Geneva Act gains momentum

In a guest post, Ozlem Futman of the MARQUES Geographical Indications Team brings news about EU membership of the Geneva Act of the Lisbon Agreement:

On 27 July 2018, it was announced that the European Commission recommended that the EU joins the Geneva Act of the Lisbon Agreement, relating to the protection of geographical indications.

The Lisbon Agreement of 1958, which is administered by WIPO, offers a way to secure protection for appellations of origin (AO) through a single registration. In May 2015, the Agreement was changed by the Geneva Act, which expanded its scope beyond AOs to all geographical indications and allowed accession by international organisations such as the EU.

The Lisbon Agreement currently has 28 members, of which seven are EU member states. Once the EU joins, it will enable the rapid, high-level and indefinite protection of European GIs in all current and future parties to the Geneva Act.

The Commission will now prepare a recommendation to the Council that the EU should join the Geneva Act, to be able to take full advantage of the revised Lisbon system.

The MARQUES GI Team will continue to follow these developments and keep the MARQUES community updated.

Ozlem Futman is a founding partner of OFO Ventura and a member of the MARQUES GI Team

Posted by: Blog Administrator @ 08.05
Tags: GI, Geneva Act, Lisbon Agreement, AO,
Link: https://www.marques.org/class46?XID=BHA4663

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A preview of the CTA workshop in Paris

As part of the series of blogs previewing this year’s Annual Conference workshops, we are delighted to host a guest post written by CTA President Ma Fu (pictured right)

Established in 1994, China Trademark Association (CTA) is a national-level professional organization in the field of trade marks and brands. It is responsible for promoting the Trademark Law, strengthening the self-discipline of the trade mark agency industry, serving trade mark and brand building, and promoting international communication of trade marks and brands.

There are two types of CTA members, namely corporate members and individual members, amounting to 1500. Corporate members are composed of enterprises, trade mark agencies and related organizations that have a certain influence in the field of trade marks and brands, involving various industries. Individual members are mainly well-known experts or scholars in the field of trade marks and brands.

In 2014, for the first time CTA sent representatives to attend the MARQUES Annual Conference and since 2016 CTA has sent representatives to attend the MARQUES Annual Conference every year.

At the invitation of MARQUES, in June this year, a CTA delegation visited the Netherlands and the United Kingdom. From 2017-2018, MARQUES sent representatives to attend the China Trademark Festival and held a MARQUES Forum during the China Trademark Conference.

MARQUES Annual Conference workshops
All the workshops take place on Thursday 20 September, starting at 14:15. Find out more about them in the MARQUES Annual Conference programme. Registered delegates can choose one workshop to attend. Spaces are limited

On 20 September 2018, CTA will hold the CTA Workshop for the first time at the MARQUES Annual Conference.

The themes of the forum are China's Trademark Management System Reform and China's Administration and Judicial Protection of Well-known Trademarks. The workshop will introduce the progress of China's trade mark management system reform and the situation of China's administration and judicial protection of well-known trade marks to trade mark holders and other organizations and individuals in Europe and the whole world.

From CTA’s point of view, attending the MARQUES Annual Conference can deliver the Chinese voice to the international trade mark and brand field. Meanwhile, participating in the conference will help us learn more about the latest trends of trade mark law and international intellectual property rights in other countries, learn from the experience of MARQUES members, and consolidate and expand the achievements of international trade mark exchange and cooperation.

Posted by: Blog Administrator @ 14.44
Tags: CTA, Annual Conference, Ma Fu,
Link: https://www.marques.org/class46?XID=BHA4662

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Canada and the Madrid Protocol

As Class 99 reported last month, Canada has recently joined the Hague Agreement on the Registration of Industrial Designs.

Now there is news from WIPO that the country is preparing to join the Madrid Protocol:

Canada is now close to joining the Madrid System. After years of hard work involving stakeholders at the national level, Canada is now fine-tuning regulatory requirements and communicating with WIPO regarding IT tools for the implementation of e-services for filing.

On the future accession of Canada to the Madrid System, Mr. Mesmin Pierre, Director General, Trademarks Branch, Canadian Intellectual Property Office said: “We expect to be joining the treaty, in fact, in early 2019.”

You can see an interview with Mesmin Pierre, conducted at the INTA Annual Meeting in Seattle, here.

We will bring more news regarding the accession as soon as we have it.

Posted by: Blog Administrator @ 15.01
Tags: Madrid System, Canada, Mesmin Pierre,
Link: https://www.marques.org/class46?XID=BHA4661

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Watch a trade mark mediation at the Annual Conference

Class 46 is previewing the six workshops being held at this year’s MARQUES Annual Conference in Paris. Workshop 6 will be a mock trade mark mediation

The workshop will comprise an introduction to set the scene, followed by a live mediation featuring a mediator, legal representatives and clients. All the parts will be played by MARQUES members.

During the mediation there will be pauses to explain what’s happening, and after it is resolved there will be a discussion including questions from the audience.

