Two new social media accounts have been launched to support SMEs in Europe as part of the Ideas Powered for business programme:

• Twitter.com/ideaspowered
• Linkedin.com/company/ideaspoweredforbusiness

Ideas Powered for business includes financial support for SMEs in all EU countries. Both social media accounts will share information on SME-related IP initiatives being set up by the EUIPO and the EU national IP offices, such as the SME Fund that provides grants for IP applications.

The fifth window of the SME Fund is open now until 30 September and the sixth and final window is open from 1 to 31 October 2021.

The first session of the second day of this year’s MARQUES Annual Conference, Part 5: Peace and Justice Online, focused on how brand owner and online marketplaces can work together.

Need for stakeholder collaboration

Davide Bresner, Bresner Cammareri IP, Italy (member of the MARQUES Programming Team) summarised the scale of the challenge: the growth in volumes of counterfeiting, use of the internet, shipment of small packages and role of organised crime. The result is that brand owners have to invest in investigations and takedowns to protect consumers and legitimate markets.

Successful initiatives to address the problem include the EU Memorandum of Understanding, which has 30 stakeholders and provides a basis for cooperation.

Cecile Guillemard, Director & Assistant General Counsel, Global Brand Protection e-Business, Procter & Gamble, Switzerland, said P&G was one of the first signatories to the MoU. She explained the challenges brand owners face, including increased volumes and greater sophistication of counterfeiters, and the need for cooperation with marketplaces and innovation in finding solutions.

Last night's reception sponsored by Brinkhof

Claudio Bergonzi, EU Senior Manager Global Brand Relations, Amazon, Luxembourg, welcomed the Memorandum and stressed the importance of collaboration between stakeholders. At Amazon, he said, brand protection is complex and the company spends millions of dollars on preventing fraud and bad behaviour using tools such as machine learning and seller verification. It has adopted initiatives to react to bad actors as quickly as possible: the Counterfeiting Crimes Unit and product serialisation service Transparency.

Cecile welcomed Amazon’s initiatives and said more innovative solutions are needed, spanning all stakeholders and possibly including governments – for example regulation of trusted sellers – as well as consumers and law enforcement. In particular, information sharing with law enforcement (including data and bank account details) could be improved, she said. And new legal mechanisms may be needed to address the speed and complexity of online counterfeiting.

Annual Conference Dinner sponsored by Dumont

The speakers agreed on the need for a wide perspective encompassing the whole supply chain, tax avoidance and an emerging trend where organised crime rings steal goods from stores and sell them online (as reported recently by the Wall Street Journal).

Matching legal and business strategies in litigation

In Part 6, International Litigation Strategies: From the Boardroom to the Courtroom, the panel addressed questions including: What triggers a decision to litigate? What is the decision-making process? What factors influence the decision? What do in-house counsel need from outside counsel? What are practical issues in bringing litigation? How to coordinate different jurisdictions? How are disputes resolved/settled?

They also answered questions posed by members of the audience concerning the importance of obtaining compensation, the biggest mistakes made when deciding to sue or not to sue, deciding between criminal and civil cases, the role of publication of decisions and the extent of corruption.

Hens de Koning-Ghijsen, Senior Legal Counsel, Heineken, The Netherlands (member of the MARQUES China Team) pointed out that while Heineken is a global company, in beer the world is a local place and decisions have to take into account local markets and conditions.

The speakers agreed on the importance of coordinating legal and commercial perspectives. “We always weigh the impact commercially and including the PR exposure,” said Hans. “Consulting with the business can also have a positive side. For example, they can negotiate with retail chains if there are lookalike products.” In other cases, legal teams can identify risks that management may not perceive: for example, Heineken successfully took action against a small beer that copied elements of the Heineken brand, despite business concerns that it would be seen as a David v Goliath dispute. “Legal can often better see the risks of doing nothing,” explained Hans.

Timo Götting, Senior IP Counsel, Sandoz, Germany, added that many factors have to be considered in a litigation strategy: “What is the commercial goal? How does this litigation support it? It also depends on whether we initiate a case, or it is brought against us. It’s about allocating and freeing up resources.”

