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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
FRIDAY, 19 APRIL 2024
Chart on self-regulatory organisations updated

The MARQUES Unfair Competition Team has updated its chart on self-regulatory organisations to include a section on France.

The new section is authored by Alexandra Di Maggio of Novagraaf France, who is Chair of the Team. The project is led by Philippe Probst Fuhrer of Marbach & Partners in Switzerland.

The chart now covers Finland, France, Germany, Italy, Sweden, Switzerland, Turkey and the USA.

Its purpose is to provide corporate lawyers and attorneys with a practical, user-friendly overview of self-regulatory organisations for advertising and unfair competition matters.

With increasing digitalisation and globalisation of advertising and other business activities, it is increasingly important for businesses to familiarise themselves with self-regulation of advertising and other matters.

The chart covers advertising and unfair competition matters, but not consumer protection matters or industry-specific organisations.

The five questions for each jurisdiction encompass: existence and identity of self-regulatory organisations; matters handled; rules, eligible parties and fees; procedure; and penalties and enforceability.

The chart can be downloaded on the Team’s page on the MARQUES website (MARQUES log-in required).

Posted by: Blog Administrator @ 15.08
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FRIDAY, 12 APRIL 2024
World IP Day to focus on SDGs

The theme of this year’s World IP Day on 26 April is “IP and the SDGs: Building our common future with innovation and creativity.”

According to WIPO: “World IP Day 2024 is an opportunity to explore how IP encourages and can amplify the innovative and creative solutions that are so crucial to building our common future.”

The 17 SDGs (Sustainable Development Goals) cover social, economic and environmental sustainability. This year’s World IP Day aims to highlight how IP fosters innovation and creativity to drive human progress in a sustainable manner.

WIPO’s dedicated World IP Day website includes a Changemakers’ Gallery, celebrating people who are building a sustainable future, as well as social media materials, events calendar, resources, FAQs and more.

There is also a youth video competition, with 20 videos from around the world. You can vote for up to five of the videos to choose the winner of the People’s Choice Prize. Voting is open until 23:59 on 21 April.

MARQUES fully supports World IP Day and the delivery of the SDGs. We have created a Sustainability Task Force to promote sustainability within the association (including by reducing waste, promoting recycling and raising awareness) and to share best practices between members.

Many of the MARQUES Teams also have ongoing projects relating to sustainability.

If you are organising an event or activity for World IP Day that would be of interest to MARQUES members, please share the details in the comments section below or email the MARQUES editor: editor@marques.org.

Posted by: Blog Administrator @ 14.44
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TUESDAY, 26 MARCH 2024
Question the Trade Mark Judges 2024

MARQUES and UCL-IBIL hosted the annual “Question the Trade Mark Judges” event in London on Wednesday 13 March with an in-person and online audience of trade mark lawyers, brand owners, professors and students. About 90 people attended in person and another 45 online.

The judges taking part were Deputy High Court Judge Douglas Campbell KC, High Court Judge Mr Justice Mellor, Virginia Melgar of the EUIPO Boards of Appeal and Allan James, Senior Hearing Officer at the UK IPO. The discussion was chaired by Professor Sir Robin Jacob.

Roland Mallinson, MARQUES Executive Board member, welcomed attendees and reminded the audience about the work of the MARQUES Amicus Curiae Team. He encouraged parties looking for support from MARQUES in both EU and national cases to approach him or the Team as early as possible.

The questions addressed by the judges covered various issues affecting both EU and national cases, and generated plenty of discussion between the panel and the audience.

Being a judge

Several questions touched on the experience of being a judge, including how it is being changed by technology.

The first question concerned whether judges enjoy their cases being reported and whether they welcome public scrutiny. The panel noted that IP decisions often generate debate, which is welcome, but it is not possible for judges to engage in that debate and maybe a policy is needed. Allan James noted that it can be infuriating when parties say more to the media than they did to the tribunal, or highlight points that were simply not raised in the litigation. In general, judge have to try to stay above the fray and not be distracted by publicity.

