The new European Commission, headed by President Ursula von der Leyen (pictured), took office on 1 December 2019 for a period of five years.

There are 27 Commissioners, representing all the EU Member States apart from the UK. The UK has declined to appoint a commissioner due to Brexit and the General Election, prompting the Commission to launch infringement proceedings against the UK.

The Commissioners include the following, who might be of particular interest to IP practitioners:

• A Europe Fit for the Digital Age – Magrethe Vestager (Executive Vice-President)
• Trade – Phil Hogan
• Innovation, Research, Culture, Education and Youth – Mariya Gabriel
• Internal Market – Thierry Breton
• Justice – Didier Reynders

Among the stated aims of the von der Leyen Commission are the transition to a climate-neutral economy by 2050 and the presentation of an EU approach to artificial intelligence within 100 days.

A Colombian textile manufacturer, Coltejer, has deposited the 1.5 millionth international registration through the Madrid System.

The news was announced by WIPO on 26 November and comes as WIPO marks the 30^th anniversary of the Madrid Protocol.

“The Madrid System helps enterprises establish a market presence in a cost-effective manner - this is of critical importance in an increasingly global marketplace,” said WIPO Director General Francis Gurry. “This important milestone is a testament to the growing importance of the Madrid System and brands in international commerce.”

Andrés Berdugo Gómez, Director General of Coltejer, said: “The Madrid System is a great opportunity for companies at the global level to obtain recognition of their marks when entering new markets. The main advantage provided by the System is the reduction of costs for the protection of trademarks abroad.”

The Madrid System now has 106 members covering 122 countries. Canada, Brazil and Malaysia have all joined in 2019.

WIPO has announced that the European Union has become the fifth member of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. As the EU is the fifth member to join, the Act can now enter into force.

The WIPO announcement states:

Ambassador Terhi Hakala, Permanent Representative of Finland to the United Nations and other International Organizations in Geneva, deposited the EU instrument of accession with WIPO Director General Francis Gurry, in the presence EU Commissioner for Agriculture and Rural Development Phil Hogan. With the EU’s accession, the Geneva Act of the Lisbon Agreement will enter into force for all its contracting parties on February 26, 2020.

“The EU’s accession enables entry into force of the Geneva Act of the Lisbon Agreement, while greatly expanding the geographical coverage of this important registration system,” said Mr. Gurry. “As interest in the provenance of products grows, protection of appellations of origin and geographical indications benefits consumers demanding authenticity as well as producers seeking new ways to add value and distinguish their products in an increasingly global and competitive marketplace,” he added.

“The EU has invested more than twenty years’ work to develop a successful Geographical Indications policy, protecting the intellectual property of our farmers and food producers at home and abroad,” said Mr. Hogan. He added. “With this accession to the Geneva Act, we are reinforcing our commitment to promote food quality and traceability at the international level. This will bring clear benefits to our global partners as well as EU producers, consumers, growth and jobs.”

The Geneva Act of the Lisbon Agreement, adopted May 20, 2015, allows the international registration of geographical indications and appellations of origin through a single registration procedure with WIPO, and permits the accession to the Act by certain intergovernmental organizations, including the European Union and the African Intellectual Property Organization (OAPI).

The foundational Lisbon Agreement for the Protection of Appellations of Origin and their International Registration was originally concluded in 1958.

Together, the Geneva Act of the Lisbon Agreement and the Lisbon Agreement form what is commonly referred to as the “Lisbon System.”

Photo: WIPO/ALBOUY

The EUIPO Management Board approved the Office’s Strategic Plan 2025 yesterday (20 November). The Plan will begin to be implemented on 1 July 2020.

The Plan is supported by the EU member states and Commission, and has also been presented to the JURI committee of the European Parliament.

It aims to deliver “IP value for businesses and citizens in Europe" through three Strategic Drivers:

1. To further develop an interconnected, efficient and reliable IP System for the Internal Market;
2. To focus on more customer-centric services; and
3. To move the Office towards a more innovative workplace while developing the organisational skillsets required to do so.

