On 7 March 2023, UCL-IBIL and MARQUES hosted the latest “Question the Trade Mark Judges” event. The Q&A panel discussion covered various timely issues in EU and UK trade mark law and procedure. Around 70 trade mark practitioners and UCL students (with a further 25 online) were given practical insights into the workings of the various tribunals represented by the panellists:

• Al Skilton, Senior Hearing Officer of the UK Intellectual Property Office;
• The Hon Mr Justice Meade, England and Wales High Court;
• Sven Sturmann, Chair of the Second Board of Appeal of the EU Intellectual Property Office; and
• Professor Dr Vesna Tomljenovic, Judge of the General Court of the EU.

The evening was hosted by Roland Mallinson, Partner of Taylor Wessing LLP and member of the MARQUES Executive Team, and Professor Sir Robin Jacob, the Chair of IP Law at UCL.

Thanks to Elena Glengarry and Fabio Lo Iacono of Taylor Wessing for providing the following summary of the discussion.

Specifications

The panel discussed the length and breadth of specifications of trade mark applications, in relation to a question directed at possible reforms to UK trade mark law with the potential 'sunsetting' of various provisions as a result of the Retained EU Law Bill.

While acknowledging that no significant overhauls should be made at the moment in the interests of keeping procedure intact, the judges noted that very long specifications make comparisons of goods and services more time consuming and complex for judges, so perhaps there could be new rules surrounding this.

They suggested that the EU could consider narrowing the non-use period, perhaps to three years, and consider bringing in ex-officio examination similar to the USA to try and combat overly broad protection.

Written submissions

The panel was asked whether written submissions are too long in trade mark cases they hear. They agreed that written submissions carry the most value when they are clearly structured and directed at the key issues, and are not repetitive. This was also supported in relation to skeleton arguments – they want representatives to wrap up the case briefly and concisely.

The importance of representatives using native speakers of languages to prepare written submissions was also highlighted – it is obvious to the EUIPO when representatives use automatic online translation services (such as Google Translate).

Rather than lengthy repetitions of earlier points, the panel welcomed the in-depth submissions that focus on the complex aspects of a case. To illustrate, one area that tends to consistently lack this is submissions on the comparisons of goods and services between a contested mark and the earlier right.

The judges emphasised the importance of backing up submissions with evidence to support a finding of similarity, for example where there has been evidence of a shift in attitude among consumers.

Online hearings

The judges were also asked if there is any need to go back to in-person hearings, considering that virtual hearings can save time and money. Online hearings can be more exhausting because the discussion can be difficult to moderate, and they require intense focus as the parties appear across multiple screens. Non-verbal communication and the subtleties in court are also missed; however the judges noted that online hearings did not seem to cause problems when assessing witnesses online.

Online hearings may also obstruct settlement between the parties because it is not possible to conduct negotiations "in the corridor". So overall, online can be satisfactory but not for important cases.

At the EU level, online hearings can be very practical as attending hearings in person in Luxemburg is expensive. However, it seems that most of the time oral hearings should not be requested in the first place, as usually the parties repeat what has been argued in the written submissions.

There is also the issue of adhering to the open justice principle and avoiding misuse of the video – a live feed of the online hearing may be appropriate in some cases, but English courts do not generally allow the public to record the hearings. A possible solution is asking the interested public to register to attend the hearing, so they can join with specific links, and access can be monitored.

The judges also noted that clear written submissions are also helpful if there is an audience at a hearing.

Reputed marks, judicial notice, proof of use

Building on the discussion of written submissions and defences to actions, the panel provided their views on proof of use and reputed trade marks. Particularly where a reputed mark is concerned, the panel agreed that evidence of proof of use is not always gathered well.

Owners should gather and submit as much evidence as possible, to avoid falling short and potentially failing to prove use, even where the mark is very famous in reality – such as the BIG MAC trade mark registration which was initially revoked for this reason (a decision that was reversed on appeal after further evidence was submitted).

Sir Robin asked whether judges should be permitted to take judicial notice of the fame of a trade mark, or whether you should always need to submit evidence. The UKIPO has taken notice of a mark’s fame before, but only in the clearest of circumstances.

The judges discussed having a register of marks with accepted well-known/reputed status, as happens in countries such as China, which could cut down on evidence costs, However, it would be difficult to determine where to draw the line in respect of the goods and services that mark is accepted to be famous for.

Such a system would not be procedurally useful if the status was contested by another party, and the judge would have to do the full analysis of evidence of reputation anyway. It is a difficult line to draw, but where possible parties should continue to refer to earlier decisions where they have successfully proved reputation.

