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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
WEDNESDAY, 15 MAY 2024
Registration open for 2024 Annual Conference

You can now register for the 38th MARQUES Annual Conference, which takes place in Stockholm, Sweden from Tuesday 24 to Friday 27 September 2024.

The theme of this year’s Annual Conference is “The many traits of the trade mark expert”. As the role of trade mark experts becomes more complex, they have navigate new challenges ranging from emerging technologies and business models to regulations regarding advertising and sustainability.

This year’s Annual Conference sessions will cover diverse topics including:

  • litigation and public opinion;
  • working in areas outside your comfort zone;
  • understanding local traditions;
  • navigating consumer values;
  • successful online enforcement;
  • how to demonstrate market realities before EUIPO;
  • visual disclaimers in designs; and
  • the latest EU case law on trade marks and designs.

There will also be workshops on artificial intelligence, trade secrets, co-branding, copyright in IP enforcement and amicus curiae briefs.

Social activities include an informal Welcome Reception at the Stockholm City Hall, a Cultural Evening at the Artipelag venue in Värmdö in the Stockholm archipelago and a Gala Dinner.

Accommodation will be in the Radisson Blu Waterfront Hotel, the Radisson Blu Royal Viking and the Nordic Light Hotel. All three hotels provide easy access to the conference centre and local amenities.

This year, all delegates arriving at Arlanda Airport are advised to use the Arlanda Express train to Stockholm Central Railway Station. MARQUES has agreed a discount.

Modular registration is available for delegates who live locally or choose to source their own accommodation.

Certificates of attendance will be available on request, including for individual sessions if required.

The Early Bird rate applies to bookings received before Friday 28 June 2024. For the full residential package, the Early Bird rate is €3,100 (MARQUES members) or €3,950 (non-members) plus Swedish VAT. Other rates can be viewed here.

Find out more about the programme on the MARQUES website here.

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TUESDAY, 14 MAY 2024
Guide to ambush marketing best practices

Ahead of a summer of sports that includes the Paris 2024 Olympic and Paralympic Games and Euro 2024, the MARQUES Brands and Marketing Team have compiled a guide to ambush marketing and advertising risks for brands.

The guide is available to download from the Team’s page on the MARQUES website (MARQUES log-in required).

As marketing teams look to take advantage of the excitement and consumer engagement associated with this summer’s events to increase their brand visibility through traditional and digital marketing channels, legal teams advising brands will need to look carefully at the rules governing references to and associations with these events.

The guide provides some best practices to ensure such activities do not cross the line of ambush marketing, which can carry significant legal, practical and reputational consequences.

It covers the following topics:

  • What is ambush marketing?
  • What is the International Olympic Committee’s position on ambush marketing?
  • What IP rights protect the Olympic and Paralympic Games?
  • The French government’s approach to ambush marketing at the Paris 2024 Olympics
  • International protection
  • UEFA European Football Championship 2024
  • UEFA and ambush marketing
  • Dos and Don’ts for advertisers

The article has been produced by Arthur Artinian, Louise Thornemann and Flavia Tremura of the Brands and Marketing Team, who can be contacted for more information.

Posted by: Blog Administrator @ 12.00
Tags: ambush marketing, Olympics, Paralympics, Euro 2024,
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WEDNESDAY, 8 MAY 2024
Siemens wins China TM case against uncooperative defendant

In the latest update from the MARQUES China Team, Ms Haiyu Li and Mr Tingxi Huo discuss a recent case involving the SIEMENS trade mark.

On 22 April 2024, China’s Supreme People’s Court (SPC) announced the beginning of IP Week. It released 10 important IP cases and 50 typical IP cases of the Chinese courts and the Chinese Courts’ Judicial Protection of Intellectual Property in 2023.

In case No 2022 SPC Minzhong 312, concerning the trade mark SIEMENS, the SPC granted high damages mainly based on the plaintiff’s uncontested evidence. This decision may deter uncooperative infringers.

