Issue 092
  August 2018
Contents:
 

Annual Conference SOLD OUT!

>  
 

MARQUES takes part in Madrid Working Group

>  
 

EU Judges Meeting, 18 January 2019

>  
 

Field Notes from the Outer Borders: La Mafia

>  
 

EUIPO guidance on acquired distinctiveness

>  
 

The hazy world of trade marks and cannabis in North America

>  
 

New version of 11th edition of Nice Classification

>  
 

MARQUES Media Roundup

>  
 

MARQUES events for your diary

>  
 
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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Annual Conference SOLD OUT!

 

 

September’s Annual Conference in Paris is sold out, with more than 900 people expected to attend – a record number

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MARQUES takes part in Madrid Working Group

 


Tove Graulund and Jessica Le Gros of the International Trade Mark Law & Practice Team represented MARQUES at the 16th session of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks, which was held in Geneva from 2 to 6 July 2018


Topics on the agenda of the Working Group included:

  • Replacement
  • Transformation
  • New types of marks and new means of representation
  • Findings of the questionnaire on limitations
  • Changes to the Regulations to make the language inclusive
  • The possible introduction of the Chinese and Russian languages into the system

The meeting was chaired by Steffen Gazley of New Zealand and attended by representatives of contracting parties of the Madrid Union, observer states, BOIP, WTO and several NGOs including MARQUES.

Tove and Jessica highlighted the MARQUES positions on the various issues debated during the meetings, and also held informal negotiations with other participants.

For example, MARQUES has consistently argued for central replacement to provide clarity and a common procedure for users. On transformation, which is viewed as an under-used tool, MARQUES supports the model provisions provided by the Madrid Registry for offices. In particular, MARQUES believes that if designations have already been examined, they should not need to be re-examined.

MARQUES also raised the need to discuss the proposal on trade marks in other scripts, which is something we have worked on for a couple of years. The proposal was put together when it proved impossible to have the requirement for a basic mark abolished. It seeks to make the system more accsesible for brand owners with a home language that is not in Latin characters. This was supported by a contracting party and added back in to the road map for the medium term.

The Working Group was also updated on potential accessions to the Madrid System, as there are more than 15 states considering joining, and on the latest statistics and pendency times. MARQUES welcomes the further expansion of Madrid and will offer support to any states considering accession where that is likely to be helpful.

The WIPO Secretariat discussed communication with offices, and the move towards electronic communication. Faxes are no longer used and all offices are being encouraged to move to the Madrid Office Portal.

The ITMLP Team will review the progress made at the Working Group and consider revising or writing new position papers to present the MARQUES position and advance negotiations on the topics discussed, such as scripts, harmonisation of deadlines, dependency, replacement and limitations.

“Discussion of many of these issues inevitably takes time, but we were pleased to see progress on a number of topics that are important to MARQUES members, notably regarding trade marks in different scripts. We believe that it is very important for brand owners in countries where consumers don’t read Latin script and also to attract more members to the system,” said Tove. Jessica added: “This was my first Madrid Working Group meeting, and it was useful to meet representatives of participating states and explain the MARQUES position to them. We are already looking forward to the meeting next year. The reduction of the dependency period is one of the very interesting topics that will be on the agenda, and we hope to be able to bring it down from five years to two or three years.”

The 17th session of the Working Group is expected to be held in 2019.

EU Judges Meeting, 18 January 2019

 

 

Full details of the first MARQUES EU Judges Meeting will be announced at the Annual Conference in September

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Field Notes from the Outer Borders: La Mafia

In the latest in its series of Field Notes concerning unusual trade marks, Adrian Smith of the IP Emerging Issues Team looks at a mark that now sleeps with the fishes

Read More >>
EUIPO guidance on acquired distinctiveness

Guidance on Article 7(3) EUTMR claims; an overview of case law in 2017; and information on the extension of visual search in TMview are all available in the latest issue of Alicante News

Read More >>
The hazy world of trade marks and cannabis in North America

Few people can have failed to notice the increasing public and political debate on the question of cannabis use and its legalization, or not as the case may be. While debate has focused on the social, political and economic issues, the legalization of cannabis poses particular challenges to brands. Janet Satterthwaite, Mary-Jane Lemenchick and Stella Syrianos of the MARQUES IP Emerging Issues Team examine the landscape in North America and reveal the dilemmas posed by cannabis in the world of trade marks

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New version of 11th edition of Nice Classification

A new version of the 11th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) will enter into force on 1 January 2019

Read More >>

MARQUES Media Roundup

 

Swedish Judges Meeting coming soon!

 


Recent topics covered on the MARQUES blogs include the EU joining the Geneva Act and Israel’s new Designs Law

 

In addition to the Annual Conference and the EU Judges Meeting, there are several other MARQUES events planned

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