Yesterday, 23 April 2024, Regulation (EU) 2024/1143 of the European Parliament and of the Council amending the regime on geographical indications (GIs) in the European Union was published in the EU Official Journal. Miguel Angel Medina of the MARQUES GI Team reports.

This regulation repeals Regulation (EU) 1151/2012 on the quality of agricultural products and foodstuffs, which regulated geographical indications (protected designation of origin (PDO) and protected geographical indication (PGI)) and traditional specialities guaranteed (TSG), as well as the use of certain optional quality terms, and replaces it with the new regulation.

It also partially amends the regimes of the (EU) regulations on quality wine (Regulation 1308/2013) and spirit drinks (Regulation 2019/1753).

Its publication marks a crucial point in the updating and extension of the scope of protection of quality marks that was recently brought about by Regulation (EU) 2023/2411 of the European Parliament and of the Council of 18 October on the protection of geographical indications of artisanal products, which introduced for the first time a GI protection scheme for these products at EU level and amended Regulations (EU) 2017/1001 and (EU) 2019/1753.

Key features

Among the new features of the regulation approved yesterday, the presence and relevance of the sustainability in all its aspects (environmental, social and economic) based on a voluntary system is notable. This is in line with current trends in IP law and other branches of law that regulate production and trade.

Other noteworthy aspects are the contribution to better protection and explicit legal protection for GIs in relation to domain names and on the internet. This had been demanded in recent years given the discriminatory and inferior situation in which Gis found themselves in this area in some of the most important systems for dispute resolution over domain names and other virtual environments, particularly compared to trade marks.

The new regulation also regulates the conditions under which the mention of a GI may be used commercially when it is used as an ingredient in product labelling. In practice this tended to create ambiguity and confusion among consumers as to whether the product benefited from the GI or what specifically benefited from the GI protection.

It also regulates the obligation to mention the producer on the labelling, the use of personal data in applications and the role of producer groups as GI management bodies.

Entry into force

The new regulation will enter into force 20 days after its publication and will be applicable as of 13 May 2024, except for the parts concerning Article 10(4) and (5) (concerning the national objection procedure of the EU Member States), Article 39, paragraph 1 (concerning the establishment by Member States of the list of operators carrying out activities subject to obligations laid down in GI specifications), and Article 45 (dealing with certification of compliance with the specification), which will apply from 1 January 2025.

Miguel Angel Medina is an associated partner of Elzaburu in Madrid and member of the MARQUES Council and the MARQUES GI Team

MARQUES has applied to intervene in a case before the EU General Court concerning the registration of a colour combination as an EU trade mark.

MARQUES is supporting OMV Aktiengesellschaft, which filed an international registration designating the EU for the combination of gentian blue (RAL 5010) and yellow green (RAL 6018) in the arrangement shown in June 2021 (filing number 1593116).

In March 2023, the application was found to be non-distinctive under Article 7(1)(b) of the EUTM Regulation in relation to: goods relating to fuels, hydrogen, oils and vehicle equipment (in classes 1 and 4); retail/wholesale services relating to these goods and relating to hot water, medicinal and mineral water (in class 35); and building, construction and demolition services relating to facilities providing those goods/services (in class 37). It was allowed in relation to some other services.

Upholding the examiner’s decision, in November 2023 the Fifth Board of Appeal held that the colour combination represents the generic characteristic of eco-friendliness, which is common in the field of automobiles and fuels (Case R 798/2023-5).

OMV appealed that decision to the EU General Court on 22 January 2024 (Case T-38/24).

Questions of principle

In its amicus curiae brief, MARQUES argues that the case raises three key questions of principle that affect its members:

(1) What is the test when assessing the inherent distinctiveness of a colour combination trade mark?

(2) What is the required level of fact finding of the EUIPO when assessing the perception of a colour combination by the relevant public for the purpose of Article 7(1)(b) EUTMR?

(3) What use- and market-related circumstances are relevant under Article 7)(1)(b) EUTMR (and not under Article 7(3) EUTMR)?