Case summary

Ningbo Qishuai Electric Appliances Co, Ltd, the defendant, registered outside China a company called Shanghai Siemens Electric Appliances Co, Ltd. It used the corporate name as a business sign extensively on products such as washing machines that it made and sold, product packaging, and relevant promotional activities.

The plaintiff Siemens sued Ningbo Qishuai for trade mark infringement and unfair competition. The first-instance court upheld the petition for unfair competition, but rejected the trade mark infringement claim concerning the defendant’s use of the corporate name on products.

The court ordered Ningbo Qishuai to immediately stop its unfair competition and granted damages of CNY100 million (€13 million) plus the reasonable expense of CNY163 thousand (€21,000).

Ningbo Qishuai appealed. The SPC ruled that, as it was aware of the fame of the trade marks SIEMENS in Latin and Chinese characters, Ningbo Qishuai wilfully used the corporate name on washing machines and caused consumer confusion. This constituted trade mark infringement and the use on the product packaging and the relevant promotional activities constituted unfair competition.

The evidence was insufficient to prove either Siemens’ actual loss or the defendant’s profit but sufficient to prove the defendant’s profit has obviously exceeded the maximum statutory damage of CNY3 million as prescribed in the applicable laws.

Under these circumstances, as Ningbo Qishuai refused to provide the relevant accounting data, which constituted an obstruction of evidence, the SPC upheld the first instance ruling and rejected the appeal.

Analysis

This case is significant in three respects:

  1. The defendant, which did not cooperate in disclosing the accounting evidence in its care, has to face the unfavourable result under Article 63.2 of the Chinese Trade Mark Law. As China does not have an evidence discovery procedure like the USA, this provision and precedent is particularly helpful.
  2. Although the laws have set the maximum statutory damage, when it is evident that the trade mark owner’s loss or the infringer’s profit has exceeded the maximum, the courts may grant higher damages accordingly.
  3. The SPC confirmed that the unauthorised use of others’ famous marks in a corporate name may constitute trade mark infringement if the corporate name is attached to products and has the function of identifying the source of goods. However, in this case the mark SIEMENS in Latin and Chinese characters is very distinctive and famous in and outside China. If a mark is less distinctive or famous, the ruling might be different.

The authors are members of Chofn IP in Beijing and Tingxi Huo is a member of the MARQUES China Team

Posted by: Blog Administrator @ 11.55
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TUESDAY, 7 MAY 2024
Qatar joins Madrid System

The government of Qatar deposited its instrument of accession to the Madrid Protocol on 3 May 2024, meaning that the Protocol will enter into force in the country on 3 August 2024.

Qatar becomes the 115th member of the Madrid System, which now covers 131 countries, including four of the six Gulf Cooperation Council members (Bahrain, Omar, Qatar and UAE).

Qatar has a population of about 2.8 million people and per capita GDP (PPP) of $114,000, the fourth highest in the world. It is one of the largest exporters of liquefied natural gas and hosted the 2022 FIFA World Cup.

Information about Qatar’s trade mark laws, practices and procedures will be added to the eMadrid Member Profiles shortly, according to WIPO

Read more on WIPO’s website here.

Posted by: Blog Administrator @ 08.18
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SUNDAY, 5 MAY 2024
IP Case Law Conference – day 2 part 2

Earlier this week, the EUIPO hosted the fifth IP Case Law Conference. Class 36 has been posting summaries of the panels; this update covers the sessions on the second afternoon.

Geographical indications

Geographical indications were the subject of the sixth panel, which was led by Dr Anke Moerland - Associate Professor of Intellectual Law at Maastricht University.

“We are facing a three-body problem,” said Katarina Kompari, LL.M (UCL), Intellectual Property Legal Expert in the Legal Department and Team Leader of the GI reform team and the Knowledge Circle for GIs and Collective rights, EUIPO.

She introduced the new Regulation on craft and industrial products and set out how the EUIPO is preparing for its introduction in December 2025: “We’re building a new e-filing system and Union register and GIview will continue to be the single entry point to all GI rights registered in the EU.”

