THURSDAY, 23 NOVEMBER 2017
2018 version of the eleventh edition of the Nice Classification
As reported on WIPO's website today, a new version of the 11th edition of the International Classification of Goods and Services ("Nice Classification") will enter into force on 1 January 2018.

As always, the new version will include changes and the new version will be available on WIPO's website here in due course.

The new version of the Nice Classification will be applied to any IR application received by the office of origin on or after 1 January 2018, as well as any IR application received by WIPO on or after 1 January 2018, when the application is received by WIPO after the two month time limit under Article 3(4) Madrid Protocol. The Madrid Goods and Services Manager (www.wipo.int/mgs/) will also be updated to reflect these changes.
 
Posted by: Birgit Clark @ 16.01
Tags: WIPO, IR, Nice,
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THURSDAY, 23 NOVEMBER 2017
Happy Birthday to us!

Today marks the 10th anniversary of the first posts on Class 46 and is a great opportunity to say thank you to all our regular and occasional contributors, readers, commenters and of course our founder Jeremy Phillips!

The first post, dated 23 November 2007, was titled "Laguiole cheese PGI amended". There was another post on the same day, "Alicante News now available".

Since then, we have published hundreds of blog posts on trade mark developments and cases, as well as matters related to copyright, geographical indications, the internet, domain names and many other subjects. 

Today, we have a team of 12 regular bloggers from various countries, and we also post guest contributions from members of MARQUES Teams and other people.

And of course MARQUES also hosts the Class 99 blog on design law, which was launched in April 2009.

You can browse recent posts, search the archive and find out more about our contributors on the Class 46 home page, where you can also sign up for email alerts.

If you would like to find out about becoming a contributor, or making a guest post, or have any other questions please contact the blog administrator, James Nurton, at editor@marques.org.

Birthday cake photo by normanack via Wikimedia (CC licence)

Posted by: Blog Administrator @ 09.57
Tags: Class 46, birthday, anniversary,
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TUESDAY, 21 NOVEMBER 2017
GC: no genuine use of the Femibion trade mark

Finding no genuine use of the mark Femibion, the General Court disagreed with the EUIPO's Board of Appeal and held that the EUTM for Femibion may be revoked insofar as it was registered for  pharmaceutical preparations as opposed to dietetics. Endoceutics Inc. v EUIPO (T-802/16) of 17 November 2017.

Link to the decision here.

The revocation applicant had argued that the mark not been put to genuine use under Article 51(1)(a) EUTM Regulation (now Article 58(1)(a)) for the class 5 goods "pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition", but only for dietetic substances adapted for medical use.

The EUIPO Board of Appeal had found that genuine use of the mark had been shown for the aforementioned goods regarding them as a subcategory of pharmaceutical goods. The revocation applicant argued that the evidence submitted showed that the goods covered by the mark were dietetic substances and not pharmaceutical preparations.

The court agreed with the revocation applicant.

The judges explained that it was necessary to examine whether the goods for which use of the mark had been shown were indeed pharmaceutical preparations in the subcategory defined by the EUIPO Board of Appeal. Notably, the revocation applicant had not disputed that genuine use of the mark had been proved in respect of dietetic substances adapted for medical use.

The court also stated that the fact that the definitions of ‘food supplements’ and ‘medicinal products’, as reflected in acts of secondary EU law, may overlap was irrelevant, since the evidence submitted did not support the conclusion that the goods were not only food supplements but also pharmaceutical preparations.

Further, nutritional or food supplements included in Class 5 were not intended to serve as ordinary food, but were consumed to prevent or cure medical problems in the broadest sense or to balance nutritional deficiencies (citing BIONECS, T-262/14). It was also apparent that the goods for which genuine use could be shown were not intended to treat or prevent a disease, but to address nutritional deficiencies resulting from normal physiological processes. Even the exclusive sale of certain goods in pharmacies did not mean that they are necessarily pharmaceutical preparations or medicinal products.

As a result, the court annulled the decision of the EUIPO's Board of Appeal (R 1608/2015-1), in so far as it had maintained registration of the EUTM for "pharmaceutical preparations for immune system support, for menopause, for menstruation, for treatment and management of pregnancy, for the prevention, treatment and management of stress, for the prevention, treatment and management of stress [caused by] ill-balanced or deficient nutrition" in Class 5.

Posted by: Birgit Clark @ 15.44
Tags: genuine use,
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TUESDAY, 21 NOVEMBER 2017
Intangibles account for one-third of value of manufactured goods WIPO study
Image: WIPO

Intangible capital – such as branding, design and technology – contributes twice as much as buildings, machinery and other forms of tangible capital to the total value of manufactured products, according to new research by WIPO.

