TUESDAY, 1 DECEMBER 2020
Have your say in the fight against greenwashing!
Do you look for products that have environmental logos/labels on them? Do you know if the products you buy are “green”? If so, you may be interested in participating in the EU or the UK studies below.
In the past few years, brand owners have aimed to keep up with consumer demands for sustainable/eco-friendly products. The Greenwashing and Brands Subteam of the IP Emerging Issues Team has been monitoring this hot topic that is highly relevant for all brands of all sectors and their lawyers.
As consumers’ awareness of the environmental and sustainability impact of the products they buy continues to grow, so too are the variety of labels, certifications and claims: natural, clean, bio, organic, fair trade, zero-carbon, etc.
The EU Commission published the “Public consultation on a potential legislative proposal on substantiating green claims” as part of its initiative for the proposed harmonisation of environmental claims under the new European Green Deal. The questionnaire is available here if you are interested in participating in this consultation. The deadline is 3 December 2020.
The UK Competition and Markets Authority (CMA) has launched its own investigation on whether “eco-friendly” descriptions and labels could mislead consumers. According to the CMA website, businesses can share their views here about the CMA’s “green claims” work. Other stakeholders (charities, government departments and consumer organisations) are also welcome to share their views. The closing date for submissions is 14 December 2020.
Find out more about the “Seven Sins of Greenwashing“ by TerraChoice.
The Greenwashing and Brands Subteam members are Eniko Karsay, Vanja Nedimovic, Zuzana Peniaskova and Adrian H Smith. Do not hesitate to reach out to the IP Emerging Issues Team members if you would like to help with this topic or simply share interesting information
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TUESDAY, 1 DECEMBER 2020
MARQUES contributes to country names discussion
The MARQUES International Trademark Law and Practice Team, represented by Jessica Le Gros and Gavin Stenton, participated in the Forty-Third Session of WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) last week.
The meeting was a hybrid virtual and in-person meeting, which worked well, with live simultaneous translation and contributions both remotely and in the meeting room.
The SCT is the forum by which member states of WIPO or the Paris Union, and official observer organisations such as MARQUES, gather to discuss issues, facilitate coordination and provide guidance on the progressive development of international law on trade marks, industrial designs and geographical indications, including the harmonization of national laws and procedures.
There were a number of important topics on the agenda this year, including new proposals around harmonized examination guidelines for trade marks that consist of or contain country names or geographical names of national significance.
MARQUES position on country names
MARQUES submitted a paper on this topic prepared by the International Trade Mark Law & Practice team, which advocates for clarity and harmonization of approach to country name trade marks.
The paper supports proposals made by some member states insofar as, relating to examination of trade marks, they state that trade marks consisting solely of a country name, or a country name with other [non-distinctive] elements, should be refused or invalidated where the use of that name:
a) is descriptive of the place of origin of the goods or services;
b) renders the mark as a whole misleading, deceptive or false in relation to the origin of the goods or services.
MARQUES also supports these above circumstances being grounds for opposition or cancellation. MARQUES would also support appropriate legal means being made available for interested parties to prevent the use of country names if such use is likely to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services and to request the seizure of goods bearing false indications as to their source.
MARQUES is aware that many registered trade marks exist that consist of or incorporate country names, and are in use, by reputable brand owners. These trade marks do not function in a descriptive, misleading, deceptive or false way as to the origin of goods or services.
MARQUES is concerned that adopting a proposal that advocates the blanket refusal of all trade mark applications solely consisting of country names should be rejected, except in certain limited circumstances, is likely to prevent the registration of legitimate marks, and could lead to their invalidation, despite the significant investment and goodwill existing in those brands.
MARQUES therefore advocates the adoption of an approach that defines the circumstances in which a trade mark consisting of a country name should be rejected or invalidated, taking into consideration the manner in which the trade mark will be perceived or function, rather than solely because of the inclusion of a country name per se.
During the meeting, the SCT agreed to continue discussions on the topic at the Forty-Fourth Session of the SCT.
