The latest episode of the Talking MARRQUES podcast is now live!

This episode features Felipe Dannemann Lundgren of Dannemann Siemsen Bigler & Ipanema Moreira and Bence Bozoki of Mars in the UK. Both are members of the MARQUES Unfair Competition Team, which recently published the new edition of its Look-Alike Chart.

The Chart presents the law and practice on look-alike products in 47 jurisdictions, in a convenient table. It has been fully updated to include the latest developments and cases.

In the podcast, Felipe and Bence highlight how the Chart has evolved and why it is useful for brand owners and IP practitioners. They also look at how it might develop in future editions, and discuss some current issues and challenges regarding look-alikes.

The Look-Alike Chart is compiled and updated by members of the MARQUES Unfair Competition Team. It can be downloaded from the Team’s page on the website (MARQUES log-in required).

All 13 episodes of the Talking MARQUES podcast can be accessed on the MARQUES website and on Spotify. The next episode will be posted later this year.

There are a few places remaining at the fourth MARQUES Luxury Brands Symposium, which takes place at the Grand Hotel Baglioni in Florence, Italy on 20 and 21 October.

The Symposium will look at the various lives of a luxury brand, covering topics such as cross-over collaboration, sustainability and upcycling, and the Metaverse.

The programme includes five panel sessions, as well as a Champagne Reception and Dinner on the evening of 20 October and an Optional City Tour on the afternoon of 21 October.

Speakers include representatives of many luxury brands, including LVMH, Bulgari, Tommy Hilfiger, Blue of a Kind, Hatch & Stitch, Heineken, Red Bull, Guccio Gucci, as well as Christoph Bartos, Member of the Boards of Appeal and Head of the Examination Board of the EUTM Education Programme at EUIPO.

Like the previous editions of the Luxury Brands Symposium, this event is proving very popular with brand owners and trade mark practitioners. However, there are a few places left. You can find out more and register here.

Registration is €800 (MARQUES members) or €950 (non-members) and includes meals but excludes accommodation. Details of accommodation options are here.

On the final day of the 36^th MARQUES Annual Conference, two panels looked at trade mark cases at the CJEU and how courts in member states treat parasitic competition.

Four key topics at CJEU

The annual update of CJEU focused on four topics: weak marks, use of trade marks, residual reputation and problems in relation to an appeal to the CJEU.

“Weak marks is an extremely important topic,” said Sven Stürmann, EUIPO, Chair of the 2nd Board of Appeal. “We probably discuss it every week in our deliberations … it goes to the root of trade mark law.” He started by reviewing the 2012 F1 judgment (Case C-196/11): “Since then, there has been an important discussion about how this should be applied in daily practice.” This has led to two diverging trends – extensive (see Case T-35/21 ALLMAX NUTRITION and Case T-351/20 VITAL) and restrictive (Case T-602/19 NATURANOVE and Decision R 1758/2021-2 HAPPY OATS).

In his presentation, Egon Engin Deniz, CMS, Austria addressed the question whether refiling trade mark applications is abusive, following the MONOPOLY judgment (Case T-663/19) in which Hasbro’s re-filing was found to be in bad faith because the applicant sought to avoid having to prove use of the mark. “The concept of bad faith application is very wide… there is no limitation on grounds or reasons why a certain conduct is in bad faith," said Egon. He also discussed the impact of the SKYKICK case (Case C-371/18), which is currently before the UK Supreme Court, the ALCOLOCK judgment (Case C-340/17), and the PELIKAN decision (Case T-136/11).

On the use requirement, the spekers noticed a very recent decision on advertisements and offers for sale to EU consumers – Standard International Management (Case T-768/20). “In my strictly personal view, this decision risks undermining the trade mark system, and deserves further discussion,” said Sven. Other use cases discussed included Maxxus Group, Case C-183/21 and Ferrari Case C-720-2/18.

Spanish lawyer and long-time MARQUES member Carles Prat was presented with the David Goldring volunteer award on Thursday night.

