The 6^th IP Case law Conference took place in Alicante and online on 21 and 22 May and featured panels comprising judges, EUIPO Board of Appeal members, academics and IP practitioners – including several MARQUES members.

Frontiers of trade mark law

In the first panel, on the emerging frontiers of EUTM adjudication, General Court Judge Krystyna Kowalik-Bańczyk discussed trade mark applications in unfamiliar scripts, which make up a growing proportion of applications in the EU.

The judge discussed cases including C-147/14 Loutfi v AMJ Meatproducts, which held that pronunciation must be taken into account if the relevant public would consider those factors, as well as cases concerning transliteration of Chinese characters (T-140/24 Baidu and T-533/23 Hongqi).

In a recent case, T-323/21 Castle Freres v EUIPO relating to the mark DRAGON DE CHINE, 600,000 Chinese speakers in France were not (yet) enough to prove genuine use of a Chinese character mark given the nature of the use of the mark, as it was used alongside other brand elements.

Partial use and the definition of sub-categories in sectors including beverages, automobiles and luxury goods were the topics of General Court Judge Ion Gâlea’s presentation. He noted that the purpose and intended use of the mark is a well-established criterion, but other characteristics may also be relevant. It is difficult to identify a trend in the case law, he said, and concluded: “The concept of homogenous category also appears in other contexts, such as absolute grounds for refusal.”

Judge William Valasidis discussed how visual elements influence relative grounds for weak marks, in light of the judgments in Case T-70/20 Museum of Illusions, Case T-443/21 Yoga Alliance India International and T-736/22 SNACK MI, T-1066/1069/23 MAY TEA and T-145/14 Two parallel strips on a shoe. He said visual elements can play a key role in opposition proceedings, including in assessing the likelihood of confusion and reputation analysis. He emphasised that size and position matters as well as the precise combination of visual and verbal elements. “The degree of attention of consumers is crucial,” said Judge Valasidis, as is the sector involved and other factual circumstances.

In her presentation, Cinzia Negro, Chairperson of the 2nd EUIPO Board of Appeal, asked: is “high inherent distinctiveness” an oxymoron? She addressed the question under both Article 8(1)(b) and Article 8(5) reputation. She answered “yes” for the former but “no” for the latter, saying that a unique mark is more readily and strongly evoked in the mind of consumers than a common word (such as Puma): “All else being equal … it is easier for a unique trade mark to come to the consumer’s mind when encountered on completely different products.”

Following this, Virginia Melgar, Chairperson of the 5th Board of Appeal, discussed the opposite scenario: can strong reputation make up for weak distinctiveness? She concluded that the case law has no uniform understanding, and the inherent distinctive character is a separate relevant faction in assessing the link, independent from the finding of reputation. “The weakness of the earlier mark ... may play an important role in the global assessment of the link,” she said.

The panel was moderated by Savvas S Papasavvas, Vice-President of the General Court.

Use it or lose it

Following a panel on design law (see this Class 99 blog post), the third panel was moderated by Shane Smyth of FRKelly, a member of the MARQUES Council. It looked at proof of use.

Katie Goulding, Brand IP Counsel at Jaguar Land Rover, said the “use it lose it” rule implies static marks whereas in reality brands are changing and being used in different contexts. A better question to ask is: what are we trying to achieve? What is the evidence for? “Most brands have to adapt quickly,” she said. That means having sensible, commercial conversations about what to achieve with the brands, not necessarily what to protect on the register. When it comes to assembling evidence, she said relationships are key; IP should help build brands; consider the full breadth of architecture (clubs, memberships, collaborations etc) and licensing opportunities. She also emphasised getting access to tools used by other teams in the business and building a narrative. “We have to be forward-looking not backward-looking,” she concluded.

The next speaker, Anke Nordemann-Schiffel, Partner at Nordemann and President of GRUR, looked at use of a trade mark in altered form in Article 18(1)(a). She agreed with Katie that “trade marks are living things”. She described the approach in case law as “very, very liberal” as even fundamental changes to weak marks may constitute genuine use, but she added that there are signs the approach is becoming stricter.