The MARQUES brief states: “The application of the law as exemplified in the Contested Decision further curtails the already narrow possibility to successfully register a colour combination EUTM. This, in turn, has a detrimental effect on the scope of protection of this category of signs which are commonly used for brand communication and effectively perform the function of a trademark without restricting competition.”

In particular, it argues that the Board’s decision did not take into account the fact that the trade mark application consists of two very specific colours, in combination, which are specifically and systematically arranged. The Board therefore failed to recognise that colour combination marks have a much higher level of inherent distinctiveness than single colour trade marks.

Overly restrictive approach

MARQUES is concerned that the decision will cement an overly restrictive approach to colour combination marks – which goes against the literal meaning of the law, actual market practice and actual consumer perception. This could further curtail the already narrow possibility to register a colour combination EUTM.

“This, in turn, may have a detrimental effect on the protection of signs which are, in practice, commonly used for brand communication and effectively perform the function of a trademark without restricting competition,” states the brief.

MARQUES is represented by Ana Padial, Jakub Słupski and Sebastian Fischoeder, all members of the Amicus Curiae Team, which is chaired by Roderick Chalmers.

The decision to intervene in the proceedings was approved by the MARQUES Executive Team last month and the application for leave to intervene was filed on 15 April.

The MARQUES Unfair Competition Team has updated its chart on self-regulatory organisations to include a section on France.

The new section is authored by Alexandra Di Maggio of Novagraaf France, who is Chair of the Team. The project is led by Philippe Probst Fuhrer of Marbach & Partners in Switzerland.

The chart now covers Finland, France, Germany, Italy, Sweden, Switzerland, Turkey and the USA.

Its purpose is to provide corporate lawyers and attorneys with a practical, user-friendly overview of self-regulatory organisations for advertising and unfair competition matters.

With increasing digitalisation and globalisation of advertising and other business activities, it is increasingly important for businesses to familiarise themselves with self-regulation of advertising and other matters.

The chart covers advertising and unfair competition matters, but not consumer protection matters or industry-specific organisations.

The five questions for each jurisdiction encompass: existence and identity of self-regulatory organisations; matters handled; rules, eligible parties and fees; procedure; and penalties and enforceability.

The chart can be downloaded on the Team’s page on the MARQUES website (MARQUES log-in required).

The theme of this year’s World IP Day on 26 April is “IP and the SDGs: Building our common future with innovation and creativity.”

According to WIPO: “World IP Day 2024 is an opportunity to explore how IP encourages and can amplify the innovative and creative solutions that are so crucial to building our common future.”

The 17 SDGs (Sustainable Development Goals) cover social, economic and environmental sustainability. This year’s World IP Day aims to highlight how IP fosters innovation and creativity to drive human progress in a sustainable manner.

WIPO’s dedicated World IP Day website includes a Changemakers’ Gallery, celebrating people who are building a sustainable future, as well as social media materials, events calendar, resources, FAQs and more.

There is also a youth video competition, with 20 videos from around the world. You can vote for up to five of the videos to choose the winner of the People’s Choice Prize. Voting is open until 23:59 on 21 April.

MARQUES fully supports World IP Day and the delivery of the SDGs. We have created a Sustainability Task Force to promote sustainability within the association (including by reducing waste, promoting recycling and raising awareness) and to share best practices between members.

Many of the MARQUES Teams also have ongoing projects relating to sustainability.

If you are organising an event or activity for World IP Day that would be of interest to MARQUES members, please share the details in the comments section below or email the MARQUES editor: editor@marques.org.

MARQUES and UCL-IBIL hosted the annual “Question the Trade Mark Judges” event in London on Wednesday 13 March with an in-person and online audience of trade mark lawyers, brand owners, professors and students. About 90 people attended in person and another 45 online.

The judges taking part were Deputy High Court Judge Douglas Campbell KC, High Court Judge Mr Justice Mellor, Virginia Melgar of the EUIPO Boards of Appeal and Allan James, Senior Hearing Officer at the UK IPO. The discussion was chaired by Professor Sir Robin Jacob.