Geographical names and weak marks

The panel discussed the recent Iceland case, where the EUIPO dismissed Iceland Foods' appeal against the cancellation of its EU trade mark registrations for ICELAND. The panel considered that such geographic marks can be allowed in certain circumstances, however they should generally be treated with caution. It was queried whether EU bodies should be much stricter in allowing their registration.

Building on this discussion, Sir Robin posed the question of whether we are too soft on allowing the registration of weakly distinctive trade marks in the EU and UK. The panel generally agreed with this, and also noted that now the General Court is trying to shape EU case law on this and prevent disparities in decisions by having specialised judges harmonise their approach.

The judges highlighted the complicating factor of there being 24 official languages in the EU, as well as other languages that are widely understood. Sometimes this makes it very difficult to avoid finding a likelihood of confusion. 

Artificial intelligence

The panel was asked to consider if artificial intelligence (AI) or virtual judges in trade mark cases could be a good thing to implement. The use of AI can be useful to triage trade mark cases when offices are experiencing high volumes; however this use should be restricted to simple tasks.

AI can also be useful for comparing long lists of goods and services and possibly for deciding on identity cases or simple similarity cases. This is because the AI may be better placed to have a consistent approach in assessing the likelihood of confusion with reference to relevant case law.

The judges noted that, in some cases, it is difficult to predict what the answer of the AI would be. For example, AI does not seem able to differentiate between figurative marks. As AI works with percentages, assessments based on balance of probabilities are more difficult and the AI may not make the best assessment in line with the relevant tests.

There are also problems of access to justice and audit to consider, so it may be premature to give a definitive answer on the use of AI in relation to more advanced cases. In general, a better understanding is needed of what AI really is.

Earlier rights

Another question raised was whether it could save time and money, without denying justice, to require opponents and claimants to rely on no more than two or three prior rights. The panel recognised that, most of the time, one or two earlier rights are enough.

The UKIPO already limits the number to six in normal oppositions and three in fast-track oppositions. The EUIPO does not have a similar system and introducing new rules to limit the number of earlier rights would need to be done carefully.

There might be some benefits in including all the earlier rights, even if it does make the assessment more detailed for the Office. This is because the opponent has more options if alternative grounds fail.

MARQUES hosts Meet the Judges events in various countries and is currently planning further meetings. For more details, view the Events page. The photos in this post were taken by MARQUES

Jürg Simon, Chair of the MARQUES GI Team, reports on a recent decision in favour of the appellation Champagne in Switzerland.

The Swiss Federal Supreme Court decided on the dispute about "Commune de Champagne PDO" in two judgments dated 23 December 2022 and 22 March 2022.

The Canton de Vaud had introduced, in January 2021, a protected designation of origin (PDO) "Commune de Champagne" for still white wines of the Chasselas grape grown in the municipality of Champagne.

The Comité interprofessionnel du vin de Champagne CIVC challenged this legal act before the Constitutional Court of the Canton Vaud.

Court judgment

The Court agreed with the CIVC (judgment of 1 April 1 2021) that this new PDO contradicted the exclusive protection for the appellation "Champagne" for wines originating from France granted explicitly by Switzerland’s bilateral agreement of 1999 with the European Union on trade in agricultural products.

The Court ruled in essence that it cannot be assumed that the reference to the TRIPS Agreement of the WTO in the bilateral agreement would allow the homonymy exception of the TRIPS Agreement to be invoked successfully in all cases, since the text of Article 23 paragraph 3 of the TRIPS agreement leaves WTO Members a certain margin of appreciation as to the modalities for granting this homonymy exception.

Furthermore, the Swiss authorities had already accepted the validity of the exclusive protection of the appellation "Champagne", notwithstanding the homonymy with the municipality.

In a decision of 2 June 2016, the Federal Department of Finance had decided that the TRIPS Agreement did not render the 1999 bilateral agreement unlawful with respect to the absolute protection of the French appellation "Champagne".

Constitutional Court

The Constitutional Court reached the same conclusion. The bilateral agreement provides for a strict regime for the appellation "Champagne", which excludes the homonymy exception for wines originating from the municipality of Champagne.

A Swiss regulation – in this case cantonal, given that appellations of origin of wines are cantonal, not federal law in Switzerland – that has the effect of overriding the exclusive protection of the appellation "Champagne" resulting from the bilateral agreement violates international law.

