MONDAY, 26 SEPTEMBER 2016
5,000 welcomes! MARQUES on the social media

Keen readers of the MARQUES Class 46 weblog may have spotted that last week, in the course of the MARQUES Conference (which you can read all about on blogposts here, here, here and here, thanks to the wonderful Laetitia Lagarde), we reached a new milestone.  It has taken a few years and a lot of blogposts, but Class 46 has now welcomed it's 5,000th email subscriber. Thanks so much to all the blogteam members for their support, to the MARQUES secretariat for its logistical back-up and, of course, to all our readers!

While we're on the subject, the Class 46 blog team is always on the lookout for fresh talent. If you are a MARQUES member and enjoy writing about European trade mark and branding issues, do please contact Class 46 via the MARQUES secretariat by email to info@marques.org so that we can see how much use we can make of you (if you'd like to write about designs rather than trade marks, we have a blog for that too, the Class 99 blog. Again, volunteers are warmly welcomed).

Still on the subject of social media, MARQUES has a LinkedIn discussion group which enjoys the support of over 4,100 members. It's open to anyone with a sincere interest in trade mark and brand issues in Europe -- and it's moderated, which means that we keep it free of advertisements, recruitment notices and recycled law firm newsletter articles. You can follow what's being posted on the LinkedIn Group and the blogs if you follow us on Twitter.

Finally MARQUES has a Facebook page, which you can check out here.  Hope you like it!

Posted by: Blog Administrator @ 00.05
Tags: Class 46, MARQUES social media,
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SUNDAY, 25 SEPTEMBER 2016
October ETMR now published

Following the jumbo-sized September 2016 issue of the European Trade Mark Reports (ETMR), the October 2016 issue has slimmed back down to normal size again.

To remind readers, the ETMR is 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.  

This issue contains three decisions: they are the General Court's much-publicised decision in the MACCOFFEE/McDONALDS dispute, as well as two decisions from England and Wales.

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 @ 10.57
Tags: ETMR,
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THURSDAY, 22 SEPTEMBER 2016
2016 MARQUES annual conference - DAY 3 Preview

Uwe mentioned at the opening ceremony that this year's conference will be extraordinary and Friday morning in Benidorm will not disappoint- the morning after the Gala night is always a time for farewells and rushing to the airport to go home (or to another conference) but if you can, don't  miss out on the last sessions!

MARQUES has the honour to be the first European conference to address the issue of indigenous intellectual property rights. The session will feature Ambassador Keith Harper, the first native American (Cherokee) to be appointed  as an American ambassador and US Ambassador to the UN Human Rights Council. Daphne Zografos Johnsson is  a Legal Officer who set up the Traditional Knowledge Division of WIPO. Marion Heathcote is a member of the IP Outer Borders team and a lead practitioner in this intersection of IP rights and indigenous culture, artwork and symbolism. The speakers will look at the 2 sides to the coin: indigenous people have not really taken advantage of the traditional IP protection methods because there is no concept of private ownership; however traditional methods might not be appropriate anymore. The team and MARQUES hope that this session will appeal to the audience as citizens of the worlds/ IP practitioners and aim at explaining how brand owners must be careful no to  step on indigenous peoples' rights. James Nurton will follow up with an interview in Managing IP.

The conference will then be summed up with the Lewis Gaze Memorial Scholarship and an update in CJEU case law by Jeremy Blum and Paul Maeyaert.

Posted by: Laetitia Lagarde @ 18.00
Tags: conference,alicante, indigenous rights, ,
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THURSDAY, 22 SEPTEMBER 2016
2016 MARQUES annual event in Villaitana Alicante - WIPO update

During Wednesday afternoon session, Michael Leonard chaired the session on Replacement, Dependency (Central Attack) Transformation and other news from WIPO, which focussed on issues related to the Madrid Protocol / Agreement.   Debbie Roenning, Director of the Legal Division, Madrid Registry at WIPO gave a very clear and helpful summary of the coverage of the Madrid Protocol / Agreement, which now has 97 members and can cover 113 countries, and of potential new accessions to the treaty.  Debbie also mentioned the projects WIPO is working on, and explained that consensus would be needed to achieve improvements to the International Registration system in the short, medium and long term.  These include the final stages to implement and gain awareness of replacement, to streamline the transformation process and to look at a possible reduction in the dependency term of IRs.  William Lobelson then focussed on some specific issues in relation to the Madrid system that the MARQUES International Trade Mark Law and Practice team has identified as areas where the interests of brand owners could be improved, particularly replacement and dependency.  The session wrapped up with a number of questions from the audience, including questions about the classification of goods and services and whether WIPO would consider the 65,000 terms in the EU harmonised database as acceptable before the International Bureau.

