WIPO has published the third chapter of its podcast series WIPOD – International Trademark System Talks.

The 15-minute podcast covers the Madrid System, including the birth of the Madrid Agreement in the 1890s. It includes fun facts about the origins of the Madrid System.

Previous episodes of the podcast have covered the history of trade marks from the ancient world to the 19th century and the road from the Paris conference of 1880 to the Madrid conferences.

You can find out more about the podcasts and listen on WIPO’s website here. You can also listen, download and subscribe on Spotify, Apple Podcasts and Google Podcasts.

This year’s Annual Conference will take place at the Hotel Riu in Madrid, Spain from 20 to 23 September. Registration is now open on the dedicated page on the MARQUES website.

The theme of this year’s Conference is “Celebrating Marks: How sustainability and technology will shape the future of brands”.

The Conference sessions will address in particular how sustainability and new technologies will shape the future of brands.

Topics discussed will include Artificial Intelligence and Blockchain; digital dispute resolution; how to integrate and prioritise sustainability; responding to external disruption; virtual/augmented reality and deep fakes; branding innovative products; and enforcement in the metaverse.

There will also be panels on CJEU and General Court case law, judicial approaches to parasitic competition and international design protection strategies.

Social programme and venue

The social programme includes an informal Welcome Reception, Cultural Evening at the famous Casino de Madrid and Gala Dinner Evening at the Palacio del Negrelejo

The Hotel Riu boasts a stunning city centre location and is just 25 minutes from the airport. Accommodation in the hotel will be allocated on a first come, first served basis and special rates are available for anyone wishing to extend their stay before or after the Conference.

Other useful information

Modular participation in the seminars and/or social activities is also available.

Certificates of attendance, indicating the number of hours of educational content, can be issued on request. Provision will also be made for registration of attendance at individual sessions where required.

The Early Bird Discount is available until Thursday 30 June 2022.

More information is available online including:

• Programme
• Registration fees
• Terms and conditions
• Register online
• Sponsors

The IP register in Blockchain project has won first prize in the best application of tech in the public sector category at the Global Business Tech Awards. The award recognises technologies with tangible benefits.

The IP Register in Blockchain lays the foundation for distributed platform enabling services that benefit from secure, fast and direct connectivity between IP Offices and rights holders.

Blockchain makes data on IP rights readily available so that changes can be tracked.

EUIPO launched IP register in Blockchain in 2021. Last year, the Maltese government joined and in April this year the Estonian Patent Office also joined.

The three offices can now connect to TMview and DesignView through the blockchain with near-real-time data transfer speeds.

The Global Business Tech Awards jury said: “This winning entry really stood out to us all on the jury panel as it was well written, and clearly described a complex implementation of blockchain technology. The international scale that the EUIPO implemented is really impressive and we have confidence that it will clearly deliver significant efficiencies and value to companies globally.”

You can find out more about IP register in Blockchain in this video on YouTube.

Picture from EUIPO website.

Nathalie Denel of the MARQUES International Trade Mark Law and Practice Team discusses the role of the basic mark for the international registration in the Madrid System, and provides some tips for filing strategies.

The dependency timeframe is on the table at WIPO. During the working group on the Legal Development of the Madrid System for the International Registration of Marks from 15 to 17 November 2021, a proposal was made to shorten the pendency period from five to three years. This proposal was favourably received and will be discussed during a subsequent session.

This post discusses the crucial role of the basic mark for the international registration. It also provides some considerations for the best filing strategy.

Central attack

An international registration is dependent on the basic mark within (currently) five years from the date of registration. During this time, if the basic mark ceases to have effect, for all or part of the goods and services, the international trade mark will too.

This is the central attack, also called the mirror effect: an attack on the home mark, in whole or in part, results in the same cancellation or limitation of protection for the international registration.

In most cases, the ceasing of effect will result from a final court or IP Office’s decision of revocation, cancellation or invalidation of the basic registration. It can also result from the rejection, abandonment or renunciation of a basic application.

Importantly, where a final decision resulting in the partial or total ceasing of effect of the basic mark happens after the five-year period, the IP Office is obliged to notify WIPO if the action resulting in the ceasing of effect was initiated in the five-year period.

