Issue 088
  April 2018
Contents:
 

Sign up now for Hague Agreement seminar in London

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New: Expert talk with Serbian trade mark judges

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Webinar on social media and marketplaces

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MARQUES attends Anti-Scam Network meeting in Alicante

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GDPR and the future of WHOIS

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Federal Circuit addresses scandalous/offensive marks

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Blockathon to be held in June

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European Commission gives notice that .eu TLD will no longer apply to UK after Brexit

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Field Notes from the Outer Borders: Petaloso

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Afghanistan joins Madrid Protocol

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MARQUES Media Roundup

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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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Sign up now for Hague Agreement seminar in London

 


The next MARQUES/WIPO seminar on Mastering The Hague Agreement will take place in London on Monday 18 June. That is just five days after the Hague Agreement comes into effect for the UK so it will be a very timely event for design law practitioners!

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New: Expert talk with Serbian trade mark judges

 

 

The first MARQUES Judges Meeting in Serbia will take place on 31 May 2018. It will be held at the Intellectual Property Office in Belgrade, starting at 09.15

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Webinar on social media and marketplaces

 

 

Did you miss “Social Media and Marketplaces back to basics: ...'Food' for thoughts” on 29 March? Don’t worry: you can now watch the webinar, and download the presentations

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MARQUES attends Anti-Scam Network meeting in Alicante

 


The 3rd Anti-Scam Network meeting was held at EUIPO in Alicante on 19 April. It was attended by representatives of EUIPO, EPO and WIPO, most IP offices in Europe and user associations. MARQUES was represented by Willem Leppink, Chair of the Anti-Fraud Task Force

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GDPR and the future of WHOIS

Brand owners and law enforcement agencies are amongst many who rely upon WHOIS to provide information on the registrants of domain names of concern because they infringe rights or support abusive content. Ashley Roberts and Nick Wood report

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Federal Circuit addresses scandalous/offensive marks

 

Robert J Kenney discusses the recent decision In re Brunetti; free speech; and the registration of scandalous and offensive trade marks in the United States

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Blockathon to be held in June

 

European Commission gives notice that .eu TLD will no longer apply to UK after Brexit

EUIPO and the European Commission are hosting the Blockathon in Brussels from 22 to 25 June to join the alliance against fake products and to co-create the next level of anti-counterfeiting infrastructure

 


EURid, registry operator for .eu for the European Union, has been told to prepare to delete over 300,000 .eu domains owned by registrants based in the UK when the UK leaves the European Union on 30 March 2019. Clare Grimley and Nick Wood provide more information

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Field Notes from the Outer Borders: Petaloso

In the latest in its series of Field Notes concerning unusual trade marks, Nicoletta Galizia of the IP Emerging Issues Team looks at the race to register trade marks for a new Italian word


In 2016, an eight-year-old Italian student, Matteo Renzi, used the word “petaloso” (which translates to “full of petals”), for the first time, in a written assignment, as an adjective to describe a flower. The word did not exist in the Italian dictionary, but the schoolteacher was so fascinated by this innovative word that he encouraged his student to write to the Accademia della Crusca – the most important research institution for the Italian language – to ask if “petaloso” could become recognised as a new Italian word.

The reply was encouraging: “The word you invented is well-formed and could be used in the Italian language like other Italian words composed in the same way“ (specifically: adjective + suffix “-oso” = meaning “full of”). However, the linguistic experts added that, in order for a new word to become part of the Italian language, it needs to be used and understood by a large number of people.

This is exactly what happened after the teacher published the Accademia della Crusca’s letter of reply on her Facebook page. Her post was rapidly shared more than 80,000 times and on Twitter the hashtag “#petaloso” was used more than 4,000 times. Today “petaloso” is included among the neologisms in the Treccani online Italian dictionary.

Last but not least, recently an Italian politician even said: “This is a petaloso flower”, in order to describe the symbol of her party.

Race to the trade mark

A few weeks after the media response, on 29 February 2016, Matteo’s parents decided to register Petaloso as a national figurative trade mark (IT2016000020803) in order to license it and to use the proceeds to create a charitable organization. To their surprise, they discovered that two earlier applications for the word mark Petaloso had already been filed at the national level (IT2016000020228 and IT2016000020482), as well as another application for a figurative European Union trade mark containing the word petaloso (EM015161359)! As a consequence, Matteo’s trade mark risked invalidation for lack of novelty.

The question is: who has the right to be the holder of a trade mark? The one who invented and/or first used it, or the one who first registered it?

Under Italian law, the general principle is that the registration of a national trade mark grants the holder the exclusive right to use it and to prevent any third party from using it without consent.

Nevertheless, an unregistered trade mark also receives protection under Italian law depending on the degree of its reputation. Unregistered trade marks that are well known in Italy can enjoy the protection provided for under Article 6bis of the Paris Convention, which can also extend to dissimilar goods and services and can be enforced before Italian courts against later registrations.

An unregistered trade mark that is known only locally does not affect the validity of the later registration by a third party, but it can still continue to be used locally in spite of its subsequent registration by a third party.

In the specific case of Petaloso, we cannot qualify it as an unregistered trade mark because there was no prior use of the term as a trade mark. For this reason, there was nothing that could be done with regard to the prior registrations. Luckily, since Matteo’s figurative trade mark was found to have a high degree of distinctiveness, the trade mark proceeded to registration without, thus far, any opposition. We will see what the future holds in this regard.


 

 

 

 

 

 


 

In this race to become the holder of the Petaloso trade mark, one episode in particular stands out and bears a mention: Style1, an Instagram personality and writer, was the first to register the domain name petaloso.it. He did that in order to protect and withhold it from the “profiteers”, and then he gave it to little Matteo for free. In this case, one might say that the constraints of the law have been put to proper use in the service of preserving good feelings…

Nicoletta Galizia is an Associate at Studio Legale Jacobacci & Associati

Afghanistan joins Madrid Protocol

 

MARQUES Media Roundup


WIPO has announced that the Islamic Republic of Afghanistan deposited its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks on 26 March 2018

 

It’s been a bumper month on the MARQUES blogs, with reports on important cases, legislative developments and events. Here are some highlights

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