Class 46 readers may be interested in a survey being conducted on the application of the Trade Secrets Directive.

According to information sent by the Observatory on Infringements of Intellectual Property Rights to MARQUES:

In June 2024, the Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs of the European Commission commissioned a study to support the intermediate report on the application of the Trade Secrets Directive pursuant to Article 18(2) of the Directive.

The study aims to assess the state of play of the application of the Directive in practice and recent on the ground developments in the area of trade secrets protection post-adoption of the Directive in order to support the intermediate report on the application of the Directive.

The EU Commission entrusted with this task the London School of Economics and Political Science together with CSIL Milan.

The intermediate report will paint a picture of the first lessons learned and (including the economic) impact of the Directive with respect to the areas of research and innovation, as well as the effects on the mobility of employees and on the exercise of the right to freedom of expression and information.

For this purpose, it will be vital to assess how the provisions in the Directive are applied in practice by SMEs, research institutions and larger companies. To assess these potential effects of the application of the Directive, current data on impact and stakeholder feedback will form a vital part of the study.

The Observatory says that completing the survey will take no more than 15 minutes. It is open until 1 November 2024 here.

In view of the challenging IP environment in China, the question arises whether acquiring the status of well-known trademark (Articles 13 and 14 of the Chinese Trademark Law) helps to enjoy wider protection. Hens de Koning-Ghijsen (a member of the MARQUES China Team), Kenny Ren (member of the Famous and Well-Known Marks Team) and Dan Plane (member of the China Team) discuss in this post for the Class 46 blog.

Marks can acquire such well-known status in China in three ways:

1. by trying cases before the Trademark Office and Trademark Appeal and Re-examination Board (TRAB) – such as oppositions, appeals and invalidations;
2. through enforcement by the Administration for Industry and Commerce (AIC) against trade mark infringement and counterfeits; and
3. in civil litigation against trade mark infringement.

This article focuses on the first option.

Acquiring well-known status

Obtaining the status of a well-known trade mark may take quite a while, will involve substantial costs, and the submission of a lot of evidence to prove a substantial awareness by the relevant sector of the public, the duration of use of the trademark, the extent and geographical scope of advertising activities, other records of well-known status being granted, and other factors which may make the mark well known.

Once such well-known status has been acquired, the scope of protection proves to be limited:

• The recognition of a trade mark as well-known happens on a case-by-case basis, so the successful recognition of a well-known mark in one case does not necessarily mean that another case will lead to the same result;
• The protection of the well-known status is further limited to identical and similar goods, and to other goods only if other factors apply, such as any association between the goods and services, the distinctiveness of the mark, the degree of its reputation and the possible confusion that will be caused among relevant consumers;
• TMO and TRAB prefer to rely on prior registrations rather than on the well-known status of a trademark.

Therefore, we find ourselves still arguing in each case (including simple oppositions) that our trade marks are well-known, submitting all the above-mentioned evidence and referring to cases where this has been confirmed by the relevant judge. At the same time, because we do not want to be dependent on the sometimes divergent decisions of the various bodies, we maintain trade mark registrations in the relevant classes (and ever growing sub-classes).

In our experience, and in cases where we both rely on a prior registration and the well-known status of the trade mark – which we do in all cases – the TMO and TRAB inevitably issue a decision solely on the basis of the prior registration, avoiding applying the provisions of Article 13.3 of the PRC Trademark Law by stating that this is no longer necessary since there is a prior registration in place.

For example, in an opposition against an infringing trade mark in class 31 we received a favourable decision for all goods mentioned in the application because of our prior registration, except for “grass for cats”, which appeared to be part of a new subclass and was not covered by our prior registration. This was not something to worry about in practical terms, but in such case it would have been a logical step – in view of our consistent argumentation – to have the status of well-known trade mark cover such “loose ends”.

Another question is why, in spite of the recent legislation to counter bad faith filings and the huge amount of bad faith applications still going on, TMO does not maintain a list of trade marks that have (once) been recognised as well-known trade marks to pre-emptively reject applications for identical or similar trade marks for identical or similar goods.

Fifth Amendment

Last but not least, the proposed amendment to the Chinese trademark law (Fifth Amendment draft) is particularly relevant on these points. This amendment imposes stricter trade mark use obligations (by the obligation to periodically submit of evidence of use, US-style), primarily to combat bad faith applications. If this amendment would lead to a decrease in bad faith registrations, then hopefully, the need for trade mark owners to file defensively may decrease as well.

