Issue 147
  March 2023
Contents:
 

Interview: MARQUES Chair Antony Douglass

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Highlights from the Spring Meeting

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Book now for webinar on design case law

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Question the Trade Mark Judges

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Practical guides published

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AI against counterfeits

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From the
Observatory...

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WIPO reports annual IP data

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MARQUES joins EUIPO User Group Meeting

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Trade mark and design judgments in March

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MARQUES Media Roundup

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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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Interview: MARQUES Chair Antony Douglass

Specsavers Legal Director Antony Douglass, who specialises in intellectual property, data protection, marketing and digital strategy, took over as MARQUES Chair during the recent spring meeting in Frankfurt. In this interview, he talks about the role of Chair, his interesting day job and the big challenges brands face today.


What are your priorities for your term as Chair?

So, we’re fresh back from the Frankfurt spring meeting and I can't wait to get stuck in! It was really great to see all those who attended and I’m already looking forward to the annual conference in Berlin in September.

I'd like to take this opportunity to thank our outgoing chair, my good friend Joachim Hofmann of Syngenta, for the two years of wonderful leadership he’s given us. He has worked tirelessly with our crisis management teams, our Treasurer, the Executive and Council members to help the association weather the Covid storm. Joachim's cool, calm and collected demeanour has been a constant source of inspiration for me, and I only hope I can do half as good a job as him… his are big shoes to fill!

However, with the fantastic team to support me, which includes our Vice-Chair Claudia Papas (Thyssenkrupp) and Second Vice-Chair Leo Longauer (LVMH), I might just pull it off! Congratulations to both on their new roles. 

So, what of my plans for the coming two years?

  • Corporate members: I'd like to continue the work we've started to better integrate our corporate membership to ensure our teams are getting the guidance they need. Our Corporate Focus Group, who many of the team met in Frankfurt, will play a key enabling role in helping to deliver this with direction from Britta Schneider of Zino Davidoff and Nicholas Foot of Sandoz International GmbH. Together we’ll be reviewing the group's terms of reference, formalising the coordination of the structure a little and driving closer connections with the MARQUES teams.
  • Brilliant content: I'd like us to deliver timely, relevant and topical content for all of our members across our various media channels. I will be looking to further embed the use of the Project Management Tool, which we've made great strides on post-launch. Used properly, it will be a great force for collaboration – and the more we use it, the more we’ll gain from it – so I'd ask everyone to engage with it. Leo Longauer will lead the charge on this.
  • Sustainability: I'd like to continue to foster our sustainability agenda with a newly formed Sustainability Task Force. We'll be placing more emphasis and energy on providing our members with the very best guidance on the regulatory environment and what this means in terms of trade mark and marketing laws. We'll also be looking at changes we might make to the MARQUES association as we challenge ourselves in this space – talking about what we've actually achieved for the Annual Conference in Berlin and improving operations next year.
  • MARQUES in the international community: Last but not least, as we embrace our post-pandemic world, we are ready to reintroduce MARQUES to our key external stakeholders with face-to-face meetings with our friends at EUIPO and WIPO, as well as other organisations and the international trade mark community. I will be casting an eye over our media engagement strategy too, making sure that we’re visible where we need to be. 

How does MARQUES meet the needs of brand owners and how are these likely to evolve?

Increasing levels of regulatory compliance make horizon scanning (understanding what's coming in terms of new and emerging legislation, regulations and rules) a key aspect of all inhouse IP professionals' work. MARQUES provides regular updates to its members via its various social media channels, its blogs (Class 46 and Class 99), HouseMARQUES newsletter and frequent updates on the website.

At present the sustainability agenda features heavily. MARQUES will be improving this offering to its members in the coming year, but I'd also urge members to look at the sustainability tracker on the MARQUES website, a collaborative piece of work led by our own Regulatory Team.

MARQUES presents great networking for in-house IP professionals too: often getting an 'outside in' view can be quite challenging but MARQUES, especially through its Corporate Focus Group, can provide this.

We can also help explain the European trade mark system, such as procedural changes and case law, with regular updates at our Annual Conferences for example.

What do you think are the big challenges for brands coming up?

I'll say it again, sustainability in branding. It's an area of increasing scrutiny for regulators, and the complexities of this for companies operating in an international context will be a growing burden. We're starting to see regulators proactively investigate too – so this will be a key focus in terms of risk and compliance.

Domain names and the complexities associated with Web3 domains, NFTs and operating in the metaverse, will be a growing area of interest for brands. Just a year or so ago this seemed to be very much a horizon activity – the pace it which this has become a mainstream issue has surprised many, I’m sure.

Operating models in a post-Covid hybrid world will also be a practical challenge. We’re now seeing completely remote teams facing into the challenges of acting as one team, so that legal/IP teams are connected to the wider business. We had to quickly adapt to remote working out of necessity and maintaining meaningful stakeholder relationships is something which will continue to challenge many brands.

The current economic challenges shouldn't go unmentioned, as we move into a period of challenging economic times, we will need to be prepared as legal marketeers, brand and IP professionals to help our respective businesses meet this challenge for their customers and users. Value, without sacrificing quality, will no doubt be a key aspect our businesses will need to face into. All of us as consumers are already seeing basic essentials increase in cost – and so branding will play a key part in customer choice. 

What does your role at Specsavers involve and how has it prepared you for the role with MARQUES?