A new set of European Cooperation Projects have also been approved to run alongside the Plan.

MARQUES submitted extensive comments on the Plan during the two consultations.

Find out more about the Plan on EUIPO’s website here.

In a post on LinkedIn, EUIPO Executive Director Christian Archambeau unveiled a rotating, illuminated cube that illustrates the Plan (pictured right). He wrote: “Our new 3D symbol represents the Office’s commitment to technological excellence and our aspiration to build even further on the networks that link all aspects of our work, delivering higher quality for users of the IP system generally and getting closer to customers.”

The General Court (GC) recently handed down a judgment in Case T-601/17 Rubik's Brand v EUIPO, deciding – again – on whether the below three-dimensional mark representing the shape of the Rubik's Cube was purely functional:

As many trade mark enthusiasts will know, this is the second time the mark in question made an appearance before the GC. For those interested, additional information on the Rubik's Cube saga can be found here. Today's post examines the present judgment and takes a look, more generally, at how (allegedly) functional signs fare before the GC (in the tradition of a previous piece on the fate of laudatory signs).

The saga, in short, turned on the question of whether the sign at issue was functional within the meaning of Article 7(1)(e)(ii) of Regulation 40/94. According to that provision, signs shall not be registered if they consist exclusively of the shape of goods which is necessary to obtain a technical result (NB: the current version of Article 7(1)(e)(ii) EUTMR includes the additional wording "…shape, or another characteristic").

The GC's first decision regarding the Rubik's Cube (of 25 November 2014) was later annulled by the CJEU (Case C-30/15 P, reported by the IPKat here). The CJEU held that the GC erred by taking the view "that for the purpose of examining the functionality of the essential characteristics of the sign concerned, […] the shape at issue, as represented graphically, should have been taken as a basis, without necessarily having to take into consideration any additional circumstances". The functionality of the sign, said the CJEU, should have been assessed in the light of the technical function of the actual goods concerned (i.e. a three-dimensional 'Rubik’s Cube'-type puzzle).

Taking those principles into account, the Board of Appeal (this time around) declared the mark at issue invalid. By the judgment at issue (of 24 October 2019), the GC dismissed the appeal filed by the trade mark owner. The Court's reasoning can be summarised as follows:

• The essential characteristics of the sign consisted of (1) the grid structure of 'black lines' and (2) the 'overall cube shape'.
• The intended technical result of the goods concerned could be defined as 'axially rotating, vertically and horizontally, rows of smaller cubes of different colours until the nine squares of each face of the cube show the same colour'.
• Both essential characteristics were necessary to obtain that intended technical result.
• The black lines represented a physical separation between the different smaller cubes, which was necessary to rotate the different rows of smaller cubes by means of a mechanism located in the centre of the cube.
• The overall cube shape was inseparable, on the one hand, from the grid structure, which divided each of the faces of the cube into nine smaller cubes, and, on the other, from the function of the actual goods at issue, which was to rotate these rows of the smaller cubes.

Making reference to Lego (Case C‑48/09 P) and Philips (Case C‑299/99), the GC found that the arguments put forward by the trade mark owner could not call these findings into question. It was deemed irrelevant that…

• …the graphic representation of the contested mark did not reveal all the elements which were necessary for the implementation of the technical solution concerned, such as the additional colours on and the mechanism internal to the Rubik's Cube (paras. 95-96).
• …a three-dimensional puzzle with the same rotating capability could appear in shapes other than that of a cube (para. 90).
• …in the case of such alternative shapes, the grid structure appearing on their faces had a higher or lower number of horizontal and vertical lines and that the lines could be of a different thickness or colour from those appearing on the contested mark (para. 88).