In response to another question, the panel discussed the process of deciding and writing judgments. They acknowledged that there are cases where they have changed their mind when they started writing the judgment or reviewing the evidence.

They also explained how judges can learn from each other. At the UK IPO, said Allan James, there is a peer review process whereby hearing officers can point out inconsistencies. At the High Court, judges may pop in to each other’s offices to discuss general concepts, particularly in areas they are less familiar with.

At EUIPO, Boards sit in panels of three but Virginia Melgar said that it is not uncommon for members to check cultural or linguistic concepts with other colleagues, given that the Office is working in 23 languages and covering 27 countries. In one case that concerned a Finnish region, for example, she consulted a Finnish colleague.

The impact of AI on judges and parties is an important issue. Virginia Melgar said the EUIPO has created a technology watch group, with all services represented including the Boards of Appeal. One thing she has already seen is submissions that are clearly generated by AI and/or machine translation, which sometimes include obvious errors (such as referring to the “Board” as the “Senate”). While AI can be used to make decisions better, it needs to be under human control, she said.

Douglas Campbell KC pointed out that AI can be useful in triaging incoming cases to ensure the right time is allocated, but Mr Justice Mellor noted that parties using AI can be dangerous – and if people use generative AI in submissions they should expect them to be rejected.

Substantive issues

The judges also addressed several current substantive issues in trade mark law.

There was an interesting discussion about the role of post-sale confusion. The panel agreed that it is part of the law, even if the law has come quite a long way from protecting the essential function of a trade mark: if there is confusion, even post-sale, that can still be damaging to brands. But the panel agreed that it should not be allowed to lead to more speculative arguments.

Can you be too famous to be confusing? This was a question raised in the Picasso v Picaro case and which has been causing brand owners some concern. The panel agreed this was a difficult issue because, as Virginia said, the CJEU has taken two different positions on family names, and the Boards can follow either one. Some members of the panel were sceptical about the neutralization doctrine, which can mean for example that conceptual similarities override other aspects to dictate the outcome on similarity, even before a consideration of the likelihood of confusion.

One tricky question the judges all identified was defining the average consumer in trade mark cases, for example where there is more than one relevant group of consumers. They are also aware that parties may want the relevant consumer to be narrowly defined for proving reputation or acquired distinctiveness but construed more broadly when enforcing the marks (to avoid a higher level of attention being applied to a specialist market). For example, is the relevant consumer for a trade mark for a car all consumers or just car buyers?

Practical questions

The practical issues addressed by the judges included interim injunctions, evidence such as social media and surveys, and behavioural science.

The panel and audience suggested various reasons why there are few applications for interim injunctions today. These included: fewer pirates, more sophisticated analysis at the interim stage, expense, lack of commercial need, the impact of speedy trials, and unpredictability. It was noted that interim interdicts in Scotland can now cover the whole UK (that had been in doubt before), but the process of recovering costs in such cases was not as streamlined as in the English and Welsh courts.

This topic raised the question of how to reduce litigation costs in England and Wales. Mr Justice Mellor said ultimately reducing cost is the responsibility of the parties and there are opportunities available to them, including the new £500,000 cost cap for patent cases in the High Court. Reference was also made to the IPEC Small Claims Track option, where injunctions can be granted at hearings before specialist IP judges, but compensation awards are capped at £10,000 and no (or very limited) costs are awarded against the loser.

Social media is now a routine part of evidence, but can create a lot of noise. For example, just claiming to have a certain number of followers is not useful unless the party can show where they are and why they are relevant. It is no substitute for market share or turnover evidence, said Allan James. However, social media can provide useful information on dates and origin.

EUIPO also takes a sceptical approach to social media, particularly if it is used to show proof of reputation. A recent example was a multimedia trade mark application by Salt Bee based on acquired distinctiveness, which claimed 14 million viewers but lacked information on the date and location of the views.

Surveys are also treated with caution, especially when it comes to likelihood of confusion – though as Douglas Campbell KC said, clients like them even if the courts sometimes view them as useless.

