David Goldring

It is with the greatest sadness that Class 46 must inform its readers that MARQUES founder member and Treasurer David Goldring passed away last night at the all-too-young age of 61. 

David was involved in MARQUES even before the organisation came into existence, having served on the steering committee that discussed setting up a European trade mark owners’ association as long ago as 1984.

After reading Law at University College, London, David practised initially as a UK trade mark attorney and subsequently as a European one. His career encompassed both in-house and private practice sectors, 

Jeremy Phillips adds a personal note:

"In 1986 I flew to Vienna with David to attend the conference that decided that MARQUES would be formally constituted as a representative organisation for trade mark proprietors in Europe. We were both notably younger than the vast majority of attendees, and decided that we must be the 'MARQUES babies'.

I was much struck by David's cheerful optimism regarding the conference's outcome, blended with a strong note of cautious realism as to how the fledgling body would have to face the many obstacles it would need to overcome. I was also impressed by David's willingness to do whatever was asked of him in bringing MARQUES about, as well as his spiky and irreverent sense of humour.  This flight was to prove the beginning of a long and enjoyable friendship and professional relationship. 

David was immensely popular for many reasons, not least his tremendous accessibility and his cheerful demeanour.  He will be greatly missed by all who had the privilege of meeting him".

An interview with David was published in the HouseMARQUES newsletter last year. You can read it in full here.

Posted by: Blog Administrator @ 15.27
Tags: David Goldring,
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Swedish scammers convicted with assistance from MARQUES

MARQUES has learned with pleasure of the recent successful prosecution of the originators of fraudulent invoices in Uppsala, Sweden. The details can be perused from this letter by Arthur Csabo (DLA Piper), who handled the case for the claimants. MARQUES assisted in the prosecution by providing evidence of how the scams worked.

MARQUES remains resolutely determined to help prevent these scammers from misleading trade mark owners and works closely with the Fraud Unit at the EUIPO on reporting on scammers' activities. 

MARQUES has an anti-fraud task force, details of which you can read here.

Posted by: Blog Administrator @ 09.50
Tags: scammers, fraudulent invoices,
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FRIDAY, 24 JUNE 2016
Brexit and EU IP Rights

This morning, we woke up to the news that the UK will leave the EU. As German foreign minister Steinmeier said on Twitter: "Damn!". This decision brings in its wake a lot of political, commercial and legal uncertainty. The next months and years will show what new relationships will be forged between the UK and the EU. We might see a "soft exit" with a relationship similar to that Switzerland enjoys with the EU, or a "hard exit" where the UK would not enjoy any preferential status. However, the UK will not leave the EU for some time yet. There will be exit negotiations ikely to take several years. During that time, the UK remains a regular EU member.

Hogan Lovells have drafted a brief overview of implications the "Brexit" will have on IP rights such as EU Trademarks. In due course, brand owners will need to ensure protection at national level. Time and political negotiations will tell how smooth this transition can be made.

Posted by: Anthonia Ghalamkarizadeh @ 09.36
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MARQUES Conference reminder: be an early bird!

"Brands versus Trade Marks; Trade Marks versus Brands" is the somewhat enigmatic theme of this year's forthcoming MARQUES Conference in Villaitana -- a brilliantly conceived village outside Alicante, Spain. 

Much will be written and said about this exciting event before it takes place on 20 to 23 September. This blogpost is simply to remind readers that there is a special Early Bird offer for anyone who registers by1 July.

For further details, just click here.

Posted by: Blog Administrator @ 22.17
Tags: MARQUES Conference, Early Bird,
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July ETMR now available

The July 2016 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available. The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

Six cases are reported in the July issue -- four from the High Court, England and Wales, and twp from the European Union's General Court. 

MARQUES members are again reminded that, if they have been involved in European trade mark litigation which is of significant interest, and if they can provide an English-language text of the full decision of the court, the ETMR will be delighted to consider it for publication.

Posted by: Blog Administrator @ 18.49
Tags: ETMR, European Trade Mark Reports,
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Switzerland: deliveries to a subsidiary are not use in commerce

Pierre Fabre, proprietor of the Swiss trade mark ELUAGE, registered for skin care products, lodged an opposition against the trade mark YALUAGE by Sofar Swiss AG, claiming protection for similar goods. Sofar raised the objection of non-use of the older mark, and in a first decision, the IPO sided with Sofar and rejected the opposition. After Pierre Fabre had filed additional evidence, the IPO allowed the opposition partially (for certain goods), only for the Federal Administrative Court to overturn the decision on appeal.

What happened? Pierre Fabre had shown deliveries of products bearing the mark in question in the relevant period to its Swiss subsidiary, but no sales to retailers or end customers. The Administrative Court reminded everybody that within-group sales were not use in commerce, as the mark was not used to indicate the source of the goods in this context. Since Pierre Fabre had failed to demonstrate sales to unaffiliated parties, it had failed to show use in commerce, and the mark was unenforceable. Opposition dismissed.

The decision shows once again that proving genuine use in commerce is not an easy undertaking. It also seems overly formalistic. What's the point of the deliveries to the Swiss subsidiary, if not to put the goods on the Swiss market? In administrative proceedings, the court theoretically has to gather the evidence by itself (it does not do so in opposition proceedings). ELUAGE is clearly in use in commerce in Switzerland, as even a quick search on the internet confirms. In the March 2012 issue of the consumer magazine SALDO (in the relevant time period), the ELUAGE eye cream was tested. How would SALDO have acquired the cream, if not from a Swiss re-seller? Together with the sales to the Swiss subsidiary, this makes it more than likely that the mark was genuinely used in commerce in Switzerland. The result of the overly strict practice is that Swiss consumers will be faced with the marks ELUAGE and YALUAGE used for similar goods, which I do believe causes confusion.

B-6986/2014 of 2 June 2016 (PDF)

Posted by: Mark Schweizer @ 13.30
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MONDAY, 20 JUNE 2016
General Court: efekt perlenia (fig.) lacks distinctive character

In Case T-298/15, the EUIPO rejected the TM application by Atlas sp. z o.o., for goods in Classes 1, 2, 17 and 19 

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First, the mark covers products such as building materials and insulation, chemicals and paints and varnishes, which are intended mainly for the construction sector specialists. The attention of consumers, be they specialists or average consumers making small works, will be high. Regarding the descriptive character of the mark, it is composed of verbal elements' efekt "and" perlenia "and graphics representing a surface with small drops of water in a circle.  The term "efekt perlenia ', mean 'drops, pearls' onset phenomenon " in Polish. In the field of construction, that expression has a technical meaning specific referring to the appearance of surface drops (facades, seals) and that this is sign of the quality of the waterproofing (according to websites Murator and Budownictwo Polskie » related to construction work) . The appearance of small drops on the surface thus demonstrate that the treated elements (facades, joints) do not absorb moisture. 

Therefore, for the products in question, the expression informs directly the consumers that their use permit adequate surface protection against moisture.  Since the same ground for refusal is applicable to all the products in question, there is no obligation to provide a separate justification for all the materials examined.

 Regarding the absolute ground for refusal based on lack of distinctive character of the mark, the drops of water on an asymmetrical cross in the background represent a repellent phenomenon on joints and illustrate the information related to the products contained in the word 'efekt perlenia " . Therefore, the overall mark is devoid of any distinctive character.

The General Court upheld the decision and dismissed the appeal.

Posted by: Laetitia Lagarde @ 19.04
Tags: general court, absolute, grounds, efekt perlenia, construction,
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