A guest post for Class 46 by Jessica Le Gros and Tirasha Punjabutrachai on multi-class trade mark applications in Thailand:

Some Class 46 readers may already know that since July 2016, Thailand has adopted a multiple class application system as a result of its accession to the Madrid Protocol. Two years have passed but questions still remain as to whether the current multi-class application practice in Thailand fully benefits brand owners. This post aims to shed some light on the situation and highlight the current practice of multi-class applications in Thailand.

In many jurisdictions where multi-class applications are allowed, the practice of divisional applications plays a role and helps smooth over the difficulties encountered when a multi-class application faces a partial refusal. When certain classes of goods or services in a multi-class application face objections, including citation with third party prior applications/registrations, an applicant may choose to split off the remaining classes as a divisional application. In such a case, the divisional application will be treated as a child application separate from the original application (its parent) and it will mature to registration if no opposition is filed against it. There is no need to wait for prosecution of the objected classes or goods/services in the parent multi-class application.

Unlike the above practice, Thailand has instead chosen to allow applicants to drop the objected classes from the multi-class application so that such application can move forward for the non-objected classes. If the applicant does not remove the objected class(es) but decides to file an appeal against the objections to the Trademark Board, then they must bear in mind that the application is at risk of being rejected as a whole if the Trademark Board’s ruling is unfavourable. However, in dropping classes from an application, the applicants still have to approach and consult with the responsible registrar on a case-by-case basis, and within 60 days of receiving notice of the objection(s).

It appears that the lack of a divisional application option is a potential downside to the multi-class system in Thailand. A careful filing strategy is therefore always needed.

The MARQUES International Trade Mark Law & Practice Team monitors the availability and use of multi-class application systems and continues to support the use of a flexible prosecution practice allowing brand owners to appeal against refusals, withdraw non-compliant goods and services and divide applications where necessary. 

By Jessica Le Gros and Tirasha Punjabutrachai. Jessica is Head of Trade Marks at Baker McKenzie in London and a member of the MARQUES International Trade Mark Law & Practice Team. Tirasha is an Associate in the firm’s Bangkok office

MARQUES will host a Judges Meeting in Helsinki on Monday 26 November 2018. Booking is now available on the MARQUES website.

The programme will start at 9.30 and finish at 16.00 with drinks. There will be three sessions, focusing on (1) trade marks and unfair competition; (2) patents and utility models; and (3) procedural issues and questions.

The speakers are Market Court Judges Anne Ekblom-Wörlund, Jenni Ihalainen, Jussi Karttunen, Petri Rinkinen, Sami Myöhänen and Jaako Ritvala.

The full programme can be seen here.

The Meeting will be conducted in Finnish and registration is €390 (MARQUES members) or €450 (non-members).

Secure your place by registering online now.

Specialized public and particular crafting of the goods designated can actually do that.

The interdependence of the factors deciding likelihood of confusion was at the heart of Judgment No. 1078/2018 of the Athens Administrative Court of Appeal. The opposing party / appellant relied on its earlier word mark “UNITEK” registered in Class 5 for «anti-inflammatory pharmaceutical preparations” to stop registration of the identical word mark “UNITEK” filed in the neighbouring Class 10, in connection with “orthodontic devices, apparatus, tools and parts and fittings thereof”.

The Court noted that the later mark was addressed a specialized public, namely dental technicians and orthodontists and stressed that the goods designated were of so particular nature that they could not be of use to doctors in general, or even general practice dentists (this last one may be a stretch too far..). So, regardless of the fact that they may be offered in pharmacies, the goods compared are “completely different”, as anti-inflammatory medicines are addressed to doctors and patients, while orthodontic devices are addressed to dental technicians and orthodontists. The Court also explored the possibility of orthodontists having to use anti-inflammatory medicine, for their work, to conclude that, even in such case, orthodontists, as specialized proffessionals, would display a high level of attention in selecting goods. In the end the distance between anti-inflammatory medicine and orthodontic apparatus proved long enough to avert likelihood of confusion.

The Court rejected the argument or reputation of the earlier mark stating that it was not proven. This blogger understands that repute of the earlier mark was probably invoked also to close the gap between the goods designated.

By way of comment, this blogger sees a – difficult to argue with – seamless interpretation of the rules on confusing similarity. He does wonder however whether the issue of association was at play at all in this dispute; there is no sign of such argument having been put forward, based on the reading of the judgment. But would it, for example, matter to argue that the later mark could be perceived (by its own specialized public) as a token of “expansion” of the earlier mark’s owner’s activities from medicines to medical devices? Or maybe this too is a stretch… 

WIPO is inviting feedback on the prototype Global IP Platform Portal, which Class 46 readers might be interested in. 