China is a huge challenge for brand owners, given the volume of cases: last year there were more than 9 million trade mark applications, and 400,000 IP litigation cases before the courts (with a growing proportion of domestic companies). Clients are often “dragged into” litigation, said Elliot Papageorgiou, Partner, Gowlings, China. But he added: “The authorities are very keen to get these products off the market. There are very good alternatives to litigation. Most brand owners now have a good understanding of the options available in China.”

“When it comes to settling, you should never rule out any options,” said Timo. “Your legal agenda should not live its own life in parallel to the business agenda.” Elliot added that, despite its disadvantages, settlement always provides more certainty than ongoing litigation. Hans added that as cases drag on, and cost more, management may lose enthusiasm.

The panel was chaired by Tobias Cohen Jehoram, De Brauw Blackstone Westbroek (member of the Dispute Resolution Team). The panellists all stressed one key tip for outside counsel: if asked about the chances of success, never say: 50-50. “I might as well look into a glass bowl, and I don’t have to pay for that,” said Timo.

Audience poll: How many litigations are initiated by legal rather than the business?

• 10% legal, 90% business: 12%
• 20% legal: 7%
• 30% legal: 33%
• 40% legal: 17%
• 50% or more legal: 31%

Lewis Gaze Memorial Award

Congratulations to the winners of this year's Lewis Gaze Memorial Award, which was presented by MARQUES Chair Joachim Hofmann today:

• 2nd prize: Jesper Vrielink for his paper on "From Messi to Diesel: the neutralisation theory in trademark law and the protectability of trademarks with a clear meaning"
• 1st prize: Fleur L Westenend for her paper on "The application of the technical effect-restriction in design law and trademark law"

For more updates from the Annual Conference, search for #MARQUES35 on social media. Photos from The Hague by Valerie Kuypers

Don’t underestimate the counterfeiters: that was the message from Part 3 of this year’s Annual Conference, which was titled Fighting For Peace and Justice.

Panellist Gonzalo Barboza, Arochi & Lindner, Spain (member of the MARQUES Dispute Resolution Team) said deterrents do not work in stopping counterfeiters: “Criminal enforcement is not effective in many countries. More and better work needs to be done, including coordination, enforcement and collaboration: authorities, brand owners, legal practice, payment companies and marketplaces together need to become part of the solution. Even competitors need to work hand in hand against the common enemy.” Rien van Diesen, Seconded National Expert, Europol, The Netherlands agreed: “The outcome of court cases is not effective. Something needs to be done.”

Counterfeiting case studies

May-Britt Kroll, Senior Global Brand Protection Manager, Coty Beauty Germany GmbH, described several cases that demonstrated the ingenuity and tenacity of counterfeiters. One started with the investigation of a grey market wholesaler in Miami with sales in several countries. After six years, the production facility in Spain was tracked down and the boss located in France. Thirteen people were involved and ultimately four were sentenced. “It was an entire supply chain we had to break up,” she said.

Lunch at the World Forum

In another case, in the UAE, raids had to be carried out at night and about 30,000 items were taken away in trucks, while in another in China the warehouses were disguised as normal apartments. “We had to work very closely with investigators to investigate and start legal proceedings. The environment was unbelievably dirty,” said May-Britt.

Gonzalo also shared a case study from Spain involving the simultaneous raid of four warehouses. He stressed the importance of sharing intelligence: “You need to work together. If you become too territorial, the end result may not be what you want.”

The panellists agreed that counterfeiters can typically produce counterfeits within three months, aided by 3D printing, rapid distribution and improved infrastructure. They also use long supply chains to cover their tracks “These are not lone wolves,” said Gonzalo. “They know the rules and how to re-invent themselves. We’ve seen it many times.”

He said emphasising product safety can help get authorities’ attention: “It’s important to try to use safety as an advantage. If you present your concern properly, the authorities can raise the priority.” Rian agreed, and added that safety is also very persuasive before courts. He described how Europol operates and said that IP owners/representatives should join briefing sessions if possible, share information they have, build solid cases and work with trusted partners.