Posted by: Laetitia Lagarde @ 13.47
Tags: Marques, alicante, WIPO,
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THURSDAY, 22 SEPTEMBER 2016
2016 MARQUES annual event in Villaitana Alicante - WIPO update

During the Wednesday afternoon session, Michael Leonard chaired the session on Replacement, Dependency (Central Attack) Transformation and other news from WIPO, which focussed on issues related to the Madrid Protocol / Agreement.   Debbie Roenning, Director of the Legal Division, Madrid Registry at WIPO gave a very clear and helpful summary of the coverage of the Madrid Protocol / Agreement, which now has 97 members and can cover 113 countries, and of potential new accessions to the treaty.  Debbie also mentioned the projects WIPO is working on, and explained that consensus would be needed to achieve improvements to the International Registration system in the short, medium and long term.  These include the final stages to implement and gain awareness of replacement, to streamline the transformation process and to look at a possible reduction in the dependency term of IRs.  William Lobelson then focussed on some specific issues in relation to the Madrid system that the MARQUES International Trade Mark Law and Practice team has identified as areas where the interests of brand owners could be improved, particularly replacement and dependency.  The session wrapped up with a number of questions from the audience, including questions about the classification of goods and services and whether WIPO would consider the 65,000 terms in the EU harmonised database as acceptable before the International Bureau.

Posted by: Laetitia Lagarde @ 13.47
Tags: Marques, alicante, WIPO,
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THURSDAY, 22 SEPTEMBER 2016
2016 MARQUES annual conference in Villaitana Alicante - DAY 2

Cristina Duch chaired a very practical session for all practitioners litigating EU trade marks before the EUIPO, GC and CJEU on both offensive and defensive actions.

Arnaud Folliard (Litigation team, EUIPO) gave practical tips to litigants before the GC from the Office's point of view. First, he noted that about 80% of judgments are confirmed (up to 90% for judgments inter partes) and warned about 7 common errors for litigating before the CJEU:

-an appeal before the GC is not an opportunity to improve a case ( no new facts, arguments or evidence)

-don’t underestimate the intervener who may submit a cross claim

- lodging an appeal may not able you to gain time (although the good news is that there will be 12 more  judges in September 2016) and don’t forger to consider alternative actions (new EUTM, file a revocation action)

- winning the case doesn’t mean winning the case

- taking the CJ as just another round of review (difficulty to prove a distortion of facts, difficulty to win all of the individual grounds basis of the operative part of the GC judgment)

-proceedings are not for free (fixation of costs by the Court which will order 1/3 of the costs exposed by the client if not one tenth !)

He concluded his session with some practice tips on filing evidence before the Office: remember to always file primary evidence such as surveys, affidavits and professional association declarations in the first round of arguments which may be completed with secondary evidence. Moreover, national decisions may taken into consideration by the EUIPO as long as the corresponding evidence is filed along with it in order to allow the Office to check that the facts of the case are similar.

Timme Geerlof (Ploum Lodder Princen) concentrated on the content of the new Rules of Proceeding (RoP) before the GC and gave a practical summary for GC litigants, among others, he spoke about the  definition of the scope of proceedings, requirements for legal representative who must be admitted attorney at law (and not just TM attorneys), time limits to file briefs and that the application may now be filed in any EU language unless it's objected by the other party (in that case it will be the language of the decision before the BoA), the importance of easy e-submissions.

Rolland Mallinson jumped in at the last minute and put his judge cap on  to replace Justice Fidelma Macken (former CJEU judge and Irish Supreme Court Judge). He explained that the GC will have 47 judges as of  September 2016 which is an alternative solution to  a specialist IP court. Unfortunately, he pointed out this doesn’t replace the lack of TM expertise and knowledge by judges (despite being 44% of cases before the GC) and suggested necessary TM experience for the Referendaires or legal assistants of the CJEU. He further gave practical tips for oral hearings: please bear in mind to bring notes to keep within the 15 /10 minutes time limit, speak slowly for the translators, expect to have an actual exchange with the Judge Rapporteur who will ask questions. Moreover, keep in mind the language constraints, that judges have heavy workloads with lots to read and are not particularly keen on (often unnecessary) oral hearings.

