The EUIPO recently published a warning about problems encountered with long lists of goods and services.

The Office stated:

The Office has recently observed a trend where certain EUTM applications contain unusually long lists of goods and/or services. Where normally the average number of terms applied for lies within a range of 60 to 100, these big applications contain 50 times the average number of terms. There has even been a considerable increase in the number of applications that have exceeded 10 000 terms.

The Office would like to remind the users that long lists of goods and/or services may lead to a number of disadvantages for the applicant, namely:

• a higher risk of classification deficiencies;
• delays in publication and registration of the EUTM;
• an increased risk of conflicts with other trade marks (oppositions);
• an increased risk of a trade mark being eventually cancelled because of a similarity to an earlier mark or non-use of all the registered goods and/or services.

In addition, the Office strongly recommends the use of the G&S builder.

Robert Guthrie, Chair of the MARQUES European Trade Mark Law & Practice Team says:

It seems that some of these incredibly long lists of goods and services have arisen because of the way in which the EUIPO's goods and services builder tool has been used and in particular the ‘Class 35 and 37 assistant’ – see this article on WTR here. This does highlight a wider issue that whilst the goods and services builder does help and encourage applicants to use terms that will be acceptable to the EUIPO and national offices, it also allows them to easily compile long lists of goods and services in an effort to ensure the widest possible protection for their mark. The EUIPO has provided some reasons why these long lists can be disadvantageous to the applicant. It is also worth flagging the pending reference to the CJEU (C-371/18, Sky and Others) in which the UK courts have asked weather ‘[it can] constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services?’.

The EUIPO Boards of Appeal are organising a Tertulia on case law at the EUIPO Liaison Office in Brussels on 24 October 2019.

It will start at 13:30 following a snack reception and will close at 15:30.

Topics to be covered include:

• Trade marks and human rights
• Recent EUIPO Boards of Appeal Case Law
• Open discussion on the Boards of Appeal ADR Strategic Projects

Speakers include Mr Théophile Margellos, President of the Boards of Appeal, Mr Gordon Humphreys, Chairperson of the Fifth Board of Appeal and Sven Stürmann, Chairperson of the Second Board of Appeal.

Places are limited and can be reserved by emailing Tertulia-Brussels@euipo.europa.eu by 17 October 2019 with your full name and ID/passport number.

The Greek TM Application below met the Office's refusal, though an appeal is of course possible.

The GR TM Office considered that the figurative mark, comprising a representation of a wind turbine, was descriptive for wind turbines (Cl. 7) and production of electricity via wind energy (Cl. 40). It also went on to rule that the mark is deceptive in connection with electric energy from solar power, photovoltaic panels and devices, and photovoltaic apparatus for the production of electric energy, and production of electricity via solar power (Cl. 4,9,40).

Interestingly, the provisional refusal only related to descriptiveness and lack of distinctiveness of the mark. The Office's employment of the misleading / deceptive nature of the mark for part of the goods / services came in response to the Applicant's observations. 

If there is a conclusion to be drawn, it is that even a fanciful figurative mark might not escape refusal over descritpiveness. Assuming that the GR TM Office is right in considering the mark descritpive for wind turbines, its revised assessment that it is misleading for photovoltaic panerls and production of lectric enwergy via solar power is correct, unlike its initial refusal which extended descriptiveness to these goods / services as well.

As noted, an appeal before the Trademarks Administrative Committee of the Greek TM Office is possible, so we may hear on this in the future. 

Readers may be interested in two webinars taking place this month, which are part of WIPO's series of webinars on the Madrid System. 

WIPO states: “The first webinar is for newcomers to the Madrid System, whilst the second is designed for advanced users of the System.”

The webinars, which will be in English, will each cover a different stage of the lifecycle of your mark, says WIPO: “The first one will cover the filing of the international application, while the second one will focus on the central management of your international registration.”

The details are: 

1. Preparing your international application: content and resources

Level: Beginner

Wednesday, September 11 (4:00pm Geneva time)

2. Adapting your international registration to your business needs: presenting and recording changes

Level: Intermediate

Wednesday, September 25 (4:00pm Geneva time)

Both webinars will be presented by WIPO experts, who will also answer questions from the audience.