The final question was whether the courts need to take more account of behavioural science, particularly regarding colour/shape/packaging marks and lookalikes. This prompted a lot of discussion among the panel and audience about whether the courts place too much emphasis on just the brand name and not enough on other aspects of branding, including colour and shape. This discussion continued during the rest of the evening over drinks.

Posted by: Blog Administrator @ 20.58
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TUESDAY, 19 MARCH 2024
Madrid filings fell in 2023

There were 64,200 international trade mark applications filed under the Madrid System in 2023, 7% fewer than in 2022, according to figures published by WIPO this month.

Applications dropped significantly from Germany (down 14%), Australia (-13.9%), Switzerland (-12.4%) and the US (-11.8%). But filings from China grew by 7.7% and those from the Republic of Korea by 2.9%.

Despite the fall in the number of applications, the US was still the number one origin of filing, with 10,987. It was followed by Germany, China, France and the UK.

The top applicant was once again L’Oréal with 199 applications, followed by BMW (which moved up 33 places and had 124 applications), Euro Games Technology, Boehringer Ingelheim and Novartis. The highest-placed Asian filer was Shiseido Company, which was seventh, and the highest US company was Apple (10th).

Class 9 was the most popular class, accounting for 11% of applications, followed by class 35 (8.8%) and class 42 (8.1%).

WIPO has also published data on the PCT and Hague systems in 2023. Read more on WIPO’s website here.

Photo shows WIPO headquarters in Geneva

Posted by: Blog Administrator @ 08.34
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WEDNESDAY, 13 MARCH 2024
Webinar on advertising slogans

Members of the MARQUES Famous and Well Known Marks Team hosted a webinar on advertising slogans on 28 February.

Introducing the discussion, Juan Carlos Durand Grahammer of Durand Abogados, Peru noted that, while in principle registrable as trade marks, slogans can face problems based on descriptiveness or lack of distinctiveness.

This has led to questions such as whether there should be special forms of protection, different terms of protection or alternative means of resolving disputes.

Giving a US perspective, Robert Horowitz of Baker & Hostetler LLP said that some slogans, including The Ultimate Driving Machine, We try harder, Just do it and Because you’re worth it, have been registered at the USPTO while others (including Intelligence of Things, Everybody vs Racism, Texas Love and Team Jesus) have been refused.

He highlighted the importance of dictionaries, including slang dictionaries, as well as internet searches, in assessing whether a slogan can be registered.

Providing an advertiser’s perspective, Rachel Krouse of WPP stressed the important role that slogans play in communication with consumers, and the need for exclusivity – and she distinguished between long-lasting brand taglines and short-term campaign slogans.

Rachel also discussed the impact of AI, the role of trade mark clearance, consumer focus groups and the role of corporate culture (and specifically the appetite for risk). She also said that the global stage and political/ethical sensitivities have to be considered, and emphasised the need for due diligence.

Finally, Monica Davò of Italy’s Institute for Advertising Self-Regulation and Elisabetta Mina of CARNELUTTI Law Firm discussed Italy’s self-regulation regime, which provides for a binding decision from a jury comprising academics, lawyers and marketing experts.

There were several questions from the audience, in particular about the Italian procedure and outcomes of cases.

If you registered for the webinar, you can access the resource pack on the MARQUES website here.

Posted by: Blog Administrator @ 15.56
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MONDAY, 11 MARCH 2024
Highlights from the MARQUES Spring Meeting

Kate Swaine gave the 10th Kay Uwe Jonas memorial lecture on the topic of “the future of the brand conversation” at the MARQUES Spring Meeting in Amsterdam last week.

Kate is a partner of Gowling WLG in London and a member of the MARQUES IP Emerging Issues Team.

In her speech, she noted that “at this moment in time the future feels very uncertain” due to socio/economic, geo-political, ideological, cultural and technological change and division.

