Members of the MARQUES International Trade Mark Law and Practice Team are taking part in the Working Group on the Legal Development of the Madrid System for the International Registration of Marks this week.

The Team is represented by Chair Jessica Le Gros, as well as Tove Graulund, Gaving Stenton and Paola Tessarolo.

The meeting, which lasts from Monday to Wednesday, is in hybrid format and will deal with important topics such as the calculations of time limits to respond to provisional refusal and the reduction of dependency period for the basic mark.

The MARQUES team representatives will be advocating for the improvement of various aspects of the Madrid system to benefit brand owner uses of the IR system.

The topics and agenda can be found here.

We hope to include a report on the meeting in the next issue of HouseMARQUES, which will be available by the end of this month.

This year has been a notable one for MARQUES, with the hybrid Annual Conference, the launch of the Talking MARQUES podcast, lots of webinars and Corporate Focus Group Meetings and the introduction of the new Project Management Tool.

Read more about all of these in the MARQUES Highlights 2021, now available to read and download (PDF) on the MARQUES website here.

The publication includes summaries of external relations activities at WIPO, EUIPO, the European Commission and ICANN, as well as updates on initiatives relating to the CJEU, China and Brexit.

The backbone of MARQUES is the work of the Teams, and the Highlights list includes links to the papers and surveys published by the Teams during 2021.

Finally, it includes a preview of what’s planned for 2022, including the in-person Spring Team Meeting in Barcelona and Annual Conference in Madrid.

If you are not yet a member of MARQUES and would like to find out about joining, click here for more details about the benefits. New members are always welcome!

Trade mark filing rose by 13.7% in 2020, according to WIPO’s annual World Intellectual Property Indicators Report, which compiles data from 150 national and regional authorities.

Patent and design filings also grew, by 1.6% and 2% respectively.

In a statement, WIPO Director General Daren Tang said: “WIPO’s World Intellectual Property Indicators Report confirms that despite the deepest economic contraction in decades, intellectual property filings – a strong indicator of innovation – showed remarkable resilience during the pandemic.”

The Report found that the number of classes specified in trade mark applications rose from 15,130,000 in 2019 to 17,198,300 in 2020. An estimated 13.4 million trade mark applications were filed worldwide in 2020.

China’s IP Office accounted for about 9.3 million of the class count, followed by the USPTO (870,306), the Iranian Office (541,750), EUIPO (438,511) and the Office of India (424,583). Among offices that showed significant growth were those in Germany (12.2%) and Indonesia (44.3%).

Offices in Asia accounted for 71.8% of all trade mark filing activity during the year, compared to 14.7% in Europe, 5.9% in North America and 7.7% in other countries.

WIPO said the growth was driven by filings in products and services related to advertising and business management; pharmaceuticals; and surgical, medical and dental goods.

There were an estimated 64.4 million active trade mark registrations worldwide in 2020, up 11.2% on 2019. Nearly half of these (30.2 million) were in China.

The image shows the Report cover. Read more about the Report on WIPO’s website here.  

MARQUES is hosting two workshops on coexistence agreements, aimed at young IP practitioners.

The workshops will take place on Tuesday, 30 November at 11.00 CET and Monday, 6 December at 16.00 CET and each will last around 90 minutes. (Update on 8 November: The 30 November workshop is now SOLD OUT! Places are still available on 6 December.)

Participants will be presented with a hypothetical case study involving two brands and invited to discuss how to negotiate a coexistence agreement to benefit both of them.

The workshops will be led by Claire Lehr (Vice-Chair of the MARQUES Programming Team) of Edwin Coe LLP and Mark Hodgin (Member of MARQUES Council) of Mondelēz International. Magdalena Borucka of Taylor Wessing and Maarten Slaat of Specsavers will act as moderators during the group discussion sessions.

Participants are expected to actively engage in the workshop via their cameras and microphones and will be able to learn about and compare approaches to negotiating agreements, drawing on expertise from different sectors and jurisdictions.

The MARQUES coexistence agreement workshops are well established and popular programmes and provide practical information and insights that will be very useful for young IP practitioners, whether in-house or in private practice.

Please encourage your younger colleagues to consider registering to attend one of these webinars. Places are strictly limited to 20 participants and the registration fee is €100 (MARQUES members) or €135 (non-members). You can register for both webinars online now.

A new tool, WIPO IP Diagnostics, will be launched on 9 November.

WIPO IP Diagnostics is a free, comprehensive self-assessment tool to help small businesses identify their IP assets and determine how to protect, manage and leverage them to unlock new opportunities.

It comprises a questionnaire with sections asking questions on different IP topics (such as innovative products, trade marks, licensing, designs and internationalisation).

When you complete a section, a report will give you recommendations and further information on IP and business competitiveness.

A virtual event to launch the tool will be held at 1.30 pm CET on 9 November with interpretation in English, French and Spanish. The programme includes a presentation of the tool, reflections from some member states and the launch of an initiative with ICC Center of Entrepreneurship for using the tool for building business capacity.

You can register for the event here using the code KBT543EDS8.

The EUIPO has recently cancelled the figurative EUTM on the right for goods and services in Classes 9, 25 and 40, including printing services. The proprietor argued that the shape was an arbitrary element of an instant photo frame and, as such, associated with Polaroid. The Office, however, disagreed. It found that the mark did not enable consumers to identify the products as originating from a particular company. This Author represented the cancellation applicant in the proceedings, which involved not so simple questions regarding the registrability of simple geometric shapes (arguably) resembling the shape of a product.