A letter from WIPO explains more:

We would like to hear your thoughts about a new customer portal we are developing for all WIPO IP Services users. We are in the conceptualizing stage, and your feedback will help guide what the portal will ultimately offer you.

WIPO is developing this new portal to make your life easier: it will be a single point of entry to WIPO’s digital services, bringing together all the tools you use to manage your international patent, trademark and industrial design portfolios. It will also incorporate general services such as payment processing, IP database searching and classification tools.

We want to create a portal which offers you the features and functionality that will make a positive difference in the way you work.

A short, 3-minute video presentation provides an overview to the portal’s features, and a brief survey will allow you to share your feedback with us. It will only take 10 minutes to do both.

If you are interested in participating, please view the video and then take our online survey. All information you provide will be kept confidential.

The invitation is from John Sandage, Deputy Director General, Patents and Technology Sector; Binying Wang, Deputy Director General, Brands and Designs Sector; Ambi Sundaram, Assistant Director General, Administration and Management Sector; and Yo Takagi, Assistant Director General, Global Infrastructure Sector.

The EUIPO Academy is hosting the following webinars during October:

• Restitutio in integrum and continuation of proceedings (English, advanced level) – presented by Kate Hogan of ICLAD: 2 October from 10.00 am to 11.00 am.
• Geographical names pursuant to article 7(1)(c) EUTMR (English, advanced) – presented by Christoph Bartos of the Boards of Appeal: 9 October from 10.00 am to 11.00 am.
• Study on legislative measures related to online IPR infringements (English, advanced) – presented by Holger Kunz of the Observatory: 9 October, 11.30 am to 12 noon.
• Originalidad y Propiedad Intelectual ¿Ángel o demonio? (Spanish, advanced) – presented by Gabriel Marin of Clarke, Modet & Co – 16 October, 10.00 am to 11.00 am
• EDB for customs – NICE Classification and scope of protection (English, intermediate) – presented by Thom Kearley Clark , Operations Department – 16 October, 11.30 am to 12 noon
• EUIPO New Guidelines – Designs (English, advanced) presented by Stephane Hanne of ICLAD – 23 October from 1000 am to 10.30 am.
• Mediation and Conciliation (English, intermediate) presented by Gordon Humphreys of the Boards of Appeal – 23 October, 11.30 am to 12 noon
• Assessment of the deceptive character, Art. 7(1)(g) EUTMR (English, advanced) presented by Ruxandra Manea of the Boards of Appeal – 30 October, 10.00 am to 11.00 am.
• Case law database (English, intermediate) presented by a member of the Boards of Appeal – 30 October, 11.30 am to 12 noon.

Anyone interested can join any of the webinars. Find out more at the Academy’s Learning Portal.

Earlier this week, the UK government published a number of technical notices addressing what would happen in the event of no deal being agreed between the UK and EU before Brexit on 29 March 2019. These included notices dealing with all the main IP issues.

Roland Mallinson, chair of the MARQUES Brexit Task Force, summarises the main points for Class 46 readers, and sets out the MARQUES reaction:

The Chequers proposal of 7 July includes the prospect of a “common rulebook” for goods, a facilitated “combined” customs territory and joint jurisdiction, including the possibility of references to the CJEU by UK courts which would pay “due regard” to its decisions. All of that has the potential to be accommodated with the UK remaining part of some sort of harmonised (or nearly harmonised) trade mark, design and geographical indication system covering at least the UK and EU27 countries. This was proposed in the MARQUES position paper of 17 November 2017 and we will continue to press for that.

The fact that that the government White Paper of 12 July 2018 for the first time committed the UK, even in a no deal scenario, to establishing a geographical indication scheme shows a willingness to maintain alignment of the respective systems of brand protection. It was notable that this was the only reference to anything trade mark related within the White Paper. That indicates the significant the UK government has given to the issue. This is also welcomed by MARQUES.

The new technical notices on IP in the event on no deal, issued on 24 September, include little that has not already been publicly stated. There are still some helpful confirmations but also scope for uncertainty.

Trade marks and designs if there’s no Brexit deal

The paper confirms that EUTMs and RCDs will definitely be protected in the UK as a split-out “comparable” UK right immediately on Brexit. A UKIPO spokesperson had previously been quoted, in July, as saying this protection was contingent on a deal being reached. The UKIPO website had merely expressed this continuity of protection as something the government “aims to ensure”.

Now the position is more emphatic. It is irrespective of the EU27’s position on post-Brexit arrangements and it is good to see IP rights are not being used as a negotiating pawn in this respect.