“We are not the first to experience that and we will not be the last. What makes our current experience very different to those that came before us is the extent to which we and our clients, our companies, our brands are part of the conversation and have a role to play,” said Kate.

For example, she said a quick internet search revealed calls for boycotts of brands including Kellogg's, HP, McDonald’s, Bud Light, Zara, Target, Disney and Pepsi. This shows that brands have an important role to play and that they need to engage with consumers.

Kate quoted the writer and podcaster Adam Morgan, who argues that brands have become dull, and they need to work harder to stand out and be authentic.

“We have talked at length at MARQUES about green-washing, brand values, sustainability in packaging, and supply chains. Consumers want to understand the ethical and environmental credentials of the brands that they invest in. Consumer research commissioned by Quickfire Digital and Climbing Trees identified that four in five UK consumers (81%) will boycott apparel brands who do not prioritise sustainable fashion within the next two years,” she said.

This is shown by consumers’ desire for vintage, repurposed goods; traditional techniques; quality ingredients; and a social conscience. Examples of brands embracing these trends include Tony’s Chocolonely and Guinness, with its Nitrosurge pouring device.

The question for brand owners, said Kate, is: “How do you do it? How do you play an effective part in the brand conversation?” She offered five contributions to the conversation:

  1. Authenticity
  2. Story-telling
  3. Focus on the bridges not the river banks
  4. Listen to the conversation
  5. Be bold

Kate concluded: “Changing times deliver challenge but they also deliver opportunity to create something better. We all need to be part of that conversation.”

Read the text of Kate’s Kay Uwe Jonas lecture on the MARQUES website.

David Goldring Award

Also during the meeting, the David Goldring Volunteer Award was presented to Patricia McGovern of DFMG Solicitors in Ireland (right). Patricia is currently Chair of the MARQUES Dispute Resolution Team and has been part of several Teams and Annual Conferences during the past two decades.

Over 200 MARQUES Council and Team members attended the Spring Meeting, which also included a workshop on trade mark use.

Next year’s Spring Meeting will be held in Barcelona on 13 and 14 March.

Photos by Willem Leppink and James Nurton

 

Posted by: Blog Administrator @ 15.54
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THURSDAY, 7 MARCH 2024
Workshop on use at MARQUES Spring Meeting

More than 200 Council and Team members are taking part in the MARQUES Spring Meeting at the Hilton Amsterdam this week.

Today, the MARQUES Education Team hosted a workshop titled “To use or not to use… that is the question”. The panel comprising trade mark experts from the EU, US and UK discussed issues relating to use prior to filing, in the prosecution stage and post-registration.

The panel was chaired by Ehud Gabrieli and comprised Team members Sandra Muller, Howard Shire, Claudia Csaky, Daniela Paull, Graeme Murray, Charlotte Duly and Shane Smyth.

The wide-ranging discussion covered topics including:

  • The different approaches in the US, EU and UK in the courts and IP offices
  • When use (or, in certain jurisdictions) intent-to-use has to be demonstrated and how to do this
  • The impact of the Sky v SkyKick case concerning the breadth of use and bad faith in the EU and UK
  • When it is possible to raise use objections during prosecution or opposition
  • How to show intent to use in the United States, for example by having a domain name and active website
  • Black-and-white versus colour registrations
  • The opportunity to file series mark applications for a series of up to six marks in the UK
  • How to approach negotiations on limitations and the possibility of partial revocation
  • The time period for showing use post-registration and how use can be demonstrated
  • Where the burden of proof lies in non-use cancellation actions
  • Specific issues relating to use of UK comparable trade marks (derived from EUTMs)
  • Whether there are other forms of protection for well-known marks if they are cancelled for non-use
  • Issues arising from re-filing (evergreening)
  • Will token use suffice and what constitutes genuine use?

There were also several questions from the packed audience on the topics discussed.

The Spring Meeting continues today and tomorrow with Team meetings and presentations. Look out for further posts on the Class 46 blog.

Read more about the Spring Meeting programme on the MARQUES website here.

Posted by: Blog Administrator @ 12.11
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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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