However, it remains to be seen whether this obligation to provide evidence of use will actually be of any real help to owners of well-known trademarks where: (i) the well-known status of a trade mark is only granted on a case-by-case basis and therefore they need to have an extensive portfolio of defensive registrations, and (ii) trade mark owners may lose their “back-up” defensive registrations in other classes where they will not be able to prove use of their trademarks in these other classes. As a result, well-known trade mark owners are likely to end up with valid registrations of their trade marks by third parties for goods or services for which they have no evidence of use.

Is well-known protection worthwhile?

In short, and while the status of well-known trade mark in China certainly is a “nice to have”, it does not practically lead to a substantially better protection of the well-known trade mark or less cost, at least not yet. Due maintenance by registrations in all classes, and the regular filing of oppositions and cancellations in a huge number of cases is still needed.

The proposed Fifth amendment of the Chinese Trademark Law might end up assisting with these issues in the longer term, but for now, owners of trade marks that have been recognized as a well-known trade mark would need to take a huge “leap of faith” that the scope of the protection of the well-known trade mark – if granted in the particular case – will indeed extend to goods in those other classes.

This brings me to the actual utility of even spending the money required to obtain that first “well-known” trade mark decision. If owners of “well-known” trade marks just end up still having to oppose everything and maintain defensive registrations, and TMO or TRAB never find your mark’s prior well-known status as a standalone basis for rejection of the opposed/invalidated mark, we really have to question the wisdom of even obtaining the status for all but the biggest brands.

Hens de Koning-Ghijsen is legal counsel at Heineken and Vice-Chair of the MARQUES China Team

Kenny Ren is Legal Manager at Christian Louboutin and a member of the MARQUES Famous and Well-Known Marks Team

Dan Plane is a lawyer with East IP and a member of the MARQUES China Team

Episode 22 of the Talking MARQUES podcast is now available. This episode focuses on the fifth edition of the Luxury Brands Symposium, which takes place in Vienna on 7 and 8 November.

The episode features Ariane Hettenkofer of Kroher Strobel in Germany and Carolina Montero Peralta of ECIJA in Spain. Both are members of the MARQUES Famous and Well-Known Marks Team.

In the podcast, they discuss the programme, themes and speakers for the Symposium. They also reflect on the broader challenges for luxury brands today.

The Symposium will cover topics including the impact of artificial intelligence on the luxury industry; the latest developments in greenwashing and what they mean for luxury brands; and the rise of quiet luxury, including the role of non-traditional trade marks.

It will also include a Champagne Reception and Dinner on 7 November and lunch on 8 November.

You can listen to the Talking MARQUES podcast on the MARQUES website and on Spotify.

Booking for the Luxury Brands Symposium is now open and spaces are filling up fast. Registration is €850 (MARQUES members) or €990 (non-members).

Find out more and reserve your place on the dedicated page here.

The next episode of Talking MARQUES will be published later this year.

A German criminal court has found three defendants guilty of fraud for sending misleading invoices to EUIPO customers.

MARQUES, as one of the user associations involved in the EUIPO Anti-Scam Network since the beginning, is grateful to the EUIPO for sharing the following information about a recent case in Germany.

In September 2024, the Munich Court found three defendants guilty of commercial gang fraud for sending misleading invoices to EUIPO customers. Each defendant was sentenced to one year and 10 months of imprisonment, suspended with a three-year probation period.

The Court also ordered the confiscation of around €200,000 – the amount the fraudsters unlawfully obtained – to be used for compensation.

The EUIPO considers this an important legal precedent, as a criminal court in an EU Member State has ruled that the sending of misleading payment requests to IP users is a criminal offence of fraud.

The decision paves the way for current and future investigations and indictments in other jurisdictions.

In December 2020, following numerous reports from customers, the EUIPO filed a criminal complaint for suspected fraud before the competent Public Prosecutor’s Office in Germany.

The fraud scheme consisted of letters sent under the name ‘IP Register UG’, which closely resembled official fee invoices. The letterhead featured the designation "European IP Register", and the subject line highlighted "Data publication from Office for Harmonisation in the Internal Market (OHIM)” – the EUIPO’s former name.

These misleading letters included a "total due" amount, a payment deadline and bank details. Only in small print, barely legible at the bottom of the letters, was the invoice described as a proposal.

Between November 2020 and April 2021, the defendants wrongfully received payments of approximately €200,000 from unsuspecting customers.

