Class 46 readers may be interested to know that three new EUIPO Boards of Appeal case-law reports have been published:

• Descriptiveness of names of colours
• Similarity between pharmaceuticals and cosmetics
• Component parts of complex products (Article 4(2) and (3) EUDR)

The reports are used by the Boards to identify case-law trends, develop a common understanding of relevant legal issues and support consistency. They are also used by EUIPO as a basis for discussion of Common Practices with IP Offices and User Associations to harmonise practices and standards.

More information is available on the Boards of Appeal case-law research reports page on the EUIPO website. Ideas for future topics for reports or other feedback can be sent to the Boards using the following email address: BoACooperation@euipo.europa.eu.

WIPO has unveiled a new version of eMadrid, which is now available in a beta environment.

New features include: Centralized hub; Integrated workbench; Collaboration features; Real-time updates and prompts; and Built-in guidance.

eMadrid (beta) is a live environment, with real trade mark data, and is running in parallel with current eMadrid webpages. It can be used for all Madrid System transactions via a WIPO account.

Users should use the English version for the best experience, as the French and Spanish versions are not yet fully translated.

eMadrid (beta) was launched on 20 May, during the INTA Annual Meeting in San Diego, California.

More information about the new features, as well as how to provide feedback, can be found on WIPO’s website here.

WIPO is also hosting two webinars, both in English, which will provide a guide to eMadrid (beta). They are on 28 May at 9.00 Geneva time and 3 June at 16.30 Geneva time. Further webinars will be announced soon.

On 1 January 2025, the Canadian Intellectual Property Office (CIPO) launched a pilot project that allows it to unilaterally start non-use cancellation proceedings against trade mark registrations that are more than three years old. The project aims to clear the register of trade marks that are unlikely to be used in Canada. Sanjukta Tole provides a report for Class 46.

CIPO is targeting older registrations based on use in Canada or where Declarations of Use were filed. Any registrations less than three years old or any new extensions of older registration that have issued for less than three years will not be subject to this pilot project.

Evidence of use

Once CIPO issues a notice of cancellation against a registration, the registrant must provide affidavit evidence of use of the mark with each of the goods and/or services in the registration that are the subject of the notice.

It is critical that foreign brand owners have agents appointed to their registrations in Canada as CIPO will not typically communicate with registrants that have foreign addresses.

The affidavit evidence must be filed within three months of receiving the notice with one two-month extension of time as of right. The relevant period for use is three years prior to the date the proceeding is commenced by CIPO. There is no cross-examination on the evidence.

Proceedings

CIPO will discontinue the proceeding if (a) a registrant demonstrates the use of the mark with all the goods and/or services or (b) demonstrates use with some of the goods/services and deletes the ones not in use either voluntarily or following notice from CIPO identifying goods/services not in use.

If a registrant disagrees with CIPO’s findings, it can file written arguments and/or attend a hearing.

If a registrant is seeking to maintain a registration despite non-use due to special circumstances, the proceeding cannot be discontinued. Instead, a decision will be issued by CIPO on the acceptability of the excuse for non-use.

Any decision rendered by CIPO in the proceeding may be appealed to the Federal Court of Canada.

Advice for brand owners

When reviewing use of the mark in Canada, brand owners should keep in mind that the definition of use has a specific statutory definition in the Trademarks Act, R.S.C. 1985, c. T-13, particularly with goods.

The mark must be brought to the customer’s attention when the registered goods are transferred to the customer in the normal course of trade. The best evidence is having the mark appear on the goods, on labels or other materials attached to the goods and on product packaging.

Ancillary materials such as point-of-purchase materials or invoices can demonstrate use if they provide notice of the mark to the customer when the goods are transferred. The use of a mark on a website alone, for example, would not necessarily work by itself for goods but it may demonstrate use with services, which is easier to prove.

Brand owners need to remember that it is imperative to retain updated samples of use every few years and maintain sales figures and licensing documents in three-year windows for the purposes of this proceeding, although an ongoing archive of use is the best approach to counter such proceedings.

To protect against possible non-use proceedings from CIPO, brand owners with long standing registrations in Canada should review their portfolios to ensure that they have used their marks in Canada with at least some of the goods and services in the registration that are core to the business so that registrations, if selected by CIPO, can be sustained.

Thought should also be given to whether additional applications need to be filed in Canada to cover any new products and services that may now be associated with such trade marks or where the marks themselves have changed.

With examination wait times falling swiftly, it is a good time to consider revisiting portfolios in Canada.

Sanjukta S Tole is a Partner of Dickinson Wright in Toronto and a member of the MARQUES International Trade Mark Law and Practice Team

Europol recently released its 2024 situation report “Misleading payment request fraud targeting intellectual property rights owners”

The report, which is an update of previous research, highlights scammers’ evolving tactics and trends.

It shows a significant increase in fraudulent activities targeting IP rights holders and applicants, such as email spoofing and phishing attacks, impersonation of IP offices and use of EUIPO’s online database and national IP office registers.

The report estimates that the average fee requested by fraudsters is €1,500 and this results in estimated yearly profits of over €26 million. It adds that the use of digitalization and AI tools has made it easier for scammers to exploit technology and support criminal activity.

EUIPO states: “The EUIPO is committed to protecting IP rightsholders and applicants across the EU and bringing those responsible to justice, working closely with Europol, other law enforcement agencies and the Anti-Scam network to combat this type of fraud.” It coordinates the Anti-Scam Network, of which MARQUES is a member.

