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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
FRIDAY, 21 JUNE 2024
Update from Russia Task Force: Decree 430 of 20 May 2024

On 20 May, Russia President Vladimir Putin issued Decree No 430 “On the temporary procedure for acquiring exclusive rights of certain IP holders and fulfilling monetary obligations to certain foreign creditors and entities controlled by them”.

Decree 430 is available on the Russian government’s website here. The following analysis is based on a machine translation.

The Decree supplements previously announced measures by establishing a temporary procedure concerning the acquisition of IP rights by Russian entities from rights holders in “unfriendly” jurisdictions.

It essentially imposes government control over any new contracts to acquire overseas IP rights by Russian entities as well as for payments under existing agreements.

“Unfriendly” states are any states that “commit unfriendly actions” against Russia. In practice, this includes all countries that have sanctions in place.

Rights holders are defined as people in unfriendly states “who have transferred or are obliged to transfer their exclusive rights to the results of intellectual activity or to means of individualisation to acquirers under agreements providing for the alienation of such rights”.

The decree provides that all payments must be transferred to special types of bank account (known as type O accounts). These accounts require government approval for withdrawals.

The decree does not apply to transactions “involving the acquisition of exclusive rights to works of science, literature and art, to the results of performing activities (performance), to phonograms, to messages from broadcasting or cable broadcasting organizations” or to transactions under R15 million (€165,000; $175,000).

The decree complements Decree 322 of 27 May 2022 on royalty payments due to rights holders in unfriendly nations.

The MARQUES Russia Task Force continues to monitor IP developments arising from the Russia-Ukraine conflict and will provide further updates where relevant. If you have any questions, please contact the Chair of the Task Force Tobias Cohen Jehoram.

Posted by: Blog Administrator @ 08.07
Tags: Russia, Decree 430, Putin,
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WEDNESDAY, 19 JUNE 2024
Find out more about the MARQUES Annual Conference

The latest episode of the Talking MARQUES podcast covers the 2024 MARQUES Annual Conference, which takes place in Stockholm from 24 to 27 September 2024.

In the podcast, Jesse Hofhuis (AC&R, The Netherlands), Leo Longauer (LVMH, France) and Sara Soderling (AWA Sweden AB, Sweden) discuss the programme, social activities and networking opportunities.

They also provide some insights into what registrants can expect from the host city Stockholm, how to get around and the sights to see.

You can listen to the podcast on the MARQUES website or on Spotify.

The theme of this year’s Annual Conference is “The many traits of the trade mark expert” and it will feature three days of panel sessions, workshops and excursions.

As of today, 576 people from 61 countries have already registered.

The Early Bird booking period closes next Friday 28 June – in just nine days –  so if you have not already booked now is a good time to do so.

Full details including registration options and prices are on the MARQUES website here.

Last year’s Annual Conference was sold out so don’t miss out on your chance to be in Stockholm!

Posted by: Blog Administrator @ 11.26
Tags: Annual Conference, Stockholm, Talking MARQUES,
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TUESDAY, 11 JUNE 2024
Changes to EUIPO website

EUIPO has updated its website with several new features.

These include more compact homepage, new and improved information architecture, and enhanced performance, which all aim to improve the user experience and accessibility.

Access to the most used content and applications is now available directly from the homepage. The search process has also been streamlined.

Content is available in the five EUIPO languages based on human translation and in the 18 other official EU languages using on-demand machine translation.

EUIPO says it will also roll out a new User Area in the next few weeks.

It adds that the updates to the current version of the website, which was launched in 2023, are in response to user feedback.

Read more on the EUIPO website here.

Posted by: Blog Administrator @ 14.15
Tags: EUIPO, website, User Area,
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FRIDAY, 7 JUNE 2024
MARQUES files amicus brief in EUTM conversion case

On 30 May 2024, MARQUES submitted a brief to the EUIPO in a case before the Grand Board of Appeal concerning the conditions under which conversion is admissible under Article 139(2)(b) of the EUTM Regulation.

The brief is available to download on the Amicus Curiae Team page on the MARQUES website (log-in required).

The law on conversion

The case is the first time that the EUIPO Executive Director has referred questions on points of law to the Grand Board under Article 157(4)(l) of the EUTMR.

The issue arose after the Fourth Board of Appeal in Case R 1241/2020-4, ‘Nightwatch’, challenged the established interpretation of Article 139(2)(b). The previous practice was based on a Grand Board of Appeal decision of 27/09/2006 in R 331/2006-G “Optima”, which bars conversion in those Member States where a decision of the Office identifies grounds of refusal.

In the ‘Nightwatch’ decision, however, the Board of Appeal allowed the conversion of a refused EUTM application, following its withdrawal during the appeal period. It addressed several points regarding the effects of the EUIPO’s decision to refuse the application for conversion.

The EUIPO Executive Director referred five questions to the Grand Board concerning the conditions under which the conversion of EUTMs is admissible.

