WEDNESDAY, 13 MARCH 2024
Webinar on advertising slogans

Members of the MARQUES Famous and Well Known Marks Team hosted a webinar on advertising slogans on 28 February.

Introducing the discussion, Juan Carlos Durand Grahammer of Durand Abogados, Peru noted that, while in principle registrable as trade marks, slogans can face problems based on descriptiveness or lack of distinctiveness.

This has led to questions such as whether there should be special forms of protection, different terms of protection or alternative means of resolving disputes.

Giving a US perspective, Robert Horowitz of Baker & Hostetler LLP said that some slogans, including The Ultimate Driving Machine, We try harder, Just do it and Because you’re worth it, have been registered at the USPTO while others (including Intelligence of Things, Everybody vs Racism, Texas Love and Team Jesus) have been refused.

He highlighted the importance of dictionaries, including slang dictionaries, as well as internet searches, in assessing whether a slogan can be registered.

Providing an advertiser’s perspective, Rachel Krouse of WPP stressed the important role that slogans play in communication with consumers, and the need for exclusivity – and she distinguished between long-lasting brand taglines and short-term campaign slogans.

Rachel also discussed the impact of AI, the role of trade mark clearance, consumer focus groups and the role of corporate culture (and specifically the appetite for risk). She also said that the global stage and political/ethical sensitivities have to be considered, and emphasised the need for due diligence.

Finally, Monica Davò of Italy’s Institute for Advertising Self-Regulation and Elisabetta Mina of CARNELUTTI Law Firm discussed Italy’s self-regulation regime, which provides for a binding decision from a jury comprising academics, lawyers and marketing experts.

There were several questions from the audience, in particular about the Italian procedure and outcomes of cases.

If you registered for the webinar, you can access the resource pack on the MARQUES website here.

Posted by: Blog Administrator @ 15.56
Tags: advertising slogans, webinar,
Link: https://www.marques.org/class46?XID=BHA5256

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MONDAY, 11 MARCH 2024
Highlights from the MARQUES Spring Meeting

Kate Swaine gave the 10th Kay Uwe Jonas memorial lecture on the topic of “the future of the brand conversation” at the MARQUES Spring Meeting in Amsterdam last week.

Kate is a partner of Gowling WLG in London and a member of the MARQUES IP Emerging Issues Team.

In her speech, she noted that “at this moment in time the future feels very uncertain” due to socio/economic, geo-political, ideological, cultural and technological change and division.

“We are not the first to experience that and we will not be the last. What makes our current experience very different to those that came before us is the extent to which we and our clients, our companies, our brands are part of the conversation and have a role to play,” said Kate.

For example, she said a quick internet search revealed calls for boycotts of brands including Kellogg's, HP, McDonald’s, Bud Light, Zara, Target, Disney and Pepsi. This shows that brands have an important role to play and that they need to engage with consumers.

Kate quoted the writer and podcaster Adam Morgan, who argues that brands have become dull, and they need to work harder to stand out and be authentic.

“We have talked at length at MARQUES about green-washing, brand values, sustainability in packaging, and supply chains. Consumers want to understand the ethical and environmental credentials of the brands that they invest in. Consumer research commissioned by Quickfire Digital and Climbing Trees identified that four in five UK consumers (81%) will boycott apparel brands who do not prioritise sustainable fashion within the next two years,” she said.

This is shown by consumers’ desire for vintage, repurposed goods; traditional techniques; quality ingredients; and a social conscience. Examples of brands embracing these trends include Tony’s Chocolonely and Guinness, with its Nitrosurge pouring device.

The question for brand owners, said Kate, is: “How do you do it? How do you play an effective part in the brand conversation?” She offered five contributions to the conversation:

  1. Authenticity
  2. Story-telling
  3. Focus on the bridges not the river banks
  4. Listen to the conversation
  5. Be bold

Kate concluded: “Changing times deliver challenge but they also deliver opportunity to create something better. We all need to be part of that conversation.”

Read the text of Kate’s Kay Uwe Jonas lecture on the MARQUES website.

David Goldring Award

Also during the meeting, the David Goldring Volunteer Award was presented to Patricia McGovern of DFMG Solicitors in Ireland (right). Patricia is currently Chair of the MARQUES Dispute Resolution Team and has been part of several Teams and Annual Conferences during the past two decades.

Over 200 MARQUES Council and Team members attended the Spring Meeting, which also included a workshop on trade mark use.

Next year’s Spring Meeting will be held in Barcelona on 13 and 14 March.