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MONDAY, 30 NOVEMBER 2020
Trade marks and AI: Is Alexa the new “average consumer”?
In the first of a series of articles on AI from members of the Cyberspace Team, Carol Gormley asks whether technology such as voice assistants will redefine the purchasing process.
The rapid development of AI technology is impacting and will continue to impact all sectors including IP. With respect to trade marks we are already seeing its impact in areas such as trade mark clearance and legal research but what about trade mark law itself?
Historically products were purchased in shops with assistants, then came a shift to a more self service model with the introduction of large supermarkets where the likelihood of confusion for consumers increased; enter the online revolution and the introduction of social media which have had major impacts on how consumers interact with brands. While the law has adapted with the changes in purchasing behaviour there has not been any fundamental shift in terms of the core legal principles governing trade mark law.
Does the fourth revolution require changes to existing legislation and legal principles in order to deal with the reality of AI in the marketplace and its impact on brands and brand recognition? To date human perception has been a key element in trade mark law. Principles such as ‘the average consumer’, ‘imperfect recollection’ and ‘visual, phonetic and confusing similarity’ form the corner stones of the law. However, the introduction and use of AI such as bots, AI algorithms, AI voice assistants and voice recognition platforms potentially redefines the consumer and the purchasing process.
Consumers interacting with bots
We are all familiar with Amazon and the regular suggestions which pop up in our Amazon accounts for new products which we might like to purchase. These suggestions are compiled by AI which collects data based on our browsing/purchasing history.
Consumers are now interacting with bots on a regular basis. This form of AI is now prevalent in online trading and customer service, be it chatbots, informational bots or transactional bots.
Another form of AI which is impacting the purchasing process is the voice technology application. The rapid rise of AI voice assistants such as Siri, Alexa and Google Assist mean consumers are becoming more used to performing tasks with their voice which could have an impact with respect to trade mark law. Indeed use of voice recognition as a means for consumers to interact with brands and purchase products and services raises even more fundamental questions from a trade mark perspective.
Trade mark questions
In particular the increasing use of voice recognition platforms means that we are moving away from searching for products based on keywords or domain names. In addition, voice technology can match products based on consumer needs and instructions could be based on specific requirements such as price, style or speed of delivery as opposed to brand names. A consumer may ask for “cheap black cushions” as opposed to starting with a particular brand and the AI voice assistant may ultimately choose and order the product as opposed to the consumer. Potentially voice technology could limit the effectiveness of the brand as an identifier.
In addition AI voice assistants are no longer available in the home only but have also been made available in glasses and more recently in ear buds. Consequently, AI voice assistants/ear assistants will certainly increase the reliance on phonetics when ordering new products or services.
Indeed for some products there may be no interaction between the products and the consumer at all. For example Amazon Dash Replenishment enables your connected devices to automatically reorder every day products from Amazon. Amazon Dash checks product levels in the connected device and automatically reorders more (Amazon use printer toner or laundry soap as an example). Another common example is that of a smart refrigerator which could detect that you are running low on milk and have it delivered to your front door before you even notice you need to buy more.
AI links consumers and products
It is clear from the examples above that increasingly AI is forming the link between consumers and products. On this basis do we need to re-evaluate the average consumer when considering a likelihood of confusion between two brands? The average consumer is defined as “reasonably observant and reasonably well informed and circumspect”. To a certain extent this definition allows for the inherent “flaws” in human perception. Most people do not have a photographic recollection of the visual details of a mark, but instead remember marks by their general impression, or by some particular detail.
As stated in Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV  ETMR 690, paragraph 26: “Account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind”. Furthermore, the “average consumer’s” level of attention varies according to the category of goods or services in question.
Are Siri, Echo or Alexa now our average consumers from a trade mark law standpoint or should they at least be considered when making a comparison based on an average consumer? Indeed where the law changes to recognise the “artificial consumer” a re evaluation of concepts such as imperfect recollection, visual, phonetic and conceptual comparisons and confusion itself must surely be undertaken.