The appeals to the Swiss Supreme Court of the Canton de Vaud (22 March 2022), the Commune de Champagne and the Communauté de la vigne et du vin de la Commune de Champagne (23 December 2022) were rejected or not dealt with for fundamental procedural reasons. Links are here and here.

This decision concludes the dispute about the Champagne PDO in Switzerland.

Jürg Simon is Chair of the MARQUES GI Team and a Partner of Lenz & Staehelin in Zurich. He represented the CIVC in this case.

Picture of Champagne taken from Wikipedia.

Peter Wild, a long-time MARQUES Council and Team member, gave the Kay Uwe Jonas Memorial Lecture at the MARQUES Spring Meeting in Frankfurt last week and was also presented with the David Goldring Volunteer Award.

During some 20 years of service to MARQUES, Peter was Chair of the Programming Team and Vice-Chair of the Dispute Resolution Team. Among his achievements were the launch of the Luxury Brands Symposium, which has now been held three times.

Since retiring from IP practice last year, Peter has focused on charity work and fundraising, and is now a member of the Council of Human Rights Watch in London. In the Kay Uwe Jonas lecture, he spoke about “dignity, fairness and freedom” in the law.

In the lecture, Peter identified four main ways that IP and human rights interact: (1) IP rights as rights to property, for example in Article 17(2) of the EU Charter of Fundamental Rights; (2) potential tensions between protection of IP rights and free speech defences, such as in recent NFT cases; (3) human rights issues in supply chains of branded products; and (4) in the reliance on independent justice and due process.

“These aspects come under pressure and we need to stand up against the violations,” said Peter. But he added that standing up in this way “can be painful” and said: “We should put human rights on the list of our concerns and actions, and not abuse them for short-term gain.”

After the speech, Peter was presented with the David Goldring Award by Willem Leppink of the MARQUES Executive Team and Ingrid de Groot, MARQUES Internal Relations Officer (pictured left).

More than 150 MARQUES Council and Team members attended the Spring Meeting to discuss current and planned MARQUES activities and events. During the Meeting, Antony Douglass of Specsavers became MARQUES Chair, while Claudia Pappas of Thyssenkrupp became 1^st Vice-Chair and Leo Longauer of LVMH became 2^nd Vice-Chair (pictured right).

Look out for an interview with Antony about his plans and priorities as Chair, which will be available soon!

WIPO has announced that Brazil has joined the Hague System, bringing the number of countries covered to 96.

The government of Brazil deposited its instrument of accession to the 1999 Geneva Act on 13 February. The Act will enter into force in Brazil on 1 August 2023.

MARQUES welcomes the accession of Brazil, which is the largest economy in Latin America. It has a population of over 200 million and a GDP of $1.6 trillion.

Brazil’s instrument of accession includes the following declarations:

• Applications cannot be filed through the Brazil National Institute of Industrial Property
• One design (with up to 20 variants) can be included per application
• Indication of the creator of the design is mandatory
• Deferment of publication will not be possible
• Level two of standard designation fees will apply
• The maximum duration of protection is 25 years.

More information is available on WIPO’s website here.

A workshop on European convergence projects (CPs) and recent trade mark case law took place during the MARQUES Spring Meeting in Frankfurt today (2 March).

Johannes Fuhrmann of Bomhard IP, Augusto Drummond of Amazon and Marianna Karjanlahti-Perini of Waselius & Wist took part in the panel. It was moderated by Jana Bogatz of D Young & Co and organised by the MARQUES European Trade Mark Law and Practice Team.

Introducing the workshop, Jana highlighted the wide range of topics covered by the CPs, which aim to harmonise practices before IP offices in EU member states and other European countries. Trade mark topics addressed by the CPs have included classification issues, treatment of black-and-white marks, marks used in different form to registration, and new types of marks. There have also been three CPs on designs. MARQUES has taken part in several CP working groups alongside other user associations.

Most of the completed CPs have been implemented by most offices, but several projects are ongoing. The panel discussed two that MARQUES has been closely involved with and which are close to being finalised: CP13 and CP14.

CP13 Trade mark applications in bad faith

Johannes explained that CP13 covers every aspect of bad faith, and is based heavily on case law. Two facets in particular that have been identified are misappropriation of the rights of third parties and abuse of the trade mark system. “These bad faith cases are very evidence-heavy and always different so you have to look at all the circumstances,” said Johannes.

He distinguished between mandatory factors for bad faith (the applicant’s dishonest intention) and non-mandatory factors (including the applicant’s presumed knowledge, goods and services at issues, chronology of events, previous behaviour of applicant, relationships between parties). (Interestingly, re-filing of applications was one of the least controversial topics as the working group agreed that it depended on the circumstances and re-filing should not automatically be regarded as bad faith.)

