Issue 112
  April 2020
Contents:
 

New resources for members

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ACPT Team analyse counterfeit pharmaceuticals

>  
 

A breakthrough for GIs

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How did you mark World IP Day?

>  
 

WIPO online resources

>  
 

Latest information on scammers

>  
 

New e-learning modules

>  
 

Latest CJEU judgments

>  
 

DesignEuropa deadline extended

>  
 

MARQUES Media Roundup

>  
 
Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

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New resources for members

MARQUES is launching new educational and networking initiatives to support members in the current crisis, including webinars and a weekly Virtual Coffee Break email. The next webinar is on Brand Protection in a Time of Turmoil and is on 14 May

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ACPT Team analyse counterfeit pharmaceuticals

Members of the MARQUES Anti-Counterfeiting and Parallel Trade Team have published two articles on the issue of counterfeit pharmaceuticals

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A breakthrough for GIs

Marijana Kozakijevic of the MARQUES GI Team explains the importance of the entry into force of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

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How did you mark World IP Day?

 

Innovate for a Green Future was the theme of this year's World IP Day on 26 April

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WIPO online resources   Latest information on scammers, and meetings of EUIPO Anti-Scam Network and Users Group

WIPO is hosting a number of webinars that may be of interest to MARQUES members. Plus: Director General Francis Gurry has presented his annual report

 

On 29 April, Willem Leppink, who heads the MARQUES Anti-Fraud Task Force, and Alessandra Romeo, MARQUES External Relations Officer, joined the 5th Anti-Scam Network Meeting, led by EUIPO. MARQUES was also represented at the EUIPO User Group Meeting held on the same day

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New e-learning modules

The EUIPO and MARQUES have developed two new e-learning modules within the framework of the ECP3 Academy Learning Portal cooperation project

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Latest CJEU judgments

The CJEU has published rulings in the Coty v Amazon, Gomboc Kutato and Gugler France cases


In Coty v Amazon, the Court ruled that "a person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, must be regarded as not stocking those goods in order to offer them or put them on the market for the purposes of those provisions, if that person does not itself pursue those aims".

The Court was addressing a question referred from Germany in a dispute between Coty and Amazon over third-party sales of bottles of Davidoff perfume on Amazon's marketplace (Coty Germany GmbH v Amazon Services Europe Sarl and Others, Case C-567/18).

The Court said that "using" a trade mark involves "active behaviour" and that Amazon did not use the sign in its own communication. The Court's judgment is slightly at odds with the Advocate General's Opinion in the case, which considered a person storing goods could be "actively involved in their distribution" within the framework of a programme such as Shipped by Amazon.

In its judgment in Gomboc Kutato, Szolgaltato es Kereskedelmi Kft.‚Äč v Szellemi Tulajdon Nemzeti Hivatala (Case C-237/19), the Court was asked to rule on a question referred by Hungary's Supreme Court concerning Article 3 of the Trade Mark Directive 2008/95, and in particular whether the assessment of whether a sign "consists of the shape of the product which is necessary to obtain a technical result" should be based only on the graphic representation in the application or if the perception of the relevant public should also be taken into consideration. The mark applied for is pictured above.

The Court said that the assessment does not have to be limited to the graphic representation: "Information other than that relating to the graphic representation alone, such as the perception of the relevant public, may be used in order to identify the essential characteristics of the sign at issue. However, while information which is not apparent from the graphic representation of the sign may be taken into consideration in order to establish whether those characteristics perform a technical function of the goods in question, such information must originate from objective and reliable sources and may not include the perception of the relevant public."

It added that "the perception or knowledge of the relevant public as regards the product represented graphically by a sign that consists exclusively of the shape of that product may be taken into consideration in order to identify an essential characteristic of that shape".

Gugler France v European Union Intellectual Property Office (Case C-736/18 P) was an unusual case arising from Gugler GmbH's registration of an EUTM for a figurative sign comprising the word GUGLER. The other party in the case, Gugler France, sought to invalidate the registration on the basis of bad faith and its company name, which is protected in France. After years of litigation, the EU General Court found that the "economic link" between the two companies at the time the application for registration was filed precluded any finding of a likelihood of confusion.

The Court of Justice has upheld that finding, saying that the General Court was correct to conduct the examination of whether an economic link exists globally, taking into account all the relevant circumstances. In this case, there was evidence of business relations between the two companies, including a distribution agreement, share ownership and a licence agreement. The Court said that the concept of economic links "refers to a substantive, rather than formal, criterion - which, in particular, is also fulfilled where, following the division of national parallel trade marks resulting from a territorially limited assignment, the proprietors of those marks coordinate their commercial policies or reach an agreement in order to exercise joint control over the use of those marks, so that it is possible for them to determine, directly or indirectly, the goods to which those marks are affixed and to control the quality of those goods".

DesignEuropa deadline extended   MARQUES Media Roundup

The call for entries for the DesignEuropa Awards 2020 has been extended to 8 May

 

The MARQUES blogs include articles on recent developments in trade mark and design law, including updates from China, Turkey and Ecuador

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