Another topical issue is orphan brands and whether there are bad faith issues when an application is filed for an old mark belonging to a third party. This was addressed in the recent General Court judgment Nehera Case T-250/21, which set out a checklist for such cases. The outcome in this case was different to that in Simca Case C-327/12. The issue has also been addressed recently by the Austrian Supreme Court.

Finally, Sven asked: to appeal or not to appeal, following the introduction of Article 58a by the CJEU in 2019. So far only two appeals have been admitted while 140 have been rejected. “This gives a higher burden of responsibility to the Boards of Appeal. We take this responsibility very seriously,” said Sven, who noted that the Boards are holding more oral hearings. The two cases accepted are Case C-382/21, a designs case concerning priority of a patent, and Case C-801/21 Basmati, arising from an opposition based on an unregistered UK trade mark that was decided after Brexit. Sven said this case is “crucial” for many cases involving earlier rights.

The panel was chaired by Till Lampel, Harmsen Utescher, Germany.

Parasitic competition

Different national approaches to unfair competition were addressed in the first panel session today, with speakers from France, Germany and the UK.

Sascha Abrar, Löffel Abrar, Germany said that unfair competition including parasitic competition is regulated by the Act against Unfair Competition in Germany. By contrast, said Alexandra Dimaggio, Novagraaf, France, in France there is no specific law on unfair competition but she added “There is a broad possibility under the Civil Code covering a wide range of acts” and there is a distinction between unfair competition and parasitism: the former requires a risk of confusion while the latter does not.

“I have an easy job: in the UK, we don’t have unfair competition. Thank you and goodbye!” said Matthew Dick, D Young & Co LLP, UK. Referring to the L’Oréal v Bellure judgment, he commented: “The law of passing off has to work hard to come close to unfair competition.” However, Matthew added that there are recent signs of a “welcome expansion of the law” in the UK in some recent cases.

The panel discussed the principles of freedom of imitation and freedom of competition, and the possibility to have joint IP and unfair competition cases. Alexandra looked at the Ferrero v BMB case concerning boxes of coloured sweets, while Sascha highlighted the G-Star case over jean designs. They also looked at whether claims can be brought without showing an exclusive right.

Other cases discussed included those involving Lego bricks, water bottles, the Lindt bunny, Champagne bottles, electric guitars, the Henry vacuum cleaner, disinfecting wipes, Freddy jeans, and the Colin the caterpillar cake.

Wrapping up, moderator Antonio Murta Filho, Murta Goyanes Advogados, Brazil asked the panel if they would like to see any improvements in their legal systems with regard to parasitic competition. Sascha said the German provisions are sufficient, and Alexandra said the case law in France is satisfactory, but she asked: “Is there room for EU harmonisation?”

The Gala Dinner took place in the Palacio del Negralejo on Thursday evening, and was followed by dancing into the early hours.

The second update from the 36^th MARQUES Annual Conference covers panel sessions on deepfakes, avatars and other creatures and on branding alternative products.

Beyond reality

In today’s first session, Jimmy Klein, Diageo, Spain provided “a taste of the future”, explaining how brands are exploring virtual worlds and the Metaverse. “The Metaverse is not new. It is born out of gaming and there are many platforms, which are constantly being created,” he said, explaining that it is built on technologies including Blockchain, NFTs, platforms, crypto, wearables and headsets, and 5G.

There are 2.7 billion games players globally, their average game is 33 years old and 46% are female (according to data from 2020). So this new world requires new business and advertising models, said Jimmy: “What this means for brands is: gamification, world building, avatars and 3D, AR/VR and virtual and hybrid experiences.”

He provided several examples of how brands are exploring the Metaverse. For example, Diageo created a game for people to play while waiting in a bar while EE built a game enabling sports fans to play football virtually against others in the stadium. He said the secrets to success include: create inconceivable worlds; enhance and extend real experiences; participation means more than views; and award the curious.

MARQUES Chair Joachim Hofmann presented the Lewis Gaze Memorial Scholarship to Maria Delfina Momeño for her essay on the impact of artificial intelligence on trade mark law. The three previous winners of the Award were also present at this year’s Annual Conference.