For example an AI voice assistant has perfect recollection and is unlikely to be confused as their decision will be made based on a review of collected data which is processed based on an algorithm. Consequently will a visual, phonetic and conceptual comparison become less relevant or will the phonetic similarity of marks become a decisive factor in considering a likelihood of confusion with the advancement of voice technology? What about the ability of AI to grapple with the concepts of association, reputation or brand dilution?
With respect to the likelihood of confusion, will the focus in terms of confusion shift to post-purchase confusion as opposed to source confusion or initial interest confusion on the basis that products and services may be automatically ordered by AI voice assistants. In such scenarios where there is no interaction between the consumer and the brand, the concepts of “average consumer” and “likelihood of confusion” will likely not apply at all.
Of course this leads to serious questions regarding liability. A likely question to arise is whether an AI voice assistant could become a secondary infringer? The general consensus is that the case law on ISP liability would also apply with respect to AI voice assistants; however only time will tell. And what about the AI algorithm itself, in scenarios where there is no interaction between the consumer and the brand this is likely to become an important factor when considering infringement and liability.
There are more questions than answers at this stage but we are certainly entering an interesting space for brand owners and practitioners.
Carol Gormley is a partner with FR Kelly and a member of the Cyberspace Team. The next article in this series will explore liability and will be published on 14 December. Read the introduction to the series here.
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MONDAY, 30 NOVEMBER 2020
Time to say goodbye to fax transmission to the EUIPO
Jana Bogatz of the European Trade Mark Law and Practice Team discusses the recent EUIPO decision to abolish fax communication for EUTM and RCD procedures.
Earlier this month, the EUIPO’s Executive Director announced by Decision No EX-20-9 the abolition of the fax transmission option as of 1 March 2021.
The abolition as such seemed to have been only a matter of time and inevitable in today’s digital world, in light of EUIPO’s commitment to sustainable business operations, and given that in recent times fax communication has proven to not necessarily still be a smooth, effective and efficient means.
Even so, users of EUIPO trade mark and design protection systems have raised concern about this decision. Without fax, the accessibility to procedures by some categories of less experienced users might become restricted. In addition, not everything of the daily operations before EUIPO can really be dealt with fully electronically, at this moment.
A reconsideration of the actual benefits that would justify still keeping fax among the means of communication with EUIPO might be needed. In the hope that this might happen, readers may wish to familiarise themselves with the following EUIPO instructions.
Default electronic means of communication
As of 1 March 2021, the EUIPO’s User Area will play an even more important and central role. The EUIPO itself will issue notifications by electronic means exclusively via the User Area; there is no opting out option available. Notification is deemed to have taken place on the fifth calendar day following the day on which the notification was placed in the user’s inbox.
Only if electronic means are impossible for technical reasons will the notification from the EUIPO be via post or courier.
Users will also have to communicate with the EUIPO through the User Area alone. In most cases, users are already submitting applications and other communications via uploads to the EUIPO system, and they are familiar with the concept that the time of issuance of the electronic receipt from the EUIPO’s system is considered to be the time of submission of such documents.
For EUTM applications with long specifications of goods or services, which require more space than permitted in the application form, a separate document will now have to be submitted (in an annex, or filed subsequently), triggering corresponding fees for an application not filed by electronic means.
But what happens if the specific e-operation or e-filing tool in the EUIPO’s User Area is not available for any reason? The EUIPO will have a cascade of two different back-up systems in place:
(a) An upload solution: located in the Communications section of the User Area, this is a general upload platform for documents to be sent to the EUIPO in case there is (whether permanently or temporarily due to malfunctions) no specific e-operation facility available in the User Area.
(b) A file-sharing solution outside the User Area: upon request, the EUIPO Information Centre will provide users with access to a secure file-sharing location for document upload as an ultima ratio measure (in case all other methods of communication in the User Area fail).
As ever, however, the devil is in the detail…
Submissions made via back-up solutions (a) or (b) above will be deemed to have arrived at the EUIPO on the upload date. However, in the case of EUTM or RCD applications for registration, the user can only secure the filing date if the application is re-submitted via the default User Area channel within three working days; otherwise it will be deemed never to have been received.