The session was chaired by Anja Franke, Grünecker Patent Attorneys and Lawyers, Germany (member of the MARQUES Anti-Counterfeiting and Parallel Trade Team). The panel also shared some examples of effective anti-counterfeiting awareness efforts, including a Mercedes-Benz video showing the difference between genuine parts and counterfeit parts.

CJEU highlights and lowlights

In the day’s final session, Peace and Justice from Luxembourg, Tobias Cohen Jehoram, De Brauw Blackstone Westbroek, The Netherlands (member of the MARQUES Council) and Carles Prat, IP Lecturer at the University of Alacant/Alicante, Spain, discussed recent CJEU and General Court cases in a panel chaired by Donald Schnyder, Wild Schnyder, Switzerland (member of the MARQUES Programming Team).

The cases discussed were:

• Case C‑714/18 P ACTC GmbH v EUIPO/Taiga AB (tigha v TAIGA)
• Joined Cases C–720/18 and C–721/18 Ferrari SpA v DU (genuine use of TESTAROSSA)
• Case C-833/18 SJ, Brompton Bicycle Ltd v Chedech/Get2Get (copyright, technical function)
• Case T-663/19 Hasbro, Inc. v EUIPO/ Kreativni Događaji d.o.o. (MONOPOLY and bad faith) – recently appealed to the CJEU as Case C-373/21
• Joined Cases C-449/18 P and C-474/18 P EUIPO/ JM - EV e hijos v Lionel Andrés Messi Cuccittini (MESSI v MASSI)
• Case C-184/21 Christian Louboutin v Amazom.com Inc. (pending, liability of platform providers)
• Case C-809/18 P EUIPO/Jerome Alexander Consulting Corp. v John Mills Ltd (MINERAL MAGIC, Article 8(3))
• Case C-204/20 Bayer Intellectual Property GmbH v kohlpharma GmbH (pending, reboxing)
• Case C-490/19 Syndicat interprofessionnel de défense du fromage Morbier v Société Fromagère du Livradois SAS (geographical indications, shape/appearance of product)

There were also some questions for the audience. The results of the votes were:

• Do you feel that the standard of “an independent sub-category” is workable in practice? 47% Yes, 53% No.
• Do you agree with the ruling in the MESSI case? 76% Yes. 24% No.
• Will the ECJ put more responsibility on market places like Amazon? 74% Yes. 26% No.
• Do you agree with the fromage Morbier ruling? 78% Yes. 22% No.

The hybrid Annual Conference continues with a full day of sessions tomorrow (Thursday), starting at 09.30 CEST. Follow #MARQUES35 on social media for the latest updates.

Photos: Valerie Kuypers

The 35^th MARQUES Annual Conference kicked off today in a hybrid format, with more than 100 delegates taking part in The Hague and many others joining virtually.

The first two panel sessions both took inspiration from theme of this year’s Conference, which is “Peace and Justice for Brands”.

Counterfeiters and consumers: four challenges

In Part 1 – Trade Mark Peace and Justice in Perspective, Willem Leppink of Ploum (member of the MARQUES Executive) chaired a panel comprising Paul Maier, Director of the Observatory on Infringements of Intellectual Property Rights at EUIPO; Martina Koetsier, Consumentenbond, The Netherlands; and Petra Herkul, DSM, The Netherlands (Chair of the MARQUES Anti-Counterfeiting and Parallel Trade Team).

They discussed approaches to tackling counterfeits focusing on what Paul described as four challenges: creating effective laws and systems; tackling counterfeiters; raising consumer awareness; and creating legitimate markets.

He explained that the Observatory comprises various networks of EU Member States, 68 private sector organisations and eight consumer and civil society groups, and said “We all need to work together.” The European Parliament has designated five MEPs to follow the Observatory (including one from the Pirate Party) and there is a close relationship with the European Commission, as well as liaison with judges and prosecutors. “Ideas come from our stakeholders, and we try to make objective studies, with data as robust as possible,” he said. The Observatory has 57 staff and an annual budget of €12 million to €14 million.