"The question is not why or if, it is how and when. We just need to find the correct way of doing it – and lawyers play a key role in securing the brand, protecting the consumer and giving them a good experience,” said Jimmy.

Patrick Juarez Pennant, SAMY Alliance, Spain discussed brands, including fashion and beauty brands, which are already in the Metaverse on platforms such as Roblox and Fortnite, and the lessons they provide. “Brands need to be a part of the Metaverse …Today, being part of the Metaverse really works – because of the diversity and inclusion in tech. In four years, a brand must be in the Metaverse to reach their audience and generate revenue,” he said.

When it comes to monetising digital assets, Patrick recommended seeing what other brands are doing, finding the right platform, deciding on the best approach for your brand, defining the long-term strategy and keeping on building. “Metaverse will become a new normalised channel to interact with others. Brands need to learn about it now and adapt how they work,” he said.

Moderator Sofia Martinez-Almeida, Gomez-Acebo & Pombo, Spain, talked briefly about deep fakes and how they can be used by brands, highlighting the legal and other issue that arise. She shared examples including Cruzcampo’s deep fake advert using the Spanish star Lola Flores, which was very successful, and ads featuring Bruce Willis, Audrey Hepburn and Elvis Presley.

Wrapping up the panel, Raymond Klaassen, Digital Transformation Department, EUIPO, Spain presented EUIPO’s initiatives in AI, Blockchain and e-filing. These include the IP Register in Blockchain, which currently has four IP offices taking part and is expected to include all the EU offices by 2025. AI is being used by EUIPO in image processing, voice assistants/chatbots and comparison of goods and services.

Raymond also provided an update on the new EUTM Filing, which was activated on 1^st August this year. The old e-filing will be switched off in November, and the EUIPO website and User Area will also be revamped next year. He added that all web services will be made available as APIs. “I believe this is your way forward to work with us,” said Raymond.

Branding alternative products

Today’s second panel looked at sustainability in the food and drink and clothing and footwear sectors. Carolina Alvarez-Ossorio Speith, ECOALF, Spain described the damage being done to the environment and oceans by plastic bottles and other items. “Fashion is one of the most polluting industries in the world … If you’re not part of the solution, you’re part of the problem,” she said. ECOALF’s response has been to develop 500 recycled fabrics from waste products such as fishing nets, tyres and coffee. It uses the registered trade mark ECOALF BECAUSE THERE IS NO PLANET B on many of its products.

Carolina described the challenge of registering trade marks for ECOALF and ECOALF 1.0 up to 12 years ago, and successfully taking action against Primark’s use of BECAUSE THERE IS NO PLANET B on cheap children’s tee-shirts.

Rowena Tolley, Kilburn & Strode, UK, shared some research from Deloitte that shows how consumers prioritise sustainability and are demanding more information about sustainable brands. She identified three main challenges for alternative branding: the choice of name, and the risks of being descriptive or non-distinctive; the difficulty of enforcing marks that are weaker, as demonstrated by last year’s OATLY v PUREOATY case in the UK; and greenwashing.

“The authorities are increasingly cracking down on greenwashing … you need to be careful that you are genuinely what you claim to be,” said Rowena, who added: “Greenwashing is worse for a brand than not being sustainable in the first place … It can impact individual consumers, groups of consumers and authorities such as the UK’s ASA and CMA. “It’s up to us as lawyers to ask clients to check their claims.”

The annual Cultural Evening was held at the Casino de Madrid on Wednesday, and featured cuisine from all of Spain’s regions.

Rowena also highlighted sustainable branding initiatives from major brands such as Louis Vuitton and Nespresso, which has recently achieved B Corp certification, and the rise of the “sustainable stable” – the use of a house mark to highlight sustainability values by FMCG companies such as Unilever and Nestlé. Other interesting trends include fashion companies such as Nike and Levi’s advertising how to extend the life of products (potentially damaging their own sales) and business partnerships built around shared values. “Partnering with a sustainable brand can lend expertise and credibility,” said Rowena. “For trade mark attorneys, this raises questions such as: is there a new brand, or a brand moving into new goods and services? And who owns the IP in the brand?”