I've been with Specsavers for more than 10 years now and I’ve been a member of MARQUES for a similar time.

I moved to Guernsey to work for the company as its sole IP lawyer. It’s the world's largest (privately owned) optician and audiology business so a significant undertaking, but still very much a family-run business.

Its sounds a bit of a cliché but I knew that I’d take the job as soon as I came to Guernsey to visit the company and met the people who own, run and work in it – it felt like I was coming home…

Specsavers is an amazing employer; it places its customers and patients at the heart of everything it does. We combine that customer-centric approach with great value, real professionalism and a good level of fun. In the UK, our largest European market, our tagline 'Should've gone to Specsavers' has become part of popular vernacular. Have a look at the ads on YouTube – trust me, you'll have a real giggle. My favourites are 'Rollercoaster', 'Sauna' and 'Sheepdog'. We receive many hundreds of ideas from our loyal customers for new 'Should've' ads each year and I respond to every one. We love the fact that our customers and followers are so engaged.

My role within Specsavers has grown substantially over time, so I'm now responsible for our Group Brand and Marketing legal support – managing the team that protects the Specsavers brand and registered trade marks and supporting our group marketing community. My team also supports our creative agency with production contracts for TV, radio, printed and social advertising. We also advise on talent agreements for everyone from influencers to ambassadors) and support any IPR licensing activities.

I also do quite a lot of sponsorship work – some of our recent partnerships included an advertising first – a deal with ITV and Channel 4 (two of the UK's largest commercial TV channels) where we had each channel mix up the announcements of the other's TV shows in a 'Should've gone to Specsavers' moment. We also recently sponsored the Sidemen versus YouTube All Stars charity football match, which was massive in terms of live YouTube watchers and has clocked up more than 54 million views so far! Some of the most rewarding partnerships are our charity collaborations, where our support makes a real difference.

I am the Group's most senior Data Protection lawyer too, so a number of years were spent preparing for GDPR and subsequently the processes and framework needed to fulfil the many thousands of customer rights requests received each year.

Being Guernsey-based, I've had quite a lot of involvement with the local IP scene, specifically in relation to commercial focus groups, and we were particularly active when it came to engaging on and helping shape the island's Data Protection Law. These types of projects are massively useful when it comes to MARQUES and what is needed to chair the association. We have many members, industry interests and direct interactions with sister organisations, as well as key European and international IP institutions, so experience of leading a diverse team, we well as local industry, legislative and executive interests, is all going to help me, I’m sure.

I’m really looking forward to flying the MARQUES flag in Guernsey, too. It will be big news locally to have brought home such a prestigious seat in the IP world.

What tips would you give to anyone thinking of joining or getting involved with MARQUES?

Be open, really maximise your engagement with it – as MARQUES is a treasure trove of experience, education, knowledge and people. For an in-house IP professional, it combines much of what you’d need in terms of continuing professional education with great networking opportunities.

The events hosted by MARQUES are industry leading; from the well-received judges events, through our very popular luxury brands symposium, to the fabled Annual Conference – we're perfectly sized to make meaningful and lasting relationships and friends. 

If you're an in-house professional join the Corporate Focus Group, lots of topical discussion there, and you'll get the opportunity to help steer what MARQUES needs to deliver for its members.

Lastly, enjoy it – you’ll take out what you put in (and significantly more). 

What is the best thing about your job?

Working for a brand and business I love, doing work that excites me, in a wonderful family-friendly location. There are not many places where you can leave the office and be fishing off a rock in less than 10 minutes!

Highlights from the Spring Meeting

More than 150 Council and Team members attended the MARQUES Spring Meeting in Frankfurt on 1 and 2 March

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Book now for webinar on design case law

The MARQUES Designs Team will host a webinar on EU design law on Wednesday 3 May from 15.00 to 16.30 CET

Read More >>
Question the Trade Mark Judges

On 7 March, UCL-IBIL and MARQUES hosted the latest “Question the Trade Mark Judges” event in London. The Q&A panel discussion covered various timely issues in EU and UK trade mark law and procedure

Read More >>
Practical guides published   AI against counterfeits

The MARQUES Brands and Marketing Team has published two new documents: a Basic Introduction to Web3 presentation and a paper on social media impersonation

 

As part of its ongoing project on AI and IP, the MARQUES Cyberspace Team has prepared a paper looking at how AI-powered solutions can help in the fight against counterfeiting

Read More >>   Read More >>
From the Observatory

In their regular update, Petra Herkul, Maria Cecilia Romoleroux and Sonia Santos of the MARQUES Anti-Counterfeiting and Parallel Trade Team summarise recent news from the EUIPO Observatory, EMPACT and the European Commission

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WIPO reports annual IP data   MARQUES joins EUIPO User Group Meeting

Use of the international trade mark system fell by 6.1% in 2022, but the number of designs included in international applications under the Hague System increased by 11.2%, according to figures published by WIPO

 

The EUIPO User Group Meeting took place in Alicante during the week of 27 March. This was the 34th meeting since they began in 1998.

Read More >>   Read More >>
Trade mark and design judgments in March

The CJEU has published its opinion in a case concerning design rights, and the EU General Court has delivered several interesting judgments in cases concerning EUTMs and RCDs

Read More >>
MARQUES Media Roundup

The MARQUES blogs include reports on cases and legal developments as well as news from MARQUES Teams. Sign up for notifications so you don’t miss out!

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