One of the biggest difficulties is raising awareness among consumers, particularly when they do not see the harm in buying counterfeits. Paul said that research showed that while 80% of people think they understand IP only 4% of consumers think IP is to their benefit. Martina said that consumers have many different motives when buying counterfeits: some want cheaper goods, some are tricked online and a few are deliberately looking for fakes. Sometimes there is a grey line between imitation and fake. “If it’s too good to be true, it probably is,” she said.

For this reason, said Petra, it is vital that brand owners to help build awareness: “It is crucial to look at the buyers of these products. Selling counterfeits is cheap and easy, you’re unlikely to be found out and the penalties are low.” For example, MARQUES organised an event in The Hague earlier this week for young people to educate them; at the end, nearly all said they would not deliberately buy fakes. EUIPO has supported awareness-raising activities such as the Fight Fake fashion show by JP John Pan in Greece.

Petra noted that brand owners have limited resources, so it is important to choose your battles wisely, and decide when and how to target manufacturers and to inform consumers. Belonging to a group is important for many consumers, so engaging celebrities and influencers is vital. She added that brand owners need to think carefully about how to explain the return on investment spent in protecting the brand and preventing dilution.

Trade mark filing strategies

In Part 2, Preparing for Peace and Justice, the panellists discussed filing strategies and enforcement in the context of recent trends and decisions regarding bad faith and the scope of trade mark protection.

Marlou van den Braak of Heineken International B.V., The Netherlands (member of the MARQUES Famous and Well Known Marks Team) said that her company is filing more trade mark applications, driven by brand expansion and trends such as the rise in low/no-alcohol beer, the popularity of hard seltzer in the US and sessional beers in Europe, and acquisitions. It has 450 unique brands in total, most of them local brands.

Filing strategies vary significantly by industry, said Imogen Fowler of Hogan Lovells Spain (Chair of the MARQUES Brands & Marketing Team). For example, tech start-ups generally prefer not to do extensive searching and instead to deal with any problems arising later on, while at the other extreme big pharma companies tend to be very conservative.

The key is to identify what is important for the business: “Prosecution and enforcement go hand in hand. If you don’t have the right things registered, then you can’t enforce,” said Imogen. One way to do this is to survey customers about what they value and recognise in a brand. However, this has to be balanced with what is registrable – especially given the difficulties associated with registering 3D, colour and figurative trade marks. In some cases, a registered design right can be an effective for takedown purposes.

Both speakers agreed on the importance of having regular discussions between marketing and trade mark departments to plan as far ahead as possible, avoid surprises and consider the possibility of building acquired distinctiveness. Marlou pointed out that it is not always possible to predict in which markets a particular brand will be launched or be successful, and Imogen added that distinctiveness requirements can vary by country – giving the example of Doughnuts which has been registered and enforced in Spain. Marlou added that sensitivities can also vary according to markets: for example, “piranha” is slang for “prostitute” in Brazil so would not be appropriate for a brand.

During the session, Imogen discussed the extensive (and ongoing) litigation in the SkyKick case, and the MONOPOLY decision of the EU General Court, and said they may already be having an impact on strategies: “People are now taking a more American style of approach. You think twice about filing very, very broadly.”

Strategies also evolve, of course. Many IP offices have big backlogs at the moment due to the COVID-19 pandemic, so it can be many months or even years before there is certainty about whether a mark can be registered. In Jamaica, the trade mark registry is hard to search so it is a popular jurisdiction in which to file if you want to keep your applications secret.

And, explained Marlou, in China it’s “a whole different story”. Heineken even had a case where its brand was being used on sewing machines. Due to the problems there, the company files more extensively than in other markets for its famous brands, so that it can bring enforcement actions and block speculative applications by third parties. Marlou recommended a multi-pronged strategy, incorporating defensive filing, non-use actions and cancellation actions as well as other mechanisms such as copyright protection and unfair competition to maximise protection in the country.

The panel was moderated by Kasper Frahm of Plesner in Denmark.

Hybrid conference

This year’s MARQUES Annual Conference is taking place in a hybrid format. It was opened this morning by MARQUES Chair Joachim Hofmann, who summarised some of the highlights from the past year, and BOIP Director General Ragnar Gustafsson, who discussed what his Office is doing to make life easier for customers to protect IP. Recent BOIP initiatives include making the iDEPOT system free for one month and updating and modernising the trade mark register to include image search.