Without a doubt, some will criticise the present decision for applying too strict a test in assessing the functionality of the sign at issue. Others, however, may praise the GC for stringently applying the principles established by the CJEU. At any rate, it is difficult to deny that (allegedly) functional signs currently face difficult times before the GC if the below non-exhaustive list of judgments is anything to go by:

TM	Goods (inter alia)	Case	Result
	Three-dimensional puzzles	C‑30/15 P T-601/17	Purely functional
	Cable and pipe penetration seals, made from plastic or rubber	T‑261/18	Purely functional
	Alcoholic beverages (except beers)	T-324/18	Not functional
	Tyres	T-447/16 Appeal pending: C-818/18 P	Not functional
	Cutlery, scissors, knives	Joined Cases T‑331/10 RENV and T‑416/10 RENV C-421/15 P	Purely functional
	Pharmaceutical preparations for the treatment of dementia of the Alzheimer’s type	T‑44/16	Purely functional
	Lighters for smokers	T-580/15	Purely functional
	Winches with power cable	T-621/15	Purely functional

The EU and China have concluded negotiations on a bilateral agreement to protect 100 European geographical indications (GIs) in China and 100 Chinese GIs in the EU against imitations and usurpation. Alessandro Sciarra of the MARQUES GI Team reports:

The European Union Commission has reported that on 6 November 2019, the negotiations between the EU and China for a bilateral agreement to protect 100 European GIs in China and 100 Chinese GIs in the EU have been concluded.

The next step towards the entry into force, which is expected by the end of 2020, is the legal scrutiny of the agreement.

The list of the GIs from the EU to be protected in China includes Cava, Champagne, Conegliano Valdobbiadene Prosecco, Asiago, Queso Manchego, Prosciutto di San Daniele, Irish whiskey and Porto. Among the Chinese GIs that will be protected in the EU are Pixian Dou Ban (Pixian Bean Paste), Anji Bai Cha (Anji White Tea), Panjin Da Mi (Panjin rice) and Anqiu Da Jiang (Anqiu Ginger).

The full lists of the 200 European and Chinese geographical indications covered by the agreement are available here: list of European GIs and list of Chinese GIs.

An additional 175 names from both sides will be examined after the entry into force of the agreement and set to be protected within four years.

In a joint press statement on the end of the negotiations Commissioner Hogan and Chinese Minister Zhong Shan declared that this agreement on GIs is likely to be one the most significant trade agreements negotiated between the European Union and the People’s Republic of China in recent years, and will allow the preservation of the traditional way of producing these high-quality products, conserving the respective food heritage, and contributing to rural economies, to European and Chinese consumers as well as society at large.

The European Commission has made available a factsheet on the agreement.

Alessandro Sciarra is a European trade mark attorney with Bird & Bird in Rome and a member of the GI Team

The second and final day of the third MARQUES Luxury Brands Symposium, held in Milan, looked at expanding luxury brands in different directions and the latest CJEU case law on luxury brands.

Expanding luxury brands

Introducing a panel looking at types of expansion (such as product/ service extensions within the same range, extension into complementary areas and extension into unrelated areas) Chair Lydia Gobena of Fross Zelnick Lehrman & Zissu, PC discussed the advantages and disadvantages: “If you don’t expand well and tell the story right, you’re not going to reap the financial rewards.”

Daniel Luggen of Zermatt Tourism described the challenges of protecting a regional brand that has an international reputation: “We have to think about brand and brand protection. It’s not been an easy journey.” For example, Zermatt discovered that a company was selling Matterhorn-branded cigarettes in the Caribbean

Laurence Morel-Chevillet of BULGARI S.p.A said brand expansion is often driven by customers’ demands: “If you do not follow your clients’ wishes, you will not go very far!” For BULGARI, it was a natural development to expand from jewellery to watches. “It took some years to put into the company the know-how, patents and so on. The company also acquired other companies that manufactured watches and now has a huge production plant in Switzerland.” Other expansions for BULGARI have included hotels, accessories, perfumes and cosmetics, the latter of which was not successful. “The effort was too high in comparison to the benefits,” said Laurence.

Dinner on Thursday evening

Julia Holden of Trevisan & Cuonzo asked: what is luxury and why do we want it? Historically and sociologically, luxury has always been important, she said, and labels are important for people to find their place in society, but she added: “In different societies, there’s a different priority in what people look for in luxury.” Is it about being different, seeking quality or showing monetary value? “It’s a multi-faceted topic,” said Julia.

