WIPO has published information on changes to the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement.

From 1 February 2020, these will become the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International registration of Marks.

The change indicates that the Protocol is the sole treaty governing international applications and registrations under the Madrid System.

WIPO highlights a change to the amended Rule 30, which simplifies renewal of international registrations:

For Contracting Parties that have declared for an individual fee per class, the renewal fee will be calculated taking into account only the number of classes for which protection has been granted.

The simplification means that holders of international registrations who have been granted partial protection and are appealing such decision will no longer be required to pay individual fees for classes that are not protected upon renewal. 

Consequently, item 4 of the renewal form MM11 and the corresponding option in e-Renewal will be removed because they will no longer be required. Item 4 was used to give instructions to renew the international registration for all the goods and services with respect to a Contracting Party where the mark had been only partially protected. The new MM11 form will be available for download as from February 1, 2020.

Where a designated Contracting Party, which has declared for an individual fee per class, informs in a further statement of a change in the goods and services protected, the next renewal fee in respect of that Contracting Party will be calculated in accordance with this further statement.

For more details, see Information Notice No 1/2020.

Look out for more analysis of these changes from the MARQUES International Trade Mark Law and Practice Team soon.

WIPO has announced that it has received 10 candidatures for the post of Director General.

The current Director General, Francis Gurry, is due to retire on 30 September this year after completing two six-year terms.

The 10 candidates are:

• Prof Adebambo Adewopo (Nigeria)
• Mr Marco Matías Alemán (Colombia)
• Mr Ivo Gagliuffi Piercechi (Peru)
• Dr Edward Kwakwa (Ghana)
• Mr Kenichiro Natsume (Japan)
• Mr Dámaso Pardo (Argentina)
• Mr Jüri Seilenthal (Estonia)
• Mr Daren Tang (Singapore)
• Ms Saule Tlevlessova (Republic of Kazakhstan)
• Ms WANG Binying (China)

Member states had until 30 December 2019 to propose candidates.

The WIPO Coordination Committee will meet on 5 and 6 March 2020 to nominate a candidate for appointment. This Committee comprises 83 WIPO member states.

The procedures for nomination and appointment state: “The nomination of a candidate for Director General should, if possible, be made by consensus. This will facilitate the appointment of the Director General by the General Assembly. However, it is recognized that voting will probably be a necessary means of building consensus for the nomination of a candidate. Efforts to nominate a candidate via consultations leading to consensus are welcome at any stage of the selection process, but such efforts should not unduly delay the decision-making process.”

In the last election, in 2008, there were 15 candidates and several rounds of voting. In the final round, Mr Gurry secured 42 votes and his rival Mr Jose Graça Aranha received 41.

Once nominated, the successful candidate will be appointed by the WIPO General Assembly, which meets on 7 and 8 May 2020.

The terms of outgoing Deputy Directors General and Assistant Directors General also expire on 30 September 2020.

The next Director General will be WIPO’s fifth, following Mr Georg Bodenhausen, Mr Arpad Bogsch, Dr Kamil Idris and Mr Gurry.

This year’s programme of Tuesday webinars hosted by the EUIPO Academy kicks off on 14 January with an overview of General Court and CJEU decisions of the trimester. The webinar is in English and runs from 10:00 am to 11:00 am (Spanish time).

Other webinars already scheduled include:

• 21 January: (1) New EUIPO Guidelines and (2) IPR-intensive industries and economic performance in the EU
• 28 January: (1) Likelihood of confusion and (2) Changes in the 12^th edition of the Locarno Classification
• 4 February: Case Law on Community Design
• 11 February: Absolute grounds for refusal – shape of goods
• 25 February: IPR and Video Games (Joint EUIPO-EPO Interactive Webinar)

All are free to join, and the recordings can be viewed soon after they take place. For more details about the topics, timings, speakers, languages and how to join, visit the EUIPO Academy Learning Portal.

The European Commission has published a new report on protection and enforcement of IP rights in third countries. The report identifies priority countries, split into three categories reflecting the scale and persistence of problems:

1. China
2. India, Indonesia, Russia, Turkey, Ukraine
3. Argentina, Brazil, Ecuador, Malaysia, Nigeria, Saudi Arabia and Thailand

The list reflects the fact that more than 80% of counterfeit and pirated goods seized by EU customs authorities come from China and Hong Kong.

The report also sets out actions the Commission has taken in the pat two years, including technical support, awareness-raising and training.

Industries that use IP intensively accounted for some 84 million European jobs and 45% of the total EU GDP in the period 2014 to 2016. 82% of EU exports were generated by industries intensively using intellectual property. In these sectors, the EU has a trade surplus of around 182 billion euros. An estimated 121 billion euros or 6.8% of all imports into the EU is counterfeit or pirated.

Launching the report, Commissioner for Trade Phil Hogan said:

Protecting intellectual property such as trade marks, patents, or geographical indications is critical for the EU’s economic growth and our ability to encourage innovation and stay competitive globally. As much as 82% of all EU exports is generated by sectors which depend on intellectual property. Infringements of intellectual property, including forced technology transfer, intellectual property theft, counterfeiting and piracy threaten hundreds of thousands of jobs in the EU every year. The information gathered in the report will enable us to become even more efficient in protecting EU firms and workers against intellectual property infringements like counterfeiting or copyright piracy.

Find out more and download the report here.

Roland Mallinson reviews a new book, The Confusion Test in European Trade Mark Law by Ilanah Fhima and Dev S Gangjee (published by Oxford University Press, price £125 and available here).