Anke referred to recent rulings from the EU General Court, national courts and Boards of Appeal, including Case T-46/25 GENUSSLÄNDER; I ZB 30/25H15 / Hecht 15; R 1128/2025-4 PHARMOS NATUR; R 952/2025-1 bauhaus-shop (figurative); R1020/2025-2 CRYPTO.com; R1003/2025-1 BRUGMAN and finally a case from Germany in MONSTER ENERGY. “The distinctive elements are key. They must be clearly analysed and defined. If you have to make changes, try to be subtle and on the margins. Spend time on what is the distinctive character and show how that has remain unchanged in the brand evolution,” she advised.

André Pohlmann, Member of the 3rd and 5th Boards of Appeal, ranged from Ancient Greece to the Metaverse in his presentation. He asked: how do you prove genuine use in the EU when the use takes place in a virtual environment? Using the analogy of fish in a tank, he said the aim of genuine use is to make sure the tank is not filled with unused marks. In oppositions the aim is to strike a balance between the rights of trade mark owners and third parties.

In Case T-563/24 Làv, the trade mark owner did not show the link between invoices and product catalogues. In two recent judgments, T-73/25 Viva and T-297/25 OX, the General Court confirmed that digital evidence is valid. But the use of AI in evidence poses fundamental challenges to our system of justice: courts react very sensitively when faced with hallucinations. The perfect evidence doesn’t exist, said Mr Pohlmann: there is always a combination of documents. The best solution is an affidavit on all aspects of use along with documents corroborating it.

The final presentation asked: can territorial use outside of the EU amount to use in the EU? Simon Malynicz KC of Hogarth Chambers reviewed Case T-7668/20 Standard International, which had found that advertising in the EU of hotel services outside of the EU constituted genuine use.

Her argued that following Case C-495/07 Silberquelle, the question is whether a business is competing with similar goods on the same market in the EU. Under Case C-259/02 La Mer, the threshold for use is low – but that is part of a multi-factorial assessment. Finally, Simon said there is a temporal restriction: the use needs to be within the five-year window. “If you’re relying only on advertising, you’re going to have to show it’s competitive with services in the EU and that it’s factually strong enough to support the whole case on genuine use on its own.”

Iconic marks across borders

The final session of the first day brought an international perspective and was moderated by Daryl Lim, H. Laddie Montague Jr. Chair in Law, Associate Dean for Research and Strategic Partnerships, and Founding Director, IP Law and Innovation Initiative, Penn State Dickinson Law.

Discussing Article 8(5), Nina Korjus, Chairperson of the 4th Board of Appeal, said the existence of a “link” must be appreciated globally (C-252/07 Intel); it is important to look at how strong the earlier mark really is (C-564/16 P Puma); and reputation can be established by any relevant evidence (R0040/2025-4 OPPLE). In R2215/2919-1 Puma, the Board rejected an opposition even based on Puma’s best case as there was no link. That decision is being appealed.

Masatoshi Otsuka, Deputy Director, Trademark Administrative Judge, JPO Trial and Appeal Department, discussed the protection of reputed and famous marks in Japan. He also referred to opposition cases involving Apple and Puma which showed that it is hard to protect even a famous marks, saying: “These cases illustrate the difficulty in drawing the line on the extent to which famous marks should be protected.”

Ray Jang, Administrative Trademark Judge, IP Trial and Appeal Board, MOIP, Korea, said “We need more specific criteria to decide what is remarkably recognised, well recognised or bad faith.” In one case the Supreme Court invalidated LEGOPHARMA for pharmaceuticals based on the reputation of LEGO for toys etc.

Wei Chengcheng, Principal Officer in the Trademark Office of CNIPA, summarised the protection for well-known marks in China and the procedures for determination and protection. She also had examples of cases involving Puma and Apple and stressed the importance of a comprehensive assessment.

