworth Street West, Manchester, M1 5WG Tel: +44 (0) 161 247 4900 Email: mcgrath@hgf.com www.hgf.com EXPERT INSIGHT 53 AUG 2021 | WWW.LAWYER-MONTHLY.COM It is critical that brand owners have good protection in place (by way of registration wherever possible) which is regularly reviewed to ensure that the protection is in line with your commercial growth. If the range of goods expands, if the business has plans to trade in a new country, if the brand is re-freshed, some consideration and possible additional protection is required. I usually review my clients’ portfolios at least twice a year to capture any changes that have occurred in a timely manner. This process also includes a review of the manner in which my clients are using their trademarks in order to ensure that the are being used properly. Have you observed any emerging trends in this area of IP law over the past few years? In 2017, academics at George Washington University published a study suggesting that trademark count rather than patent count is a better indicator of innovation. I remember reading the study and being genuinely delighted, because it represented such a shift in thinking. I think that over the last 5 years there has been a real increase in the understanding of how important a brand is to the success of a business, whereas previously that role had been undervalued. Also, the scope of what can technically constitute a trademark has broadened considerably. Non-traditional trademarks could now include touch (‘tactile’ or ‘texture’) marks, motion marks and holograms and hashtags. In part, this recognises that real commercial value may lie in whatever it is that distinguished your trademark from your competitors’ trademarks, and should be capable of protection, but in some respects it is also due to recognition that trademarks must now be capable of operating in a digital world. What legislative developments do you expect to see in IP law and brand protection in the near future? The UK courts have sometimes struggled to apply the trademark decisions issued by the CJEU with enthusiasm and one of the effects of Brexit is that the UK courts have the opportunity to develop its own body of case law. Another, particularly pressing matter following the UK’s departure from the EU concerns the exhaustion of rights, which underpins parallel trade. Changes to statutory protection are long overdue and perhaps now can be addressed. The current law was enacted in 1994 and whilst it has been ‘tweaked’ over time, it does not cater for the commercial world that exists today. Non- traditional trademarks could now include touch (‘tactile’ or ‘texture’) marks, motion marks and holograms and hashtags. Rigel Moss McGrath is a Chartered Trademark Attorney and Partner at HGF. She has practiced in the UK for almost 20 years and has particular experience in brand protection and contentious trademark proceedings. HGF is one of Europe’s leading Intellectual Property firms, bringing together over 200 patent attorneys, trademark attorneys, design attorneys, IP solicitors and attorneys-at- law across 22 offices in seven European countries to provide a dynamic and complete IP solution.