Roland Mallinson, MARQUES Executive Board member, welcomed attendees and reminded the audience about the work of the MARQUES Amicus Curiae Team. He encouraged parties looking for support from MARQUES in both EU and national cases to approach him or the Team as early as possible.

The questions addressed by the judges covered various issues affecting both EU and national cases, and generated plenty of discussion between the panel and the audience.

Being a judge

Several questions touched on the experience of being a judge, including how it is being changed by technology.

The first question concerned whether judges enjoy their cases being reported and whether they welcome public scrutiny. The panel noted that IP decisions often generate debate, which is welcome, but it is not possible for judges to engage in that debate and maybe a policy is needed. Allan James noted that it can be infuriating when parties say more to the media than they did to the tribunal, or highlight points that were simply not raised in the litigation. In general, judge have to try to stay above the fray and not be distracted by publicity.

In response to another question, the panel discussed the process of deciding and writing judgments. They acknowledged that there are cases where they have changed their mind when they started writing the judgment or reviewing the evidence.

They also explained how judges can learn from each other. At the UK IPO, said Allan James, there is a peer review process whereby hearing officers can point out inconsistencies. At the High Court, judges may pop in to each other’s offices to discuss general concepts, particularly in areas they are less familiar with.

At EUIPO, Boards sit in panels of three but Virginia Melgar said that it is not uncommon for members to check cultural or linguistic concepts with other colleagues, given that the Office is working in 23 languages and covering 27 countries. In one case that concerned a Finnish region, for example, she consulted a Finnish colleague.

The impact of AI on judges and parties is an important issue. Virginia Melgar said the EUIPO has created a technology watch group, with all services represented including the Boards of Appeal. One thing she has already seen is submissions that are clearly generated by AI and/or machine translation, which sometimes include obvious errors (such as referring to the “Board” as the “Senate”). While AI can be used to make decisions better, it needs to be under human control, she said.

Douglas Campbell KC pointed out that AI can be useful in triaging incoming cases to ensure the right time is allocated, but Mr Justice Mellor noted that parties using AI can be dangerous – and if people use generative AI in submissions they should expect them to be rejected.

Substantive issues

The judges also addressed several current substantive issues in trade mark law.

There was an interesting discussion about the role of post-sale confusion. The panel agreed that it is part of the law, even if the law has come quite a long way from protecting the essential function of a trade mark: if there is confusion, even post-sale, that can still be damaging to brands. But the panel agreed that it should not be allowed to lead to more speculative arguments.

Can you be too famous to be confusing? This was a question raised in the Picasso v Picaro case and which has been causing brand owners some concern. The panel agreed this was a difficult issue because, as Virginia said, the CJEU has taken two different positions on family names, and the Boards can follow either one. Some members of the panel were sceptical about the neutralization doctrine, which can mean for example that conceptual similarities override other aspects to dictate the outcome on similarity, even before a consideration of the likelihood of confusion.

One tricky question the judges all identified was defining the average consumer in trade mark cases, for example where there is more than one relevant group of consumers. They are also aware that parties may want the relevant consumer to be narrowly defined for proving reputation or acquired distinctiveness but construed more broadly when enforcing the marks (to avoid a higher level of attention being applied to a specialist market). For example, is the relevant consumer for a trade mark for a car all consumers or just car buyers?

Practical questions

The practical issues addressed by the judges included interim injunctions, evidence such as social media and surveys, and behavioural science.

The panel and audience suggested various reasons why there are few applications for interim injunctions today. These included: fewer pirates, more sophisticated analysis at the interim stage, expense, lack of commercial need, the impact of speedy trials, and unpredictability. It was noted that interim interdicts in Scotland can now cover the whole UK (that had been in doubt before), but the process of recovering costs in such cases was not as streamlined as in the English and Welsh courts.