Ms Kompari also explained the different types of procedures for GI registration – standard, direct and third country.

Pilar Montero - Commercial Law Professor, Director IP and Digital Innovation Alicante Master-Magister LVCENTINVS UA spoke about Broadening Protection in Geographical Indications Law. She explained that the EU General Court has interpreted “evocation” broadly in four cases to cover images, shapes and similar names. However, the term evocation is defined differently in the regulation on craft GIs and in the new regulation on agricultural GIs.

Can craft and agri GIs successfully meet the challenges of globalization? asked Dr Dev Gangjee - Professor of Intellectual Property Law at Oxford Law Faculty. For GIs to be successful, they need to travel, he said. But, according to WIPO statistics, there were some 22,000 global GIs in force in 2022 (excluding international agreements). “It’s not a very large number of GIs protected overseas. It’s not a problem in terms of numbers but it could be in terms of tricky issues,” he said.

These tricky issues include: scope of protection; how GIs are interpreted by national courts; oppositions and their reasoning; and prior trade marks (especially for non-agri GIs).

“Geographical elements are a hot topic in the case law,” said Virginia Melgar - Chairperson of the 5th Board of Appeal, EUIPO, who addressed the relationship between GIs, certification marks and collective marks.

She discussed the Halloumi cases and the Darjeeling case at the EU General Court. “We need to build case law,” she added. “Please also promote research on these topics!”

Collective marks registered in the EU include Platano de canarias and Chianti but some applications such as Madeira were refused for including a geographical element. Certification marks should not include geographical elements, but some have nevertheless been registered. These include Nepal tea and Vinagre de vinho do Porto.

Harmonization of trade mark and design law

The final panel of the conference was led by Mladen Vukmir - ECTA President.

In his presentation on Contributing to Trade Mark and Design Harmonization in the European Union: Trailblazing at the Boards of Appeal, Gordon Humphreys - President of Boards of Appeal ad interim, EUIPO discussed the interest in Board of Appeal case law, and how decisions are covered worldwide – helped by the fact that 70% are in English. “The eyes of the world are literally on us. If we strive to be a centre of excellence, we better make sure we walk the talk,” he said.

Quality decision making is timely, coherent, consistent, transparent and predictable – but some variation is inevitable due to the facts of cases, he said. Moreover, accepted principles may need to be departed from if they lead to illogical results: “But flexibility is not the same as a free for all. It’s a question of common sense.”

Consistency circles for certain matters have been established to promote consistency and have led to 18 published reports so far. Boards have also played a leading role in convergence programmes. “The principles they espouse dovetail with the Boards’ case law,” said Mr Humphreys.

Moreover, mediation was introduced in 2011 and conciliation in 2014 at no cost to users. Around 150 ADR cases have been conducted with a success rate of 70% so far, and this contributed to the establishment of the Mediation Centre last year. “Whether we’re trailblazing or harmonising, we strive to set the tone and provide the highest level of service possible,” he concluded.

Joana De Moura Oliveira - IP Specialist and Team Leader of the Convergence of Practices Team within the European Cooperation Service, EUIPO set out the recent common practices on The harmonisation of practice on bad faith (CP13) and public policy and morality (CP14).

These are two of 14 common practices adopted and implemented so far. CP13 was needed to clarify bad faith, which is not defined in the legislation and has led to diverse case law.

Regarding CP14, there was particular uncertainty about the difference/overlap between public policy and morality and the growth in the number of applications challenged under these grounds. CP14 sought to categories these cases and provide agreement. Both were recently published in 23 languages and will be implemented soon.

She described their implementation as “an important milestone in the trade mark landscape” that will deliver clarity and predictability, enhancing legal certainty and consistency in the EU. “The impact of convergence has been shown in the past, with surveys showing IP offices and users are 80% aligned in the implementation of common practices,” she said – adding that, if common practices need to be updated, they will.