However, the same UKIPO spokesperson had also said this protection would be “granted automatically and free of charge”. The fact that it would be free was also first indicated in a government parliamentary statement on 19 July.

However, this technical paper is more vague and says it “will be provided with minimal administrative burden”. That appears to be a step back from the position of it being automatic and free, as would be the preference of MARQUES. Anything else risks leaving SMEs and those not professionally represented possibly losing valuable trade mark and design rights in the UK for failing to take whatever “minimal” steps are needed.

It is confirmed that, even in a no deal scenario, EU applications pending at Brexit would need to be re-filed as UK applications in order to secure UK protection but, if this is done within nine months of Brexit, the original priority date can be preserved.

This is exactly as had been provisionally agreed between the UK and EU27 back in March and reflected in the last version of the draft Withdrawal Agreement. 

MARQUES had expressed reservations on that proposal then and its position remains that it would be preferable for pending EU applications to be split out into a comparable UK right once any EU objections or oppositions had been concluded at the EUIPO. Again, this would be on an automatic basis. That avoids absolute ground objections and opposition issues pending before the EUIPO being re-argued or re-litigated before the UKIPO. Instead, applicants and opponents alike now face the additional cost of having to deal with such issues all over again, perhaps after having spent considerable time and money dealing with the issues still pending before the EUIPO at the time of Brexit. It also risks opportunists filing new UK applications for some or all of the EUTMs pending at Brexit which do not get re-filed in the UK within the nine-month priority window. It creates a regrettable opportunity for trade mark squatting of brands owned by those perhaps least able and ready to defend themselves, namely those without professional representation.

Assuming the need to re-file in the UK, it means applicants may now want to accelerate any pending EUIPO prosecution matters to get their EU applications through before Brexit. Likewise parties to oppositions are likely to be engaging in delaying or acceleration tactics, including the lodging of hopeless appeals, so that applications either are or are not pending on Brexit. However, it needs to be remembered that such tactics will be ineffective if the Withdrawal Agreement is agreed and the 21-month transition period kicks in.

The position remains wholly unclear as regards international registrations designating the EU under the Madrid (for trade marks) and Hague (for designs) Conventions.

This is something the UK government needs to resolve with WIPO but there is no sign of that having progress yet. The note is effectively an expression of hope in this respect.

Likewise we are told vaguely that “provision will be made” regarding litigation pending before the UK courts where the claim is based on an EUTM or RCD.

Whilst the notice does not say so, it seems clear the UK comparable right could still be the subject of the court’s order but only for a UK-wide injunction. However, injunctions and compensation covering the EU27 presumably could not be granted by a UK court post-Brexit even if the litigation started pre-Brexit.

The notice is silent on and it remains to be resolved whether a UK appeal court can uphold post-Brexit a pan-EU injunction granted pre-Brexit by a UK first instance court.

Likewise, we do not know such an injunction would be enforceable in the EU27 and, in reciprocation, whether the UK courts will enforce in the UK a pre-Brexit granted pan-EU injunction issued by an EU27 national court but which was subject to appeal at the time of Brexit.

These and many others are points remain to be negotiated. The MARQUES position paper identified the scenarios to consider and it is hoped the respective UK and EU27 positions will be fully clarified as soon as possible. There will be many litigations and actions being contemplated right now where the outcome of those negotiations, or their anticipated outcome, will determine the immediate litigation strategy. 

MARQUES welcomes the clear statement that the UK will establish a system of “supplementary unregistered design right” which will be comparable to the unregistered Community design right.

This addresses future designs and is in addition to ensuring that UCDs valid at Brexit will have a comparable UK right created for the remaining duration of the UCD. Such protection has proved especially helpful for brand owners protecting new designs, including fashion lines and packaging get up.

The notice refers to UCDs for EU27 countries in future being valid only if the first publication of the design is in the EU27. It is as if this is a statement of the current law. However, whilst this has been the interpretation of the EU regulation by the German Supreme Court, there have been conflicting decisions around the EU and it remains a point for the CJEU to decide.

The notice adopts the same approach in respect of the supplementary UDR and it is stated that this new protection will only arise for designs first published in the UK. 

The regrettable net result of such an approach is to create an unfair dilemma for designers: either they first publish in the EU27 to benefit from the free pan-EU27-wide UCD or they first publish in the UK only to secure the new supplementary UDR. If that were to apply, it could be impossible for a designer to secure UDR protection in both the UK and the EU27. Ideally a negotiated outcome will allow first publication in either region to secure both types of rights or at least such entitlement when publication is in both regions simultaneously, e.g. online (which may also entail simultaneous publication outside the current EU).