EUIPO urges all IP right applicants and owners to be cautious when receiving payment requests and to verify the authenticity of the communication before taking any action. If a payment request includes a bank account that is different from the two EUIPO bank accounts held in Spain (Caixa Bank ES03 2100 2353 0107 0000 0888 and Santander ES08 0049 6659 0121 1622 4792), it does not originate from the EUIPO.

More information is available on the EUIPO website here. The full report is published on Europol’s website here.

MARQUES is firmly committed to fighting scammers who target IP rights owners and the MARQUES Anti-Fraud Task Force has developed a portal to collect reports from MARQUES members about paid or unpaid invoices, which is now fully operational.

More information about the portal, which can be accessed by MARQUES members here, will be published in the May issue of the HouseMARQUES newsletter.

The image shows logos used by companies suspected to be involved in the misleading invoice and payment request fraud and is taken from the Europol report

The UK government has announced that it will maintain the so-called UK+ exhaustion of rights regime.

Under this regime, once a product protected by an IP has been legitimately sold in either the UK or European Economic Area (EEA), the IP owner may not subsequently prevent it from being re-sold in the UK.

The regime has been in place since the end of the Brexit transition period.

The government had carried out a consultation on the exhaustion regime to apply post-Brexit in 2021-22 but did not have enough data to come to a firm view. However, the UK+ option received marginally more support than other options.

Minister for AI and Digital Government, Feryal Clark, said: “This is an important step in maintaining the strength of our world-leading intellectual property framework. The decision we’ve taken not only gives businesses the certainty they’ve been calling for, but ensures consumers have choice and fair access to a wide range of goods.”

You can read the announcement and watch a video about exhaustion of IP rights on the UK IPO website.

EUIPO has published a study titled “The development of Generative Artificial Intelligence (GenAI) from a Copyright perspective". It is available to download on the EUIPO website here.

The purpose of the study is to deepen the general understanding of GenAI's technical functioning, as well as existing and developing solutions underlying the application of EU rules on copyright and AI.

It is based on desk research, interviews with experts and analysis of technical solutions and practices. The study was conducted in close collaboration with relevant European Commission services.

The study centres on three areas: (1) The use of copyright-protected works as training data for GenAI models, (2) the generation of new content by these systems, and the legal questions this raises, and (3) the wider implications for creators, AI developers and the copyright ecosystem.

Its key findings are:

• Access to high-quality content is central to the development of GenAI services. The AI training process is complex and uses content as input at different stages. However, as GenAI models are “specialised” for certain functionalities they need access to high quality and up-to date content, which is reflected in emergence of a direct licensing market, with some GenAI developers licensing access and use of high-quality content from copyright holders. The capacity for copyright holders to effectively reserve their rights is a pre-requisite for the licensing market to develop.
• No ‘one-size-fits all’ solution for copyright holders to protect their rights has emerged yet. Instead, different approaches and solutions are developing for copyright holders to protect their rights, and for AI developers to respect their regulatory obligations: On the one side, the rights reservation mechanisms for the INPUT phase (related to training AI models), whereby rightsholders can express their opt out from the ‘text and data mining’ (TDM) exception. On the other side, transparency measures exist for the OUTPUT phase that allow the indication and recognition of AI generated content.
• Public authorities, such as national IP authorities and the EUIPO, may play a role by providing technical support (for copyright holders to reserve their rights, and for AI developers to effectively respect such reservations) as well as non-technical support (e.g., public awareness, forums for technical information sharing, providing information to the public on available solutions, trends and developments).

Since 2012, the EUIPO has been managing the European Observatory on Infringements of Intellectual Property Rights, with the mission of improving the understanding of the scope and impact of infringements of IP rights, including industrial property rights, copyright, and rights related to copyright.

In the field of copyright, the EUIPO is already responsible for establishing and managing the EU orphan works database (since 2012) and the public single online portal for out-of-commerce works (since 2019). It will launch the Copyright Knowledge Centre in November 2025.

“This report offers essential insights into the intersection of copyright and Generative AI. Its strength lies in its practical orientation. It provides policymakers, rightsholders, AI developers, and intermediaries with concrete data, legal analysis and recommendations on how IP offices such as the EUIPO can play their part in improving the status quo. It highlights where legal certainty is needed, where technical and licensing solutions can be improved, and where deeper cross-sector dialogue is essential. This is not just a study – it is a call to coordinated, forward-looking action”, said João Negrão, the EUIPO Executive Director.

Picture from EUIPO website

MARQUES is pleased to announce that the Italian “Meet the Judges” Symposium has been rescheduled to take place at the OFF/OFF Theatre, at Via Giulia 20 in Rome, on Thursday 2 October 2025.

This event will be a roundtable discussion involving eminent Italian judges, members of the Italian and EUIPO Boards of Appeal and industry representatives.

Topics covered in the discussion will include: proof of use; protection of well-known trade marks, including heritage brands; showing reputation and acquired distinctiveness through market surveys; patronymic trade marks; how to deal with gaps between market realities; and the restrictive examination practices for non-conventional signs as trade marks.

The event will start with a Buffet Lunch at 12.30 and will conclude with a Drinks Reception at 18.00. It will be conducted exclusively in Italian.

Registration fees are €325 for MARQUES members or €450 for non-members. Accreditation of this Symposium for the purpose of the professional training credits will be requested to the Italian Ordine dei Consulenti in Proprietà Industriale and the Ordine degli Avvocati of Rome.

Please mark the date of this event in your calendar so as not to miss out on this important opportunity to discuss trade mark developments with distinguished judges and other experts.

Further details, including the full agenda and the opening of the registration portal, will be available on the MARQUES website soon!