The World Intellectual Property Report 2017: Intangible Capital in Global Value Chains, found that intangible capital accounted for 30.4% of the total value of manufactured goods sold from 2000 to 2014. Income from intangibles increased by 75% in that period, amounting to US$5.9 trillion in 2014.

The Report includes case studies on coffee, solar panels and smartphones. For example, it found that for every iPhone 7 that Apple sells for approximately US$810, about 42% of the sales price is captured by Apple. The figures for Samsung and Huawei are similar (see picture).

Read more about the Report on WIPO’s website:

Download the report in full

Three-minute video with WIPO Director General Francis Gurry (YouTube)

Smartphones case study

Coffee case study

Solar panels case study

Press conference (YouTube)

Photos of launch (Flickr)

Posted by: Blog Administrator @ 09.32
Tags: WIPR, WIPO, intangible capital, smartphones,
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MONDAY, 20 NOVEMBER 2017
MARQUES Brexit position paper published

MARQUES has set out its position with regard to Brexit in a nine-page paper which is available to download on the website here.

The paper states that Brexit "has the potential to be a material threat to the interests of the significant number of businesses that own and/or rely on valuable trade mark, design and geographical indicator rights protected in the EU".

MARQUES believes that the governments of the UK and EU27 Member States and the EU Commission need to provide early certainty to businesses in respect of three key objectives:

(1) There will be no loss of their existing IP rights and no diminution in the level of IP protection in the UK and EU27 Member States post-Brexit;

(2) Businesses will not have to incur any, or at least any material, costs to maintain their existing rights; and

(3) There will be no, or as little as possible, administrative burden on businesses in retaining those rights.

12-point plan

The paper includes 12 points setting out in detail how MARQUES believes EU harmonised rights should be dealt with during and after Brexit. These cover rights in force on Brexit, the creation of new rights in the UK post-Brexit, pending applications and litigation based on EU rights.

Other topics addressed include representation and addresses for service; existing contracts, recordal of contractual interests and licensee litigation rights; exhaustion of rights; .eu domain names; Customs actions against counterfeits; and transitional provisions.

Serious concern

The paper states that it is "of serious concern" that with less than 18 months until Brexit day (due in March 2019) there parties have not commenced any dialogue at all about these matters, and urges them to start progress talks. It states: "MARQUES wishes to impress upon all parties involved in the Brexit negotiations the urgent need to start and progress bilateral talks about the technical aspects relating to IP law and procedure as soon as possible."

The position paper was approved by the MARQUES Council, and is based on work undertaken by the Brexit Task Force, including extensive discussions at the Team Meetings in Geneva and the Annual Conference in Prague this year. Thanks to all those who took part in the consultation.

With only 18 months until Brexit day, it is imperative that all the relevant authorities are aware of the issues relating to IP protection and the need to address them. Please do share or forward the position paper to anyone who might find it useful.

Posted by: Blog Administrator @ 09.20
Tags: Brexit, EUTM, GI, RCD, UDR,
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TUESDAY, 14 NOVEMBER 2017
IP Legal Updates in China - just 10 days away!
In partnership with

It's not long to go until the next MARQUES event, which takes place on 25th November in Beijing, organised in cooperation with the China Trademark Association (CTA).

Spaces are filling up, but you can still reserve your place here.

The following speakers are now confirmed:

  • Dr Peter E Wild, Founder and Principal of Wildpeak Ltd, Singapore – Member of MARQUES Council and Vice-Chair of the Programming Team
  • Ms Zang Baoqing, Deputy General Secretary, China Trademark Association
  • Mr Simon Tsi, Chang Tsi & Partners, China
  • Mr Yongqing Qiu, Presiding Judge of IP Tribunal in Guang Dong High Court
  • Ms Julia Zhong, Lee and Li - Leaven IPR Agency Ltd, Beijing, China – Chair of the MARQUES China Team
  • Ms Zhang Xiaojin, Chief-Judge in the Second Trial Division in Beijing IP Court
  • Ms Zang Baoqing, Deputy General Secretary of the China Trademark Association
  • Ms Yuan Qi, Deputy Director General of Trademark Examination Cooperation Center, State Administration for Industry & Commerce
  • Mr Wang Ze, Chair of Beijing Justra IP Center
  • Ms Spring Chang, Chang Tsi & Partners, Beijing, China
  • Mr Jiangfeng Yu, Head of IP, ThyssenKrupp (China) Ltd., Beijing, China

The full-day event is great value at just €170 for MARQUES and CTA members, and €195 for non-members, so do consider attending, or forwarding the details to colleagues/associates in Beijing who might like to attend.