Photos by Willem Leppink and James Nurton

 

Posted by: Blog Administrator @ 15.54
Tags: Kay Uwe Jonas, Kate Swaine, Adam Morgan ,
Link: https://www.marques.org/class46?XID=BHA5255

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THURSDAY, 7 MARCH 2024
Workshop on use at MARQUES Spring Meeting

More than 200 Council and Team members are taking part in the MARQUES Spring Meeting at the Hilton Amsterdam this week.

Today, the MARQUES Education Team hosted a workshop titled “To use or not to use… that is the question”. The panel comprising trade mark experts from the EU, US and UK discussed issues relating to use prior to filing, in the prosecution stage and post-registration.

The panel was chaired by Ehud Gabrieli and comprised Team members Sandra Muller, Howard Shire, Claudia Csaky, Daniela Paull, Graeme Murray, Charlotte Duly and Shane Smyth.

The wide-ranging discussion covered topics including:

  • The different approaches in the US, EU and UK in the courts and IP offices
  • When use (or, in certain jurisdictions) intent-to-use has to be demonstrated and how to do this
  • The impact of the Sky v SkyKick case concerning the breadth of use and bad faith in the EU and UK
  • When it is possible to raise use objections during prosecution or opposition
  • How to show intent to use in the United States, for example by having a domain name and active website
  • Black-and-white versus colour registrations
  • The opportunity to file series mark applications for a series of up to six marks in the UK
  • How to approach negotiations on limitations and the possibility of partial revocation
  • The time period for showing use post-registration and how use can be demonstrated
  • Where the burden of proof lies in non-use cancellation actions
  • Specific issues relating to use of UK comparable trade marks (derived from EUTMs)
  • Whether there are other forms of protection for well-known marks if they are cancelled for non-use
  • Issues arising from re-filing (evergreening)
  • Will token use suffice and what constitutes genuine use?

There were also several questions from the packed audience on the topics discussed.

The Spring Meeting continues today and tomorrow with Team meetings and presentations. Look out for further posts on the Class 46 blog.

Read more about the Spring Meeting programme on the MARQUES website here.

Posted by: Blog Administrator @ 12.11
Tags: Spring Meeting, trade mark use, workshop,
Link: https://www.marques.org/class46?XID=BHA5254

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TUESDAY, 27 FEBRUARY 2024
Question the trade mark judges 2024

MARQUES and the UCL Institute of Brand and Innovation Law (IBIL) are once again hosting a meeting with leading trade mark judges.

The meeting will take place on 13 March from 6.00 pm to 7.30 pm at UCL IBIL in London.

The judges taking part this year are:

  • Virginia Melgar – Chairperson of the 5th Board of Appeal, EUIPO
  • The Honourable Mr Justice Mellor – High Court
  • Douglas Campbell KC - Deputy High Court Judge, Civil Recorder and Crime Recorder on the South Eastern Circuit
  • Allan James - Senior Hearing Officer and former Head of Trade Mark Tribunal, UKIPO

The panel will be chaired by the Rt Hon Professor Sir Robin Jacob, who will ask questions sent in by members of the audience.

Questions can be submitted for consideration until 6 March by email to Roland Mallinson.

In-person attendance at Question the Trade Mark Judges costs £30 for MARQUES members and certain other categories or £35 for a standard ticket. Discounted prices are available for students, academics and some other people.

Find out more and book your place on the UCL IBIL website here.

This meeting is part of MARQUES series of Meet the Judges events in various countries. See all upcoming MARQUES events here.

Posted by: Blog Administrator @ 10.23
Tags: judges, UCL IBIL,
Link: https://www.marques.org/class46?XID=BHA5253

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FRIDAY, 16 FEBRUARY 2024
Talking MARQUES on AI and IP

Episode 18 of the Talking MARQUES podcast is now available on the MARQUES website and on Spotify.

In this episode, Mila Misevska, Play n GO Marks Ltd, Malta (member of the MARQUES European Trade Mark Law and Practice Team and Jens Matthes, Allen & Overy LLP, Germany (member of the MARQUES Intellectual Asset Management Team) discuss the use of AI-based business tools in IP and other legal work.

The speakers share examples of how AI is already being used to improve productivity and efficiency. They also discuss the benefits of AI tools and the concerns that these tools raise.

With AI tools such as generative AI, large language models and machine learning set to becoming increasingly important in day-to-day work, this podcast is a must-listen for all IP practitioners.

You can find this and all previous episodes of Talking MARQUES on the MARQUES website and on Spotify.

The next episode of Talking MARQUES will be available in April.

