Issue 088
  April 2018
Contents:
 

Sign up now for Hague Agreement seminar in London

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New: Expert talk with Serbian trade mark judges

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Webinar on social media and marketplaces

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MARQUES attends Anti-Scam Network meeting in Alicante

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GDPR and the future of WHOIS

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Federal Circuit addresses scandalous/offensive marks

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Blockathon to be held in June

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European Commission gives notice that .eu TLD will no longer apply to UK after Brexit

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Field Notes from the Outer Borders: Petaloso

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Afghanistan joins Madrid Protocol

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MARQUES Media Roundup

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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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Sign up now for Hague Agreement seminar in London

 


The next MARQUES/WIPO seminar on Mastering The Hague Agreement will take place in London on Monday 18 June. That is just five days after the Hague Agreement comes into effect for the UK so it will be a very timely event for design law practitioners!

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New: Expert talk with Serbian trade mark judges

 

 

The first MARQUES Judges Meeting in Serbia will take place on 31 May 2018. It will be held at the Intellectual Property Office in Belgrade, starting at 09.15

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Webinar on social media and marketplaces

 

 

Did you miss “Social Media and Marketplaces back to basics: ...'Food' for thoughts” on 29 March? Don’t worry: you can now watch the webinar, and download the presentations

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MARQUES attends Anti-Scam Network meeting in Alicante

 


The 3rd Anti-Scam Network meeting was held at EUIPO in Alicante on 19 April. It was attended by representatives of EUIPO, EPO and WIPO, most IP offices in Europe and user associations. MARQUES was represented by Willem Leppink, Chair of the Anti-Fraud Task Force

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GDPR and the future of WHOIS

Brand owners and law enforcement agencies are amongst many who rely upon WHOIS to provide information on the registrants of domain names of concern because they infringe rights or support abusive content. Ashley Roberts and Nick Wood report

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Federal Circuit addresses scandalous/offensive marks

 

Robert J Kenney discusses the recent decision In re Brunetti; free speech; and the registration of scandalous and offensive trade marks in the United States


2017 proved to be a year of significant change for US trade mark law – specifically regarding Section 2(a) of the Lanham Act, which governs the registration of immoral, scandalous or disparaging marks. In re Brunetti – the latest Court of Appeals for the Federal Circuit opinion relating to Section 2(a) – the Court concluded that barring registration of a scandalous or offensive mark violates constitutional free speech rights.

The decision comes to almost no one’s surprise after the US Supreme Court struck down the disparagement provision of the same Lanham Act paragraph in the earlier Matal v Tam decision on the same free speech grounds.

The FUCT application

Erik Brunetti attempted to register the mark FUCT in the USPTO in connection with various apparel goods (serial number 85310960). The Trademark Trial and Appeal Board (TTAB), affirming the trademark examining attorney’s decision, refused registration on the grounds that the mark “comprise[d] immoral or scandalous matter under 15 USC § 1052(a) (§2(a))”. On appeal, the Federal Circuit held that “the government has not presented us with a substantial government interest justifying the §2(a) bar on immoral or scandalous marks”.

It concluded that, while the mark in issue is “vulgar”, and that it is “not eager to see a proliferation of such marks in the marketplace”, “[t]he First Amendment…protects private expression, even private expression which is offensive to a substantial composite of the general public.” And since the government had “offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in [the] case, … the bar in §2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.”

As noted above, just months before the Brunetti decision, the US Supreme Court affirmed the decision of the Federal Circuit. in another §2(a) case that made widespread headlines in Matal v Tam. In that case, Simon Tam, the lead singer of an Asian American rock band, appealed the TTAB’s §2(a) disparagement denial of registration of the band’s name, “The Slants”, to the Federal Circuit.

That Court ruled § 2(a) of the Lanham Act unconstitutional on the grounds that “the disparagement clause violates the Free Speech Clause of the First Amendment”. On Certiorari, the Supreme Court reviewed the decision, and in June 2017, affirmed the judgment of the Federal Circuit, striking down the §2(a) disparagement bar as an unconstitutional violation of the Free Speech Clause. While the Tam decision was not fully dispositive of the issue of registration of “immoral or scandalous” marks in §2(a), most observers agreed that the writing was on the wall for the demise of those provisions in Brunetti.

What will come next?

In many cases, the finding that a statute or statutory provision is unconstitutional invites a “re-drafting” by the Congress to meet constitutional standards. However, even the Federal Circuit in Brunetti found that there is likely no “reasonable definition” of the statutory terms scandalous or immoral that would meet those standards, leaving us all to be mortified, or – depending on your viewpoint – entertained, by all the new registrations sure to come.

Robert J Kenney is a Partner at Birch Stewart Kolasch & Birch, LLP and a member of the IP Emerging Issues Team. Download the Team’s recently posted guide to “Immoral, Scandalous and Offensive Marks” from its reports page

Blockathon to be held in June

 

European Commission gives notice that .eu TLD will no longer apply to UK after Brexit

EUIPO and the European Commission are hosting the Blockathon in Brussels from 22 to 25 June to join the alliance against fake products and to co-create the next level of anti-counterfeiting infrastructure

 


EURid, registry operator for .eu for the European Union, has been told to prepare to delete over 300,000 .eu domains owned by registrants based in the UK when the UK leaves the European Union on 30 March 2019. Clare Grimley and Nick Wood provide more information

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Field Notes from the Outer Borders: Petaloso

In the latest in its series of Field Notes concerning unusual trade marks, Nicoletta Galizia of the IP Emerging Issues Team looks at the race to register trade marks for a new Italian word

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Afghanistan joins Madrid Protocol

 

MARQUES Media Roundup


WIPO has announced that the Islamic Republic of Afghanistan deposited its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks on 26 March 2018

 

It’s been a bumper month on the MARQUES blogs, with reports on important cases, legislative developments and events. Here are some highlights

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