The section on correspondence address indicates there will be no immediate requirement to have a UK address added to the UKIPO’s database for each of the UK comparable rights that will be created out of EUTMs and RCDs. MARQUES welcomes this as it ties in the with the need to minimise the administrative at the time of Brexit.

It seems likely a UK address will be needed if a step needs to be taken at the UKIPO, e.g. effecting renewal, recordal of a change of name, address or assignment, or defending an invalidity or revocation attack.

The notice makes reference to legal professional privilege attaching to communications with UK IP professionals as something derived from UK IP laws. It confirms that such privilege currently extends to professionals in EU27 countries who are qualified to act before the EUIPO and who are advising clients on UKIPO matters. However, nothing is said about whether that privilege will continue post-Brexit and it seems likely the UK government will be seeking to negotiate some reciprocity.

MARQUES is generally in favour of minimising disruption for brand owners, including any enforced change of long-standing representatives in either region when this could be avoided.

Exhaustion of intellectual property rights if there’s no Brexit deal

In a previous notice issued on 14 September 2018 and entitled How medicines, medical devices and clinical trials would be regulated if there’s no Brexit deal, it had already been stated that the UK “will unilaterally align to the EU/EEA exhaustion regime from Exit day to provide continuity in the immediate term for businesses and consumers and ensure that parallel imports of goods, such as pharmaceuticals, can continue from the EU/EEA”.

That has now been repeated in respect of all branded goods and this is welcomed by MARQUES, although this is only stated to be only for the “immediate term”. It is unclear what may happen in the medium to long term.

The notice makes express reference to TRIPS with the implication that this proposal complies with the UK’s obligations under Article 4 (Most-favoured Nation Treatment). Whether it is indeed compliant remains to be seen.

It is recognised that this is a unilateral declaration and it is uncertain if IP rights relating to goods first put on the market in the UK will be exhausted within the EEA. Assuming not, then parallel imports from the UK to the EEA could be blocked by holders of EUTMs and national rights in EU27 countries going forward.

Roland Mallinson is a partner of Taylor Wessing in London and a member of the MARQUES Council

In the final session of this year's Annual Conference, Carles Prat of Baker McKenzie reviewed the past year at the CJEU and EU General Court. He noted that the number of cases and judgdments seems to be levelling off, and said: “There is a certain shift in the topics that make their way up to the General Court from the fundamentals to more specific issues.”

He organised the past year’s cases into eight categories: geographical indications, procedure, evidence (before EUIPO), distinctive character and genuine use, non-registered signs (Article 8.4 EUTMR), exhaustion/free movement, absolute grounds and relative grounds.

Regarding GIs, he said: “Everyone is learning.” A key case last year was Scotch Whisky (C-44/17) concerning whether the use of “Glen” evokes Scotch whisky. The Court said “conceptual proximity” suffices, but Carles asked whether proximity is the same or different to similarity.

On procedure, Carles focused on Merck (C-231/16) on jurisdiction in a case brought in both Germany and the UK, which ruled that the German court could decline the UK portion. Does this affect the unitary character? he asked.

Cactus (C-501/15) concerned whether the use of a logo without the word mark was an alternation of distinctive character. The Court considered it to be use in an “abbreviated form”, and only a visual and conceptual (not phonetic) comparison was necessary.

The Kit Kat case (C-84/17, C-85/17 and C-95/17) addressed evidence and in particular what is “a substantial part of the public”. Carles said the Court made a distinction between the obligation to prove acquired distinctiveness in every part of the EU, and the means of evidence needed: “We need to rethink the way we produce evidence in these cases.”

Also on evidence, Puma (C-564/16) was a case where Puma relied on three earlier EUIPO decisions. The Court focused on the principle of “sound administration” and said the Office should have invited Puma to submit supplementary evidence.

Among a number of decisions on exhaustion, Carles focused on Schweppes (C-291/16), which concerned a mark with different ownership in the UK and Spain.

Red Bull (T-101/15 and T-102/15) was a case in which MARQUES intervened. The General Court felt that Red Bull’s grey and blue application for a mark was not sufficiently clear and precise to be registered, and the case is now before the CJEU.

Two cases on relative grounds were Turbo (T-210/17), which involved a finding of no likelihood of confusion between the TURBO and TRIPLE TURBO devices, due to sufficient differences in the graphical elements, and Messi (T-554/14) on likelihood of confusion between Massi and Messi. This was a victory for footballer Lionel Messi and Carles noted that his fame was key to the General Court’s decision: “If everyone knows something, you don’t need to prove it.”

Session chair Johannes Fuhrmann of Bomhard IP added one final case on procedural pitfalls, where the lawyer was also the party in the dispute. The General Court found this application was manifestly admissible. “They are very picky with formalities,” said Johannes.