The workshop will be chaired by Jeremy Blum of Bristows, who is a member of the Dispute Resolution Team. He says it builds on a seminar on mediation and arbitration held in London two years ago: “Lots of people have probably never seen a mediation in action. It may be quite alien to some delegates. Our aim is to provide some insight into how a mediation works in practice.”

Marta Krzyskow-Szymkowicz will act as mediator, while Markus Frick and Patricia McGovern will represent the two parties.

MARQUES Annual Conference workshops
All the workshops take place on Thursday 20 September, starting at 14:15. Find out more about them in the MARQUES Annual Conference programme. Registered delegates can choose one workshop to attend. Spaces are limited

The case being mediated is inspired by real experiences, and will see a luxury brand taking action against a small trader, which it alleges infringes its trade mark and design rights in Europe. The dispute will address various legal issues including the own name defence.

Jeremy says it will be interesting to watch how the parties’ positions evolve during the mediation, and whether they manage to achieve their commercial goals: “Can they compromise and reach a commercial outcome and avoid going to court, while recognising their respective positions?”

Find out by signing up for workshop 6 “Mock trade mark mediation” during the Annual Conference.

Posted by: Blog Administrator @ 09.02
Tags: Mediation, Annual Conference, Dispute Resolution Team,
Link: https://www.marques.org/class46?XID=BHA4660

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FRIDAY, 27 JULY 2018
CJEU rules on acquired distinctiveness in Kit Kat case

The CJEU has clarified the scope of the evidence that is required to prove acquired distinctiveness in the EU in Joined Cases C‑84/17 P, C‑85/17 P and C‑95/17 P Société des produits Nestlé SA and Mondelez UK Holdings & Services Ltd (concerning the shape of a four-finger chocolate bar). MARQUES intervened in the case in support of Nestlé.

The Court rejected all the appeals from the General Court judgment that were before it, but took the opportunity to address whether evidence of acquired distinctiveness has to be provided for every EU member state.

Evidence may be relevant to the whole EU

The Court stated: “No provision of Regulation No 207/2009 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State.” It is therefore “not inconceivable” that evidence may be relevant to several Member States, or even the whole EU.

In line with the Advocate General’s Opinion, the Court said that trade mark owners may treat several Member States as one market: “In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned.” This is also true when the relevant public of one Member State has a sufficient knowledge of the products/services on the market in another Member State.

This means that, though it is not necessary to submit evidence in respect of each Member State, “the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union”.

Whether or not the evidence submitted does prove that is a matter for EUIPO, subject to the scrutiny of the General Court.

General Court upheld

In this case, therefore, the General Court was right to hold that EUIPO had erred in its finding that the four-finger mark had acquired distinctiveness through use, without adjudicating on whether that was the case in Belgium, Ireland, Greece and Portugal.

There are at present 28 EU Member States, although there were just 15 when Nestlé applied for the four-finger mark. There will be 27 Member States after Brexit in March next year.

Nestlé must now return to the Board of Appeal where it can argue that its evidence already submitted meets the new test, or seek to adduce further evidence.

MARQUES intervention

Martin Viefhues of JONAS represented MARQUES before the CJEU. Roland Mallinson of Taylor Wessing assisted in the amicus intervention. He said:

The CJEU has ruled on the geographic spread of the evidence needed to prove acquired distinctiveness for an EU trade mark that has been held inherently non-distinctive throughout the EU. The ruling is significant because:

  • brand owners had been concerned that it would be necessary in future to submit evidence (perhaps including survey evidence) specifically covering each of the 28 EU Member States;
  • it confirms that this is not needed and instead the evidence can potentially be submitted for regional markets (such as the Nordics, Iberian Peninsula, Baltic States and CEE regions that companies often operate within) or, for example, markets with consumers that are closely connected culturally.

What is essential is that the evidence is at least capable of showing acquired distinctiveness in the Member States for which specific single-country evidence may not have been provided … The widespread reports that this spells the end of the Kit Kat shape trade mark are premature. There is still at least one more decision on this to follow.

Roland was also interviewed on ITV News about the decision. See the interview here.

Posted by: Blog Administrator @ 08.54
Tags: KitKat, Wathelet, Nestlé, Mondelez, EUIPO, CJEU,
Link: https://www.marques.org/class46?XID=BHA4659

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Regulation sets out opposition procedure in Argentina

In a guest post, Carlos Castrillo provides an update on the legislative reforms in Argentina:


In January we reported on the publication of the Emergency Decree with several changes that would be popular with brand owners, and we are pleased to say that these changes have been approved by Congress.

The Decree was thus turned into law on 26 June this year and entered into force on the same date. The regulation implementing the new law was enacted last week and will be in force in 60 days.

The regulation sets out the opposition procedure in more detail as follows.

  • If no amicable settlement is reached between the applicant and the opponent, the IP Office will first require the opponent to pay a fee of approximately USD300. At the same time, the opponent will have the opportunity to file new arguments or expand on those already mentioned in the opposition as well as submitting additional evidence.
  • Both parties will have the opportunity to appeal the IP Office decision to the competent court within 30 days from being notified of the decision. The details of the court procedure will be set in the near future.
  • As instructed in the recently enacted regulation implementing the new law, the IP Office will not rule on cancellation matters based on a claim of non-use or other grounds for nullification. This should be brought to the courts with a previous mediation process. If confusion and cancellation are argued together, the IP Office will suspend the confusion decision until the courts decide on the cancellation request.

