Trade in counterfeit goods and free trade zones

Petra Herkul, Chair of the MARQUES Anti-Counterfeiting and Parallel Trade Team, brings news about today’s report on trade in counterfeit goods and free trade zones, published by the EUIPO and OECD:

Many countries have set up Free Trade Zones. The purpose is to support economic development by providing tax advantages and other regulatory exemptions, bringing economic benefits. The downside is that these zones can be misused by criminal organizations to traffic and smuggle counterfeit and pirated goods with all the negative effects know to brand owners and their experts.

The OECD (Organisation for Economic Cooperation and Development) and EUIPO, supported by World Customs Organization, the European Commission’s Directorate-General for Taxation and Customs Union and the United States Department of Homeland Security, have undertaken a study into this topic, resulting in a confirmation of the links between trade in counterfeit and pirated goods and free trade zones.

The full report can be found here.

The goal is to ensure that Free Trade Zones continue to develop as important institutions that promote international trade without facilitating illicit activities.

More information and analysis of the report by MARQUES Teams will be posted on this blog and in the HouseMARQUES newsletter soon.

Posted by: Blog Administrator @ 15.19
Tags: free trade zones, Petra Herkul, EUIPO, OECD,
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Warning over fees in Venezuela

We are pleased to publish this guest post by Ricardo Alberto Antequera, which will be of interest to IP rights owners and applicants in Venezuela:

In January this year, the Government of Venezuela published a revised Exchange Agreement. It sets out the new foreign currency system base which must be used to calculate and pay official fees at public authorities. This obviously includes fees paid at the national IP Office.

In light of this situation, SAPI issued a communication on 2 February which informed that in order to preserve rights from third parties in regards to trade marks or patents subject to payment of official fees due to deadlines, such as renewals, annuities or granting fees, a brief confirming the interest in securing/maintaining those rights, will be sufficient until further notice, since payment of official fees is suspended until SAPI receive new instructions from the Secretary of Finance concerning the new official fees system to be implemented.

Brand owners holding trade mark rights in Venezuela should thus be alert to this new situation.

Not only must brand owners make sure that the mentioned notices are filed in connection with pending applications and registrations that might be up for renewal, they may also want to ensure that their representative is sent the official fees in question notwithstanding the fact that fees cannot be paid at the Office. The reason for this perhaps unconventional step is the likelihood that when the Office publishes the new official fees, the deadline to pay the amounts that suddenly become due is expected to be extremely short.

It is better to be prepared than to be unable to pay and lose your rights.

Ricardo Alberto Antequera is managing partner of Antequera Parilli & Rodríguez in Caracas and a member of MARQUES

Posted by: Blog Administrator @ 15.38
Tags: Venezuela, Exchange Agreement,
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World IP Day: Women in innovation and creativity

This year’s World Intellectual Property Day, on Thursday 26 April, celebrates the brilliance, ingenuity, curiosity and courage of the women who are driving change in our world and shaping our common future

Announcing this year’s theme, WIPO said:

Every day women come up with game-changing inventions and life-enhancing creations that transform lives and advance human understanding from astrophysics to nanotechnology and from medicine to artificial intelligence and robotics.

And in the creative sphere, whether in the movies, animation, music, fashion, design, sculpture, dance, literature, art and more, women are re-imagining culture, testing the limits of artistry and creative expression, drawing us into new worlds of experience and understanding.

The important and inspiring contributions of countless women around the globe are powering change in our world. Their “can do” attitude is an inspiration to us all. And their remarkable achievements are an invaluable legacy for young girls today with aspirations to become the inventors and creators of tomorrow.

More than ever before, women are taking up leadership roles and making their voices heard in the science, technology, business and the arts. This is good news. With women and men working together, we strengthen humanity’s hand, and improve our ability to enrich our shared cultural wealth and develop effective solutions to alleviate poverty, boost global health, and safeguard the environment.

The time is ripe to reflect on ways to ensure that increasing numbers of women and girls across the globe engage in innovation and creativity, and why this is so important.

This year’s World Intellectual Property Day celebration is an opportunity to highlight how the intellectual property (IP) system can support innovative and creative women (and indeed everyone) in their quest to bring their amazing ideas to market.

To find out more:

  • Visit WIPO’s dedicated page, and download a poster, bookmark, postcards and a pictogram
  • Search for #worldipday on social media
  • Post photos and posters on the Facebook page
  • Submit details of events for inclusion on the map

And let us know via the comments if you are planning anything for World IP Day!

