
INTA Webinars
Trademark Prosecution and Enforcement in the UK after Sky v SkyKick
Recorded On: 07/05/2023
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In the case of Sky v SkyKick, the Supreme Court ruled on whether a UK trademark covering a broad range of goods and services can be invalidated in whole or in part because the application was made in bad faith in that the trademark owner had no intention of using the mark in relation to the full array goods and services. The SkyKick case was referred to the Court of Justice of the European Union and in 2020 that court formulated a bad faith test. The English High Court, however, adopted a different approach to the interpretation and application of that test, with the Court of Appeal disagreeing on how the test should be applied. The Supreme Court will decide which approach is correct.
The Supreme Court hearing is scheduled for late June 2023. In this roundtable—which took place before the judgment was handed down—speakers anticipate the Supreme Court’s decision. They hear opposing views on which way the Supreme Court should rule and why, and discuss the practical implications of each outcome for brand owners with regard to prosecution and enforcement strategy.
Moderator:
Florian Traub, Pinsent Masons LLP (United Kingdom)
Speaker:
Lindsay Lane KC, 8 New Square (United Kingdom)
Claire Lehr, Edwin Coe LLP (United Kingdom)
Michael C. Maier, Nordemann Czychowski & Partner (Germany)
Richard Goddard, BP plc (United Kingdom)

Michael C. Maier
Partner
Nordemann Czychowski & Partner (Germany)
Michael C. Maier is an expert in the field of trademark law and has many years of experience in providing strategic and commercial advice to trademark owners.
He advises German and international trademark owners from various industries and represents them in all trademark related matters before the German Patent and Trade Mark Office (DPMA), the European Union Intellectual Property Office (EUIPO) and German courts. A particular focus of his practice are legal disputes before the General Court of the European Union (GC) as well as the Court of Justice of the European Union (CJEU) and providing full range advice in complex trademark matters.
Before joining Nordemann, he has practiced trademark law for several years at various internationally renowned IP firms. Furthermore, in the role of an Associate General Counsel and General Manager, he has headed the trademark department of one the world’s largest beauty companies being responsible for all luxury trademark and design-related matters globally.
Being an acknowledged expert in the field of trademark law, Michael C. Maier is regularly invited as a speaker by professional organizations. He is also an experienced lecturer, currently teaching trademark law at the Düsseldorf University as well as at the Potsdam University – but has also taught at Harvard Law School and San Francisco Law School as a guest lecturer in the past. Furthermore, he is regularly holding trademark law seminars across Germany and is co-author of a commentary on the European Union Trademark Regulation (EUTMR) released by C. H. Beck, a well-known publishing company in Germany.
Michael C. Maier is fluent in German, English and French and has basic knowledge of Spanish.

Richard Goddard
Trade Mark Counsel
BP plc (United Kingdom)
Richard is a trademark attorney at BP p.l.c., where his work includes advising on the registration and enforcement of BP’s trademarks and designs, and the licensing of trademarks within the BP Group and to third parties.
Richard’s role involves liaising directly with clients within the BP business as well as providing advice to colleagues within BP’s wider legal function.
Richard joined the trademark profession in 2003, working in private practice for several years before moving in-house. Richard was previously the treasurer of the Institute of Trademark Attorneys (ITMA) and chairs the ITMA Publications & Communications Committee.

Florian Traub (Moderator)
Partner
Pinsent Masons LLP
Florian heads Pinsent Masons' trademark and brand protection team, with extensive experience in domestic and international filing, prosecution and portfolio management. Florian acts on behalf of clients before the EU Intellectual Property Office, the International Bureau of WIPO and the national offices in the UK, Ireland and Germany.
“His enormous intelligence, precise legal analyses, convincing strategic advice, quick comprehension, and responsiveness set him apart. His German fluency is also very valuable for German-speaking clients, as he understands their concerns perfectly and implements their wishes under English law in an optimal way. He is someone who, quite simply, knows how to get a result.”
Florian is Chair of the INTA Bulletins Committee.

Lindsay Lane KC
Barrister
8 New Square
Lindsay provides commercial advice, persuasive advocacy and a responsive service in IP and Media & Entertainment cases.
She has particular expertise in patents and SPCs, trademarks, copyright and database rights, designs, passing off and confidential information.
The legal directories describe her as: “a super advocate, who is practical, respected and much loved by clients” (Chambers & Partners 202 3); “…very commercial and … great at client relationships” and “… a superb advocate” (Chambers & Partners 2022); “the full package – a great advocate who is good to work with, very commercial, pragmatic…also very, very good with clients” and “really smart and…dedicated to making you feel like number one” (Chambers & Partners 2019); and as having “an impressive commercial approach” (Legal 500 2018).
Lindsay was described as a “female QC trailblazer” in Managing Intellectual Property’s 50 Most Influential People in IP 2019. Together with Charlotte May KC, Lindsay was part of the first all-female team to lead in a patent trial at the High Court, successfully acting for the Defendants in Conversant v Apple.

Claire Lehr
Partner
Edwin Coe LLP
Claire is a solicitor and has over 20 years’ experience in the trademark field advising clients in their branding and trademark matters.
Claire qualified as a solicitor in 1993 and has worked both in house (Dalgety PLC and adidas) and in private practice. Her experience is international, working in The Netherlands (adidas 1998) and Germany (Bardehle and Jonas 1999 – 2007). When she returned to the UK, she joined FieldFisher as an associate, before gaining valuable experience in the London Offices of US law firms, Edwards Wildman and Cooley between 2013 – 2017. In 2018, she moved to boutique IP firm EIP LLP as a partner and joined Edwin Coe LLP as a partner in 2021.
She has significant experience in advising start up companies, from their initial searches to trademark filings. Claire’s client portfolio includes established clients in the automobile, financial, hospitality and retail sectors. She is a member of INTA and currently serves as a Project Team Leader on its Leadership Development Committee. Claire is also an active member of MARQUES, being Chair of the Programming Team.
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