Issue 053
  May 2015
Contents:
 

Book now for the Annual Conference in Vienna!

>  
 

MARQUES plays its part in revision of Lisbon Agreement

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Learn about arbitration in Singapore

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Revisions to the Nice Classification

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TTAB rulings may be binding on federal courts – US Supreme Court

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Madrid System seminar coming up in Geneva

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WIPO updates Madrid website

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Mark your calendars

>  
 

Media Roundup

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Madrid System Survey: last chance

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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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Book now for the Annual Conference in Vienna!

 

Registration for the 29th MARQUES Annual Conference, to be held in Vienna from 15th to 18th September, is now open. The Early Bird rate is available until Friday 3rd July.

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MARQUES plays its part in revision of Lisbon Agreement

 

Members of the Lisbon Agreement on Appellations of Origin and Geographical Indications took part in a Diplomatic Conference in Geneva last month. MARQUES was represented throughout the negotiations by members of the GI Team.

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Learn about arbitration in Singapore

 

MARQUES will host a meeting on protecting trade marks with arbitration and domain name UDRP as part of IP Week in Singapore in August.

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Revisions to the Nice Classification

The Committee of Experts of the Nice Union has accepted changes to the Nice Classification proposed by OHIM and prepared by the CP1 Working Group. MARQUES was one of two users associations that took part in this Working Group.

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TTAB rulings may be binding on federal courts – US Supreme Court

 

Brand owners may now need to put more effort in to US oppositions and cancellations or risk being bound later in infringement suit, as Janet Satterthwaite explains.

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Madrid System seminar coming up in Geneva

 

WIPO updates Madrid website

WIPO is hosting a Madrid System Seminar at its headquarters in Geneva on 18th and 19th June.

 

The Madrid System website was updated in May, as part of a longer term project to ensure it meets the information and transactional requirements of users.

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Mark your calendars

 

Media Roundup

 

In addition to the Annual Conference, there are MARQUES events lined up this year in Dublin, Zurich, Singapore and The Hague.

 

 

Community design law research, a new CJEU referral from the Benelux and PUMA v POODLE in Germany were among the topics being discussed on the MARQUES blogs this month.

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Survey on Madrid System Dependency Principle

 

The deadline for completing WIPO’s Survey on the Madrid System Dependency Principle has been extended to 7th June.


MARQUES encourages all members to respond to the survey if possible.

MARQUES has taken a great interest in Madrid System dependency and has been involved in several initiatives in this area. The MARQUES Trade Mark Law & Practice Team, for example, has attended all Madrid Legal Working Group meetings and, since at least as early as 2011, MARQUES has supported the Norwegian Proposal and the adoption of substantive changes to the Madrid system – ultimately the abolition of the basic mark requirement – to make the Madrid System more user-driven and user-friendly.

More information about this topic can be found in the paper “MARQUES Review of the Norwegian Proposal” which can be downloaded (in PDF format) from the Trade Mark Law & Practice Team page. The Team also sent a letter to MARQUES corporate members earlier this year, seeking their views, and another letter to the European sister associations setting out why MARQUES supports the Norwegian Proposal.

In the discussion with the sister associations, there has not been strong support for the elimination of the basic mark requirement, despite MARQUES promoting this for more than four years. Many see the reduction of the dependency period from five years to three or two years, rather than a temporary freezing of the dependency period, as the best compromise option. It is argued that such a reduction will permit holders of basic registrations to obtain a higher level of comfort as to the security of their investment in obtaining international registrations in a much more time-effective manner.

MARQUES considers either compromise proposal (reduction of dependency period or temporary freezing) only as a first step to finally reach an agreement on the complete elimination of the basic mark requirement.

As noted above, MARQUES members have until 7th June to make their views known in the WIPO survey.

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