Posted by: Blog Administrator @ 08.26
Tags: World IP Day, WIPO, ,
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EUIPO webinars during March 2018

The EUIPO Academy is presenting the following webinars this month. All webinars are held on Tuesdays and start at 10am CET:

  • 6 March: Use of a trade mark in a form different than the registration – recent case law and principles (Speaker: Luca Rampini – ICLAD; Level: Advanced)
  • 6 March: SMEs, defend your rights (Blanca Arteche and Bente Waldstrom – Observatory; Intermediate)
  • 13 March: Colour combinations: getting back to WYSIWYG (Roland Mallinson – Taylor Wessing and MARQUES; Advanced)
  • 13 March: Decisions of the Trimester of the EUIPO Boards of Appeal (Christoph Bartos – Boards of Appeal; Advanced)
  • 20 March: Calculation of Proof of Use periods before and after the Legislative Reform (José Antonio Garrido – Operations Department; Intermediate)
  • 20 March: Limitations, withdrawals and Proof of Use requests (Claudia Schlie – Operations Department; Intermediate)
  • 27 March: Decisions of the Trimester of the GC and the CJEU (Martin Fischer – ICLAD; Advanced)
  • 27 March: E-filing of Inspections and Legalisations (Daniele Pietro Messa and Alexandra Levald – Customer Services Department; Intermediate)

All the webinars are free to access and can be viewed live or recorded. Find out more and sign up here.

Posted by: Blog Administrator @ 10.20
Tags: EUIPO, Boards of Appeal, proof of use, colour combinations,
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IPR infringement of tyres and batteries costs 2.4 billion a year

The twelfth study by the European Observatory on Infringements of Intellectual Property Rights estimates that €2.2 billion are lost annually in Europe due to counterfeit tyres, and €180 million to counterfeit batteries.

These figures correspond to 7.5% and 1.8% of the sectors’ sales respectively.

The figures are revealed in a study published on 21st February.

The study also reveals divergences between countries: based on the research, the country least affected by counterfeiting in these two sectors is Finland and the country most affected is Lithuania. In absolute terms, the country most affected is Spain, with losses estimated at €477 million.

The report estimates that lost sales translate into direct employment losses of 8,318 jobs. Counting knock-on effects in other industries, the total is 22,283 jobs.

The loss of government revenue is estimated at €340 million.

The MARQUES Anti-Counterfeiting and Parallel Trade Team will review the study and publish any analysis in due course.

Posted by: Blog Administrator @ 13.15
Tags: EUIPO, Observatory, tyres, batteries,
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General Court: No confusion between BEPOST and ePOST (fig.)

In Case T-118/16, the EU General Court ("GC") showed that, in trade mark law, one letter can make all the difference.


The Belgian company bpost NV sought to register the word sign "BEPOST" as an EUTM for products in Classes 16, 35, 38 and 39, such as "transport and delivery of postal items". The German company Deutsche Post AG opposed the mark applied for on various grounds. The opposition was based, in particular, on the German word mark "POST" and on the figurative EUTM depicted on the right – both covering various products, including postal services and related products.

The Opposition Division rejected the opposition, and the Board of Appeal ("BoA") dismissed the appeal filed by Deutsche Post. In yesterday's decision, the GC agreed with the BoA's findings.


Referring to LTJ Diffusion (Case T-346/04), the GC established that a market survey produced by Deutsche Post for the first time before the Court could not be taken into account.

As regards the earlier national word mark "POST", Deutsche Post did not dispute that the products in question were identical or (remotely) similar. The GC confirmed that "the signs at issue were similar to a low degree, but had significant visual differences, despite the common element 'post'" (para. 42). Due to the additional "be" in the mark applied for, the degree of aural similarity was also low. Conceptually, the element "be" was "of particular importance in the global assessment since, unlike the term 'post', it does not allude to the goods and services in question and, accordingly, helps considerably to distinguish the marks" (para. 45).