By contrast, in the case of EUTM or RCD renewal requests, the user can only secure the renewal filing date if the request is submitted within the last three working days before the expiry of the renewal (grace) period.
There does not yet seem to be a back-up solution in place if the User Area is unavailable and users have to rely on the ultima ratio external file-sharing solution outside the normal business hours of the EUIPO Information Centre (currently Monday to Friday between 8:30 am and 6:30 pm Spanish time).
Jana Bogatz is a Partner at D Young in Munich and a member of the MARQUES European Trade Mark Law and Practice Team
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FRIDAY, 27 NOVEMBER 2020
Unsolicited trade mark renewals: warning
MARQUES members will already know about misleading invoices as warned about on the EUIPO website. They may also want to watch out for other recent activities that have caused confusion and concern for some brand owners. This is the receipt of unsolicited offers to renew trade marks at inflated prices, which are being sent by an unregulated entity that effectively implies it has an official capacity for sending it. A redacted example of such a notice is here.
The sender of these notices is Stern Young & Partners. Despite appearances, it is not a trade mark attorney or law firm and no registered attorneys or lawyers seem to work there. It is a recently formed UK company, set up by a Swedish individual with a £1 issued share capital.
The notice implies that the trade mark was in the sender’s record system, effectively suggesting it may be the official attorney on record or address for service when it is not.
It is an offer to renew but at a very high price (£1,320 to renew a UK mark in one class, where the official fee is £170) and on contractual terms highly favourable to the sender.
The UK’s Chartered Institute of Trade Mark Attorneys has complained about this behaviour to the UK IPO. There have also been reports of similar notices being sent out in Sweden and the New Zealand IP office has posted a warning about such notices received there.
Trade mark owners are encouraged to be vigilant, and to seek advice from a professional if in doubt.
The MARQUES Anti-Fraud Task Force monitors scam invoices, misleading requests for renewals and similar communications. Members who receive any suspicious letters can share them in confidence with the Task Force members.
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THURSDAY, 26 NOVEMBER 2020
Five-point Action Plan for IP in Europe
The European Commission published its Action Plan on Intellectual Property on 25 November.
The Action Plan seeks “to help companies, especially SMEs, to make the most of their inventions and creations and ensure they can benefit our economy and society”. Specifically, it sets out steps to:
Commissioner for the Internal Market Thierry Breton (pictured right) said: “Europe is home to some of the world's leading innovations, but companies are still not fully able to protect their inventions and capitalise on their intellectual property. Today, we are proposing to overhaul our intellectual property system to strengthen Europe's ability to develop next generation technologies, reflect advances in data and AI; allow companies to quickly pool their knowledge in times of crisis, and support Europe's path towards economic recovery and the green transition.”
The Action Plan comes after the New EU Industrial Strategy was adopted on 10 March this year. On 10 November the Council of Ministers invited the Commission to present proposals for future EU IP policy.
In the summer, MARQUES provided feedback on the Roadmap on the IP Action Plan, recommending priority be given to the review of the EU design legislation (see this post on Class 99 for the latest developments). MARQUES also noted that there is a need to establish a protection scheme for non-agricultural geographical indications, and that there is much work to do to bring down barriers and make IP rights fully accessible and comprehensible to all businesses, both large and small.
MARQUES will analyse the Action Plan in detail and provide comments in due course.
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WEDNESDAY, 25 NOVEMBER 2020
New geographical indication search tool launched
The search tool currently includes more than 5,000 geographical indications. It can be searched by country of origin, name of the GI (in various languages and scripts) and file number. The search engine can accommodate basic mis-spellings and also has an autocomplete function.
Results can be filtered by jurisdiction and category. They show information including basic data, information about publication, protection under international agreements and pictures, and include links to relevant documents,.
Results can be shown as a list or on a map. The map view enables you to see exactly which area the GI relates to.
In a private area on the site, country authorities and producer groups can enter extended data on GIs, which will then appear in the results.
A video by EUIPO introducing the tool is available on YouTube.
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