Posted by: Laetitia Lagarde @ 11.46
Tags: conference, alicante, litigation, CJEU,
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WEDNESDAY, 21 SEPTEMBER 2016
2016 MARQUES annual event in Villaitana Alicante - DAY 1

Welcome to MARQUES 2016 in Benidorm- where sunglasses are mandatory but ties aren't 

Uwe Over (Henkek AG) welcomed the MARQUES family and its 19 teams including the newest Copyright team and gave special thanks to Alessandra Romeo and Ingrid de Groot who serve as the external face and internal guidance of this association. He then reminded all the members to be on the look out for the future events and workshop held by MARQUES ("Meet the judges", "brands and luxury", etc.) thanks to the Education team  There was also a special mention to esteemed colleague David Goldring who left too soon this year. The 2016 conference is taking place in Alicante to commemorate the 20th anniversary of the "CTM" (as all of us practitioners affectionately remember) and gave special thanks to the EUIPO for their support, but also a reminder MARQUES is celebrating its 30th anniversary.

As Uwe took off his tie to match this casual setting of a Mediterranean village resort, he left the stage to Antonio Campinos, Executive Director at the EUIPO who summarized the main achievements of the Office in the past couple years (new updated guidelines, ex post quality control checks, etc). Last year the Office has had an increase of 11% of new trade marks applications which has short term impact in terms of staff and budget. While Antonio recognized the need to improve some areas such as Opposition Division decisions (and hints at some upcoming changes),  he also highlighted the implementation of new tools (TM view/ Design view , conversion seminaries, etc) as  a big success for SME's and national offices. By 2020, the vision of the Office is to build a European IP network and enhance services to users. Thanking MARQUES , Antonio unveiled the range of future cooperation projects with among others, the Chinese PTO and Latin America. Following the EUTM reform, the Office's observatory is preparing a study on litigation trends following the new Trade Secrets directive and there will be a special focus on designs with the a special DesignEuropa Awards ceremony which will take place in Milan on 30 November. Attendees will have a chance of discovering the EUIPO headquarters during the afternoon session on Thursday afternoon - my recommendation is to have a frappe on the terrace overlooking the Spanish coast

Brands v. Trademarks  or the art of "attitude branding"

Mark Devaney handled gloriously the pressure to moderate the opening session of the conference on Brands v. Trademarks. Ricardo Perez (Millward Brown) gave a small quiz to the audience about which images/brands trigger biggest emotions in the consumers and reminded us that marketing teams look to turn an emotion (fluffiness) into a valuable and strong brand.  The brand experience must be salient, meaningful and different. Looking at the top 10 most valuable brands which are part of our daily life [and TM portfolio of the audience], he concluded that consumers are looking for authenticity nowadays. Shane Smyth then took the floor opening with a funny comparison of airlines slogans (and making a joke at the expense of an infamous homely Irish airline) and reminding the audience that "it’s the substance behind the brand which matters, not the brand for itself". Practitioners focus purely on legal issues such as registrability, we play with trademarks (consumer perception, substantial shape of goods, etc) but we may mistake our client's needs in reality. The last speaker was Antony Douglass (Specsavers) explained how the company definitely promotes their "should've gone to Specsavers" brand with attitude and showed the audience a couple of funny TV ads - to keep the audience's attention running before the coffee break - and the humorous approach taken by marketing. In a range of very clever ads, they've used parody (in collaboration with Unilever for an Axe ad), celebrity (Twiggy), social media  (#SHOULDVE) and memes . He ended this entertaining session with a take away list for brand owners (adapt, risk, be agile and engage with consumers in fun ways).

EU Trademark law update and Brexit

The second morning session summarized the important changes of the EU TM reform package by Dimitris Botis (EUIPO) who covered the next steps for the implementing acts  which will enter into force in October 2016.  Kate Swaine (Gowling WLG) then had the tricky task of summarizing the uncertain consequences for TM owners of the so-called "Brexit" and started with the overview of the most popular article 50 [besides Art. 28 declarations] right now of the EU Lisbon treaty. She exposed the possible 7 scenarios for EUTM / UK marks (i.e.: opt-in provisions, conversion, extension of the validity) and some of the long term questions (EUTM vulnerable for non use, diversion of UK and EU law, enforcement, exhaustion of rights, settlement agreements …). Diana Versteeg (Azko Nobel) told the audience that once the shocking news were processed,  her recommended route for brand owners to overcome the Brexit challenge included  filing an IR designating EU and UK and renegotiating settlements.  Tove Graulund (Graunlund Consulting)-in charge of the MARQUES task force to help implement the EUTM reform- explained how we can all learn from mistakes from the IP Translator and Art 28 declarations. A good show of hands in the audience have or will file for it before the deadline this Friday. Many users have encountered difficulties which Dimitris confirmed it was a nightmare also from the EUIPO's perspective. Tove also indicated users would like to see an updated conversion program.

Posted by: Laetitia Lagarde @ 12.01
Tags: conference, alicante, marques,
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