Issue 118
  October 2020
Contents:
 

MARQUES Corporate Meetings in 2021

>  
 

Madrid Working Group meeting

>  
 

UKIPO updates Brexit guidance

>  
 

Survey on counterfeit labels and packaging materials

>  
 

Report on IP right bundles

>  
 

User Group Meeting at EUIPO

>  
 

WIPO publishes Creative Economy Notes

>  
 

Consultation on protection and enforcement of IP rights

>  
 

CJEU case update

>  
 

Madrid Protocol tips in Canada

>  
 

Coming soon from MARQUES

>  
 

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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MARQUES Corporate Meetings in 2021

MARQUES is planning to host four dedicated sessions for corporate members next year. These are by invitation only, and full details will be sent out to corporate members soon.

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Madrid Working Group meeting

The MARQUES International Trademark Law and Practice Team, represented by Tove Graulund, Gavin Stenton and Jessica Le Gros, participated in the (postponed) Madrid Working Group meeting in October

Read More >>
Brexit guidance updated

Roland Mallinson, Chair of the MARQUES Brexit Task Force, has a round up of the latest UK and EUIPO publications relating to the impact of Brexit on trade marks and designs.


Updated UKIPO guidance

Most recently, the UKIPO published updated guidance for businesses on 28 October 2020. This essentially summarises previous guidance.

The main news, such as there is, is a repeated (but now more emphatic) statement from the UKIPO that the new unregistered UK design right (to be called the supplementary unregistered design) will only arise if disclosure is in the UK or a qualifying country.

This means that potentially a design first disclosed in the UK may benefit from the new UK unregistered design right but not the EU right. In reverse, if a design is first disclosed in an EU27 country it will benefit from the EU unregistered design right but not the supplementary UK right.

Designers could potentially face a stark choice as to where to first show their designs depending on their preference for unregistered protection. Ideally, the law will clarify that simultaneous and qualifying disclosure can somehow be achieved online in order for protection in both regions to arise.

Court of Appeal can depart from EU case law

After a consultation that closed in August, on 15 October 2020 the UK government published the draft European Union (Withdrawal) Act 2018 (Relevant Court) (Retained EU Case Law) Regulations 2020.

If passed in their current form, these will give power to certain courts (mainly the Court of Appeal) to depart from retained EU case law. This means that a case will not necessarily have to go all the way up to the Supreme Court for retained EU case law to be overturned.

The initial proposal on this was only to allow the Court of Appeal to depart from retained EU case law in certain areas of the law. That has now changed. The Regulations allow the Court of to depart from retained EU case law across the board. The only requirement is that the usual test that the Supreme Court would apply in determining whether to depart is satisfied (i.e. it is "right to do so").

Since trade mark and design cases are rarely appealed to the Supreme Court, this change means more UK judges will have more opportunity to evolve UK trade mark and design law away from the EU law.

Cancellation of UK comparable right

On 28 September 2020, the UK statutory instrument implementing article 54(3) of the Withdrawal Agreement was brought into effect.

The Intellectual Property (Amendment etc) (EU Exit) Regulations 2020 (2020 No 1050) provide for the UK comparable trade mark right to be cancelled in the event that the EUIPO or an EUTM court cancels the EUTM from which it was split out provided the challenge had started before 31 December 2020.

The rules and procedures are laid out for this, including how the EUTM registrant can still argue before the UKIPO that the cancellation should not apply to the new UK right. This notably denies the successful cancellation applicant against the EUTM the ability to make submissions to the UKIPO.

The only option if the UKIPO chooses not to implement the decision of the EUIPO or EU27 court is for the cancellation applicant to file a new cancellation action against the new UK right.

EUIPO guidance

On 10 September 2020, the EUIPO issued a 13-page Q&A document. This repeats much of its previous guidance.

However, it includes some helpful clarification concerning the effect and ability of the courts, in the UK and EU27 countries, to grant pan-EU injunctions that apply in the UK or EU27 countries depending on the timing of the first instance decision.

The UK government's guidance on this has been a little less clear. In a recent case in the UK, one judge granted a pan-EU injunction but only to apply until 31 December 2020. This seems contrary to article 67(2) of the Withdrawal Agreement, the effect of which appears to be that, provided an action relying on an EUTM has started in the UK court before 31 December 2020, that UK court would have the power to grant a pan-EU injunction no matter when it renders its decision.

Potentially that means we could see pan-EU injunctions being handed out by UK courts even in 2022. In reverse, injunctions granted in EU27 courts in actions started before 31 December 2020 and relying on EUTMs will be effective in the UK, even if that court is ruling in first instance long after Brexit.

If you read the EUIPO's guidance, it may help to better understand it on these points by reading the words 'as of the withdrawal date' (which are frequently used) as meaning 'after the withdrawal date'.

EU Commission Notice to Stakeholders

Not to be left out, the EU Commission also issued on 18 June 2020 a revised version of its Notice to Stakeholders on the implications of Brexit for trade marks and designs.

On 25 June 2020, it issued a similar but new Notice to Stakeholders concerning exhaustion of rights. The latter confirms that, after the transition period, IP rights will not be exhausted in the EU if goods protected by the IP right have been lawfully put on the market in the UK.

Rights-holders might, therefore, be able to object to the import of goods from the UK into the EU on the basis of their IP rights.

Observatory publishes survey and discussion paper

The EUIPO Observatory, in collaboration with the Council of the European Union's Customs Cooperation Working Party and Europol, has conducted a survey on cases of counterfeit labels and packaging materials. The Observatory has also published a discussion paper on IP infringement and enforcement

Read More >>
Report on IP right bundles

The European Observatory on Infringements of Intellectual Property Rights has published a new study on firms' simultaneous use of patents, trade marks and registered designs to protect their innovation.

Read More >>
User Group Meeting at EUIPO   WIPO publishes Creative Economy Notes

MARQUES took part in the 29th User Group Meeting hosted by EUIPO in two sessions on 14 and 28 October

 

Batman, Dracula and Spiderman are the top three most-used franchise characters from movies and video games in the world's biggest media market over the past four decades, according to the first instalment of a new series of "Creative Economy Notes"

Read More >>   Read More >>
Consultation on protection and enforcement of IP rights

The MARQUES Anti-Counterfeiting and Parallel Trade Team reports on the latest survey on IPR protection and enforcement in third countries launched by the European Commission

Read More >>
CJEU case update

The Court of Justice of the EU has given judgments in three cases concerning colour combinations, whether the sale of spare parts and services constitutes genuine use of a mark, and the application to register the MESSI trade mark

Read More >>
Madrid Protocol tips in Canada

Shannon Young and Sanjukta Tole discuss developments regarding the Madrid Protocol in a new post for the Class 46 blog

Read More >>
Coming soon from MARQUES   MARQUES Media Roundup

MARUES is planning to launch new educational and networking resources for members in the next few months

 

Do you read the MARQUES blogs? Would you like to contribute to them to share news about trade mark and design developments with other MARQUES members?

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