Issue 080
  August 2017
Contents:
 

Download the Annual Conference app now

>  
 

MARQUES to host three USPTO events

>  
 

Responses requested on trade secrets questionnaire

>  
 

German Judges Meeting in October

>  
 

Field Notes from the Outer Borders: innuendo goes too far

>  
 

AG gives Opinion in Champagner Sorbet case

>  
 

Latest news from EUIPO

>  
 

Thailand joins the Madrid System

>  
 

MARQUES Media Roundup

>  
 
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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Download the Annual Conference app now

 

 

If you have a smartphone, make sure you download the Annual Conference app before travelling to Prague

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MARQUES to host three USPTO events

 

 

Three seminars on IRs and designating the US will be held in Paris (26th September), Milan (27th September) and Madrid (29th September)

Read More >>
Responses requested on trade secrets questionnaire

 

MARQUES members are invited to respond to a questionnaire on trade secrets, which is being conducted by KPMG for the European Observatory on Infringement of Intellectual Property Rights

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German Judges Meeting in October


The next Meet the Judges event will take place in Munich on Friday 27th October, and will feature judges representing the Federal Supreme Court, Federal Patent Court, Munich Court of Appeal and district courts

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Field Notes from the Outer Borders: innuendo goes too far

In the latest in its series of Field Notes concerning unusual trade marks, David Fyfield of the IP Emerging Issues Team looks at a mark that the EUIPO thought stepped over the border from merely tasteless to offensive. Warning: this Field Note may offend!

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AG gives Opinion in Champagner Sorbet case

 

Karin Lochner of the GI Team discusses the recent Opinion of the Advocate General on the legitimate use of the name “Champagner” for a sorbet containing Champagne

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Latest news from EUIPO

MARQUES is pleased to share with members news on: an audit of opposition decisions; a recent case addressing the importance of disclaimers in designs; and EUIPO’s key user programme


Quality of opposition decisions

A panel of users participated in an audit on the quality of opposition decisions at EUIPO on 6th and 7th July 2017, as part of the Stakeholder Quality Assurance Panels (SQAP) project.

SQAP aims to involved users in the quality management of the Office, and in contributing to the quality of the Office’s decisions. It is running as a pilot project during 2017.

The July audit involved 13 auditors from seven users associations, including Roland Mallinson representing MARQUES. They checked opposition decisions to assess their quality in accordance with the Office’s quality criteria. The findings were reflected in an audit report.

Importance of disclaimers in designs

The General Court addressed the importance of disclaimers in the assessment of the subject matter of designs in its decision Murphy/EUIPO – Nike Innovate (Electronic wrist band) T-16/16 on 4th July (see the blog post on Class 99 for more details).

The General Court upheld the decision of the EUIPO Board of Appeal. In an article in the July issue of Alicante News, EUIPO says the decision provides guidance on the use of disclaimers in interpreting the subject matter of protection of a design:

The case described also illustrates how important it is to pay particular attention to the representation of the design in the filing strategy as it plays an essential role in determining the subject matter of protection of design. Moreover, the representation of a design is of particular importance in design invalidity proceedings. According to the case-law, the comparison of the overall impressions produced by the designs must relate solely to the elements actually protected, without taking account of the features excluded from protection. Therefore, it is worth repeating that the representation should contain only the design for which protection is sought excluding any other matters.

Finally, it must be recalled that the usage of disclaimers (e.g. broken lines, blurring, boundaries or colour shading) to indicate what is not intended to be protected is in accordance with Common Practice (CP6). Disclaimers are also foreseen, as the GC mentioned, in the Guidelines for Examination of Registered Community Designs of the EUIPO, where it is clearly indicated that disclaimers must be apparent from the representation of the design itself, rather than be included in the description of a design.

Key User Programme

EUIPO has launched a Key User Programme offering advanced IP management solutions. The Programme began in 2013 in pilot phase and was rolled out to all users in April this year.

There are already more than 350 key users in the Programme, accounting for more than 40% of EUIPO trade mark applications.

Benefits include direct support and guidance on trade mark and design applications and access to user performance statistics. There is a dedicated team and an advanced user area, where users can benchmark against average performance.

To use the Programme, participants must hold a current account and opt in to receiving electronic communications.

See the July issue of EUIPO’s Alicante News for more information on each of these items.

Thailand joins the Madrid System

 

MARQUES Media Roundup

The government of Thailand has deposited its instrument of accession to the Madrid Protocol. Here’s all the information you need to know

 

Check out the recent posts on General Court design decisions on the Class 99 blog, as well as other news on MARQUES social media channels

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