Find out more and register for the webinars here.

In the final post previewing workshops at this year’s Annual Conference, Marion Heathcote of the IP Emerging Issues Team introduces the topical subject: Food, Fashion and Festivals – Whose Culture is it Anyway?

Once culture was considered to be inspiration, but increasingly brands are facing swift and harsh judgements by consumers when they stray into the territory of cultural appropriation. Most recently Dior felt compelled to swiftly withdraw its new Sauvage perfume advertisement, featuring native American Indian symbolism and dance, under the pressure of social media and increasing outrage.

However artistically rendered they might be, an increasingly vocal consuming public view the acquiring of symbols and aspects of other cultures, often long stigmatised, without appropriate recognition, not as homages and not tolerable.

The long-standing reputation of a brand can be irreparably tarnished by lack of judgement and not paying appropriate cultural respect. Most susceptible have been fashion brands and festival cultures. Now derivative foods are increasingly coming under the spotlight for inappropriate expressions of their inspiration.

The Emerging Issues workshop on “food, fashion and festivals – whose culture is it anyway?” could not be more timely. The Team will explore the rapidly growing sample of unfortunate branding decisions and the impacts of failing to recognise culturally derived material. We are honoured to be joined by Daphne Zografas Johnsson (TK Division of WIPO) and Lydia Gobena (Well Known Marks Team) as they explore the real-life challenges faced by brand owners and the economic impact on a brand that is not mindful of potential consequences when selecting inspiration.

During an afternoon dedicated to exploring the art of appreciation not appropriation, practical guidelines will be provided to help navigate a path to avoid inadvertent mistakes and errors of ignorance. This is a workshop not to be missed for those working with brands in creative spaces and who want to ensure they are positioned to help maintain the reputations of those brands and minimise potential backlash risks.

The Advisory Committee on Enforcement (ACE) meets for its Fourteenth Session next week (2 to 4 September).

Established by the WIPO General Assemblies in 2002, the ACE has a mandate to carry out technical assistance and coordination in the field of enforcement.

The ACE’s work programme covers topics including awareness-building activities and strategic campaigns to build respect for IP; institutional arrangements concerning IP enforcement policies and regimes; national experiences in respect of WIPO’s legislative assistance; and capacity building and training activities.

At the meeting next week, there will be a presentation on the Building Respect for IP (BRIP) Database Project. This project establishes an information-sharing e-platform to minimise the placing of adverts on IP-infringing websites. The database aggregates list of websites suspected of infringing copyright. Find out more about the database in WIPO’s announcement, which is available to download on the MARQUES ACPT Team page.

More information about next week’s meeting is available here. Documents available to download include:

• Recent Activities of WIPO in the field of Building Respect for IP
• Awareness-building activities and strategic campaigns
• New Technologies in IP Enforcement
• Study on IP Enforcement Measures
• Initiatives to Prevent Paid Advertising on Copyright Web Sites
• Mongolia’s Experience with Legislative Assistance Provided by WIPO

MARQUES supports the work of the ACE and is pleased to share this information with members. To find out more about the work of the Committee and new developments in building respect for IP, and to sign up for the electronic newsletter, visit this page on WIPO’s website.

WIPO’s free webinar on “Understanding the International Classification of Goods and Services” takes place at 4.00pm Geneva time tomorrow (Wednesday 28 August).

WIPO states:

This will give you the opportunity to learn more about the international system used to classify goods and services for the purposes of the international registration of marks: The Nice Classification.

When filing an international application, you must indicate the goods and services to protect in the designated contracting parties. It is important that the goods and services listed in the application are clear, concise and classified according to the latest edition of the Nice Classification. A well-prepared list means you will be less likely to receive an irregularity notice from WIPO and helps register your mark as quickly as possible.

In this webinar, we will introduce the basics of the classification of goods and services and will touch on some information about WIPO classification practice.

You will be able to ask us all your questions during the live Q&A session after the presentation.

The webinar is for beginners and new users of the Madrid System. If you cannot attend the webinar but would like to view the video recording, you can do so by registering.