Transformation

To mitigate the consequences of the dependency provision, the Madrid Protocol introduced the possibility of transformation of the international trade mark into national or regional rights.

This way, the foreign rights are not lost. But this option should ideally be avoided since it proves expensive, complex and cumbersome and the outcome is uncertain.

Basic mark

Not all trade marks qualify as a basic mark. Under Article 2(2) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, the trade mark must be registered or applied for registration in the territory of the member of the Madrid Union to which the applicant has an establishment, domicile or nationality. The international trade mark is then filed in this territory, before the Office of Origin.

A choice is available where the applicant has a connection with several Contracting Parties of the Madrid System. For instance, a national of one country who resides in another – assuming that these countries are Contracting Parties – can choose one or the other to file the basic mark and the international application.

For the choice of the Office of Origin, the domestic law, regulations and practices should be considered, in particular regarding the following aspects:

• the length of time for the basic mark to mature into registration, having in mind that some Offices offer an accelerated examination,
• the filing language and whether a choice of languages is offered, looking at whether the specification will need to be translated into one of the Madrid working languages (information available at WIPO’s Madrid Member Profiles Database),
• the conditions for the registration for the basic mark, including requirements for disclaimers for non-distinctive elements of the mark or for a very specific description the specification,
• the examination practice for absolute grounds, such as the threshold of distinctiveness required, which, if strict, has the downside of delaying the examination but, going forward, allows you to obtain a robust basic mark and to reduce the risk of objections in the designated countries of the international trade mark.

Factors to consider

The holder should also take into account the level of vulnerability of the basic mark, which may mean avoiding one with a strong likelihood of several problematic prior rights or with a risk of being cancelled for bad faith due to lack of intention to use.

The interest in having the trademark in this country, especially when it is planned to use it, is another decisive element. In some countries, the window to begin the use of the trade mark is three years from the registration date.

Tax aspects can come into play should it be planned to assign or license the international trademark later such as from an operating company to a holding company.

Single-class applications are no issue since the international trade mark can be based on several identical basic marks covering different goods and services.

Likewise, priority is not an element of choice. The earlier filing may be another trade mark filed in a country party to the Paris Convention or in a member of the World Trade Organization. This possibility to claim priority of another trade mark provides flexibility in the choice of the basic one.

Global protection strategy

In order to mitigate the risk of the central attack, it is advisable to perform a full clearance search in the home country that will disclose the risk of a third party’s claim against the use and registration of the basic mark on the basis of prior IP rights.

For the same reason, it is often best to wait for the registration of the basic mark and clear the opposition period before filing the international trade mark.

Turning to the specification, the terms and classification should ideally be acceptable before both the Office of Origin and according to the Nice Classification so as to avoid an objection by WIPO in this regard.

All in all, the global protection strategy is worth being defined at the time of the first filing. The best strategy depends on each scenario, not forgetting that sometimes the national route is preferable.

In any case, when using the Madrid System, “think global, act local” is a good credo: the foundations for the international trade mark are laid in the home country.

Nathalie Denel is a senior IP lawyer at Sedin SA in Geneva and a member of the MARQUES International Trade Mark Law and Practice Team

The theme of today’s World Intellectual Property Day is “IP and Youth: Innovating for a Better Future”.

On its dedicated web page, WIPO says: “Across the globe, young people are stepping up to innovation challenges, using their energy and ingenuity, their curiosity and creativity to steer a course towards a better future.”

Today WIPO announced the winners of the first World IP Day Youth Video Competition. It has also conducted a survey to help inform WIPO’s youth engagement activities and is hosting a World IP Day Youth Gallery.

Other World IP Day activities include:

• A video message from WIPO Director General Daren Tang
• A video on IP and Youth: Innovating for a Better Future
• A special issue of WIPO Magazine
• A joint message from the TM5

WIPO is also hosting a webinar focusing on IP and Youth on 28 April starting at 14.00 CET. You can find out more and register for free here. The webinar will be in English with an option to choose subtitles in other languages.

MARQUES sends best wishes to all readers for World IP Day, whatever you are doing to celebrate it!

Photo from WIPO World IP Day web page 

The EU Court of Justice will launch a live streaming service on its website on 26 April.