Melanye Johnson, Acting Deputy Chief Administrative Trademark Judge at the USPTO TTAB, said the principle in the US is: “prove it to me every time!” and courts diverge in their interpretation. “Fame must be proven with substantial evidence in every single case,” she said, adding that the evidence should be from the United States.

Ms Johnson cited Starbucks v Lessbucks where Starbucks was granted a broad scope of protection based on extensive evidence of reputation. She also discussed trade mark dilution cases, noting that Nike successfully argued the Just Do It sign would be diluted by Just Drew It based on its reputation as a slogan and tagline. It was entitled to the “highest level of protection” against confusion.

Fireside chat

Session 6 of the Conference, comprised a fireside chat featuring Sven Stürmann, President of the Boards of Appeal; Miguel Gusmão, Director of the Operations Department of EUIPO; Claudia Pappas, Head of the IP Team, Thyssenkrupp Intellectual Property GmbH and Chair of the MARQUES Council; and Alfonso Sabán Astray of Herrero & Asociados. It was moderated by Max Walters, Editor, Managing IP.

Miguel discussed how EUIPO uses AI in its business and how it is regulated. “We have a lot of data and we can see a lot of patterns,” he said. In areas with large volumes of work and repetitive patterns, AI can assist in making the Office more effective. However EUIPO has implemented a two-step process, with one step always being human verification.

“None of this would work if we did not involve our users,” said Miguel. EUIPO also has mandatory training on AI for all staff. “Using AI is not an end in itself, but a means to deliver predictability and consistency,” he said.

Sven argued that AI is “very relevant” in enhancing predictability, but human judgement and independence must be maintained. “AI can be a support for the drafting but never for the decision making,” he said. He added that use of AI by lawyers can lead to longer statements, which makes the process more time-consuming and less efficient: the Boards are now discussing the introduction of page limits. “It is important not to lose trust,” he stressed. “We need to see this as a common task, and ensure we are using it in a fair, transparent and common-sense way.”

Alfonso said that AI has had the most rapid growth of any technology in history, adding: “AI can be very accurate and very stupid at the same time.” He said lawyers need to find a balance between “what is expectable and what is acceptable”. He said he uses it for high-volume, easily replicable and easily verifiable tasks, as well as for help with communications in other languages.

In her comments, Claudia said AI first changed her life in the form of GPS, but she then lost the ability to find her way without it. “We also need to think about this in our business field,” she said. At ThyssenKrupp, there is a monthly meeting to discuss use of AI in IP work as well as regular meetings with other German brand owners. AI tools are used for checking invoices, drafting, checking goods and services lists and contracts. Challenges include labour law, contracts with AI providers, data compliance, indemnification and protection of know-how. “What’s the role of lawyers?” asked Claudia.

The panel also discussed choosing the right tool, cutting out “blubbery”, retaining judgement skills, using AI to provide a third opinion, the risks of using external providers, developing new skills and competences, the importance of empathy, transparency and the EU AI Act. Claudia stressed the importance of identifying when AI produces nonsense, saying: “My take is: Don’t stop thinking. We have to think more.”

Parallel lives

Session 7 covered the dialogue between trade mark registration and infringement proceedings. It was moderated by Kari Kuusiniemi, President of the Supreme Administrative Court of Finland.

Cornelia Schmitt of Grünecker argued that courts are taking a close look at the conduct of parties and using the system too aggressively, and asked: “At what point does a filing strategy become bad faith or abuse?” In Case T-136/11 concerning Pelikan’s repeated re-filings of near-identical marks, the General Court said there is a presumption of good faith and the registration of a similar mark and use in enforcement proceedings does not necessarily show bad faith. However, in T-663/19 Monopoly, Hasbro had admitted that a reason for re-filing was to avoid the burden of proving use and the trade mark was partly cancelled.

In R 2455/2017-G Sandra Pabst, the Grand Board of Appeal held that cancellation actions had been filed in bad faith and therefore it rejected the request as inadmissible. Cornelia said that, following recent decisions, more companies are thinking carefully about re-filings and whether to file applications with slight differences.

