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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
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Spring Meeting: what’s new at the EUIPO

A workshop on European convergence projects (CPs) and recent trade mark case law took place during the MARQUES Spring Meeting in Frankfurt today (2 March).

Johannes Fuhrmann of Bomhard IP, Augusto Drummond of Amazon and Marianna Karjanlahti-Perini of Waselius & Wist took part in the panel. It was moderated by Jana Bogatz of D Young & Co and organised by the MARQUES European Trade Mark Law and Practice Team.

Introducing the workshop, Jana highlighted the wide range of topics covered by the CPs, which aim to harmonise practices before IP offices in EU member states and other European countries. Trade mark topics addressed by the CPs have included classification issues, treatment of black-and-white marks, marks used in different form to registration, and new types of marks. There have also been three CPs on designs. MARQUES has taken part in several CP working groups alongside other user associations.

Most of the completed CPs have been implemented by most offices, but several projects are ongoing. The panel discussed two that MARQUES has been closely involved with and which are close to being finalised: CP13 and CP14.

CP13 Trade mark applications in bad faith

Johannes explained that CP13 covers every aspect of bad faith, and is based heavily on case law. Two facets in particular that have been identified are misappropriation of the rights of third parties and abuse of the trade mark system. “These bad faith cases are very evidence-heavy and always different so you have to look at all the circumstances,” said Johannes.

He distinguished between mandatory factors for bad faith (the applicant’s dishonest intention) and non-mandatory factors (including the applicant’s presumed knowledge, goods and services at issues, chronology of events, previous behaviour of applicant, relationships between parties). (Interestingly, re-filing of applications was one of the least controversial topics as the working group agreed that it depended on the circumstances and re-filing should not automatically be regarded as bad faith.)

“We tried to identify the different bad faith scenarios to give guidance,” said Johannes. Five common situations were identified: parasitic behaviour, breach of fiduciary relationships, defensive registrations, re-fling and speculative purpose/leverage. MARQUES played an active part in providing feedback in the development of CP13, added Johannes: “It was very interesting and rewarding to see the user group listen to the user associations.”

CP14 Trade marks contrary to public policy/accepted principles of morality

“This is a controversial topic,” said Augusto, introducing CP14. Despite extensive case law, there is no agreed definition of trade marks which are contrary to public policy/morality under Article 4(1)(f) of the EU Trade Mark Directive. This is an absolute ground for refusal/invalidity.

The work on this CP started with an extensive questionnaire, derived from the case law and Advocate General opinions. “Based on this we had an initial definition of both concepts, but this changed during the discussions," said Augusto. In both cases, the definition eventually agreed on allowed for the concepts to change over time.

Augusto pointed out that approaches to these questions differed widely between member states, often based on cultural factors such as religious beliefs and free speech, so finding a consensus on definition was a good achievement. However, establishing principles and general criteria to help examiners was more difficult.

The final list of general criteria included different meanings of signs or addition of elements that change the meaning (eg Pussy with a cat device), transformation (skull-and-cross bones), misspelling, and the relevant public for the goods and services. Augusto invited the audience to vote on whether various marks should be accepted or refused – which led to some interesting discussion between panel and audience.

MARQUES favoured a liberal, business-friendly approach in the working group on the basis that bad taste is not the same as morality. By focusing on real business cases and building partnerships, Augusto said MARQUES was able to succeed on many important points.

Recent case law

In the final part of the workshop, Marianna discussed several recent judgments of the EU General Court:

  • An invalidity case concerning NATURCAPS for dietary and dietary supplements versus NATURKAPS for pharmaceutical products (both in class 5). The Court found there was a clear distinction between dietary supplements and pharmaceutical products.
  • The Standard case where evidence of advertising and marketing in the EU for services outside the EU were found to be acts of use of the mark (registered for services in class 43) within the EU. In this case, the General Court overturned the decision of the Board of Appeal.
  • Three cases concerning disputes where it was argued that there was “use without due cause of the trade mark applied for [that] would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark” under Article 8(5), involving Puma, Rolex, and Marlboro. “The takeaway is you need to prove your claims,” said Marianna. “Hypothetical reasoning is not enough.”

The MARQUES Spring Meeting is taking place in Frankfurt this week, and is attended by MARQUES Council and Team members.

Posted by: Blog Administrator @ 14.33
Tags: Cooperation Projects, bad faith, morality,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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