TUESDAY, 23 MAY 2017
June ETMR now out

The June 2017 issue of the European Trade Mark Reports (ETMR) has now been published.

To remind readers, the ETMR is a series of law reports published monthly by Sweet & Maxwell. It contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

This issue contains two decisions. The first is a High Court (Chancery Division) decision from England and Wales, this being a battle over the use of the www.argos.com domain name by a US trader whose online footprint extended to the UK, to the anger of the owner of the ARGOS trade mark.  The second, a General Court ruling, addressed the respective lists of goods and services attached to the applicant's word mark PALOMA and the opponent's figurative mark containing the same word: basically, how close are fruits and flowers?

MARQUES members are reminded as usual 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. Communications should be sent to the Editor, Dr Stavroula Karapapa at s.karapapa@reading.ac.uk.

Posted by: Blog Administrator @ 12.24
Tags: ETMR,
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And now for something completely different ... a Case Law Laboratory

Here's some exciting news from our friends at the EUIPO, concerning a forthcoming event that will be of great interest to MARQUES members and to readers of this weblog. This is the message we've received:

Almost a year ago, the IP Case Law Conference took place in Alicante, which was, thanks to the active participation of MARQUES, a great success.

This year, we have organised something different: a Case Law Laboratory.

The event will focus on a variety of select, essential and relevant legal topics such as non-traditional trade marks, functional trade marks and designs, national law rights in the context of Article 8(4) EUTMR and challenges involving the disclosure of designs. The case law related to each topic will be reviewed and discussed taking into consideration the legal reform when relevant.

The event aims to encourage participants to exchange views and develop a common in-depth reflection on essential legal issues that are relevant to both the private sector and the Office.

The event will be divided into two sessions. In the morning session, topics will be analysed and discussed in four interactive working groups composed of highly skilled and experienced practitioners and industry professionals, and will be monitored by EUIPO specialists.

The afternoon session will involve all participants in debate, discussion and findings of the morning sessions related to the various topics. More information, the agenda and the link to the registration website can be found here.

In case you need further details, please contact the organising team at CaseLawLaboratory@euipo.europa.eu

In case you are wondering, the date is 12 June 2017 and EUIPO will be your hosts. See you there?

Posted by: Blog Administrator @ 16.06
Tags: Case Law Laboratory, EUIPO,
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TUESDAY, 16 MAY 2017
Switzerland: unprotected MINDFUCK

Petra Bock sought to extend the protection of her international mark MINDFUCK, claiming protection among others for clothing and, I kid you not, education and mental coaching, to Switzerland. Unlike Germany, Austria and Liechtenstein, which protected the mark, the Swiss IPO was offended and refused protection based on the grounds that the mark was against public morale ("sittenwidrig"). On appeal, the Federal Administrative Court confirmed.

"FUCK" was generally understood to refer to a sexual act. The combination with "MIND" did not detract from this meaning; to the contrary, the literal German translation "HIRNFICK" made it even worse (I am not sure that is the correct translation. "HIRNFICK" would be "BRAINFUCK". I am sure, however, that I never expected to read a decision of the Federal Administrative Court discussing the meaning of "HIRNFICK"). The term MINDFUCK was therefore offensive for at least parts of the general public and excluded from protection as trade mark.

Decision B-883/2016 of 23 March 2017.

Posted by: Mark Schweizer @ 13.18
Tags: absolute grounds for refusal, public morale,
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SUNDAY, 14 MAY 2017
An appealing prospect --online appeals to EUIPO

The current issue of Alicante News, issued by our friends in the EUIPO, trumpets a reminder concerning a handy new service that may be of great assistance to our readers -- it's called eAppeal and it has been available since 10 April. This facility allows users to file an appeal online. eAppeal is designed to make filing an appeal as efficient as possible, and is part of the Office’s commitment to providing high quality electronic services to its users. According to EUIPO:

The new eAppeal is the latest step in a journey of digital improvement undertaken by the Office. Starting in 2011, EUIPO began to simplify and modernise its IT systems, making them more efficient and user-friendly. eAppeal is easy to use and can be accessed directly from the User Area of the EUIPO website, and through the online services page. It can also be entered under Actions and Communications after accessing the file in eSearch plus.

The entire process has just four steps.

The first step allows the requester (either the appellant or the representative) to submit their information electronically.

The second step allows the requester to identify the contested trade mark or design decision.

The third step allows the requester to upload a statement of grounds as an attachment to the form, or to file it later on. The statement of grounds needs to be filed in the language of the proceedings. If a written statement of grounds is not attached to eAppeal, please note that if it is not filed within four months, the appeal will be inadmissible. The fourth step requires the requester to sign the form by entering his or her name, as described in Rule 79, 80(3) and 82(3) EUTMIR.

The signature confirms that the requester has checked all details and wishes to sign and confirm the submission of the Notice of Appeal.