The Conference sessions continue tomorrow (Thursday) and there is a full programme of webinars next week. For more details see the dedicated page here. You can see short reports and photos from the Conference on social media using the hashtag #MARQUES35.

The EUIPO Grand Board of Appeal has published two decisions concerning (1) descriptive character of geographical terms and (2) a request for proof of use. Another case, on public policy and morality, has been referred to the Grand Board.

INMOBILIARIA PORTIXOL

This case involved a figurative application (pictured) for real estate services in class 36, which was registered in April 2014.

Mallorca Mietboerse SL filed an application for a declaration of invalidity, arguing that Portixol is a place in Palma de Mallorca and that the relevant public would perceive the term as purely descriptive of a place where real estate can be purchased or rented. It also argued that the contested EUTM was filed in bad faith.

The Cancellation Division rejected the application for a declaration of invalidity. In May 2017, the First Board referred the case to the Grand Board.

In its decision (R0368/2016-G), the Grand Board clarified the assessment of the descriptive character of geographical terms, in particular the name of a small geographical location, in light of the most recent case law of the General Court.

It found that the evidence submitted by the cancellation applicant was not able to support the contested mark’s alleged descriptiveness. Hence, it could not be inferred from the evidence whether a non-negligible part of the relevant public perceived the term Portixol as referring to a geographical name at the time of filing the contested mark.

Neither would it be perceived as an indication of the origin of the services covered by the contested EUTM. In fact, no sufficient and specific relationship has been demonstrated by the cancellation applicant as regards the contested EUTM with its verbal elements INMOBILIARIA PORTIXOL and the relevant services at the time of filing.

Consequently, the evidence presented did not lead to the conclusion that this denomination or the contested mark as a whole was already perceived as being descriptive in relation to the relevant goods and services at the filing date of the contested mark.

The cancellation applicant’s submissions also did not provide sufficient indications that the contested EUTM as a whole and the relevant services would come to have such a relationship in the future. Article 7(1)(b) EUTMR does not apply as a consequence, nor there are any other reasons why the contested EUTM would fall foul of this provision.

None of the criteria for the application of Article 59(1)(b) EUTMR have been met. Nevertheless, the registration of the contested EUTM does not prevent the cancellation applicant from continuing the use of its sign in the territory at issue, in accordance with the relevant national provision.

DIESEL SPORT beat your limits

In this case, Wolfgang Diesel filed a figurative EUTM application in May 2017 (pictured) covering various goods and services in classes 5, 21, 25, 28, 32, 35 and 41. It was opposed by Diesel SpA based on its earlier national and international trade mark rights in DIESEL.

Wolfgang Diesel filed a request for proof of use but this was rejected as being inadmissible as it was not filed in a separate document. The opposition was partly upheld, and Wolfgang Diesel appealed. In October 2019 the case was referred to the Grand Board, which invited the EUIPO Executive Director to comment upon questions of general interest (Article 29 EUTMDR) to clarify the Office practice.

In its decision (R2142/2018-G), the Grand Board said a request for proof of use must be submitted in a 'separate document' (Article 10(1) EUTMDR). In this case, the request timely filed with the applicant’s reply to the opposition was not presented as a separate submission, on a ‘separate sheet’ or as a ‘separate annex’ of the same submission.

The request followed by observations were under separate titles, but the request was part of the same submission presented with continuous pagination and not as a list of two independent ‘annexes’. The request was not ‘in a separate sheet’, since title ‘I’ ended on the same page where title ‘II’ began.

Thus the request was not in a ‘separate document’, but was merged into the observations in reply to the opposition. After being notified of the deficiency, instead of asking for a continuation of proceedings, the applicant filed a second request, in a separate document, which was belated as it was filed after the expiry of the time-limit to reply to the opposition.

Both requests were thus inadmissible as they did not comply with Article 10(1) EUTMDR. On the merits, the likelihood of confusion was confirmed.

MARICON PERDIDO

On 10 May 2021, the Fifth Board of Appeal decided to refer case R 2307/2020-5, MARICON PERDIDO to the Grand Board. The case concerns the eligibility for registration of a verbal mark that may be perceived as a homophobic expression.