“It’s great when collaboration takes place if the vision is the same by both partners,” said Carolina. “Then you’re going for the same thing and you’re much more aligned.” Moderator Mark Devaney, Clyde & Co LLP, UAE, said it even affects service providers such as law firms: “We were recently asked by a client about our sustainability credentials and it’s going to become more common.”

Another key topic is third-party seals of approval, such as B Corporation certification. “It’s more than a certification, it’s a community,” said Carolina, adding: “It should become a standard.”

More than 900 people are attending the 36^th MARQUES Annual Conference, which is taking place in Madrid this week. Class 46 presents the first of three daily reports on the Conference sessions.

Impact of AI and Blockchain

Introducing the first panel session of this year’s MARQUES Annual Conference, on AI and Blockchain, moderator Peter Wild, Wildpeak Pte Ltd, said: “MARQUES has a tradition of focusing on solutions not problems.”

In his presentation on AI tools, Darren Meale, Simmons & Simmons, UK, asked: “Is AI better at trade marks than you?”, and answered: “Yes, sometimes.” Giving examples such as calculators and spell checkers, he said that super-fast and highly accurate AI can be amazing at some things such as sorting data and searching but terrible at others: “What we’re seeing at the moment is going straight to the algorithms, so you get search results much quicker, and the use of AI in image searching and policing infringements,” said Darren.

He also introduced Rocketeer, an AI tool which he has developed over the past eight years. It predicts the outcome of a likelihood of confusion dispute at EUIPO with 92% accuracy, along with explanations of its predictions. “AI can recall every case you ever teach it. We taught our AI the rule and the outcome of 11,000 decisions,” said Darren. “We all tend to overestimate our abilities. AI can do some parts of our job several thousand times faster and much better. But it cannot do certain parts of our job; the key is to understand what it can and can’t do and bring it into your team to supplement your human abilities.”

Speaking via videoconference, Michelle Tan, Zuellig Pharma, Singapore, described how Blockchain technology is being used in healthcare supply chains to identify counterfeits and secure data. “Blockchain technology is top of the list for trust, security, scalability, transparency and it is consensus-based,” she said.

Zuellig’s eZTracker app provides product authentication, cold chain monitoring, tracking of grey market products and auto-replenishment. It is already live in Asia and can be connected to all major cloud providers. Zuellig is also working with 13 global pharma companies and 17 other entities on PharmaLedger.

Advantages of eZTracker include access to e-product information and direct patient engagement. It can also generate data that can be shared with law enforcement. “We're using Blockchain to help safeguard healthcare in Asia,” said Michelle.

In his contribution, José Antonio Gil Celedonio, Director General, Spanish Patent and Trademark Office, Spain stressed the importance of “human intelligence over artificial intelligence” for IP offices. “Our duty is to serve our societies, and give users quality, cost efficiency and timely services,” he said, adding that AI tools must balance efficiency and the rule of law, and the right answers have not yet been identified: “AI solutions must be found at a European level and must be human-centric.”

However, he said Blockchain already has many potential applications in IP, for example in proving trade mark use and in fighting counterfeits: “We should open our procedures to include the use of Blockchain technologies by users.”

Mr Gil Celedonio also took part in the welcoming ceremony, where he emphasised the importance of users and public-private cooperation. “We must privilege a user-oriented approach … dialogue with users associations is key in the constant improvement of our always evolving services,” he said.

Input is particularly important as services to users will change, for example with digitisation and sustainability – two topics at the heart of this year’s Conference. “The economic contribution of trade mark and brand owners to growth should not be underestimated,” he said. But he also acknowledged that “turbulences have a clear impact on the trade mark field. The drop in trade mark applications is a reality.” This increases the importance of collaboration and improvements, such as the new simple and efficient invalidation/revocation system being introduced in Spain: “Our system is resilient enough to rebound when the situation improves.”

In his speech, José Luis Martínez-Almeida Navasqüés, Mayor of Madrid, welcomed everyone to the city and stressed the importance of intellectual property to businesses and society in Madrid, Spain and Europe.