MARQUES brief

In its amicus brief, MARQUES proposes the following answers (in bold) to the questions referred:

  1. Does the expression ‘the decision of the Office’ in Article 139(2)(b) EUTMR include decisions of the Office containing grounds of refusal of an EUTM application, where no appeal is brought under Article 66 EUTMR but where the EUTM is withdrawn during the appeal period set out in Article 68(1) EUTMR? No – as there is not a final decision in this case
  2. Does the answer to question 1 differ where an appeal against the grounds of refusal is brought under Article 66 EUTMR but where the EUTM is withdrawn prior to a final dismissal of that appeal? No – for the same reason under the answer to Question 1
  3. Should Article 71(3) EUTMR be interpreted to mean that Article 139(2)(b) EUTMR includes decisions of the Boards of Appeal containing grounds of refusal of an EUTM application where no action is brought under Article 72 EUTMR but where the EUTM is withdrawn during the period set out in Article 72(5) EUTMR? Yes, since there is no final decision
  4. Does the answer to question 3 differ where an action against the grounds of refusal is lodged under Article 72 EUTMR but where the EUTM is withdrawn prior to a final dismissal of that action? No, for the same reasons as under Question 2
  5. Does the answer to questions 1 to 4 differ where the relevant decision is rendered in ex parte or inter partes proceedings? If so, to what extent? No, there is no legal basis to justify a different approach

The amicus brief concludes: “MARQUES is aware that various approaches and views are possible and defensible in this matter. In particular, MARQUES acknowledges that its preferred approach as laid down in this Submission and in the answers to the Executive Director’s questions, may have considerable consequences for trade mark owners in inter partes proceedings. However, taking into account all circumstances, MARQUES believes that the primary interest of improving consistency and legal certainty as described in this Submission, is best served with the approach preferred by MARQUES.”

The brief is authored by Roderick Chalmers Hoynck van Papendrecht, Elisa Vittone, Antonella Pagliara and Emmy Hunt, who are all members of the MARQUES Amicus Curiae Team.

Posted by: Blog Administrator @ 10.09
Tags: Amicus, EUIPO, conversion, EUTM,
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WEDNESDAY, 5 JUNE 2024
Europol IP Crime Conference, 24-25 October 2024

MARQUES has been informed that the 2024 Europol IP Crime Conference will take place on 24-25 October this year.

This is the sixth in-person edition of the conference and it will be organised jointly by Europol, EUIPO and the Spanish Guardia Civil. The theme will be “Follow the money to fight IP Crime”.

Participants will include representatives of law enforcement, the private sector and academia.

The venue will be confirmed closer to the time.

The conference will last one-and-a-half days and there is no registration fee.

Further information will be available soon. In the meantime, you can contact the EUIPO Observatory with any queries: observatory@euipo.europa.eu

The 2023 IP Crime Conference was held in Lisbon and you can read more about it on Europol’s website here.

Photo from Europol image gallery

Posted by: Blog Administrator @ 08.47
Tags: Europol. IP Crime Conference,
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TUESDAY, 4 JUNE 2024
EUIPO webinars during June 2024

EUIPO is hosting three webinars on Tuesdays this month on the Academy Learning Portal.

The webinar topics are

  • 11 June, 10:00 – 11:00: Key elements for successful mediations: how to negotiate a satisfactory settlement agreement (Intermediate)
  • 18 June, 15:00 – 16:00: Transatlantic IP: the United States prospective on design patents for EU business (Intermediate)
  • 25 June, 10:00 – 12:00: Track on case-law: Boards of Appeal decisions and GC/CJ judgments (2024 Q2) (Advanced)

All times are CET.

There is more information about all the webinars, including details of how to register, on the EUIPO Academy website. You can also access recordings of previous webinars on this page.

Posted by: Blog Administrator @ 16.40
Tags: EUIPO, Academy, webinar,
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FRIDAY, 24 MAY 2024
A guide to revocation for non-use in China

In the latest post from the MARQUES China Team, William Lobelson discusses revocation of a trade mark for non-use in China.

A registered trade mark that has not been used for a period of three years from registration is liable to cancellation in China (Article 49.2 of the Chinese Trademark Law).

Anyone is entitled to seek revocation. This is usually the most efficient way of overcoming a refusal directed against a trade mark application which is based on an earlier mark.

CTMO procedure

The procedure is conducted in the China Trade Mark Office (CTMO). The trade mark owner (respondent) is given a (short!) term of two months to file evidence of use. Use of the mark must be proven over the three-year period preceding the petition for revocation.

Evidence of use that is deemed relevant includes licence agreements, commercial literature, advertising publications, invoices, catalogues and web pages. Use by a licensee is accepted. The documents must reflect use of the mark in China, as registered, for the relevant classes of goods/services.

Original documents or notarised copies are recommended (to make them incontestable).

In the absence of any evidence of use, the mark is cancelled.

If evidence of use is filed, the CTMO proceeds to examination and gives a decision. The evidence of use is not communicated to the applicant. At this stage therefore, the applicant cannot verify the relevance and authenticity of the evidence of use.

The procedure timeframe is between six and eight months.

Appeal

The decision can be appealed to the Trademark Review and Adjudication Board (TRAB) within 15 days.

If the request for cancellation is denied, and the applicant files for appeal, the evidence of use filed by the respondent will be communicated so it may be contested.

Both parties can file arguments and new evidence in the TRAB.

The procedure timeframe in the TRAB is between 12 and 18 months.

The decision of the TRAB may be appealed in the Beijing IP Court within 30 days.

Note that, in theory, when non-use can be justified (force majeure, restrictions imposed by government policies, bankruptcy/liquidation or other reasons for which the trademark owner is not responsible), the trade mark may be maintained. This in, in practice, very rare.

William Lobelson is a partner at Germain & Maureau in France and a member of the MARQUES China Team.

Posted by: Blog Administrator @ 09.30
Tags: revocation, TRAB, CTMO,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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