Issue 118
  October 2020
Contents:
 

MARQUES Corporate Meetings in 2021

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Madrid Working Group meeting

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UKIPO updates Brexit guidance

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Survey on counterfeit labels and packaging materials

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Report on IP right bundles

>  
 

User Group Meeting at EUIPO

>  
 

WIPO publishes Creative Economy Notes

>  
 

Consultation on protection and enforcement of IP rights

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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

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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.

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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

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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.

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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"

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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

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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


Aktiebolaget Östgötatrafiken

 

 

 


 

In a case concerning colour combination trade mark applications for vehicles and transport services in Class 39, the CJEU provided guidance on the assessment of distinctive character. It said that colour combinations can become distinctive through use, and it is not necessary to examiner whether they depart significantly from the norm or customs of the economic sector concerned (contrary to shape marks).

It answered the questions referred from the Svea Court of Appeal in Sweden, saying that Article 3(b) of the 2008 Directive (corresponding to Article 4(b) of the 2015 Directive) must be interpreted as meaning that "the distinctive character of a sign for which registration as a trade mark in respect of a service is sought, which sign is composed of coloured motifs and which is intended to be affixed exclusively and systematically in a specific manner to a large part of the goods used for the provision of that service, must be assessed by taking into account the perception of the relevant public of the affixing of that sign to those goods, without it being necessary to examine whether that sign departs significantly from the norm or customs of the economic sector concerned".

In this case, the Court said, the signs "consist of colour compositions which are systematically arranged and spatially limited. Those applications for registration thus relate to clearly defined graphic elements which - are not intended to represent goods or an area for the provision of services by the mere reproduction of the lines and the contours thereof".

The judgment is in Case C-456/19 Aktiebolaget Östgötatrafiken v Patent- och registreringsverket.

Ferrari

 

 


Joined Cases C-720/18 and C-721/18, Ferrari SpA v DU, referred from Germany, concerned whether use of the TESTAROSSA figurative mark for replacement parts and services constitutes genuine use.

The Court ruled that Articles 12(1) and 13 of the 2008 must be interpreted as meaning that "a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to 'genuine use' within the meaning of Article 12(1), in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods, such as high-priced luxury sports cars, or only in respect of replacement parts or accessories of some of those goods, unless it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered".

It added that a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark, and that a trade mark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark.

Messi

In the case involving an EU trade mark application filed by the footballer Lionel Messi, the Court of Justice of the EU upheld a General Court judgment that Messi's reputation counteracted the visual and phonetic similarities between his application for a figurative sign (pictured) and the pre-existing trade mark registration for MASSI (Joined Cases C-449/18 P and C-474/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos v Messi Cuccittini).

The decision, published in September, is notable in that the Court said that the reputation of the person applying for his name to be registered is one of the relevant factors in the likelihood of confusion assessment. In this case, the General Court had found that Messi's reputation was one factor in establishing a conceptual difference between 'messi' and 'massi'. Moreover, Massi's reputation was a well-known fact, and should have been taken into account by EUIPO.

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

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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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