Issue 53
  May 2015
Contents:
 

Book now for the Annual Conference in Vienna!

>  
 

MARQUES plays its part in revision of Lisbon Agreement

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Learn about arbitration in Singapore

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Revisions to the Nice Classification

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TTAB rulings may be binding on federal courts – US Supreme Court

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Madrid System seminar coming up in Geneva

>  
 

WIPO updates Madrid website

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Mark your calendars

>  
 

Media Roundup

>  
 

Madrid System Survey: last chance

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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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Book now for the Annual Conference in Vienna!

 

Registration for the 29th MARQUES Annual Conference, to be held in Vienna from 15th to 18th September, is now open. The Early Bird rate is available until Friday 3rd July.

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MARQUES plays its part in revision of Lisbon Agreement

 

Members of the Lisbon Agreement on Appellations of Origin and Geographical Indications took part in a Diplomatic Conference in Geneva last month. MARQUES was represented throughout the negotiations by members of the GI Team.

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Learn about arbitration in Singapore

 

MARQUES will host a meeting on protecting trade marks with arbitration and domain name UDRP as part of IP Week in Singapore in August.

Read More >>

Revisions to the Nice Classification

The Committee of Experts of the Nice Union has accepted changes to the Nice Classification proposed by OHIM and prepared by the CP1 Working Group. MARQUES was one of two users associations that took part in this Working Group.

Read More >>

TTAB rulings may be binding on federal courts – US Supreme Court

 

Brand owners may now need to put more effort in to US oppositions and cancellations or risk being bound later in infringement suit, as Janet Satterthwaite explains.


Brand owners often instruct the filing or defence of oppositions and cancellations at the US Trademark Trial and Appeal Board (TTAB) without really understanding what is involved. Unlike at the OHIM or many national offices in Europe, the US Trademark Office requires the parties to fully litigate the case, with written discovery, motions, depositions, possible summary judgment motions, and a trial with witnesses, done by deposition. To take a case all the way can cost well over $100,000.

As such, many companies, if they cannot settle favourably, will tire of the expense and effort of a TTAB case and drop the case or take a default judgment. In our experience, most cases, say 99%, do not go all the way to trial. Or, the parties may put a half-hearted effort, take no discovery, show up at the trial phase with one witness, and take their chances on a ruling. After all, the TTAB only has jurisdiction over whether you can register your mark, not whether you can use it.

Nevertheless, if there really is an infringement problem, you can always go to federal court and get an injunction and damages, because TTAB rulings are not binding on federal court, so you get another bite.

But perhaps not any more. On 24th March, the US Supreme Court handed down its ruling in B&B Hardware v Hargis Industries, holding that the TTAB findings, such as on whether marks are confusingly  similar, can be preclusive in later federal proceedings as long as “the ordinary elements of issue preclusion are met”.

SEALTIGHT v SEALTITE

The parties were involved in an opposition and parallel federal court litigation over whether SEALTIGHT and SEALTITE were confusingly similar. The TTAB ruled in favour of the B&B, the opposer, but the federal jury ruled in favour of the applicant, Hargis.

B&B had argued that the Court should defer to the finding of the TTAB, but the court refused, applying what we had all understood to be the case: that the TTAB, which is a “court” run out of an administrative agency, whose judges are employees of the executive branch, and not part of the judicial branch of government, are not approved by the Senate, and do not serve for life, cannot bind a real federal judge. The Court of Appeals agreed with the trial court. B&B asked the Supreme Court to hear the case. The Court takes about one trade mark case very two years.

A limited holding

The Court opened the door to TTAB rulings having preclusive effect, but was careful to limit its holding to only a small set of cases where an issue proves “materially the same” as that considered by the TTAB, and where the issue was “fully litigated” and not the result of a default judgment. Also, the Court remained vague regarding when this standard can be met; declining to define when issues are “materially the same”.

Nevertheless, brand owners in Europe should keep this case in mind, and watch how it is further interpreted by federal courts, as they budget and plan for oppositions and litigations in the USA.

Janet Satterthwaite is a partner of Venable in Washington, DC, a member of the Marques IP Outer Borders Team and US newsletter correspondent for HouseMARQUES.

Madrid System seminar coming up in Geneva

 

WIPO updates Madrid website

WIPO is hosting a Madrid System Seminar at its headquarters in Geneva on 18th and 19th June.

 

The Madrid System website was updated in May, as part of a longer term project to ensure it meets the information and transactional requirements of users.

Read More >>   Read More >>

Mark your calendars

 

Media Roundup

 

In addition to the Annual Conference, there are MARQUES events lined up this year in Dublin, Zurich, Singapore and The Hague.

 

 

Community design law research, a new CJEU referral from the Benelux and PUMA v POODLE in Germany were among the topics being discussed on the MARQUES blogs this month.

Read More >>   Read More >>

Survey on Madrid System Dependency Principle

 

The deadline for completing WIPO’s Survey on the Madrid System Dependency Principle has been extended to 7th June.

Read More >>

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