MARQUES Chair Joachim Hofmann said the conference is partly about celebrating being back together in person for the first time in three years: “This is a special conference. Being able to see each other again is wonderful.”

Towards a digital jurisdiction

Today’s second session looked at moves towards digital jurisdiction, focusing on the emergence of electronic justice, how ADR is adapting to an online environment, and why brands and institutions need to adapt to meet changing consumer expectations.

Javier Fernández-Lasquetty, Elzaburu SLP, Spain kicked off the discussion by asking: What happens where we have hundreds of thousands of cases all over the world? He discussed the rise of “digital jurisdiction” including in the procedures offered by search engines, social networks and sales platforms – all of which have pros and cons. “The problem is the rules are based on the platform, not on the law,” said Javier Fernández.

There are now private platforms offering centralised ADR such as Kleros Court and Aragon Court, which involve user-based juries, he added: “If life is digital, justice should be digital (at least for some cases) … Maybe we have to take a step forward and have a digital jurisdiction managed by international associations, regaining jurisdiction that has been passed to private organisations.”

Leandro Toscano, Head of Business Development Unit, WIPO Arbitration and Mediation Centre in Switzerland, said the number of ADR cases has increased in recent years and “we see a trend towards more and more use of online tools” as well as use of multi-tiered dispute resolution clauses. The UDRP is entirely online, and more than 60 IP offices also provide online mediation/conciliation services.

He also referred to a recent report published by WIPO on B2B digital copyright and content-related disputes and the WIPO Expert Determination for User Uploaded Content Disputes, which is in the pilot phase.

But legal institutions have a lot of work to do in order to provide the simplicity, personalisation, speed and “gamification” that internet users expect, said Ricardo Pérez, Kantar, Spain. He pointed out that consumers today have an attention span of just eight seconds and evidence suggests only 3% of people remember adverts they have seen.

Ricardo said the key to growth is delivering a “great consumer experience” and being “human-centric”. He gave three tips on how to do this: think and act as a consumer not a brand, learn from other markets and brands, and do not confuse seriousness with professionalism.

The panel was moderated by Miguel Angel Medina, Elzaburu SLP, Spain.

Sustainability in the spotlight

The use of Blockchain also came up in today’s third session, moderated by Claire Lehr, Edwin Coe LLP, UK, which included two case studies of sustainable companies and analysis of sustainability trends.

Marianne van Keep, Verstegen Spices & Sauces B.V., The Netherlands, described how Verstegen aims to become the most sustainable spice company in the world. “It’s important for the company to be free of debt – not just financial debt, but debt to the world and the climate.” Its strategy is based around people, planet, profit and participation, and having fair and green supply chains.

This means paying attention to climate, child labour, the environment, polyculture and the SDGs. She stressed the importance of partnership and transparency: Verstegen uses a Blockchain tool to track agreements with farmers. “We want to have impact to make a difference,” she said. “We want to be climate-neutral historically – and we were founded in 1886 … Every company that is not sustainable will lose its licence to operate; we have to change and work together to achieve those ambitions.”

Maureen Shannon, of electric vehicle manufacturer Rivian Automotive, USA, brought the perspective of a company that is, as she said, “changing the SUV mindset” with its FOREVER mission. “We want to create products in a way that is responsible and allows us to sustain life on our planet,” she said. “It’s about We not Me.”

Rivian has 4,000 trade mark applications and registrations in almost 90 jurisdictions. “When we’re building the brand portfolio, we need to think through the lens of the future,” said Maureen. The sustainability strategy extends not just to the production of e-vehicles and infrastructure but also the components: vegan leather, sustainably sourced wood accessories and even sustainable apparel.

As part of its FOREVER Mission, Rivian also invests 1% of its equity into The Forever Fund to create new tools, technologies and materials to improve sustainability in every part of the driving experience – including the chassis, battery and charging, passenger experience and automated systems. “There’s a whole package involved from the beginning,” said Maureen.

“Sustainability will soon become part of norm setting,” said Marion Heathcote, Davies Collison Cave, Australia. “We’re now in the era of brand activism, and this is where sustainability is starting to have a real impact.” This means looking at environmental and social positions and brands becoming engaged in issues around sustainability.