Once the four steps are completed, the user is directed to a payment page, with all payment options (credit card, transfer, current account). Users can save their work as a draft at any time in the process, and return to it later.

Once the Notice of Appeal is submitted, users are requested to download the confirmation copy, which contains the appeal number, and save it locally. The number of the exact Board which will deal with the appeal will be communicated to the appellant or representative at a later stage by the Registry of the Boards of Appeal.

The Office has prepared a number of resources for users on the new eAppeal form. A webinar on eAppeal was broadcast earlier this month; the recording is available to watch from the EUIPO website.

Posted by: Blog Administrator @ 18.31
Tags: eAppeal,
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FRIDAY, 12 MAY 2017
More from Madrid: further WIPO Highlights

Yesterday we posted some highlights from the WIPO Madrid Highlights, release 1/2017.  Here are a couple more features you may be glad to know about:

Automatic Call Distribution System (ACD) Launched

The Madrid Registry introduced an ACD to improve responsiveness to customer queries. The system matches callers to WIPO Madrid staff taking calls in English, French and Spanish. Implementation of the ACD system is just one part of a broader Madrid Registry initiative focused on delivering better customer service for trademark owners and representatives. Over the coming months, new online contact forms will be introduced and the number of contact points will be further streamlined.


Guide to Completing the Most Frequently Used Forms

Making the Most of the Madrid System, the quick and simple reference to completing Madrid forms, is now available in the three Madrid System working languages: EnglishFrench and Spanish.  

This manual outlines practical tips on how to complete Madrid forms, including information concerning optional and mandatory fields. Essential Madrid System information, including filing, geographical expansion, renewal, and modification of several parameters of your international registration, is also included.

Making the Most of the Madrid System also provides specific guidance on costs and method of payment relating to each transaction.

It's good to know that WIPO is so committed to spreading the word -- and we at MARQUES are delighted to be able to pass the word on!

Posted by: Blog Administrator @ 11.53
Tags: Madrid System, WIPO Highlights,
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Madrid: WIPO highlights the Highlights

Our friends at the World Intellectual Property Organization (WIPO) have now published release 1/2017 of their ever-popular and always informative Madrid Highlights -- which you can read in full online by clicking here.

Naturally we are happy to draw the attention of our readers to various items that may not sound very exciting but which have the ability to improve the quality of life of anyone working in the field of international trade mark registration. In particular:

Madrid Goods and Services Manager (MGS) Integrate Nice Changes

The MGS recently integrated all modifications to the 11th edition of the Nice Classification. This tool offers a number of invaluable features and content designed to support users in compiling acceptable lists of goods and services for their international applications. Thanks to its exclusive “check acceptance/rejection” function, trademark owners can, in a few simple steps, find out if their goods/services will be accepted by WIPO and some 29 Offices of Designated Contracting Parties. 


WIPO Classification Guidelines Published

The recently published "Examination Guidelines Concerning the Classification of Goods and Services in International Applications"  provide detailed guidance on WIPO’s classification principles. This includes general information on the Nice Classification and the Madrid System, classification principles applied by the International Bureau and practical information on the acceptable format of goods and services lists. Used in conjunction with the Madrid Goods & Services database, the Classification Guidelines are an essential tool to help you avoid classification irregularities.


Legalization of Extracts from the International Register

Certified copies of extracts in the International Register exceptionally require legalization by Members of the Madrid System; however, clients may need to have them legalized in Non-Madrid Member States.  For this reason, WIPO launched a service, in August 2013,  by which users of the Madrid System can obtain legalization of certified extracts from the International Register.

All you need to do is send an e-mail to Madrid Client Records Unit (madrid.records@wipo.int), specifying the international registration number, the type of extract required, the time limit (normal or expedited) and the country for which the extract is requested. Cover pages can be requested in any one of the United Nation's six official languages.  An expedited service is available for extracts that are required urgently.

WIPO will take care of all formalities before the interested country’s embassy or consulate in Switzerland on behalf of clients. Clients will receive the official document and invoice directly from WIPO. 

Watch this space: we'll be pointing out a couple of further items from the Madrid Highlights on Class 46 tomorrow.

Posted by: Blog Administrator @ 11.12
Tags: Madrid System,
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Brands and Culture: join us in Prague this September!

31st MARQUES Annual Conference
Tuesday 19th - Friday 22nd September 2017
Hilton Prague, Prague, Czech Republic 


The 31st MARQUES Annual Conference will look at how brands are shaped by cultural, political and social influences. IP rights are today more prominent worldwide, and consumers are more engaged. That results in growing tensions between trade marks and other IP rights, on one hand, and free speech, cultural sensitivities and political considerations, on the other. These tensions will be explored over the three days of the Conference.

Details available by clicking here.

Posted by: Blog Administrator @ 12.45
Tags: MARQUES Meeting,
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