Trademark Prosecution and Enforcement in the UK after Sky v SkyKick
Recorded On: 07/05/2023
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.
Florian Traub, Pinsent Masons LLP (United Kingdom)
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)
Josh Burke (Moderator)
Pirkey Barber PLLC
Josh Burke has practiced trademark law for nearly three decades, including over twenty years in-house at General Mills, where he managed some of the world’s most beloved food brands, including Haagen-Dazs, Yoplait, and Betty Crocker. Josh has held a variety of roles with INTA, including serving on the Board of Directors, co-chairing the 2011 Leadership Meeting and 2015 Annual Meeting, and chairing the In-House Practitioners Committee. Josh is currently a member of INTA’s Commercialization of Brands Committee.
Currently, Paula Wright is a Senior Manager for the Global Trademark Group with AstraZeneca. Paula’s role includes managing the Global Trademarks Group, which covers all aspects of portfolio management including the selection, preparation, prosecution, maintenance, and enforcement of domestic and international trademark portfolios. In addition, she undertakes trademark availability searches and possesses an extensive amount of experience in conducting domestic and foreign trademark due diligence reviews.
Paula received a bachelor’s degree from the University of Delaware and a Paralegal Certificate from the Philadelphia Institute for Paralegal Training.
Over the past several years, Paula has been active within INTA and is currently serving on INTA’s Inhouse Practitioners’ Committee.
Group Technology Counsel
Illinois Tool Works, Inc.
Anthoula Pomrening is a seasoned attorney with substantial experience securing and protecting intellectual property rights. She is presently Group Technology Counsel with Illinois Tool Works, a global industrial company, where she is responsible for advising the welding business segment on all matters of intellectual property. Anthoula is active on INTA’s Inhouse Practitioners’ Committee.
Michael C. Maier
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.
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.