Posted by: Blog Administrator @ 16.28
Tags: Talking MARQUES, podcast, AI,
Link: https://www.marques.org/class46?XID=BHA5252

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WEDNESDAY, 14 FEBRUARY 2024
Fourth edition of Operation SHIELD

Operation SHIELD IV, a global effort targeting the trafficking of counterfeit and misused medicines and illicit doping substances, took place from April to October 2023.

According to Europol, it lead to 1,284 individuals being charged (of which there were 296 arrests and 988 under prosecution); 52 organised crime groups investigated, four underground labs dismantled and 92 websites shut down.

More than 600,000 packages were seized, with nearly 70,000 kilos of powders and raw material, over 11,000 litres of active ingredients, 121,000 vials and ampoules and over 12 million tablets and pills.

Operation SHIELD IV was led by law enforcement and other authorities in 30 countries and supported by the European Anti-Fraud Office (OLAF), EUIPO, Frontex, the World Anti-Doping Agency (WADA) and national medicine agencies.

In a statement, Europol said:

The trafficking of pharmaceuticals is a growing issue in the European Union and beyond. The investigations under SHIELD IV have highlighted a pattern of large scale trafficking which is highly lucrative for organised crime, which in turn incentivises more criminal groups to enter the trade. This crime area inflicts significant costs for the health and social care systems of EU Member States, as well as alarming effects on public health.

It also highlighted case studies in Greece and San Marino.

Posted by: Blog Administrator @ 15.44
Tags: Europol, Operation Shield,
Link: https://www.marques.org/class46?XID=BHA5251

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FRIDAY, 9 FEBRUARY 2024
More details on the next MARQUES webinar
Monica Davò
Elisabetta Mina

MARQUES is hosting a webinar titled ‘Advertising slogans: highly creative, poorly protectable? Possible solutions’ on Wednesday 28 February.

Register for the webinar to get answers to questions such as:

  • How much do you know about the protection of advertising slogans?
  • Have you faced problems concerning the protection of advertising slogans?
  • Is self-regulation an alternative for the protection of advertising slogans?

MARQUES is pleased to say that the webinar will also feature a discussion with two representatives of the Institute for Advertising Self-Regulation (IAP) in Italy: Monica Davò and Elisabetta Mina. IAP’s members include major advertisers and broadcasters, such as Google and the Unione Italiana Food.

Monica Davò is responsible for the technical-legal area of the Institute and for all the activities of the Review Board (Complaints Committee). She is currently vice-chair of the Self-Regulatory Committee of the European Advertising Standards Alliance (EASA), which is the authoritative voice on advertising self-regulation in Europe. She lectures at various universities and holds seminars and conferences on advertising self-regulation.

Elisabetta Mina is partner at CARNELUTTI Law Firm and member of the firm's IP and litigation departments. She has long-standing experience in protecting and managing IP rights, with a particular focus on media, entertainment, cinema and TV, advertising, digital markets and tech assets. Currently she also holds an advising position at the IAP.

Sign up now to join the webinar. It will be led by Robert Horowitz of Baker & Hostetler LLP, USA and Juan Carlos Durand Grahammer of Durand Abogados, Peru (both members of the MARQUES Famous Well Known Marks Team) and will also include Rachel Krouse.

Rachel Krouse

Rachel is the WPP Global Client Lead on Kimberly-Clark, overseeing a multi-agency ecosystem that provides integrated services across brand, advertising, media, comms and martech. She has over 18 years of experience working across a diverse portfolio of B2B and B2C brands, helping clients uncover new, meaningful ways to connect with their customers and consumers.   

Prior to Kimberly-Clark, Rachel spent six years running the Dell Technologies global business for VMLY&R (a marketing and communications company).  She was responsible for leading the team that helped Dell navigate the EMC merger in 2016, and subsequently launch its new master brand Dell Technologies to the world. Rachel worked across all business units within Dell Technologies and was pivotal in supporting the brand through numerous moments of inflection, including the COVID-19 pandemic.

Throughout her career, Rachel has played a key strategic role with clients such as JPMorgan Chase & Co., Verizon, P&G, Wendy’s, and Lowe’s Home Improvement, helping them build their brands and drive positive business outcomes. Rachel is based in New York City, and lives in Connecticut with her husband and two daughters.

Registration for the webinar is just €100 (MARQUES members) or €135 (non-members).

Posted by: Blog Administrator @ 12.15
Tags: webinar, advertising slogans, self-regulation,
Link: https://www.marques.org/class46?XID=BHA5250

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