The Court rejected Deutsche Post's argument that, in the absence of elements establishing conceptual differences, there was a high degree of conceptual similarity. In the GC's view, the "position of the element 'be' at the beginning of the word element 'bepost' of the mark applied for was such as to make it slightly dominant, in accordance with the case-law that the relevant public normally attaches more importance to the first part of words" (para. 47). The Court found that the "word element 'post' in the mark applied for, when combined with the element 'be', is understood by the relevant public as a reference to 'postal services'" (para. 45) and that it "has a rather abstract meaning, since it is grammatically unusual for the German consumer who might not necessarily perceive it as a meaningful expression" (para. 48).

The GC concluded that "despite certain resemblances between the marks" (para. 55) there was no likelihood of confusion. The Court pointed out that even an enhanced distinctiveness of the earlier mark would not have justified a different conclusion. And the earlier "POST"-mark did not play an independent distinctive role within the mark "BEPOST", since the element "post" within the mark applied for "cannot be considered distinctive" but was "entirely descriptive" (para. 69).

As regards the earlier figurative EUTM "ePOST", there was no similarity with regard to some of the goods applied for (e.g., "printed matter"), but the remaining products were identical or somewhat similar. Despite the common element "post", the signs were considered to show "significant visual, aural and conceptual differences" (para. 89). Due to the different colours and typefaces used, the "overall visual impression of the marks" was different (para. 81). Contrary to the view of Deutsche Post, the distinctive character of such visual elements was "no weaker than that of the word element 'post'" (para. 81). Aurally, the signs differed in the pronunciation of the letter "b". And on a conceptual level, they were different because the element "e" of the earlier mark referred to the concept of "electronic", while the element "be" of "BEPOST" did not.

As regards national rights in the designation "POST" invoked by Deutsche Post on the basis of prior use in Germany, the GC set out that the differences identified above were sufficient to rule out a likelihood of confusion within the meaning of Section 15 of the German Trade Mark Act.

As regards the protection of the allegedly reputed national mark "POST", the GC did not examine the reputation in detail. It noted that consumers would not establish a link between the mark "BEPOST" and the earlier mark "POST". The registration of that mark "at the national level does not mean that that term […] has such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that term". Deutsche Post's argument to the contrary "is intended, wrongly, to limit the use of the term 'post' to only those postal services covered by the earlier national word mark POST. Furthermore, […] that intention is incompatible with the aims of national or EU legislation in the field of trade marks" (para. 117).


Readers that have made it this far are hereby asked for forgiveness for the excessive use of direct quotations, which was intended to underline how remarkable some of the GC's statements seem.

The decision is striking because it deviates from the usual doctrine of the GC according to which even a coincidence of two marks in an element of weak (read: no) distinctive character can suffice to cause a likelihood of confusion (see, for instance, Case T-735/15 SHOP ART and Case T-127/13 PRO OUTDOOR). In yesterday's decision, the GC did not blindly apply that doctrine but considered wider implications of the matter.

While this policy-driven approach becomes particularly clear in the closing sentences of the decision, the GC's remarks with regard to the similarity of signs are slightly less conclusive. Trying to match this section of the present judgment with previous decisions of the GC may cause some head scratching. By way of example, the GC recently confirmed a high degree of visual and aural similarity between the marks "INWEAR" and "IWEAR", even though the goods in question related to clothing items (see Case T-622/14). In a different case, the GC found that two marks, covering services related to providing drinks, could be conceptually similar due to the coinciding term "coffee" (see Case T-398/16).

Thus, yesterday's outcome stands apart from many decisions of the GC involving trade marks that coincide in terms deemed to be weakly distinctive. That being said, the outcome is in line with a previous decision of the GC concerning another "POST"-variant mark (see Case T-102/14).

Undoubtedly, the decision contains many more aspects that would justify writing one or several further blog posts. As always, readers are invited to leave their comments below.

Posted by: Christian Tenkhoff @ 10.26
Tags: Likelihood of Confusion; EUTM; degree of distinctiveness; ,
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EUIPO Transparency Portal

Have you ever found it hard to track down a document you need on the EUIPO Register of Public Documents? If, so help is at hand: the Office has launched a Transparency Portal, a searchable entry point for all documents in the Register.

For ease of access, documents are organised into five categories:

  • Economic
  • Environmental
  • Staffing
  • Organisational
  • Social and relational

The main documents available include:

  • Strategic Plan 2020
  • Work Programme
  • EUIPO Budget
  • EUIPO Corporate Sustainability Report

The Portal will include all new documents when they are published. 

Posted by: Blog Administrator @ 10.09
Tags: EUIPO, Transparency Portal, ,
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