Posted by: Blog Administrator @ 10.47
Tags: IP Legal Updates, CTA,
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MONDAY, 13 NOVEMBER 2017
London Taxi the key quotes
EU trade mark

On 1 November the England & Wales Court of Appeal upheld a High Court decision (by Mr Justice Arnold) that two trade marks for the shape of a London taxi were invalid.

The marks at issue were EUTM 951871 registered as of 5 October 1998 for “motor vehicles, accessories, for motor vehicles; parts and fittings for the aforesaid” in class 12, and UK trade mark 2440659 registered as of 1 December 2006 for “cars; cars, all being taxis” also in class 12. The dispute was between London Taxi Corporation (LTC), which owned the trade marks, and rival manufacturers Frazer-Nash Research and Ecotive.

The judgment, written by Lord Justice Floyd, addressed issues including who is the average consumer, inherent distinctiveness and acquired distinctiveness, substantial value, revocation for non-use, infringement and passing off.

Here are some of the key passages in the judgment:

Average consumer

Although he decided he did not need to reach a conclusion on the point, the judge said he was inclined to hold that taxi hirers are “not excluded in principle from consideration as a relevant class of consumer”:

In principle, therefore, and in the absence of any authority cited to us which is directly in point, I would consider that the term average consumer includes any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it, for example in making a decision to buy or use the goods. Against that background, I would not have thought it mattered whether a user was someone who took complete possession of the goods, or someone who merely hired the goods under the overall control of a third party (paragraph 34)

Inherent distinctiveness

The Court of Appeal followed the first instance judge in finding that the marks did not depart significantly from the norms and customs of the sector (as set out in the CJEU Freixenet cases) and therefore did not have inherent distinctive character. Floyd LJ said there are three steps in deciding this:

The first step in the exercise is to determine what the sector is. Then it is necessary to identify common norms and customs, if any, of that sector. Thirdly it is necessary to decide whether the mark departs significantly from those norms and customs (paragraph 45)

UK trade mark

However, the judgment also found that the question whether “departs significantly from the norm or customs of the sector” is a necessary and sufficient test for inherent distinctiveness is not clear and would have had to be referred to the CJEU if it were critical to the appeal.

Acquired distinctiveness

This was the main area of dispute in the case, and again the Court of Appeal upheld the first instance ruling, finding that the evidence was not adequate to establish that taxi hirers had come to perceive the shape of the taxi as denoting vehicles associated with LTC and no other manufacturer. Floyd LJ wrote:

Firstly, one must remember, as always in the case of a shape mark, that the public are not used to the shape of a product being used as an indication of origin. Secondly, even though I would not, as I have said, necessarily exclude hirers as a class of average consumer, they constitute a class of consumer whose focus will be on the provider of the services being supplied more than on the manufacturer of the vehicle in which they are travelling. It will be hard to interest them, far less educate them, in the topic of whether the shape of the taxi is an indication of a unique trade source. Thirdly, the hirer is aware of the regulation of London taxis and that taxis of the shapes shown in the registrations can be relied on to be licensed London taxis. One must be careful therefore to distinguish this message admittedly conveyed to them by the shape, from that which is necessary to show that the mark has acquired trade mark significance.

In these circumstances it is particularly important to see evidence from which it can be deduced that consumers have come to understand that there is only one manufacturer of taxis of that shape. Whilst I might not have expressed myself in quite such absolute terms about the tip-up seat material, I see nothing in the materials which we were shown which persuades me that the judge, overall, came to an incorrect conclusion on this issue, or one with which we could properly interfere (paragraphs 66-67)

Substantial value

In the light of the findings on distinctiveness, the question of whether the signs consisted of the shape which gives substantial value to the goods did not need to be decided. However the judge said:

Despite this existing guidance, I do not regard as entirely clear cut the question of whether, in addressing substantial value, one should take into account or ignore the fact that consumers will recognise the shape as that of a London taxi. On one view, at least, to take account of that fact would not be to decide the issue by reference only to "the shape itself". I would also put in the same category the question of the relevance of the presence or availability of design protection in fact. These are questions on which, had they been critical to the decision, I would have sought the opinion of the CJEU on a preliminary reference (paragraph 76)

Read the decision in full here and the first instance judgment here. There is also a post about the case on the IPKat blog by Rosie Burbridge here.

Posted by: Blog Administrator @ 11.43
Tags: London Taxi, Floyd LJ, acquired distinctiveness, Freixenet,
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