The Lookalike Chart developed by the MARQUES Unfair Competition Team has been updated with a new format.

The information on each of the 50 jurisdictions covered can now be accessed via an interactive world map. The map shows which countries are covered and clicking on these loads up the detailed information for the country.

The map-based format is easier to access and understand than the previous spreadsheet-based format.

The Lookalike Chart includes information on the law and practice regarding lookalikes in each country covered. It provides an overview of the position but is not a substitute for specific local advice.

The information is provided by legal experts in each jurisdiction and coordinated by members of the Team.

The Lookalike Chart map can be accessed on the MARQUES website here.

If you have any questions or feedback please contact a member of the Team.

MARQUES, in cooperation with Stockholm University and the Swedish Anti-Counterfeiting Group, is hosting an IP training programme for law students, lawyers and other practitioners on Monday 23 September, ahead of the MARQUES Annual Conference.

The event will be held at the Albano Campus of Stockholm University and online from 3pm to 5pm. It will bring together stakeholders, brand owners, legal experts and practitioners from private and public entities.

The title of the training is “From Strategy to Practice – Theoretical and Practical Aspects of IP Law”.

Companies taking part will share best practices from different industries. They include:

• SKF (Johan Bravert, Director, Group Brand Protection)
• H&M (Sandra Looft, Legal Counsel)
• Marshall (Ellinor Wilow, Legal Director IP & Brand Protection)
• On (Anna Jakobsson, Global Head of Intellectual Property)
• Philips (Edanela Perez Broce, Senior IP Counsel Trademarks & Designs)
• Essity (Anna Hedberg, Trademark Attorney/Nigar Kirimova, Trademark Attorney)
• Stockholm University (Eleonora Rosati, Professor of Intellectual Property Law, Co-Director of the LLM in European Intellectual Property Law)
• The Swedish Anti-Counterfeiting Group (Anna Bladh Redzic, Partner at Sandart law firm)

To register for this event, please email Sandra.looft@hm.com by 18 September, indicating whether you will attend in person or virtually.

Class 46 readers are encouraged to share this information with students and others who may be interested in attending the training session.

Booking is now open for the Luxury Brands Symposium, which takes place in Vienna, Austria on Thursday 7 and Friday 8 November 2024.

The Luxury Brands Symposium is a very popular meeting which brings together industry and legal experts to discuss the latest developments and trends affecting luxury brands in industries such as fashion, cosmetics, beverages, jewellery and financial services.

Topics on the agenda of this Symposium include:

• the impact of artificial intelligence on the luxury industry;
• the latest developments in greenwashing and what they mean for luxury brands; and
• the rise of quiet luxury, including the role of non-traditional trade marks.

This intimate meeting will provide extensive opportunities for discussion and networking among like-minded professionals. It will also include a Champagne Reception and Dinner on 7 November and lunch on 8 November.

Registration is €850 (MARQUES members) or €950 (non-members). You can find out more and register for the Symposium on the MARQUES website here.

MARQUES has agreed a special rate for delegates wishing to stay at the Anantara Palais Hansen Vienna Hotel of €325 per night. This can be booked when making your registration.

Photo of Anantara Palais Hansen Vienna Hotel from their website

The MARQUES Famous and Well-Known Marks Team has published the results of a survey on trade mark issues presented by AI.

The report covers how companies and law firms deal these issues. It is based on responses from practitioners in 27 countries.

Respondents were asked to provide short answers to questions relating to topics including the existence of national regulations concerning AI, the possibility to protect AI generated content, if AI platforms could infringe IP and be held liable, and to what extent the practitioners had been providing AI related advice to clients.

The report can be downloaded from the Team page here (MARQUES log-in required).

The report highlights that 65% of jurisdictions surveyed do not have specific legislation addressing AI. It states:

In regions like the EU, recent developments such as the Artificial Intelligence Act have begun to set a regulatory framework, but the protection of AI-generated work remains unclear. In many jurisdictions, that is due to the requirement of some form of human creativity. Some countries like China are ahead of the pack and could grand protection through copyright if and where AI-generated work results from human input. Other European jurisdictions are also discussing this criterion for protection.

So far, no AI platforms seem to have been held liable by a Court decision for infringing IP rights, but most of the jurisdictions have the adequate legal tools to sanction such a violation by both the AI platforms and their users. However, mere use of the IP rights by the AI Platforms may not be enough to claim infringement and right owners should watch out for the potential "fair use" defense or similar.