Sarah Van Den Brande of Liedekerke discussed recycling and upcycling in the context of the EU Green Deal. She said there are three main defences to trade mark infringement that are relevant for recycling/upcycling: (1) no use as a trade mark; (2) exhaustion of trade mark rights; and (3) referential use.

The legal principles have been applied in cases including Case C-197/21 SodaStream, in which the Court said a trade mark holder can oppose unless there is an economic link; a Hermès case from France in which all the lines of defence were rejected; and several cases regarding the customization of ROLEX watches. In one case, it was held that customization at a customer’s request was lawful, but commercialization of customized watches was unlawful.

Sarah concluded that recycling can proceed as long as no claim of a link with the trade mark owner is made; for upcycling there is no case law; and for customisers the initiative needs to come from the consumer.

Judge Jolanta de Heij-Kaplińska of the Court of Appeal of Warsaw presented on interim measures and invalidation proceedings. There should be a global assessment bearing in mind the principle of proportionality, she said.

Finally, Chris Oldknow of Amazon discussed decision-making at scale. He said that notice and takedown procedures are in a sense an interim measure. About 60% of what is sold on Amazon is sold by third-party sellers: making that work well relies on reducing friction. Protecting customers starts with proactive controls, which are built on machine learning, and involves verification tools and technologies and transparent processes. In the last six months, Amazon has made 20 million proactive notices. “There are a huge amount of decisions that are working their way up through the system,” said Chris. “We have a long way to go and the DSA is in its infancy.”

Names and other IP rights

In the final session of the Conference, Giuseppe Bertoli, Director of the EUIPO Legal Affairs Department, introduced craft and industrial geographical indications (CIGIs): the first CIGO (for Porcelaine de Limoges) was recently registered.

He also discussed the interaction between GIs and trade marks, as clarified by the General Court in Case T-239/23 Nero Champagne. In response, the EUIPO has drafted new guidelines which will be published soon. Giuseppe asked whether inter partes proceedings still matter in cases involving GIs, and said he believed they do – though they may become less common.

Gaya R Schultz of Kennedy Van der Laan focused on the conflict between trade marks and trade names. She said trade names are gaining nationwide reach and are often not properly checked by trade mark applicants. However, in the absence of guidance, decisions are made case-by-case. “A clearer and more consistent approach would be desirable,” she said.

Head of IP Strategy at INDITEX and MARQUES Council member, Susana Fernández Martín, addressed domain names and the challenges they pose to established principles such as jurisdiction. She discussed recent Board of Appeal cases involving domain names as prior rights. “Owning a domain name is the starting point to challenge an EUTM. It’s not impossible but you need to provide appropriate evidence of significance,” she said.

Irène Bénac, Vice-President of the 3rd Civil Chamber – 2nd Section, Judicial Court of Paris, discussed personality rights. She described them as “extra-patrimonial” as they cannot be transferred and normally last for a lifetime. Citing a number of French cases, she said they can acquire economic value and may be protected by IP rights, that are transferable and licensable. Heirs can inherit personality rights, but are bound by the wishes of the deceased. “Personality rights are not a clever solution for protecting these characteristics, and are almost always set aside in favour of trade mark rights,” she concluded.

Finally, Sukanya Wadhwa of Brandsmiths discussed copyright protection and designs/trade marks, focusing on the judgment in Joined Cases C-580/23 Mio and C-795/23 Konektra as well as a recent UK case involving AGA and some German cases on copyright and AI. “Not all choices are creative. Various factors may be taken into account, but what matters for copyright subsistence is what they mean for the creativity expressed,” she said.

The session was moderated by Agris Batalauskis, Director of the Latvian IP Office. The Conference concluded with a summary by Sven Stürmann, President of the Boards of Appeal (pictured right).

You can read more about the IP Case Law Conference on EUIPO’s website here. Videos of the sessions and copies of the presentations are expected to be made available in due course. Photos by James Nurton