This topic raised the question of how to reduce litigation costs in England and Wales. Mr Justice Mellor said ultimately reducing cost is the responsibility of the parties and there are opportunities available to them, including the new £500,000 cost cap for patent cases in the High Court. Reference was also made to the IPEC Small Claims Track option, where injunctions can be granted at hearings before specialist IP judges, but compensation awards are capped at £10,000 and no (or very limited) costs are awarded against the loser.

Social media is now a routine part of evidence, but can create a lot of noise. For example, just claiming to have a certain number of followers is not useful unless the party can show where they are and why they are relevant. It is no substitute for market share or turnover evidence, said Allan James. However, social media can provide useful information on dates and origin.

EUIPO also takes a sceptical approach to social media, particularly if it is used to show proof of reputation. A recent example was a multimedia trade mark application by Salt Bee based on acquired distinctiveness, which claimed 14 million viewers but lacked information on the date and location of the views.

Surveys are also treated with caution, especially when it comes to likelihood of confusion – though as Douglas Campbell KC said, clients like them even if the courts sometimes view them as useless.

The final question was whether the courts need to take more account of behavioural science, particularly regarding colour/shape/packaging marks and lookalikes. This prompted a lot of discussion among the panel and audience about whether the courts place too much emphasis on just the brand name and not enough on other aspects of branding, including colour and shape. This discussion continued during the rest of the evening over drinks.

There were 64,200 international trade mark applications filed under the Madrid System in 2023, 7% fewer than in 2022, according to figures published by WIPO this month.

Applications dropped significantly from Germany (down 14%), Australia (-13.9%), Switzerland (-12.4%) and the US (-11.8%). But filings from China grew by 7.7% and those from the Republic of Korea by 2.9%.

Despite the fall in the number of applications, the US was still the number one origin of filing, with 10,987. It was followed by Germany, China, France and the UK.

The top applicant was once again L’Oréal with 199 applications, followed by BMW (which moved up 33 places and had 124 applications), Euro Games Technology, Boehringer Ingelheim and Novartis. The highest-placed Asian filer was Shiseido Company, which was seventh, and the highest US company was Apple (10^th).

Class 9 was the most popular class, accounting for 11% of applications, followed by class 35 (8.8%) and class 42 (8.1%).

WIPO has also published data on the PCT and Hague systems in 2023. Read more on WIPO’s website here.

Photo shows WIPO headquarters in Geneva

Members of the MARQUES Famous and Well Known Marks Team hosted a webinar on advertising slogans on 28 February.

Introducing the discussion, Juan Carlos Durand Grahammer of Durand Abogados, Peru noted that, while in principle registrable as trade marks, slogans can face problems based on descriptiveness or lack of distinctiveness.

This has led to questions such as whether there should be special forms of protection, different terms of protection or alternative means of resolving disputes.

Giving a US perspective, Robert Horowitz of Baker & Hostetler LLP said that some slogans, including The Ultimate Driving Machine, We try harder, Just do it and Because you’re worth it, have been registered at the USPTO while others (including Intelligence of Things, Everybody vs Racism, Texas Love and Team Jesus) have been refused.

He highlighted the importance of dictionaries, including slang dictionaries, as well as internet searches, in assessing whether a slogan can be registered.

Providing an advertiser’s perspective, Rachel Krouse of WPP stressed the important role that slogans play in communication with consumers, and the need for exclusivity – and she distinguished between long-lasting brand taglines and short-term campaign slogans.

Rachel also discussed the impact of AI, the role of trade mark clearance, consumer focus groups and the role of corporate culture (and specifically the appetite for risk). She also said that the global stage and political/ethical sensitivities have to be considered, and emphasised the need for due diligence.

Finally, Monica Davò of Italy’s Institute for Advertising Self-Regulation and Elisabetta Mina of CARNELUTTI Law Firm discussed Italy’s self-regulation regime, which provides for a binding decision from a jury comprising academics, lawyers and marketing experts.

There were several questions from the audience, in particular about the Italian procedure and outcomes of cases.

If you registered for the webinar, you can access the resource pack on the MARQUES website here.