Issue 44
  August 2014
Contents:
 

The HouseMARQUES interview: Mette Andersen, The LEGO Group

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EU trade mark reforms one step closer

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Lisbon System Working Group report

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Webinars coming up this week

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WIPO Mediation and Arbitration Workshops

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Don’t miss these MARQUES events!

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Media Roundup: latest blog posts

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Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

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The HouseMARQUES interview: Mette Andersen, The LEGO Group

Mette Andersen of The LEGO Group will be taking part in a discussion on digital branding with Peter O’Byrne of The Body Shop and Lydia Gobena of Fross Zelnick Lehrman & Zissu during the MARQUES Annual Conference in Copenhagen. In this interview, she talks about LEGO’s brand, describes her own role and provides some tips for those visiting Copenhagen.
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EU trade mark reforms one step closer

MARQUES is monitoring the latest developments on reform of the EU Trade Marks Directive and Community Trade Mark Regulation, with important developments expected before the end of this year. The reforms will be discussed during the Annual Conference in Copenhagen.
Read More >>

Lisbon System Working Group report

MARQUES was represented by members of the MARQUES Geographical Indications Team (Chair Miguel Angel Medina, Vice-Chair Keri Johnston and Team member Ortrun Günzel) at the Ninth Session of the Working Group on the Development of the Lisbon System (Appellations of Origin) held at WIPO’s headquarters, in Geneva, from 23rd to 27th June. As Keri reports, there was quite a bit of activity on behalf of the United States.


Meeting highlights
An interesting discussion at the Session derived from the proposal by the US delegation (supported by Colombia, among others) that disclaimers were mandatory for those terms that were generic in the home country. This aims at preventing generic terms forming part of GIs from being protected in the countries where the International registration has effects because of the belief that it is a distinctive term, which according to the US could lead to unfair competition.

The Working Group also identified 21 issues with respect to the draft Revised Lisbon Agreement and draft Regulations. A listing of these is found below. The Chair also noted that more time was needed to further consider the proposal to update the fee schedule under Rule 23 of the Regulations under the Lisbon Agreement. However, the general sentiment towards an increase of fees was predominantly positive. The question of setting appropriate fees, which sufficiently cover the costs of the service to be rendered by the national authorities, was considered a must by some delegations, such as the Russian delegation. 

Matters identified for future work
The dates and venue of an approved Diplomatic Conference for the Adoption of a Revised Lisbon Agreement on Appellations of Origin and Geographical Indicators in 2015 is to be decided by a preparatory committee meeting to be held in conjunction with the Working Group’s 10th session forthcoming in October 2014.

Moreover, the secretariat is to prepare newly revised versions of the draft Lisbon Agreement and draft Regulations for the 10th Working Group session, following guidance provided at the 9th session, and ensure that all comments and suggestions be duly reflected in those revised versions.

The 10th Session will primarily focus on technically preparing the text of the draft Revised Lisbon Agreement and draft Regulations for the Diplomatic Conference and on reducing the number of pending issues, where possible. The Lisbon Union Assembly will note the progress made in preparing the diplomatic conference at its next session in September 2014.

Pending issues to be submitted to the next Session
  1. the title and the preamble of the draft Revised Lisbon Agreement;  
  2. implementation aspects of Article 1(xiv);
  3. the content of Article 2(2) and Article 5(4) concerning trans-border geographical areas of origin; 
  4. the issue of entitlement to file an application under Article 5(2);
  5. Article 7(2)(b), Article 8(3), Article 24(3)(v) and related provisions concerning the possible introduction of maintenance fees;
  6. the possible re-introduction of the provisions of the current Lisbon Agreement dealing with contributions by members of the Lisbon Union;
  7. Article 7(4) and related provisions concerning the possible introduction of individual fees;
  8. the question as to whether Article 9(1) should be kept and whether Article 9(2) should be moved to Article 6;
  9. the issue as to whether Article 10(3), read in conjunction with Article 15(2), should refer to any other or to more extensive protection; 
  10. the various options in respect of Article 11(1)(a) and Article 11(3) (see the Annex to the present document);
  11. the issue of the Draft Agreed Statement contained in footnote 4 to Article 11 and provisions relating to the same issue;
  12. the content of Article 12 concerning protection against acquiring a generic character;
  13. the content of Article 13(1) concerning safeguards in respect of prior trade mark rights;
  14. the issues as to whether Article 13(2) to (4) should be kept and whether consequential amendments should be made to Article 17(2) and to footnote 7 relating to that provision;
  15. the content of Article 16(2) concerning negotiations following a refusal;
  16. the content of Article 17 concerning the necessity of a phasing out period;
  17. the issue as to whether Article 19(2) should establish an exhaustive or a non-exhaustive list of grounds for invalidation;
  18. the issue as to whether Rule 5(3) should be optional or mandatory;
  19. the issue of the inclusion of Rule 5(4) permitting a Contracting Party to require a declaration of intention to use in respect of a registered appellation of origin or a registered geographical indication;
  20. the issue of promoting transparency under Rule 5(5)(iii);  and
  21. the amount of fees in Rule 8(1).
A report of the Meeting is now available on the WIPO website.

Webinars coming up this week

OHIM and the IP Academy of the EU Observatory on Infringements of IP Rights are hosting two webinars on 4th September, one on the OHIM website and one on the new OHIM Guidelines.
Read More >>

WIPO Mediation and Arbitration Workshops

The WIPO Arbitration and Mediation Center is hosting two workshops in New York on 6th and 7th November this year.
Read More >>

Don’t miss these MARQUES events!

 

Media Roundup: latest blog posts

MARQUES is hosting Judges Meetings and Coexistence Agreement Workshops in Bucharest, Vienna, London, Helsinki, The Hague, Milan, Lima, Asuncion and Mexico City over the next few months.   A case involving Land Rover in Switzerland, one concerning Porto in Portugal and changes to design law in the UK are just a few of the topics being discussed on the MARQUES blogs in the past month.
Read More >>   Read More >>

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