“We tried to identify the different bad faith scenarios to give guidance,” said Johannes. Five common situations were identified: parasitic behaviour, breach of fiduciary relationships, defensive registrations, re-fling and speculative purpose/leverage. MARQUES played an active part in providing feedback in the development of CP13, added Johannes: “It was very interesting and rewarding to see the user group listen to the user associations.”

CP14 Trade marks contrary to public policy/accepted principles of morality

“This is a controversial topic,” said Augusto, introducing CP14. Despite extensive case law, there is no agreed definition of trade marks which are contrary to public policy/morality under Article 4(1)(f) of the EU Trade Mark Directive. This is an absolute ground for refusal/invalidity.

The work on this CP started with an extensive questionnaire, derived from the case law and Advocate General opinions. “Based on this we had an initial definition of both concepts, but this changed during the discussions," said Augusto. In both cases, the definition eventually agreed on allowed for the concepts to change over time.

Augusto pointed out that approaches to these questions differed widely between member states, often based on cultural factors such as religious beliefs and free speech, so finding a consensus on definition was a good achievement. However, establishing principles and general criteria to help examiners was more difficult.

The final list of general criteria included different meanings of signs or addition of elements that change the meaning (eg Pussy with a cat device), transformation (skull-and-cross bones), misspelling, and the relevant public for the goods and services. Augusto invited the audience to vote on whether various marks should be accepted or refused – which led to some interesting discussion between panel and audience.

MARQUES favoured a liberal, business-friendly approach in the working group on the basis that bad taste is not the same as morality. By focusing on real business cases and building partnerships, Augusto said MARQUES was able to succeed on many important points.

Recent case law

In the final part of the workshop, Marianna discussed several recent judgments of the EU General Court:

• An invalidity case concerning NATURCAPS for dietary and dietary supplements versus NATURKAPS for pharmaceutical products (both in class 5). The Court found there was a clear distinction between dietary supplements and pharmaceutical products.
• The Standard case where evidence of advertising and marketing in the EU for services outside the EU were found to be acts of use of the mark (registered for services in class 43) within the EU. In this case, the General Court overturned the decision of the Board of Appeal.
• Three cases concerning disputes where it was argued that there was “use without due cause of the trade mark applied for [that] would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark” under Article 8(5), involving Puma, Rolex, and Marlboro. “The takeaway is you need to prove your claims,” said Marianna. “Hypothetical reasoning is not enough.”

The MARQUES Spring Meeting is taking place in Frankfurt this week, and is attended by MARQUES Council and Team members.

The Legal Affairs Committee of the European Parliament has unanimously adopted a draft negotiating mandate on legislation to introduce geographical indications to protect the names of local craft and industrial products, including porcelain, jewellery and textiles.

The European Commission published a proposal for a Regulation on non-agricultural products in April last year. The text must now be approved by the Parliament as a whole before it is confirmed.

The bill proposes that non-agricultural GI applications would be examined by national/local authorities and EUIPO would then decide on registration. MEPs also proposed that EUIPO would cover the registration for member states that are not willing to establish a national authority.

They also supported the use of electronic applications and assistance for micro-, small- and medium-sized enterprises (MSMEs).

In a statement, rapporteur Marion Walsmann said: “It is time to create an EU-wide mechanism to protect specific European local skills and traditions relating to craft and industrial products. We designed an efficient European mechanism with minimal administrative burden and made it particularly attractive for MSMEs, since they will benefit from an easier application process and lower fees. This new mechanism will not just help traditional products also from less-developed regions to become known, attract tourists and create jobs, but it will also make consumers more aware of them, ensure fair competition for producers and help them fight counterfeit products.”

For more information on GIs, please consult a member of the MARQUES GI Team.

The EUIPO and national IP offices have published the dates of the “IP for you” events to be held this year.

The events will be held online or in hybrid format. They will be led by experts from the EUIPO and national offices, who will answer questions and help users make the most of IP tools and services.

Registration is now open for the following events:

• Slovakia – 2 March
• Italy – 9 March
• France – 14 March
• Spain – 23 May
• Poland – 13 June
• Lithuania – 14 June
• Norway – 5 October
• Portugal – 7 November
• Latvia – 28 November
• Malta – 29 November

Further events are scheduled for later in the year in Cyprus, Finland, Bulgaria, Slovenia, Belgium, Hungary, the Czech Republic and Luxembourg, but registration is not yet open for these.

Registration links and more details are available on the EUIPO website.