Providing a judicial perspective, Prof. Dr. Volker Michael Jänich - Friedrich Schiller University Jena, Gerd Bucerius Chair of Civil Law with German and International Intellectual Property Law, Judge at the Thuringian Higher Regional Court (OLG) talked about defining quality at the appellate level.

What makes a high-quality decision? he asked. He emphasised the quality and correctness of judgments: only a correct decision is a good judgment. Criteria include speed, rate of overturning and consistency. But judicial independence is the natural enemy of consistency and cohesion. Measures to improve quality include specialisation and communication (ie panels of judges rather than single judges). “More judges make better law,” said Prof Jänich.

Finally, Dimitris Botis - Director of the Legal Department, EUIPO reflected on 10 years of the EUIPO Guidelines. They replaced the Manual and are driven by IP knowledge circles, which are teams of experts coordinated by the EUIPO legal service. “They function as think tanks” and comprise 98 experts from all areas of the Office, said Mr Botis.

Change may come from new laws, judgments, Board of Appeal decisions, as well as from consultations, common practices, quality controls and customer feedback. There is close cooperation between the legal service and the Boards of Appeal and the revision cycle lasts a year with the guidelines being adopted in the first quarter of each year.

“In the last 10 years, we have received almost 3,200 external comments, showing the interest of stakeholders,” said Mr Botis. The Office’s goals are legal compliance, predictability and coherence/consistency and the Guidelines support all of these. This has also resulted in positive customer feedback.

The conference concluded with a closing speech by Mr Humphreys and the presentation of a prize for the best question: this went to Antonios Baris of Stockholm University who asked a question about whether overlapping IP rights are problematic.

Photos by James Nurton

Posted by: Blog Administrator @ 17.48
Tags: IPCLC, EUIPO, General Court,
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THURSDAY, 2 MAY 2024
Webinar on IP Challenges in the Age of GenAI

The next MARQUES webinar will look at generative AI models and their impact on trade mark, design and copyright law, including the latest developments concerning liability for infringement under the EU AI Act. It will be on Wednesday 26 June from 14.00-15.00 CET.

The webinar is organised by the MARQUES Cyberspace Team and will cover the following topics:

  • Ownership issues from different IP rights perspective
  • IP infringement through training and use of generative AI models
  • Best practices for governance and compliance in the workplace
  • Practical considerations for businesses
  • Liability issues under the AI Act

The speakers are:

  • Liza Erazo, Erazo Munoz & Co, Member of the MARQUES Copyright Team
  • Güldeniz Dogan Alkan, Mehmet Gün, Member of the MARQUES Designs Team
  • Gabriele Engels, D Young & Co LLP, Chair of the MARQUES Cyberspace Team
  • Thomas Richter, Bauer Media Group, Member of the MARQUES Cyberspace Team

Registration is €50 (MARQUES members) or €100 (non-members). Find out more and register online on the MARQUES website here.

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WEDNESDAY, 1 MAY 2024
IP Case Law Conference 2024 – keynotes and copyright

The second day of this year’s IP Case Law Conference at EUIPO included two keynote speakers and three panel sessions, the first of which was on copyright issues.

Ms Eun-Joo Min – Director, WIPO Judicial Institute, gave a keynote address on intra-judicial connectivity in IP. She described the “mosaic of independent systems of territorial rights in each state applied by national or regional courts” and added: “Globalisation brings homogenisation of legal problems.”

For example, courts in Brazil, China, France, Japan and the US have all ruled on the Louboutin trade mark application for the red sole of a shoe.

Partly because decisions of a national court can have an impact on commercial relationships outside the territory, WIPO is seeing an increasing demand to facilitate judicial exchange and build judicial capacities.

It has a network of 3000 judges from 165 countries and focuses on three areas: judicial conferences, training programmes and understanding and/or citation of foreign judgments. “We need to be deliberate in building connections,” said Ms Min.