Background of the case

In 2018, an application for a declaration of invalidity was filed against the contested mark. The cancellation applicant argued that the mark was devoid of distinctive character as it consisted of a simple geometric shape, Article 7(1)(b) of the EUTMR. Within the invalidity application, a number of additional grounds had been raised, including:

• Article 7(1)(a) EUTMR: the proprietor was not seeking protection for a specific sign but for an abstract concept of a border frame of instant photographs
• Article 7(1)(e)(ii) EUTMR: the shape at issue was merely functional for instant photographs as evidenced by expired patents held by the former Polaroid Corporation
• Article 59(1)(b) EUTMR: the contested mark was filed in bad faith as the proprietor's intention was to have a monopoly over a rather common feature of instant photographs to obstruct competitors in their business activities

The proprietor argued in defence that the picture frame had been subject of constant use and considerable investment. According to the proprietor, the picture frame had become iconic and represented the most valued asset of the proprietor's commercial strategy.

Decision of the Cancellation Division ("CD")

The CD exclusively examined the contested mark's distinctiveness (or lack thereof). It referred to the case law of the General Court, according to which a geometric shape that is excessively simple, such as a circle or rectangle, is not considered in itself capable of serving as an indication of commercial origin, unless it has acquired distinctiveness (see T-291/16, representation of two lines, paras. 29 and 30). Applying those principles to the present case, the CD found that the contested mark consisted of two basic geometric shapes which were not combined in any remarkable way. Commonplace labels and frames, held the CD, were often formed by similar shapes and consumers could not be expected to consider such shapes to be an indicator of the commercial origin.

The CD expressly rejected several of the defensive arguments raised by the proprietor:

• On one occasion, the proprietor admitted that the mark was a rather simple shape but it argued that the public associated the shape with Polaroid. However, if the public associated a simple geometric shape with products of a particular undertaking, confirmed the CD, it can only show that such a sign acquired distinctive character through its use, not that the sign is inherently distinctive.
• On another occasion, the proprietor claimed that the contested mark was not a simple repetition of two rectangles but constituted a creative arrangement of two differently proportioned rectangles. According to the CD, however, the contested mark did not contain a memorable and unusual feature (such as an optical illusion that was present in a different mark cited by the proprietor).
• Yet another time the proprietor argued that the mark had particular features that allowed it to be perceived as an indicator of commercial origin. But the proprietor did not specify what these features were, other than 'the white colour and specific proportions'. Neither a white background colour nor specific proportions could be considered, in the CD's view, a feature that gives a mark its distinctiveness.

Finally, the CD held that the contested mark had not acquired distinctiveness either. Many of the documents submitted by the proprietor contained references to the mark 'Polaroid' and contained an image of an instant photograph. However, photographs in a white frame, found the CD, did not constitute the contested mark. Said mark consisted of the combination of two rectangles, which were not present in any of these examples. The CD concurred with the cancellation applicant that the proprietor "cannot, on the one hand, argue that the mark is a sufficiently specific graphic representation and that it does not seek protection for an abstract concept of a frame, and on the other hand, submit documents showing photographs in a frame claiming that this is how the mark is used" (p. 18). Much less did these examples show use of the contested mark for the registered products in question (which notably did not include instant films).

Insofar as the documents showed the contested mark on the back of product packaging, among technical information about the product, the CD mused whether consumers really perceived the shape as a trade mark or merely as additional information, showing the format of the pictures, with the actual trade mark being 'Polaroid'. In any event, the presented yearly numbers of visitors of the website polaroid.com from the EU Member States were, in the words of the CD, "far from impressive" (p. 22). Nor were the sales numbers sufficient to enable the CD to conclude that the contested mark has acquired distinctiveness. Finally, the CD was not swayed either by two surveys submitted by the proprietor. The first one was carried out among consumers in the UK, France, Germany and Spain – which is why the results of this survey could not be extrapolated to the remaining Member States. The second survey had other flaws. Whilst it covered more Member States (but still only one third of the relevant territory), the CD agreed with the cancellation applicant "that the series of questions asked in the survey are clearly leading the respondents to a particular answer" (p. 23). Overall, the CD concluded that the documents submitted by the proprietor, even considered in their entirety, did not conclusively prove that the contested mark acquired distinctiveness. As a result, the contested mark had to be cancelled, without a need for the CD to address the other grounds of invalidity raised.

The proprietor has filed an appeal against the CD's decision in this case (invalidity no. C 22041, appeal no. R1645/2021-4) as well as in a parallel proceeding regarding the same geometric shapes in a slightly different format (invalidity no. C 21308, appeal R1646/2021-4).

EU business can now find information on African IP matters, and address specific questions, through the Africa IP SME Helpdesk which was launched on 21 October as part of the EU-African SME Summit 2021.

Last year, the EU was Africa’s largest trade partner, accounting for 31% of Africa’s exports and 29% of imports.

The new Helpdesk will raise awareness on IP matters in Africa, with detailed information on national IP landscapes, case studies, training materials, and webinars.

The practical information on IP will help SMEs to better understand and protect their IP assets in Africa and support small and medium-sized enterprises in creating, protecting, utilising, administering, and enforcing IP rights across Africa, in line with international and European best practices.

In addition, EU SMEs will be able to submit their enquiries to the Helpdesk related to protecting their IP rights in Africa through a dedicated helpline service. IP experts will provide advice, respecting confidentiality, within three working days.

The Africa IP SME Helpdesk is established thanks to the support of the European Union and implemented by the EUIPO, through the Intellectual Property Rights & Innovation in Africa (AfrIPI) project.

Picture of EU-African SME Summit logo taken from its website.