You can now register for MARQUES Month – a series of online events taking place in September this year.

Find out more about the programme and view some video previews on the dedicated page on the MARQUES website.

MARQUES Chair Susie Harris says:

As you all know, we regrettably weren’t able to hold our Annual Conference in Stockholm as originally planned. However, we have been working hard to make sure that despite this we still have the opportunity to connect and stay updated on key topics and issues. MARQUES has put together a fantastic range of online sessions, with a focus on technology, for everyone to attend during MARQUES Month.

I encourage you to take a look at the full details on our dedicated webpage. You can see a list of all the events scheduled, starting with the opening and welcome on Tuesday 1 September and concluding on Friday 25 September. For example, we will examine the implication of the use of technology in music and gaming, as well as diving into the impact of sustainability and blockchain on your brands.

Having listened to concerns from members following the COVID-19 crisis, MARQUES has decided to waive the registration fees for all webinar events in 2020 for corporate members. MARQUES is also happy to extend this offer to corporates that have not yet become a MARQUES member, but who are considering doing so.

If you have colleagues and friends who you think would be interested in this offer, please contact Ingrid de Groot at ingrid.de.groot@marques.org  (fees and conditions subject to change).

To register, visit the MARQUES Month lobby and login. You can then select which sessions you would like to attend. You can also click on “Programme” to see details of all the sessions. Previews are available by visiting the “Auditorium”.

The China National Intellectual Property Administration (CNIPA) has published 38 rules on the criteria to determine trade mark infringement. These provide guidance on trade mark enforcement for authorities including the Administrations for Market Regulation.

They aim to standardise enforcement across the country and better protect the rights of trade mark holders. Until now, there had been inconsistency in the enforcement of trade marks under the Chinese Trademark Law.

The criteria were published on 15 June 2020.

Ms Haoyu Feng and Mr Tingxi Huo of the MARQUES China Team have published an article on the criteria, which is available for members to read on the China Team page here (MARQUES log in required). They have also prepared an English translation of the CNIPA Notice, which is available on the Team page.

The topics covered in the criteria, and discussed further in the article, include:

• Use of trade marks in the sense of the Trademark Law (including use in business and preparation for use) and what constitutes unauthorised use
• Same or similar goods and services under China’s classification system
• Identical or similar trade marks, including a broadened concept of identical trade marks and the factors to be considered in assessing similarity
• Likelihood of confusion, and the factors to be taken into account to assess it
• Deceptive practices employed by bad faith filers, including colour/black-and-white marks and the issue of gifts bearing others’ marks
• The clarification of the exemption for unknowing sale of infringing goods
• Conflict with design and copyright
• Repeated infringement within five years
• The importance of verifying opinions by rights holders

The criteria bring together experiences from the various enforcement agencies and should lead to greater consistency and predictability in both administrative and judicial cases.

Read the full analysis on the China Team page.

Roland Mallinson of the MARQUES Brexit Task Force provides an update on the latest developments.

The European Commission and EUIPO have published a revised notice to stakeholders on the withdrawal of the United Kingdom and EU rules in the field of EU trade marks and Community designs. It is available on the European Commission website here (PDF).

The notice largely reflects the content of the Withdrawal Agreement as previously reported by MARQUES.

The UK and EU continue to negotiate an agreement on a new partnership, which is set to enter into force after the transition period ends on 31 December 2020. The UK government has ruled out extending the transition period beyond that date.

The EUIPO’s paper is not and does not seek to be comprehensive. It omits, for example, the declaration made in the EUIPO’s FAQ of January 2018 that a UK prior right will be ignored in EUIPO opposition and cancellation decisions rendered after the transition period ends, even if that UK right was valid and enforceable against the later EU application when it was applied for.

As MARQUES has pointed out before, the legality of that approach is something the CJEU may be called upon to decide in due course.

IRs designating the EU

Readers may also like to know that the UKIPO has confirmed that International Registrations designating the EU will, if registered at the end of the transition period, only be split out to create a new national UK right.

That right will not be part of the IR bundle. This expands on point 2 of the EUIPO’s paper.

If the address for service for the IR is outside the EEA, that new right will need an address for service within the EEA to be given.

MARQUES is in discussions with the UK government to encourage it to continue its own work and to liaise with WIPO to allow the re-registration of these rights into the IR in the future.

Find all the MARQUES Brexit resources on the Brexit Task Force page.

The Mexican Patent and Trademark Office (IMPI) continues to update its electronic services and to provide options to trade mark and patent applicants and owners. These efforts are especially relevant during the current COVID-19 pandemic, as Laura Collada of the MARQUES International Trade Mark Law and Practice Team explains.

IMPI suspended deadlines and closed to the public by the end of March 2020. Only new applications submitted using the online filing system were possible. Since then, three significant electronic capabilities have been enabled.

In April 2020, IMPI allowed users to submit writs, responses to office actions, payments of grant and maintenance fees, etc for all patent and trade mark files which were originally submitted using the IMPI’s electronic system.

In May 2020, an electronic reception desk for trade marks was also launched. This service allows users to submit any action or document related to a trade mark file independently whether or not its prosecution was initiated on paper.

This month, IMPI launched a new tool for patents, utility models and industrial designs allowing the conversion from physical paper files to completely electronic files through a request to be performed on the IMPI’s platform. Unlike paper files, electronic files accept the submission of responses to office actions, voluntary amendments/writs, and payment of grant and maintenance fees at any time, including non-working days, such as the current ones in which deadlines are suspended due to the COVID-19 pandemic. The conversion takes from three to five days from the date of request to be accepted and, once authorised, it is irreversible.