In this case, the court convicted the defendants of commercial gang fraud. In a similar case in Sweden in 2017, the defendants were convicted of gross fraud. These cases set legal examples for treating these schemes as criminal fraud.

EUIPO warns IP users to beware of misleading payment requests and not to pay before checking.

To protect customers, EUIPO will continue to publish scam letters and emails in a searchable database of misleading payment requests available on the EUIPO website and further relayed on social media channels.

EUIPO says it strongly advises customers to carefully check any communication they receive in relation to their trade mark or design applications.

If you receive suspicious communications or have any doubts, you can contact CustomerCare@euipo.europa.eu. You can also contact the members of the MARQUES Anti-Fraud Task Force, who are listed here.

Find out more on EUIPO’s website here. This news was also reported on the IPKat blog here.

Picture from EUIPO website

The Intellectual Property Office of the Philippines (IPOPHL) has issued draft Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks. Joseph Sarmiento reports.

In the past, the only way to have a mark declared as well-known in the Philippines was when a competent authority such as a court or the Bureau of Legal Affairs (BLA) of the IPOPHL declared a mark as well-known in the course of opposition or litigation.

In determining whether a mark is well-known, a majority of the following criteria shall be taken into account, but they must include items (b), (c), and (l):

a)          the duration, extent and geographical area of any use of the mark, in particular the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

b)          the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;

c)          the degree of the inherent or acquired distinctiveness of the mark;

d)          the quality, image or reputation acquired by the mark;

e)          the extent to which the mark has been registered in the world;

f)           the exclusivity of registration attained by the mark in the world;

g)          the extent to which the mark has been used in the world;

h)          the exclusivity of use attained by the mark in the world;

i)           the commercial value attributed to the mark in the world;

j)           the record of successful protection of the rights over the mark;

k)           the outcome of litigations dealing with the issue of whether the mark is a well-known mark, if any; and,

l)            the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that their mark is a well-known mark.

Two significant changes

The above have long been part of the criteria used in the Philippines to determine whether a mark is well-known. However, two significant changes have been made.

First, it is required that a majority of the criteria shall be taken into account and that the evidence submitted to prove well-known status must include letters (b), (c), and (I).

Second, an application for the declaration of a well-known mark is prosecuted ex parte. An examiner evaluates the pieces of evidence presented. The procedure includes: an examination process by an examiner; a recommendation by the examiner to the Director of the Bureau of Trademarks (BOT) to declare a mark as well-known; a decision by the BOT Director to declare the mark as well-known; publication; and an opportunity for third parties to file observations.

Third-party observations

Should there be a third-party observation, a consultative committee on well-known declarations will be constituted. The BOT Director will then decide on the application after receipt of the recommendation of the consultative committee.

If there is a third-party observation, the mark shall be declared as a well-known mark only upon finality of the decision declaring the mark as such.

If there is no third-party observation, the mark shall be declared as well-known on the 31st day following the publication date of the declaration. Thereafter, the BOT shall issue a certificate of well-known mark declaration and shall cause the said declaration to be entered in the Register of Well-Known Marks.

The declaration of well-known mark is prima facie evidence of the well-known status of the mark with respect to goods and services stated in the application.

Period of registration

The declaration of well-known mark shall be for a period of 10 years renewable for periods of 10 years, provided that the registrant is able to prove continuous use in commerce by submitting pieces of evidence of such use, and well-known status by submitting proof such as advertisements, certificates of registrations and financial statements within one year from the fifth anniversary of the declaration and upon each renewal.

If a proprietor has previously obtained a decision by a competent authority declaring a mark to be well-known, the proprietor may file a manifestation to such effect with the BOT, including evidence of such declaration.

Failure to submit the requisite manifestation and the proof of continuous use shall result in non-recordation of the previously declared well-known mark in the Register of Well-Known Marks.

Joseph Lyle K Sarmiento is a Partner of BCCSLAW in Manila and a member of the MARQUES International Trade Mark Law and Practice Team

Lauren Keller, Maarten Haak and  Inga George

In the final session of this year's MARQUES Annual Conference, “You can learn about the latest CJEU case law,” three practitioners discussed CJEU and General Court case law from the past year.