This is not a passing trend and brands represents all the values of corporations, said Marion: “Brands are pillars of social responsibility … There’s an opportunity for brands to emerge as a stabilising force, and a force for good.” The question is: how to do that? Marion stressed the importance of goal setting, consumer engagement and responding to six sustainability trends: regenerative agriculture, blue carbon, the race to zero and beyond, climate risk is still investment risk, is biodiversity risk the new climate risk?, and the future of work is now.

Responding to external disruption

In today’s final session, there was an “Oprah-style” discussion between moderator Vuk Sekulić, MSA IP, Serbia; Myrtha Hurtado Rivas, Nestlé, Switzerland (formerly of Novartis); and Paola Piccoli, MF Brands Group, Switzerland about the impact of disruption on their work.

Myrtha described the sudden changes brought by the COVID-19 pandemic, including business disruption, changes to working practices, additional caring responsibilities and redundancy of certain roles. Paula identified six main challenges for her team: paperwork; lack of work tools at home; receiving and sending mail and parcels; use of bailiffs and notaries; access to shared servers; and the risk of loneliness – which has been the most difficult to handle. “Our team responded to the challenges with optimism and open-mindedness,” she said.

Among the changes introduced at MF Brands was the implementation of a brand enforcement database, virtual enforcement seminars, the introduction of electronic signatures, and the distribution of equipment such as screens.

“When things have to be done, they get done,” said Myrtha, but she added: “Despite all the tools that make it easy to communicate, you miss the spontaneous discussion with remote working. We have to figure out how we give people space to do that. One of the biggest challenges for us was how to onboard people during the pandemic.”

The speakers also discussed the pros and cons of digitisation, the growth of e-commerce, investigations, new counterfeiting challenges arising from the pandemic, changes to trade mark portfolios, virtual hearings and procedures at courts and IP offices, training authorities, solidarity initiatives and mental health awareness. “We support the IP system by filing trade marks and using the system,” said Myrtha, while Paula added: “We really tried to take the positives out of the situation.”

MARQUES is pleased to welcome over 900 people from 81 countries to the 36^th Annual Conference in Madrid this week.

If you are attending the Conference, you can find all the essential information including the programme of sessions and workshops on the dedicated page on the MARQUES website.

The conference is fully booked and no more places are available. It is being held at the Hotel Riu in central Madrid and will include a Welcome Reception, Cultural Evening and Gala Dinner Evening.

If you are not attending the Conference, look out for daily reports on the sessions on the Class 46 and Class 99 blogs. MARQUES will also post updates and photos on our social media channels, including LinkedIn, Facebook, Twitter and Instagram.

The Conference will conclude on Friday.

If you would like to contribute to the social media coverage of the Conference, please contact the MARQUES editor by email at editor@marques.org.

Class 46 is pleased to reproduce, with permission, this article from EUIPO’s August 2022 newsletter to user associations, concerning trade mark and design applications for virtual goods, non-fungible tokens and the Metaverse

The EUIPO has witnessed a recent increase in the number of EUTM applications covering goods such as virtual goods and non-fungible tokens (NFTs) with over 300 applications containing the term non-fungible tokens this year alone.

As these emerging technologies develop and become more popular as commercial spaces, they throw up novel issues in the sphere of IP protection.

A primary concern for individuals and companies who create IP for or within the Metaverse is how to effectively enforce IP rights there. This, in turn, raises the question of the best way register IP assets. As regards trade mark protection, many questions arise such as:

• Which goods and services should be protected when doing business in the Metaverse?
• How can virtual goods and NFTs goods and services be expressed clearly and precisely for classification purposes?
• How will these virtual goods and services be treated when it comes to the absolute grounds examination (i.e. what are they? what exactly do they do?)?
• What approach is right for the comparison of virtual goods and services in relative grounds proceedings?

Indeed, at this stage, there are still probably more questions than answers. There are certain areas, however, where the EUIPO is paving a way in a measured manner. As part of its ex officio checks it must take an approach on classification and absolute grounds. Approaches in other areas, such as inter partes, will develop in line with arguments and evidence provided by parties to the EUIPO. 