The panel addressed questions including: What steps do you take when considering a brand expansion across different product or service categories? How do you approach trade mark clearance and use requirements? To what extent can you protect geographical terms? ow do you balance staying true to your company’s legacy while at the same time moving forward in other categories? How do you ensure quality when working with partners? How to manage client costs when expanding across numerous categories? And what lessons have been learned from brand expansions?

“If you do it well, you can really create consumer loyalty and brand loyalty,” concluded Lydia.

Recent and pending EU cases

In the event’s final session, a panel of legal experts discussed recent and pending trade mark, design and copyright cases in the EU. Roland Mallinson of Taylor Wessing said the recent judgment in the AMS Neve v Heritage Audio case regarding jurisdiction “is going to be an important decision for luxury brand owners going forward.” He added: “It clarifies emphatically that we can sue under a EUTM in the country where the website is targeted. That will be useful for brand owners.”

Arthur Artinian of K&L Gates LLP summarised 15 recent decisions that affect luxury goods companies, noting that they provide good news regarding marks with combinations of elements (such as shape and colour) and for those in new categories, such as position marks, but bad news for luxury brands to obtain registration and for providing acquired distinctiveness EU-wide. Among the cases he discussed were:

• Louboutin: Arthur said the positive news from this case is that colour/shape combination marks should not meet objections: “Luxury brand owners should continue to refer to this case when protecting their brands.”
• Textilis: this case found that 2D prints and textiles are not subject to the shape exclusion under Article 7(i)(e). “If you have marks like this, you’re in good shape,” said Arthur.
• Rubik’s Brand: This General Court decision invalidated the Rubik’s Cube trade mark on the basis that elements of the design were necessary to obtain the technical result. It is likely to be appealed to the CJEU.
• Birkenstock: A simple geometric pattern was devoid of distinctive character. “Brand owners have to take a new look at these kinds of issues as traditional 3D marks are not working,” said Arthur.
• Red Bull: This case on the blue/silver colour combination confirmed that, if seeking to register colours, you need to be very precise. You cannot claim a monopoly in the combination of the colours for a plurality of reproductions.
• KitKat: The lesson of this decision, in which the CJEU said evidence of acquired distinctiveness is required in all 28 EU Member States unless there are proximities between states, is “Does it make more sense to go down the national route?” said Arthur. In two other notable decisions (Supermac’s v McDonald’s, EUIPO Board of Appeal and Adidas v EUIPO, General Court) it was found that there was insufficient evidence of use.

Topics to watch

Arthur provided examples of position marks that have been accepted and refused, concluding that the trend is that simple signs can be protected if placed in a specific position. “From a brand owner’s perspective, this is an area to watch.” Combinations of shapes and colours or distinctive motifs are also likely to be registrable, as are photos of unbranded products.

Bad faith is a developing area, following the Kreativni Dogadaji d.o.o.o v Hasbro decision from the EUIPO Board of Appeal and the recent Advocate General’s Opinion in Sky v SkyKick. “If the Opinion goes forward, then EUTM registrations with no intention to use or very general specifications of goods are vulnerable to attack for bad faith or lack of precision,” said Arthur.

Designs and copyright

Turning to designs, he said that they are powerful and can interact with trade mark rights, but disclosure can be a challenge for luxury and fashion brands. The recent Porsche v EUIPO decision from the General Court suggests that just reinventing an iconic design is not enough to get design protection.

Interesting cases on the interaction between trade marks and designs include Chanel v EUIPO, BMB v Ferrero, East Sheen Industrial v Rubik’s Brand and Red Bull v Voltino.

Finally, Jesse Hofhuis of Hofhuis Alkema Groen discussed the Cofemel v G-Star copyright case, saying “it will create a revolution in the EU for protecting product design and other applied arts”. He explained that it confirmed that there is the same threshold for copyright protection throughout the EU, and it is possibly a low threshold.

The Symposium was wrapped up by MARQUES Chair Susie Harris and concluded with lunch.