Lauren Keller, Jacobacci Avvocati, Italy, Co-Chair of the MARQUES Intellectual Asset Management Team, reviewed decisions on absolute grounds for refusal:

• Case T-320/23 NOT MILK: the Court noted that consumers are increasingly inclined to examine food packaging for health or dietary reasons and agreed with EUIPO that the mark applied for was descriptive for goods in classes 29 and 32. The graphical elements of the mark did not save the application.
• Case T-107/23 MYBACON: the mark applied for was found to be deceptive under Article 7(1)(g) for “fungi-based meat substitutes; meat substitutes” in class 29. The Court noted that the relevant consumers would purchase the goods in haste and put little cognitive effort into their purchase.
• Case T-274/23 ACAPULCO: The Court found that most people recognised Acapulco as a tourist destination and the mark applied for was descriptive for services in classes 41 and 44.
• Case T-747/22 Compton: Reversing a Board of Appeal decision concerning an application for goods in classes 18 and 25, the Court made a distinction between streetwear and conventional clothing and said the relevant public was the German public as whole, which did not know where the city of Compton is.
• Case T-597/22 Sophienwald: This case concerned an application to register a historical place name for goods in classes 14 and 21. The Court upheld the decision to refuse it. The graphical elements in the mark applied for were not sufficient to overcome the objection.
• Case T-255/23 PABLO ESCOBAR: The applicant applied for a mark in a wide range of goods and services and the Court upheld the decision to refuse it for being against public policy/accepted principles of morality. It said a large part of the Spanish public would associate the name Pablo Escobar with criminality, even though he was never convicted of a crime.
• Case T-19/22 Piaggio: The Court overturned a Board of Appeal decision, and found that the shape of the Vespa scooter had acquired distinctive character throughout the EU. The applicant had submitted a survey covering 83% of the EU as well as other evidence about the iconic status of the Vespa. “The case is a milestone as it shows it is possible to meet the Kit Kat criteria,” said Lauren.
• T-652/22 Veuve Clicquot orange: In this case, Lidl challenged the validity of Veuve Clicquot’s EU trade mark for the colour orange for champagne. Distinguishing between primary and secondary evidence, the Court annulled the Board of Appeal decision and remitted the case to the Board of Appeal – a decision is expected next year.
• Cases T-297/22 and T-298/22 Lego mini figures: The Court upheld the validity of the marks saying they did not consist entirely of the nature of the goods and the shape was not necessary for technical result. “We’re seeing more recognition of the registrability of 3D shapes as trade marks,” said Lauren.

Inga George illustrates the lion's head case

Inga George, boesling IP, Germany, Co-Chair of the MARQUES Designs Team, chaired the panel and discussed cases on relative grounds for refusal:

• Case T-773/22: This concerned an EUTM application for the representation of a dachshund dog with the words GILBERT TECKEL and an earlier mark representing a dachsund which was registered for identical goods. The Court upheld a finding of likelihood of confusion. Inga said the case raised some questions but is “perfectly in line with previous CJEU case law”.
• Case T-564/22: The Court reversed a finding of likelihood of confusion between an EU trade mark application and an earlier mark which both comprised representations of a lion’s head. It said the similarities between the signs were not sufficient for a finding of likelihood of confusion even for identical goods. The panel speculated about whether some animals are more distinctive than others.
• Case T-157/23 Joy v Joyful by nature: The applicant for an EUTM for Joyful by nature argued that the earlier mark Joy for perfume had lost its reputation. But the Board held that some reputation survived, and the Court agreed. “This is positive news for owners of well-known trade marks and makes sense from a practical point-of-view,” said Inga.
• Case C-801/21 BASMATI: This Brexit-related case addressed the relevant point in time for the legal assessment. The General Court had said the Board of Appeal must make a decision based on the situation at the time of its first decision (ie before the end of the Brexit transition period). Rejecting an appeal by EUIPO, the CJEU upheld the General Court’s judgment. Comments from the audience criticised the ruling but also noted its limitations.
• Cases T-222/21 and T-281/21 Shoppi and APE TEES: These two cases, which are pending before the CJEU, raise similar issues to BASMATI but the relevant dates and timings are different.

MARQUES Chair Antony Douglass thanked everyone involved in this year's Annual Conference and looked forward to the 39th Annual Conference in The Hague (16-19 September 2025)

Maarten Haak, Hoogenraad & Haak, Netherlands, a member of the MARQUES Unfair Competition Team, focused on CJEU preliminary rulings:

• Case C-361/22 Inditex v Buongiorno: The case concerned referential use of the ZARA mark. The Court repeated its existing case law in BMW v Deenik but did not elaborate further. “We will see more cases on referential use because it is not clear what is and is not allowed,” said Maarten.
• Case C-33/22 Audi v GQ: This case concerned a trade mark for the Audi grill. The Court distinguished between trade mark and design law but did not address the functions of the mark or referential use. The case will be assessed as normal trade mark infringement.
• Case C-367/21 Hewlett Packard v Senetic: In this case, the Court said that if the defendant faces insurmountable difficulties in proving the source of infringing goods, it is up to the trade mark owner to provide relevant information. If it does not, the burden of proof must be modified. “I expect this will slowly move towards getting more lenient toward resellers,” said Maarten.
• Case T-777/22 PLAN B: This raised the question whether it was bad faith to make an EUTM application while a case concerning an identical Spanish mark was pending. An appeal has been filed to the CJEU.