“Law does not exist in a vacuum. The system exists to serve trade,” said Myrtha Hurtado Rivas – General Counsel Brands, Marketing Properties, Licensing & Anti-counterfeiting at Société des Produits Nestlé in her keynote address. “If we fail to think about how they work in practice, laws will stay mute and not have the impact we wish for.”

Issues she highlighted included: lengthy procedures and legal uncertainty; the need to be supportive of all communities and individuals; sustainability; and the emergence of new players such as big online retailers. Ms Rivas said that these issues must be addressed by “collaboration, simplification and harmonisation”.

Copyright in flux

The first panel of the day focused on copyright in flux. Introducing the panel, leader Julie Samnadda – Member of the Legal Service European Commission, highlighted the impact of international law and agreements on EU case law, referring to the recent KaiKai case on design priority (C-382/21). She also mentioned sensitivities arising from EU member states’ treaty obligations, which may pre-date EU membership.

In her talk, Professor Dr Eleonora Rosati - Of Counsel at Bird & Bird, Professor of IP Law at Stockholm University, asked: Should the EU unify copyright laws? Her short answer was: Yes. “The direction of travel is towards unification of copyright laws," she said.

The question was already raised back in 1998 and it was addressed in Infopaq (Case C-5/08) as well as the Advocate General Opinion in the Amazon case (C-252/11). Most recently, there has been a proposal for a single business code for the EU.

“Unification will be unavoidable in the medium-term … If it feels premature, then codification of copyright laws might be the second-best solution,” she said. “We should have better laws for a future-proofed and better EU copyright system.”

Péter Lábody – Vice President, Hungarian Intellectual Property Office and researcher, Institute of Information Society spoke on The Copyright Register in Action. He noted that one-third of EU member states have a legal deposit system of some sort.

There are three general types of deposit systems worldwide: quasi compulsory registry (eg US), voluntary registry (EU countries) and factual registry (WIPO PROOF – no longer available). In Hungary, there are about 1,000 deposits a year compared to some 0.5 million annually in the US and 9 million in China.

Mr Lábody said that registration can provide more legal certainty, assist enforcement both at home and abroad, facilitate commercialisation and secure other intangible assets such as know how.

“The big game changer is the boom in AI creations,” he said. In particular, deposit systems could make it easier to opt out copyrighted works from AI training and support transparency requirements such as those in the EU AI Act. He added that blockchain and cloud technologies are also “game changers”.

The Vespa case in Italy was the subject of the presentation by Irene Calboli – Professor of Law, Texas A&M University School of Law, who said she had her first Vespa when she was 14. “This could be a very good case to clarify the idea of overlap between copyright and trade marks, and the definition of substantial value,” she said.

The dispute is between the trade mark holder Vespa and Chinese replicas. It led to judgments from the EU General Court and Italian Supreme Court last year. The question, said Professor Calboli, is: are substantial value and artistic value compatible or mutually exclusive? In other words: “Is it the Vespa shape that gives substantial value to the scooter or is it the reputation that the Vespa shape has acquired in many years that confers such value?”

Dr Anastasiia Kyrylenko – Postdoctoral Researcher at the Universidade Católica Portuguesa and IP Consultant elaborated on overlaps between copyright and trade marks. She noted that this topic has attracted attention, for example when Mickey Mouse came out of copyright protection.

Dr Kyrylenko cited examples of EU trade marks that are registered for copyrightable works, which she attributed partly to the lowering of the barrier for copyright work and partly to the removal of the graphical representation requirement in trade mark law, as well as the boom in merchandising.

“The issue is how do we treat works that go into the public domain when copyright expires?” she asked. Grounds of refusal relevant for such marks include lack of distinctiveness and public policy/morality (a trade mark application for the Mona Lisa was refused as was the Vigeland statue of a boy in Norway, which led to a judgment of the EFTA court E-5/16) as well as bad faith (the Banksy case and pending CJEU case C-17/24 CeramTec). “We may soon have some answers to these questions,” she said.

Photos provided by EUIPO

Posted by: Blog Administrator @ 09.09
Tags: IPCLC, EUIPO, General Court,
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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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