The next MARQUES webinar will be on Monday 14 February and will cover how to give your specification(s) a makeover having regard to bad faith principles and practices which exist in the European Union, United States and China.

Titled “Sweet Valentine”, the webinar is organised by the MARQUES Education Team and will take place from 13.00 to 14.30 CET.

It will provide guidance to trade mark applicants on pitfalls to be avoided when drafting specifications.

The moderator is Shane Smyth, FR Kelly, Ireland (Member of MARQUES Council) and the speakers are: Guido Donath, Donath-Law, Austria; Michael Grow, Arent Fox LLP, USA; and Zhigang Zhu, Wanhuida Intellectual Property, China.

Registration can be made online and costs €100 (MARQUES members) or €135 (non-members).

For details of all forthcoming MARQUES events, including the Spring Team Meeting and Annual Conference, see the Events page.

The UK IPO has announced that the government is not proposing to change the current exhaustion regime, following a consultation held last year.

In an update posted today (18 January), the government said that any change to the exhaustion framework has the potential to affect many business sectors and consumers. It added:

The government has completed an initial analysis of the recent consultation. Unfortunately, there is not enough data available to understand the economic impact of any of the alternatives to the current UK+ regime. As a result, it has not been possible to make a decision based on the criteria originally intended. However, the government remains committed to exploring the opportunities which might come from a change to the regime. Further development of the policy framework needs to happen before reconsidering the evidence and making a decision on the future exhaustion of IP rights regime.

There is no timeframe for a decision on the future regime, but a further update will be provided in due course.

MARQUES welcomes this announcement, which is in line with what MARQUES recommended in its submission to the consultation. The submission can be downloaded from the MARQUES website here.

The government has also published its summary of the responses to the consultation. In total, it received 150 responses. Of these, 71 were from business, 49 from organisations, 17 from individuals and 13 not stated.

The creative industries were most heavily represented, with 54 responses, followed by health (human/animal) with 39.

Under the UK+ regime, the UK permits the parallel importation of goods that have been first sold in other EEA countries. But parallel imports to the EEA from the UK are not permitted.

If you have any questions, please contact Roland Mallinson, Chair of the MARQUES Brexit Task Force, by email.

WIPO has announced that Jamaica deposited its instrument of accession to the Madrid Protocol on 27 December 2021, meaning that the Protocol will enter into force in the country on 27 March 2022.

The instrument of accession contains the following declarations:

- in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and

- in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Government of Jamaica, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

Jamaica becomes the 110^th member of the Madrid Protocol, which now covers more than 125 countries.

Read more on WIPO’s website here.

EUIPO Executive Director Christian Archambeau posted an end-of-year video message on EUIPO’s website on 21 December.

It is available to watch here.

In the message, he looked back at 2021 - which he described as “a year of positives” despite the pandemic - and said IP rights will be an important driver of the recovery.

“It is also clear that these rights need to be more joined up both in terms of accessibility and from the point of view of enforcement,” he added.

In a series of decisions in November, the Management Board and Budget Committee backed strategies including a multiannual Ideas Powered for Business SME fund. The new fund for 2022-24 has an initial budget from the Office of €30 million, which could rise to €45 million.

Mr Archambeau said 2021 would end with a record number of European trade mark applications. Landmarks during the year included the 1.5 millionth registered Community design and the 2 millionth EUTM registration, while TMview passed 100 million marks.

“More challenges lay ahead, but if 2021 has shown me anything it is that, regardless of what comes, we will rise above it and keep moving forward,” he concluded.

EUIPO also posted a seasonal video featuring a phone call from a very special person.

By Ms Haiyu Li and Mr Tingxi Huo of the MARQUES China Team.

On 13 December 2021, the China National Intellectual Property Administration (CNIPA) issued the Criteria for Determining General Illegal Trade Mark Acts to strengthen trade mark administration, unify the enforcing criteria, and improve enforcement. The Criteria, composed of 35 rules, more clearly define some important statutory concepts and specify the scenarios of illegal acts.

The Criteria list the 10 types of general illegal acts relating to trade marks:

1. Failure to use a registered trade mark where it is necessary;
2. Use of a forbidden sign as a trade mark under Article 10;
3. Use of the terms WELL KNOWN MARKS in Chinese;
4. A licensee’s failure to indicate its name or the location of production;
5. Unilateral change of a registered trade mark, the registrant’s name, address or other registered items;
6. False representation of registration;
7. Failure to fulfil the administrative obligations relating to collective or certification marks;
8. Failure to fulfil the administrative obligations of trade mark printing;
9. Filing trade mark applications in bad faith; and
10. Other acts violating the trade mark administrative order.

Foreign entities should pay special attention to Rule 15, under which a trade mark that is eventually rejected, cancelled or invalidated according to Article 10 of the Trade Mark Law shall not be used as a trade mark any more, to avoid investigation and penalty.

In addition, according to Rule 14, where an unregistered trade mark in use has multiple meanings and one of the meanings is probably to make the public believe that it belongs to the scenarios prescribed in Article 10.1.6-10.1.8 of the Trademark Law, an illegal act may be affirmed.

Under Rule 23, where a foreign party uses a trade mark not registered in China, it shall not use the registration symbol ® or other symbols or terms meaning registered trade marks. When a mark is registered in a foreign country but not China, it would be safer to have the registration symbol deleted before the goods enter the Chinese territory.

It is highly advisable for all trade mark users, owners and professionals to immediately study the Criteria, which will come into effect on 1 January 2022. Although the relevant authorities do not have sufficient resources to timely monitor each and every illegal act and fully enforce the Criteria, competitors might enthusiastically report breaches.

Ms Haiyu Li and Mr Tingxi Huo are members of Chofn IP and the latter is a member of the MARQUES China Team

MARQUES sends festive wishes to everyone who receives the Class 46 and Class 99 blog posts. We hope you, your colleagues and families all enjoy a safe and happy holiday season.

The MARQUES Secretariat will be closed until Monday 3 January. However, the MARQUES website should provide any resources you need during that time including:

• Details of upcoming webinars and workshops that you can book now plus dates of other events planned in 2022
• All this year’s issues of the HouseMARQUES newsletter
• The Talking MARQUES podcast, including the latest episode on brands and sustainability
• The MARQUES Highlights of 2021

If you are a MARQUES member and have not yet renewed your membership, please consider doing so via My Account. If you are not a member, you can find out more about joining here.

The Class 46 and Class 99 blogs will post any items of interest over the holiday and we look forward to engaging fully with readers again in 2022!

The latest episode of the Talking MARQUES podcast is now available. It is the first of two episodes dedicated to brands and sustainability and is part of MARQUES’ continuing focus on these issues.

The speakers are Mark Devaney of Clyde & Co LLP, UAE (Chair of the IAM Team); Claire Lehr of Edwin Coe LLP, UK (Vice-Chair of the Programming Team); and Gregor Versondert of Procter & Gamble, Switzerland (former MARQUES Chair).

In this first part, the speakers discuss the different aspects of sustainability, what consumers are looking for and how brands can respond. Gregor provides some case studies showing how Procter & Gamble is working towards net zero and what that means for the in-house trade mark team, and Claire describes some of the sustainability initiatives taken by MARQUES.

The second part of the podcast, covering topics including the impact of COP26, what IP practitioners should be doing and what MARQUES has planned, will be available in January.

You can listen to this episode, and all previous episodes, of Talking MARQUES on the dedicated page on the website or on Spotify.

As part of the continuing focus on sustainability, MARQUES Teams have published papers on various aspects of the topic, and there is a webinar "Is Green the New Black (Part II)" on 13 January 2022 (details here).