It is worth noting that, except in Canada and Spain, AI is not yet used by examiners or Courts to assess trademark cases… but it may soon change.

The report was compiled and edited by Laura Fresco of HOYNG ROKH MONEGIER, Helena Wassén Öström of Westerberg & Partners Advocatbyrå and Frédéric Serra of HOUSE attorneys.

It is part of a series of articles on AI, all of which can be downloaded from the Team’s page.

The EUIPO and Community Plant Variety Office (CPVO) are co-organising a seminar on 19 September titled “30 Years of Innovation: Celebrating Intellectual Property Together”.

The seminar marks the 30^th anniversary of both offices and is aimed at legal professionals, innovators, plant breeders, business owners and national officials.

It will address questions such as: How will the EU IP Action Plan impact the Single Market? What is the future of IP in the context of Artificial Intelligence and how will new legislation and counterfeiting challenges shape the IP landscape?

The seminar will comprise four sessions: strategies; new laws (design reform and craft GIs); sustainability; and AI.

The seminar takes place in Alicante and online from 09.30 to 17.30 CEST on 19 September. Registration is free.

More information, including the full programme and registration details, are on EUIPO’s website.

The MARQUES Famous and Well-Known Marks Team has published a report based on a survey of 42 MARQUES corporate members.

The confidential survey comprised 12 questions addressing how open compares are to the use of artificial intelligence (AI) in-house and for which tasks it used or best suited.

You can read and download the report on the Team’s page here (MARQUES log-in required).

The survey suggests that, although many companies are talking about AI as a new reality and think of its potential wide use in the future, the majority of in-house counsel are concerned about privacy/confidentiality matters and consider it important to keep human input/control/monitoring over AI-generated work.

Less than half of companies that participated in the survey have started using AI for simplifying IP/legal work in-house. Moreover, most of the tools used are related to the repetitive preliminary work, with the expectation of further checks by humans.

The questions in the survey were:

1. Is there an internal IP-specific policy regarding AI already implemented in your company?
2. Has your company started using AI for marketing activities?
3. If yes, did you already try to protect any IP rights around the result of that work?
4. If so, what type of IP?
5. Do you allow creative agencies to use AI in their work process?
6. If yes, how do you allow AI use?
7. If you allowed creative agencies to use AI, do you have special clauses in contracts with them?
8. Do you update existing contracts or apply only to new ones?
9. What does the clause see to?
10. Have you started using any AI platform/system to simplify the in-house legal department work?

In addition, respondents were asked to mention countries and industries in which their companies operate.

The survey makes it clear that the situation with the AI is progressing daily. The answers by some companies and final conclusions of this report are expected to change in the course of the next years, if not months.

The report was compiled and edited by Nigar Kirimova of Essity, Marlou van de Braak of Heineken and Giordano Cardini of Ferrero who are members of the AI Sub-Team of the MARQUES Famous and Well-Known Marks Team.

Manuela Bruscolini of the MARQUES International Trade Mark Law and Practice Team has written a paper on how the Madrid System is evolving to meet the needs of members and be more flexible and effective.

The paper is available to download on the Team’s website here (MARQUES log-in required).

Each year, the Madrid System Working Group meets in Geneva. MARQUES plays an active role in these meetings given its observer status at WIPO. The next meeting is from 7 to 11 October 2024.

Since a Road Map for improvements was adopted several years ago, there have been discussions on core issues: replacement, transformation, new types of marks, limitations, a harmonized time limit to reply to provisional refusals, a possible reduction of the dependency period and corrections.

The paper summarises the latest plans in the following areas:

• Minimum time limits for holders to respond to provisional results: entered into force on 1 November 2023
• Simplification of schedule of fees
• Additional languages: specifically the addition of Arabic, Chinese and Russian: the Secretariat is preparing detailed documents for the next session
• Reduction of dependency period: there is a discussion on reducing this from five to three years – but this would need to be agreed at a Diplomatic Conference
• Practical functioning of the Madrid System – including examination practices of the International Bureau; declarations by member offices – exclusion of subsequent designations; and individual fees payable in two parts
• Process improvements – including opposition procedures, use of the mark in commerce, scope of protection of designations; and training.

The MARQUES International Trade Mark Law and Practice Team will continue to monitor developments and provide input at the next Working Group meeting.

If you would like to know more about this topic, or have any input for the Team, please contact Manuela Bruscolini or another Team member.

This article first appeared in the July 2024 issue of the HouseMARQUES newsletter.