The Boards referred the case as there is inconsistent case law between the absolute grounds for refusal of trade marks on the basis of being contrary to accepted principles of morality under Article 7(1)(f) EUTMR and the right to freedom of expression under Article 11 of the Charter of Fundamental Rights of the European Union.

Groups or bodies representing manufacturers, producers, suppliers of services, traders or consumers that can establish an interest in the result of the case may submit written observations within two months following publication in the Official Journal, pursuant to Article 37(6) EUTMDR.

The 35^th MARQUES Annual Conference starts next week. It is taking place as a hybrid event, with sessions in The Hague being streamed in high quality to those joining virtually.

MARQUES is delighted to be hosting a limited number of delegates in The Hague, in one of the first in-person IP events to take place since the pandemic.

Physical registrations are sold out but it is still possible to register for virtual attendance.

Virtual attendance includes the live stream of all the sessions from The Hague, as well as a dedicated networking event, as well as other activities such as the webinars hosted by MARQUES Teams during the week of 20 September.

You can find out more about virtual registration in a special one-minute video just published by MARQUES.

This explains the hybrid nature of the event, how you can join the sessions virtually, how to ask questions to the speakers, the virtual expo and the coffee corner.

For more details about the Annual Conference, please click here. You can register for virtual attendance here.

Follow the Annual Conference on social media using the hashtag #MARQUES35.

EUIPO has published news about payment of fees/charges, procedural misrepresentation and abuse of User Area credentials, which will be of particular interest to European trade mark and design practitioners.

Decision on payment of fees and charges

A new Decision of the Executive Director (No EX-21-5) was signed on 21 July, replacing previous decision No EX-17-7.

This new decision expressly allows those defined as “authorised persons” in renewal proceedings (pursuant to Article 53(1) EUTMR and Article 13(1) CDR respectively) to hold a current account with the Office.

Article 3(d) of the new Decision provides that authorised persons may now hold a current account with the Office so they can process and pay their renewals for both EUTMs and RCDs.

EUIPO says the change has been implemented to enhance the efficiency of the renewal payments process and to remove any discrimination in the payment methods made available to authorised persons compared to other types of user.

Procedural misrepresentation

Article 20 of the EUTMR and Article 78 of the CDR lay down the requirements regarding who can be a legal practitioner or professional representative before the EUIPO. To prevent abuse, EUIPO requires professional representatives to provide evidence of having a real and effective business of employment in the EEA.

The Office checks, in particular (1) when an existing representative requests a second or subsequent ID number; (2) where there is a reasonable doubt regarding possible misrepresentation; and (3) when a third party questions the veracity of the representative’s place of business or employment. Third-party requests must be substantiated and the party concerned will always have the opportunity to be heard before the EUIPO.

If the representative fails to submit appropriate evidence of sufficient information, the EUIPO will delete them from the list of professional representatives or the database of legal practitioners.

Abuse of User Area credentials

EUIPO says it is aware that some representatives have been leasing their unique User Area credentials to independent third parties. It says: “These third parties do not operate under the direct control, responsibility or supervision of the authorised representative, as defined in Decision EX‑20‑9, Article 3(1). They merely act under their identity. By disclosing their User Area credentials, the representatives grant access to all the files and information stored in their User Area to these third parties. This means they may obtain unauthorised access to confidential files and information relating to other represented persons, resulting in a breach of data protection rules.”

In response, it has updated the Conditions of use of the User Area to reflect the actions it will take in the event of a potential prohibited disclosure (see paragraph 4).

The changes clarify that the account holder is responsible for the proper use of the account and maintenance of confidentiality, define “prohibited disclosure” of credentials, identify the steps the EUIPO will take on being made aware of a potential case of prohibited disclosure; and outline the possible consequences and sanctions.

A disclaimer has been added stating that the EUIPO is not liable for any data breaches caused by an account holder’s prohibited disclosure of its User Area credentials.

For more information see the latest issue of Alicante News or contact KCRegister-other@euipo.europa.eu.

Picture of EUIPO in Alicante taken from EUIPO website