How to apply for the correct goods and service to be used in the Metaverse?

When it comes to the implications for IP practice at the EUIPO, the relevant IP Knowledge Circles (which gather experts across the departments) are tasked with giving guidance to examiners on particular cases where required and with developing approaches for consultation with stakeholders including user associations and national IP Offices in the consultation process for the Guidelines. (From 15 June to 3 October the Guidelines are open for comments from stakeholders.)

The approach to classification at the EUIPO that is currently applied places virtual goods in Class 9 because they are seen as recorded content or digital images. The fact that they may reference the corresponding real-world object virtual clothing for use in computer games, for example does not determine their classification. The term virtual goods itself, however, is not acceptable as such at the EUIPO because it lacks clarity and precision. It is necessary to state the content or image the virtual goods relate to, such as downloadable virtual goods, namely, digital art.

In light of the developments in this area, the Nice Classification will incorporate new goods. The term downloadable digital files authenticated by non-fungible tokens will be added to the alphabetical list for the 12th Edition, which will come into force in 2023. Non-fungible tokens are understood as a unique digital certificate, registered in a blockchain, that is used to record ownership of an asset such as an artwork or a collectible (Collins). Importantly, the term is not understood to mean the digital asset itself. Therefore, the term non-fungible tokens on its own will not be accepted for classification purposes as its meaning is not sufficiently clear and precise.

To help with all of these matters, the Office will also make efforts with its partners to introduce more relevant terms into the Harmonised Database.

How are these goods and services assessed in absolute grounds examination?

When it comes to how these goods will be treated for absolute grounds examination, the first question is what exactly are the goods being examined?

Some basic principles must be applied. For example, many virtual goods merely depict real-world goods or they may imitate real-world goods in a virtual setting (e.g. a virtual dress for an avatar). In either scenario, a key aspect of such virtual goods is that they emulate core concepts of real-world equivalents and the assessment of absolute grounds must take this into account. Consequently, a sign which amounts to no more than a banal representation of real-world goods would normally not be perceived by the consumer as an indication of commercial origin for equivalent virtual goods.

And in case of conflict

Questions have been asked about how the EUIPO will treat comparisons of ‘virtual products’ with real-world equivalents.

The EUIPO cannot take a position on these questions in the abstract. In relative grounds proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties (Article 95(1) EUTMR).

Future opponents will have to demonstrate why these goods are similar by setting out the Canon criteria and other factors that may be relevant to this assessment and future applicants will, of course, have the chance to rebut those arguments.

It is true that the similarity of the goods and services is a matter of law that must be assessed ex officio by the Office (even if the parties do not comment 16/01/2007, T-53/05, Calvo, EU:T:2007:7, § 59). Nevertheless, this ex officio examination is restricted to well-known facts. The novel situations here cannot be regarded as well-known facts (09/02/2011, T-222/09, Alpharen, EU:T:2011:36, § 31-32).

Designs

The Office has recommended that applicants provide a physical product indication for designs only intended for virtual environments in order to facilitate searches in the registered Community design databases. However, with a legislative reform on the horizon set to provide greater clarify for such designs, guidance may be better tailored to these technological developments.

Other areas

There are other areas where these new technological developments will require adjustments and analysis. For example, establishing jurisdiction where disputes relate to activities in the Metaverse, concepts of ‘use’ and how responsibility for infringement might be allocated between the various actors (i.e. the owners or controllers of the platforms versus those that use it in an infringing manner).

Things will undoubtedly become clearer as the courts deal with these issues in specific infringement scenarios based on concrete facts, arguments and rights.

Meanwhile, business would be well advised to review their IPR portfolios and identify possible shortcomings. In this respect, SMEs may take advantage of the Office’s SME Fund, which is a grant scheme designed to help EU small and medium-sized enterprises with their IP rights.

For more information, please contact: information@euipo.europa.eu

MARQUES thanks EUIPO, and specifically the User Associations Team, for granting permission to share this article. Read more about this topic here and here.