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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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SUNDAY, 5 MAY 2024
IP Case Law Conference – day 2 part 2

Earlier this week, the EUIPO hosted the fifth IP Case Law Conference. Class 36 has been posting summaries of the panels; this update covers the sessions on the second afternoon.

Geographical indications

Geographical indications were the subject of the sixth panel, which was led by Dr Anke Moerland - Associate Professor of Intellectual Law at Maastricht University.

“We are facing a three-body problem,” said Katarina Kompari, LL.M (UCL), Intellectual Property Legal Expert in the Legal Department and Team Leader of the GI reform team and the Knowledge Circle for GIs and Collective rights, EUIPO.

She introduced the new Regulation on craft and industrial products and set out how the EUIPO is preparing for its introduction in December 2025: “We’re building a new e-filing system and Union register and GIview will continue to be the single entry point to all GI rights registered in the EU.”

Ms Kompari also explained the different types of procedures for GI registration – standard, direct and third country.

Pilar Montero - Commercial Law Professor, Director IP and Digital Innovation Alicante Master-Magister LVCENTINVS UA spoke about Broadening Protection in Geographical Indications Law. She explained that the EU General Court has interpreted “evocation” broadly in four cases to cover images, shapes and similar names. However, the term evocation is defined differently in the regulation on craft GIs and in the new regulation on agricultural GIs.

Can craft and agri GIs successfully meet the challenges of globalization? asked Dr Dev Gangjee - Professor of Intellectual Property Law at Oxford Law Faculty. For GIs to be successful, they need to travel, he said. But, according to WIPO statistics, there were some 22,000 global GIs in force in 2022 (excluding international agreements). “It’s not a very large number of GIs protected overseas. It’s not a problem in terms of numbers but it could be in terms of tricky issues,” he said.

These tricky issues include: scope of protection; how GIs are interpreted by national courts; oppositions and their reasoning; and prior trade marks (especially for non-agri GIs).

“Geographical elements are a hot topic in the case law,” said Virginia Melgar - Chairperson of the 5th Board of Appeal, EUIPO, who addressed the relationship between GIs, certification marks and collective marks.

She discussed the Halloumi cases and the Darjeeling case at the EU General Court. “We need to build case law,” she added. “Please also promote research on these topics!”

Collective marks registered in the EU include Platano de canarias and Chianti but some applications such as Madeira were refused for including a geographical element. Certification marks should not include geographical elements, but some have nevertheless been registered. These include Nepal tea and Vinagre de vinho do Porto.

Harmonization of trade mark and design law

The final panel of the conference was led by Mladen Vukmir - ECTA President.

In his presentation on Contributing to Trade Mark and Design Harmonization in the European Union: Trailblazing at the Boards of Appeal, Gordon Humphreys - President of Boards of Appeal ad interim, EUIPO discussed the interest in Board of Appeal case law, and how decisions are covered worldwide – helped by the fact that 70% are in English. “The eyes of the world are literally on us. If we strive to be a centre of excellence, we better make sure we walk the talk,” he said.

Quality decision making is timely, coherent, consistent, transparent and predictable – but some variation is inevitable due to the facts of cases, he said. Moreover, accepted principles may need to be departed from if they lead to illogical results: “But flexibility is not the same as a free for all. It’s a question of common sense.”

Consistency circles for certain matters have been established to promote consistency and have led to 18 published reports so far. Boards have also played a leading role in convergence programmes. “The principles they espouse dovetail with the Boards’ case law,” said Mr Humphreys.

Moreover, mediation was introduced in 2011 and conciliation in 2014 at no cost to users. Around 150 ADR cases have been conducted with a success rate of 70% so far, and this contributed to the establishment of the Mediation Centre last year. “Whether we’re trailblazing or harmonising, we strive to set the tone and provide the highest level of service possible,” he concluded.

Joana De Moura Oliveira - IP Specialist and Team Leader of the Convergence of Practices Team within the European Cooperation Service, EUIPO set out the recent common practices on The harmonisation of practice on bad faith (CP13) and public policy and morality (CP14).

These are two of 14 common practices adopted and implemented so far. CP13 was needed to clarify bad faith, which is not defined in the legislation and has led to diverse case law.

Regarding CP14, there was particular uncertainty about the difference/overlap between public policy and morality and the growth in the number of applications challenged under these grounds. CP14 sought to categories these cases and provide agreement. Both were recently published in 23 languages and will be implemented soon.

She described their implementation as “an important milestone in the trade mark landscape” that will deliver clarity and predictability, enhancing legal certainty and consistency in the EU. “The impact of convergence has been shown in the past, with surveys showing IP offices and users are 80% aligned in the implementation of common practices,” she said – adding that, if common practices need to be updated, they will.

Providing a judicial perspective, Prof. Dr. Volker Michael Jänich - Friedrich Schiller University Jena, Gerd Bucerius Chair of Civil Law with German and International Intellectual Property Law, Judge at the Thuringian Higher Regional Court (OLG) talked about defining quality at the appellate level.

What makes a high-quality decision? he asked. He emphasised the quality and correctness of judgments: only a correct decision is a good judgment. Criteria include speed, rate of overturning and consistency. But judicial independence is the natural enemy of consistency and cohesion. Measures to improve quality include specialisation and communication (ie panels of judges rather than single judges). “More judges make better law,” said Prof Jänich.

Finally, Dimitris Botis - Director of the Legal Department, EUIPO reflected on 10 years of the EUIPO Guidelines. They replaced the Manual and are driven by IP knowledge circles, which are teams of experts coordinated by the EUIPO legal service. “They function as think tanks” and comprise 98 experts from all areas of the Office, said Mr Botis.

Change may come from new laws, judgments, Board of Appeal decisions, as well as from consultations, common practices, quality controls and customer feedback. There is close cooperation between the legal service and the Boards of Appeal and the revision cycle lasts a year with the guidelines being adopted in the first quarter of each year.

“In the last 10 years, we have received almost 3,200 external comments, showing the interest of stakeholders,” said Mr Botis. The Office’s goals are legal compliance, predictability and coherence/consistency and the Guidelines support all of these. This has also resulted in positive customer feedback.

The conference concluded with a closing speech by Mr Humphreys and the presentation of a prize for the best question: this went to Antonios Baris of Stockholm University who asked a question about whether overlapping IP rights are problematic.

Photos by James Nurton

Posted by: Blog Administrator @ 17.48
Tags: IPCLC, EUIPO, General Court,
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