Any fundamental changes of IP Office procedures such as administrative opposition procedures will inevitably lead to some form of challenge in the beginning, but we are convinced that the Office will do its best to deal with these in an efficient manner. Also, we are certain that brand owners will be pleased that the Office may now take decisions on oppositions and that these will no longer have to be decided by the courts.

As mentioned earlier, the Office has been given the competency to change any procedure if deemed necessary to accelerate the granting of trade marks and to reduce costs. We will keep you posted, if and when changes are proposed.

Thanks to Carlos, who is a partner of Castrillo & Castrillo, Argentina for contributing this post!

Posted by: Blog Administrator @ 17.47
Tags: Argentina, Macri, TMO, opposition,
Link: https://www.marques.org/class46?XID=BHA4658

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What GDPR means to your business, and how MARQUES can help!

Over the next few weeks Class 46 will have several posts on the workshops taking place during the MARQUES Annual Conference in Paris. To start with, Sarah Bailey of the MARQUES Regulatory Team previews workshop 2 on how the GDPR affects trade mark business:


On 25 May 2018, the EU General Data Protection Regulation (GDPR) replaced the current EU directive governing data protection, bringing with it certain key changes (see the EU GDPR Portal).

The definition of personal data under the GDPR remains broad, and has in fact been expanded to expressly include information such as online identifiers (e.g. IP addresses or cookie identifiers) – presenting potential issues for any company processing this type of personal data via its website or app. Certain other additions include genetic and biometric data as types of sensitive data.

Although the basic rule of “fair and lawful” processing remains unchanged under the new regulation, individuals must be provided with far more information about the processing of their data, such as the legal basis for processing and how long that data will be retained.

Giving consent

Consent as a justification for processing must be unambiguous, intelligible, informed and explicit – i.e. in plain language. Silence, pre-ticked boxes, inferred consent or inactivity will therefore not constitute consent under the GDPR. Consent given as condition for performance of a contract or where there is a significant imbalance in the relationship of the parties (e.g. employer/employee) is unlikely to constitute valid consent. Companies should therefore be reviewing any existing consent documents in place under the previous EU directive to ensure that they meet the more stringent requirements of the GDPR, if they have not already done so.

The rights of individuals are further enshrined under the new regulation. For example, the degree of information that must be provided under the “right to access” is expanded, along with the introduction of the “right to data portability” – allowing individuals to have their data returned to them in a commonly used, structured format. The much publicised “right to be forgotten” is also extended, with data controllers needing to take reasonable steps to ensure that third parties to whom they have provided the data, erase it.

Data processing

The heavier administrative burdens of the GDPR require companies to put in place additional processes and documentation surrounding data processing activities. The regulation is far more prescriptive as to the systems and controls that must be used to achieve an adequate level of data security. Notably, the GDPR has introduced two broad principles: privacy by design (whereby compliance principles should be built into system/design process from the outset) and privacy by default (namely, that businesses should not collect more information than is needed). Certain types of data controller will also be required to appoint a designated “data protection officer”.

MARQUES Annual Conference workshops
All the workshops take place on Thursday 20 September, starting at 14:15. Find out more about them in the MARQUES Annual Conference programme. Registered delegates can choose one workshop to attend.

Although data controllers no longer have to notify a data protection authority of the processing of personal data (except in certain limited cases), they will have to conduct (and document) a privacy impact assessment in relation to data processing that is likely to result in a high risk for the rights and freedom of individuals. Such assessment can be a time-consuming and challenging operation. The introduction of more stringent governance procedures means that some data controllers must maintain detailed records of their data processing activities and other related information.

The GDPR applies to all data processed by an entity that either is established in the EU or which has equipment in the EU that processes personal data. Also within the scope of the new regulation are entities located outside the EU if they are found to be monitoring the behaviour of individuals in the EU or are targeting individuals in the EU with the selling of goods or services.

Where there are data breaches, data controllers must inform the regulatory authority and, depending on the severity of the breach, the data subjects themselves. Increased fines under the GDPR for a failure to meet its requirements could lead to companies having to pay the greater of €20 million or 4% of their global annual turnover. The liability for unlawful processing will be jointly shared between a data controller and a data processor.

Find out more

You will be able to learn more about GDPR and how to carry out a compliance programme at the Regulatory Team’s workshop that will take place during the MARQUES Annual Conference in Paris. We have guest speakers from the French Data Protection Authority (CNIL) and the French home appliances group SEB who will provide insight into the new Regulation and how to ensure compliance from the regulator's perspective and what were (are) the main challenges for becoming GDPR compliant from the businesses perspective.

Sarah Bailey is a Partner with Simmons & Simmons LLP in Paris and a member of the MARQUES Regulatory Team

Posted by: Blog Administrator @ 15.35
Tags: GDPR, Annual Conference, CNIL, Sarah Bailey ,
Link: https://www.marques.org/class46?XID=BHA4657

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