For its narrow subject matter, this book has nevertheless proved invaluable within less than a day of me owning a copy. My judge in a case heard the day after the book launch had, like me, read salient bits of the book and was referring to them during the hearing. The debate was certainly better informed and more interesting as a result (the decision is pending…). The book is well researched and well written. I can’t recommend it enough (that is unless you’re in a case against me, in which case it’s really not worth buying at all).

Many cases covered

In 254 pages, the authors have comprehensively distilled and catalogued approximately 100 CJEU cases, 250 General Court cases and 200 UK cases (court, UKIPO and Appointed Person decisions), as well as a handful of EUIPO and Board of Appeal decisions, all deciding likelihood of confusion (LOC) between two marks. The case index includes 40 German decisions, a few Belgian, French, Finnish, Irish, Italian, Dutch and Spanish ones (to give a spread around the EU), three from Switzerland and Norway (to cover off EEA/EFTA), four Australian cases and 12 US ones. That’s a lot of case law analysed in relation to just two sub-paragraphs of the relevant EU Regulation (Articles 8(1)(b) and 9(2)(b) of Regulation 2017/1001).

The book follows the formula adopted by at least the EU and UK tribunals when considering likelihood of confusion (LOC), namely:

• similarity of the marks (as sub-divided with sections on visual, aural and conceptual similarity);
• similarity of the goods/services (looking at each of the Canon factors in turn, including a detailed look at functional complementarity versus aesthetic necessity); and
• the global assessment of LOC (considering the merit and impact of accounting for the UK courts’ “a significant proportion of the relevant public” or the CJEU’s hypothetical “average consumer” within this test).

Weighing the factors

Each of these chapters give an overview and introduction that explains the origin and likely weight of the various factors to be considered. There are also chapters with a separate focus on composite marks (this is especially helpful and looks at partial identity and ‘figleaf’ marks, amongst other hot topics), distinctiveness (including discussions around spill over reputation and swamping) and non-traditional marks (also dealing with the tricky issue of identifying what is the defendant’s mark or sign in such cases). Timing of the LOC test also has its own chapter, with an incisive review of cases about initial interest (pre-sale) and post-sale confusion.

The authors start by noting that LOC has been a neglected subject: “under-analysed and under-studied”. This book does well to redress that, in particular seeking to explain the reasoning behind some cases (often where the non-specialist CJEU and General Court judges have not always done so clearly themselves). The writing is engaging and succinct. The headings are clear and it easy to find the cases to help build an argument for or against LOC. Despite the analytical steps and factors to consider in the LOC test being well established, the authors recognise that judges and tribunals have struggled to apply them and articulate their decisions without them appearing subjective and arbitrary. They point out where the law is uncertain and are critical of it when it’s at its most formalistic and doctrinal, e.g. where judicial practice errs too much towards ‘procedural economy’.

Interesting observations in the book include spotting that EUIPO Boards of Appeal consider similarity of the marks before goods/services, whereas the UKIPO deals with the latter first. The authors conclude that the UKIPO approach tends to lead to less finding of LOC. They have also picked up on the tendency for European tribunals to weigh up fewer of the known factors when comparing goods/services than when comparing marks/signs. Their analysis of the many General Court cases also concludes that distinctiveness of the senior mark seems to hold less sway as a factor before this tribunal.

A must-have

These and many other practical observations will make this and, no doubt, future editions of this book a must-have for the serious trade mark practitioner. Let’s hope the publishers make it available online soon. Later editions might also want to reflect the outcome of the current CP8, CP9 and CP11 EUIPO Convergence Programmes (CP3 and CP5 only seem to get a few mentions).

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

The next “Question the Trade Mark Judges” event, organised by MARQUES and the UCL Institute of Brand and Innovation Law, will be on 11 March 2020.

The three judges taking part in this event will be: Appointed Person Emma Himsworth QC, Judge Ian Forrester of the EU General Court and Lord Justice Arnold of the England and Wales Court of Appeal.

The event will take place at UCL from 6pm to 7.30pm and will be chaired by the Rt Hon Professor Sir Robin Jacob.

Registrants will be able to submit questions for the judges in advance.

Find out more on the dedicated page and see all forthcoming MARQUES events here.

The fee is £40 for a standard ticket, with various discounts available.

Read a report of the 2018 Question the Trade Mark Judges (pictured) on Class 46 here.

The European Observatory on Infringements of Intellectual Property Rights has published a new report titled “Licensing activities by SMEs: evidence from EU trade mark owners”.

The report suggests that 7.5% of SMEs owning EUTMs licensed them to others during the period 2013 to 2017 and that the estimated annual average revenue from licensing EUTMs is nearly €65,000 per firm, equivalent to 5.7% of the average turnover of European SMEs.

The Observatory summarises the aims of the report:

During recent years, EUIPO has published several studies highlighting the virtuous cycle between IP and economic performance, with a special focus on SMEs. This new study contributes to this narrative by examining the revenues that SMEs can derive from their EU Trade Marks by licensing them to other companies. The owner of an EUTM can use it to identify the goods or services produced, or it can grant permission to another company (licensee) to use the trade mark in exchange for an economic benefit. Trade mark licensing is thus one way to derive the economic benefit from the IPR. The report values a firm’s stock of EUTMs based on observable characteristics of a sample of SMEs that own EUTMs and license them to others

Read the Executive Summary (in English) or download the full report. And look out for more analysis of this report in the December issue of the HouseMARQUES newsletter.

Other recent reports

The Observatory also published two reports on 27 November:

• "Illegal IPTV in the European Union – Research on Online business models infringing Intellectual Property Rights – Phase 3" (read the press release)
• "Online copyright infringement in the European Union" (read the report)