From that date, the Court will broadcast CJEU judgments and Advocate General opinions in cases assigned to the Grand Chamber.

Hearings in the Grand Chamber will also be streamed for a pilot period of six months: morning hearings will be available from 14.30 the same day and afternoon hearings from 9.30 the following day. It will not be possible to consult them subsequently.

The streams will include simultaneous interpretation of the pleadings in the languages necessary for the proper conduct of the hearing.

Among the judgments scheduled for delivery on 26 April is Poland v European Parliament and Council of the EU, which concerns Poland’s challenge to Article 17 of the 2019 Copyright Directive.

More information is available in the CJEU’s announcement.

Photo of Grand Chamber: Court of Justice of the EU

Ling Zhao of the MARQUES China Team discusses a recent precedent-setting decision from the Fujian Province High People’s Court.

The plaintiff's mark

In this case, Emerson Electric Co, the owner of the brand InSinkErator and 爱适易 (AI SHI YI) in Chinese for food waste processers, sued trade mark hijackers for unfair competition. The case was based on the fact that the accused infringers had tried to register its four trade marks as well as a number of marks that were copies or imitations of other famous brands.

This is the first case in which the Court found that the defendants (hijackers) had committed unfair competition, even though the trade mark hijackers did not put the trade marks into use, nor did they file a malicious complaint based upon the hijacked trade mark registration.

The court found that the hijackers violated Article 2 of the Anti-unfair Competition Law of PRC (see box), by filing trade marks that were copies or imitations of the plaintiff’s trade marks in bad faith.

Before this precedent, a court has never ruled that such acts of trade mark hijacking constitute acts of unfair competition.

Final judgment

The second-instance judgment was made by Fujian Province High People’s Court on 27 September 2021, and it is final. According to the judgment, the plaintiff’s InSinkErator food waste processors have been known to the public, and this brand is also used on a water purification hot drink system.

The defendants have been involved in the production and sales of water purification devices, which are relevant to the products of the plaintiff, and it is right to state that the parties involved are competitors in the same industry of environment-friendly kitchen and bathroom equipment.

The defendants have registered in multiple classes for the identical or similar InSinkErator and 爱适易 (AI SHI YI) trade marks, including those pictured below.

Marks registered by defendants

Apart from the above hijacked trade marks, the defendants have also filed many trade marks that are copies or imitations of others’ marks, such as DOW in Chinese, Alikes in Chinese and English, Daimler in Chinese, Daimler Chrysler in Chinese, InFocus in English and Chinese, Grundfos in Chinese, iPhone, Unilever in Chinese, Electrolux in Chinese and Morgan Stanley in Chinese from 2011 until 2019.

The Court found that the defendants did not submit any evidence showing the use of the hijacked trade marks or explain their intention to register the marks in various classes, and how these trade marks were designed.

Such acts of trade mark filings have obviously exceeded the normal needs for commercial activities. The plaintiff had to take legal actions, including opposition, invalidation action and litigation to protect its legitimate rights.

To some extent, the normal business activities of the plaintiff have been disturbed by the acts of the defendants, which are against the good faith principle and also damage the market order of fair competition and harm the rightful interests of the plaintiff.

Violation of Anti-Unfair Competition Law

The Court found the acts of the defendant in violation of Anti-Unfair Competition Law of PRC, and the defendants were ordered to stop the infringement and pay damages totalling RMB1.6 million (€228,000).

It also found that the trade mark agency representing the trade mark hijackers in this case should bear legal responsibility for helping the trade mark hijackings.

This is an important landmark case for the following reasons:

• It clarifies that the acts of trademark hijackings alone constitute unfair competition.
• The defendant is prohibited from registering identical or similar trade marks. The damages are determined according to the lawyers’ fees incurred by the plaintiff for legal proceedings to fight against the trade mark hijackings.
• It clarifies the legal liability of the actual controller of the infringing company and the trade mark agency for their contribution to the trade mark hijacking for the first time. It finds that the actual controller is a joint infringer, and the agency helped infringement, which is also a breakthrough in the assumption of responsibility.

Ling ZHAO of CCPIT Patent and Trademark Law Office is a member of the MARQUES China Team