A limited number of places are still available at the EUIPO Boards of Appeal Trademarks and Designs Dispute Resolution and Case Law Tertulia. It takes place at EUIPO’s Brussels Liaison Office on 26 June 2019.

The Tertulia will start at 13:30 following a snack reception, which begins at 13:00. It will conclude at 15:30.

Members of the Boards of Appeal will lead discussions on topics including solving your dispute in an effective way and recent case law.

To attend, send an email to Tertulia-Brussels@euipo.europa.eu by 15 June with your full name and passport/ID number.

Places will be allocated in order of registration.

EUIPO has received the 2 millionth EUTM application. It was filed by Czech business consultancy Crefoport s.r.o and can be seen on TMview here.

The 2 millionth application comes 25 years after EUIPO was founded. The EUTM was launched two years later, in 1996.

The 1 millionth application was received in 2011. Last year, EUIPO received 152,488 EUTM applications (a 4.16% increase on 2017).

EUIPO has published an announcement about the landmark. The Office’s Executive Director Christian Archambeau said: “The figure of two million applications is a testament to the dynamism of EU businesses, both large and small, which represent approximately 70% of all applications at the EUIPO. So it is with great pleasure that I congratulate Crefoport for having chosen the EU trade mark, along with thousands of other European businesses.”

To mark World Anti-Counterfeiting Day, we have a message from Petra Herkul, Chair of the MARQUES Anti-Counterfeiting and Parallel Trade Team:

On World Anti-Counterfeiting Day the Observatory released their 2019 IPR infringement status report which contains an overview of the main research outputs of the Observatory along with its key activities.

It also includes the 2019 update of the flagship study estimating the percentage of counterfeit and pirated goods in international trade. These reports are very valuable documents for all stakeholders to understand the impact of IPR infringement and use the content to share with relevant stakeholders.

Read the status report here.

Brazilian President Jair Bolsonaro is expected to sign an Act to enable the country to accede to the Madrid Protocol later this week. The country’s Senate passed the bill in a vote on 22 May.

Once the President has signed the Act, the country will be ready to accede to the Protocol.

MARQUES has encouraged countries in Latin America, including Brazil, to join the Madrid System for many years. The Association has twice sent delegations to the region to promote membership.

However, there has also been opposition to membership from local groups, based on lack of proper knowledge of the System. This has resulted in many years of discussions and delays.

Eduardo Machado, of the MARQUES International Trade Mark Law & Practice Team, says that with the latest developments, “the battle is 95% won.”

He added that ABPI, the national IP association, will have a panel on Madrid at its annual meeting in August to explain how the System will work following accession. To this end, ABPI has invited foreign colleagues (including MARQUES members) who have recent experience of joining the system to share their experiences.

In preparation for accession, Eduardo says, the Brazilian IP Office has reduced the time taken to register trade marks where there are no oppositions to 18 months. “This means 85% of applications are now registered within this time,” he says. “I don’t think there will be any problems on that front.”

The International Trade Mark Law & Practice Team is compiling a guide to experiences in countries that have recently acceded to the Protocol. Look out for a report on Class 46 soon.

MARQUES is pleased to inform Class 46 readers that the second edition of the EUIPO Trade Mark and Design Education Programme (ETMD EP) 2019-2020 is now open for registration.

The programme comprises 150 hours of courses involving e-learning, webinars and two three-day face-to-face sessions at the EUIPO in Alicante, Spain. It will be conducted in English.

The courses will be delivered by EUIPO staff and leading IP professionals and academics, including members of the MARQUES Education Team. Team members have contributed to the programme since its inception, and also took part in the first edition.

Registration is open from 15 May to 30 June inclusive. It is on a first-come first-served basis and limited to the first 100 participants. Tuition fees are €1,500.

For more information, see the dedicated page on EUIPO’s website.

The EUIPO Academy is hosting the following webinars on Tuesdays during June:

• Interacting with Devices in the Digital Era: Protecting the IP from the EPO and EUIPO perspectives (4 June, 10:00 am)
• Interplay between trade marks, trade names and domain names in the context of enforcement of rights (4 June, 1:00 pm)
• An empirical analysis of the design case law of the EU Member States (11 June, 10:00 am)
• Formality requirements of certification marks (regulation of use) (11 June, 11:30 am)
• Filing of evidence according to Article 55(2) EUTMDR (18 June, 10:00 am)
• Decisions of the Trimester of the GC and the CJEU (25 June, 10:00 am)
• The new IP Enforcement Portal (25 June, 11:30 am)

All these webinars will be in English and can be viewed live or recorded (from two days after broadcast). You can sign up online for free.

Amendments to the Trademark Law of the People’s Republic of China will come into effect on 1 November 2019, after they were passed at the 10^th Session of the Standing Committee of the 13^th National People’s Congress on 23 April.

Six articles of the Law have been amended. They address issues including bad-faith trade mark applications and damages for trade mark infringement.

Legislators have responded to widespread concern among brand owners about bad-faith applications and hoarding of trade marks by adding text into Article 4 of the Law, which sets out who can apply for a trade mark registration. The new sentence states: “If any trade mark applicant obviously lacks the true intention of use and has bad faith in filing a trade mark application, its trade mark application shall be refused by the Trademark Office.”

In addition, there is a new requirement on trade mark agents not to accept instructions to file applications which they know or should know are filed without intent to use or in bad faith (Article 19). Moreover, Article 68 now states: “Any entity filing trade mark applications in bad faith shall be given warnings or imposed a fine, according to current situation. If a trade mark lawsuit is filed on a malicious basis, the people's court will impose a penalty accordingly.”

Bad faith has also been added as a basis for opposing and invalidating trade mark registrations in Articles 33 and 44 respectively.

Regarding infringement proceedings, Article 63 increases the compensation in cases “of bad faith infringement where the circumstances are serious” from three times to five times and increases statutory compensation to a maximum of 5 million yuan.

New text in Article 63 states: “In the civil proceedings with respect to trade mark dispute cases, counterfeit goods shall be destroyed at the request of the trade mark right holder, except other special circumstances. Materials and tooling that are mainly used for manufacturing counterfeit goods shall be destroyed without any compensation, or in special circumstances shall be excluded to enter into commercial channels without any compensation. Counterfeit goods shall not be allowed to enter into the commercial distribution channel after counterfeit labels are removed.”

Julia Zhong, Chair of the MARQUES China Team, said: “On one hand, these amendments show that the Chinese government is paying more attention to the concerns of trade mark owners, particularly in the light of the rapid growth in applications in the past few years – many of which are indeed bad-faith applications. On the other hand, these amendments do not prevent brand owners from filing defensive trade mark applications, which will be treated as having a bona fide purpose due to lack of associated mark and defensive mark registration system in China.”

She added: “In practice, CNIPA and the people’s courts have already been invalidating bad-faith applications on the basis of Article 4. However, the amendments to the Law should lead to greater consistency in the application of the Law, and make it easier to challenge applications that are clearly filed in bad faith with no intent to use the mark.”

The China Trademark Association (CTA) will host a workshop at this year’s MARQUES Annual Meeting which will cover topics including how to use the Trademark Law to counter malicious registrations. Find out more here.