The panel also discussed some design cases; these will be reported on the Class 99 blog shortly.

Johannes Fuhrmann, Giuseppe Bertoli, Mila Misevska and Kasper Frahm

How do you ensure that trade mark proceedings reflect the reality in the market? That was the topic discussed in the panel on “You can explore market realities at EUIPO” at the MARQUES Annual Conference today. The panel was moderated by Kasper Frahm, Plesner, Denmark, a member of the MARQUES European Trade Mark Law and Practice Team.

Mila Misevska, Play ‘n Go Marks Ltd, Malta, a member of the MARQUES European Trade Mark Law and Practice Team, says she conducts lots of availability searches to minimise the risk of oppositions. She focuses on distinctiveness and availability to avoid challenges from third parties and searches both registered and unregistered trade marks.

“On average, I get 350 hits, of which 10 to 15 marks pose a risk,” said Mila. She has 10 questions to work through to decide the level of risk, covering: similarity, descriptive elements, commonly used elements, the current coexistence on the market, whether they are a direct/indirect competitor, your risk appetite, how aggressive the prior right owner is, timeline for launch, whether it is a new product or an existing line and industry/company-specific factors. 

But she said it is also important to remain flexible: “You can never predict how a specific trade mark owner will react.”

Giuseppe Bertoli, Director for Legal Affairs Department, EUIPO said market reality is important for both assessing applications and in inter partes cases. This means looking at the norms in the sector concerned. “There is nothing preventing the applicant from helping the Office in this task,” he said.

Til Todorski of Stockholm University was presented with the 2024 Lewis Gaze Memorial Scholarship by MARQUES Chair Antony Douglass

In the case of acquired distinctiveness, the burden is on the applicant to demonstrate distinctive character throughout the EU. “The issue of online evidence is of particular importance when it comes to proving acquired distinctiveness,” said Giuseppe.

He also discussed the issue of proving that a sign is commonplace based on several prior trade mark registrations. “This evidence is often discarded as it shows register reality rather than market reality,” said Giuseppe.

He highlighted recent cases including HYPERBURST – Energy Burst (R 998/2023-4), HYAL – HYALERA (T-497/23), Device of a horn (T-25/20), Dreamer – DREAMS (T-608/22) and LifeAfter – life (T-175/23). “The evidential burden on the applicant is rather heavy,” Giuseppe concluded.

Finally, Johannes Fuhrmann, Bomhard IP, Spain, who is Chair of the MARQUES European Trade Mark Law and Practice Team, explored how to introduce market realities into EUIPO proceedings.

“You need to show use by various traders in the market, but that is impossible for an EUTM as you would need it for all EU Member States,” he said. Similarly, on descriptive meaning, it is important to find evidence of the term being used descriptively. Dictionaries are also a good source but should be supplemented by other evidence.

Johannes discussed the use of market surveys in the context of the Sleepy Natural – NIVEA case (opposition B 3093528) and the LELE BROTHER – LEGO case. He also  examined the expansion of famous brands into new markets and the TIFFANY – TIFFANY GOLTS case (opposition B 3163833).

“The bottom line is: don’t just claim it, prove it with solid evidence and examples!” said Johannes.

Augusto Drumond, Margherita Gastaldi, Ann-Charlotte Järvinen and Sara Söderling

In the day’s first session, Sara Söderling, AWA Sweden AB, Sweden, a member of the MARQUES Designs Team moderated a discussion titled “You can succeed in online enforcement” which featured Augusto Drumond, Amazon, Luxembourg, who is a member of the MARQUES European Trade Mark Law & Practice Team as well as Margherita Gastaldi, Pandora, Denmark and Ann-Charlotte Järvinen, AWA Sweden AB, Sweden.

The panel discussed online enforcement strategies and how these can complement offline strategies, and explored the different enforcement options available.

The Annual Conference continues on Thursday afternoon with five workshops and several excursions available, before the Gala Dinner in the evening.