The service is available to all patent, utility model and industrial design files either pending or granted provided the representative requesting the conversion is enabled by the IMPI’s directory to carry out electronic actions on behalf of applicants/owners.

It is important to highlight that even though all these e-services have been enabled during the current pandemic, they are not temporary, as they have been envisioned on a long-term basis.  

Laura Collada is a Partner of Dumont Bergman Bider & Co., S.C. and a member of the MARQUES International Trade Mark Law and Practice Team

A particularly egregious example of a scam invoice has been received by a MARQUES member (pictured right).

It was shared with the MARQUES Anti-Fraud Task Force, which alerted the Anti-Scam Network of which we are a part.

The problem of scam invoices being sent to trade mark owners and their representatives is something that MARQUES has been addressing, through the Task Force, for some time. But this latest invoice, which uses the official WIPO logo, is a particularly bold and misleading example.

MARQUES urges all members to be vigilant and report any misleading or fraudulent invoices received.

You can send anything suspicious in confidence to a member of the Task Force.

MARQUES is hosting a virtual round table on how brands respond to events such as the COVID-19 pandemic and the Black Lives Matter protests.

It will include speakers with a range of perspectives who will address topics such as: the effect of crises on brand value; filing and enforcement trends; the pros and cons of taking a political stand; and tips on managing your reputation. They will also discuss how different brands have reacted to recent events around the world.

The round table will take place on 25 June, starting at 4pm Central Europe time.

The speakers are:

• Mark Devaney - Clyde & Co LLP (Chair of the MARQUES Intellectual Asset Management Team)
• Marlou van de Braak - Heineken International B.V (Member of the MARQUES Famous & Well Known Marks Team)
• Catherine Farrelly, Frankfurt Kurnit Klein & Selz (Member of the MARQUES Brands and Marketing Team)
• Lydia Gobena, Fross Zelnick Lehrman & Zissu, PC (Chair of the MARQUES Famous & Well Known Marks Team)
• Robert Guthrie, Osborne Clarke (Chair of the MARQUES European Trade Mark Law and Practice Team)
• Alexander Fink, Kekst CNC

The virtual round table is free to members and €50 for non-members: you can register here.

A limited number of free places are available for non-member brand owners: if you are eligible, please email info@marques.org with your details to request a voucher.

A certificate of attendance will be issued to all those taking part after it has concluded.

This, the second part of Tove Graulund’s post on what makes the ideal trademark registration system, focuses on opposition procedures. To read the first part of this article, on the application process, click here.

Opposition procedure

When the application has been examined and the trade mark accepted for registration, the application is published for opposition purposes. Opposition should be administrative, i.e. run at the IP Office. There should be a two-month deadline for filing oppositions, and it should be possible to file an opposition and ask for another two months to gather evidence.

If there is an opposition, the applicant should be notified and given a two-month deadline to respond. The opposer should have the opportunity to file further arguments, and the applicant should be able to respond and have the final say, which would make it the opposition +3, all with a two-month term with possibilities for extensions. The Examiner would take a decision after the exchange, and both parties should have the opportunity to file an administrative appeal. If the opposition is refused, the application will proceed to registration.

Thus, the opposition should be post-examination and pre-registration.

When to have the opposition period?

Some Offices, notably in Latin America, publish an application before examination and will look at absolute grounds, relative grounds and oppositions in one go. I do not think that this is the best way to do things. The Examiner should do their job, and after that third parties should have their say.

It would be too much if third parties felt obliged to have to file opposition against applications for descriptive terms and other applications that would have been refused in the first examination. Some may say that it speeds up the examination time, but I believe that a trademark should not be registered quicker than six months.

About speed, unfortunately, there is a misunderstanding in some countries. Some countries such as Mexico have an opposition deadline of one month with no access to extension and where all arguments and evidence need to be put forward in the first and only writ. One month is too short, and I believe that brand owners would rather have more time and have quality than to have to rush through. I believe that this is true both as an applicant and an opposer.

I mention that the applicant must be notified of the opposition which to most will be obvious. However, some countries publish the opposition in the Official Journal without sending a message to the applicant who risks missing the deadline to respond which is clearly unsatisfactory. Undue speed is a curse, not a blessing.

Opposition before registration is logical to me, and many applicants will be confused by the fact that they are told that they have a registration and then they do not after all. In fact, some countries that had opposition post-registration and have changed back to pre-registration (this is true in Denmark, for example).

Certainty versus speed

As I said, speed is not a blessing. If brand owners had to make a choice between legal certainty and predictability versus efficiency, I am sure that they would choose the former.

The last point that I want to come back to is the six months registration time as a minimum which means a four-month examination time plus two-month opposition deadline. If you file your application with priority, you want to be able to file an opposition on time, and you do not want to have to file a cancellation action or risk having to go to Court to defend your prior right. I know that it may sound absurd, but a trade mark should not be registered before six months plus a couple of days.

Join the debate!

I know that we will continue to discuss what the best procedure is for years to come, and that a full harmonisation across the globe is far away. Everyone could just listen to me and it would be so much easier... On the other hand, I could be wrong, and I would love for us to have a debate!

By Tove Graulund of Graulund Consulting. Tove is a member of the International Trade Mark Law and Practice Team and a former Chair of MARQUES. Please post your comments and observations on these posts using the “Comment” button below.