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MARQUES Class 46 Blog

Class 46 - for your European trade mark news.

Published: Sat, 24 Mar 2018 02:26 GMT

Last Build Date: Sat, 24 Mar 2018 02:26 GMT

Copyright: Copyright 2009, MARQUES Ltd and Individual Contributors

2017 in statistics: Madrid System, WIPO disputes and CJEU

Fri, 23 Mar 2018 16:38:00 GMT

WIPO and the CJEU have recently shared data on applications and cases filed during the year 2017.

International trade marks

Source: WIPO

According to information published by WIPO on 21 March, there were 56,200 trade mark applications via the Madrid System during 2017, an increase of 5% on 2016. The top five countries for applications were the US, Germany, China, France and the UK.

Applications from China grew by 36.3% while those from the Russian Federation increased by 23.9%. Austria, Italy and the Netherlands each saw a small drop in filings.

The biggest filers were L’Oréal, Richter Gedeon, ADP Gauselmann, Novartis and Abercrombie & Fitch Europe.

WIPO also published data on patent trends in the PCT and designs in the Hague System on 21 March. Read more here.

Cybersquatting cases

A record 3,074 UDRP cases were filed at WIPO’s Arbitration and Mediation Center in 2017. Cases relating to new gTLDs accounted for more than 12% of the caseload, with registrations in .store, .site and .online the most commonly disputed. Meanwhile, ccTLD disputes accounted for about 17% of filings (WIPO is designated as a dispute resolution service by 76 ccTLD registries).

Source: WIPO

Three industries – banking and finance, fashion and internet and IT – accounted for nearly one-third of all cases. The country where most cases originated was the US, followed by France, the UK, Germany and Switzerland. The biggest filers were Philip Morris, Michelin, AB Electrolux, Andrey Ternovskiy (Chatroulette) and Sanofi.

Since the first UDRP case in 1999, WIPO has received more than 39,000 cases covering more than 73,000 domain names.

Read more in WIPO’s announcement.

CJEU trends

On 23 March, the Court of Justice of the EU published its judicial statistics for 2017. These cover all the cases before the Court of Justice and the General Court, not just IP cases.

In total 1,656 cases were brought before the two courts. This number comprises: 533 requests for a preliminary ruling before the CJEU; 14 actions at the CJEU for failure of a member state to fulfil obligations; 141 appeals before the CJEU; and 917 cases before the General Court.

The Court of Justice completed 699 cases in 2017, with 912 cases pending at year-end. The average duration of proceedings was 15.7 months (requests for a preliminary ruling) and 17.1 months (appeal proceedings).

At the General Court, 2017 was the first full year of the new organisation, with a number of new judges installed. It completed 895 cases during the year, an increase of 18.5% on 2016. The average duration of proceedings fell to 16.3 months (a reduction of 13%). However, there were 1,508 cases still pending at the end of the year.

Find out more by reading the CJEU announcement.

General Court: Winged bull(fig) v. Griffin (fig)

Wed, 21 Mar 2018 19:08:00 GMT

In Case T-151/17, the General Court annulled the decision of the Fourth Board of Appeal of the EUIPO of 17 January 2017 (Case R 165/2016-4). The marks at issue  in the dispute are the following: Mr Johann Graf - Contested registration  "Winged bull" Marriott Worldwide Corp - Invalidity Applicant "Griffin2       Class 43 'Services for providing food and drink; Catering and providing food and drink for cafes, hotels and restaurants'.   Class 43 'services for providing food and drink; temporary accommodations; hotel services; restaurant, catering, bar and lounge services; resort and lodging services; provision of general purpose facilities for meetings, conferences and exhibitions; provision of banquet and social function facilities for special occasions; and reservation services for hotel accommodations’ Marriott Worldwide Corp., filed an application for a declaration of invalidity on the basis of  EU and UK marks above and US copyright licensed in the UK  and on bad faith grounds. The Cancellation Division and Board of Appeal rejected the application for a declaration of invalidity in its entirety: - the signs at issue are visually and conceptually different and that it was not possible to compare them phonetically; - moreover, the applicant had failed to demonstrate the existence of the alleged copyright; there was a doubt whether the design of a griffin protected by the alleged copyright could constitute an original artistic work within the meaning of the UK legislation and the contested mark did not constitute a reproduction, as a whole or in part, of the design of a griffin ; - third the applicant had failed to demonstrate that the EU trade mark application had been filed in bad faith Marriott filed an appeal before the GC arguing that the consumer perceives the marks as a whole and does not proceed to analyse their various details. Visually, the signs at issue are similar to a relatively high level. In particular, both of the signs depict black-on-white silhouettes of mythical creatures shown in profile. Those creatures adopt the same sitting position on their hind legs, the tail curved upwards and depicting wings of the same form and the same proportion. Conceptually, the signs at issue share the same concept of a winged mythical creature in a sitting position with a tail. Mr. Graf argued back that its mark represents a creature named the ‘taurophon’, made up of a bull’s head and the paws of a lion, whereas the earlier marks represent a griffin. Consumers will focus on the heads of the two creatures in question which can be distinguished. The mere fact that both signs use a black-on-white silhouette of the creatures does not, lead to a finding that those signs are similar. The General Court agreed with Mariott's arguments and found that the Board of Appeal erred in the assessment of the visual and conceptual similarities between the signs at issue as well as the conceptual similarity which must be classified as low. Regarding the assessment : even if  the earlier marks shows a griffin, which is a known mythological creature no evidence has been adduced by the parties to show that the griffin is a figure sufficiently known to the relevant public. It is not certain that the representation of a figure half-eagle and half-lion in form has a clear and specific meaning for the relevant public such that that public would be capable of grasping immediately the evocation of a griffin. Therefore the visual similarities between the signs at issue, cannot be regarded as negligible in the overall impression of the signs at issue. The differences are not such as to counteract the similarities (namely,  the head of a bull with horns v. the head of an eagle and the front legs of the creature feature paws v. claws [...]

Trade in counterfeit goods and free trade zones

Thu, 15 Mar 2018 15:19:00 GMT

(image) Petra Herkul, Chair of the MARQUES Anti-Counterfeiting and Parallel Trade Team, brings news about today’s report on trade in counterfeit goods and free trade zones, published by the EUIPO and OECD:

Many countries have set up Free Trade Zones. The purpose is to support economic development by providing tax advantages and other regulatory exemptions, bringing economic benefits. The downside is that these zones can be misused by criminal organizations to traffic and smuggle counterfeit and pirated goods with all the negative effects know to brand owners and their experts.

The OECD (Organisation for Economic Cooperation and Development) and EUIPO, supported by World Customs Organization, the European Commission’s Directorate-General for Taxation and Customs Union and the United States Department of Homeland Security, have undertaken a study into this topic, resulting in a confirmation of the links between trade in counterfeit and pirated goods and free trade zones.

The full report can be found here.

The goal is to ensure that Free Trade Zones continue to develop as important institutions that promote international trade without facilitating illicit activities.

More information and analysis of the report by MARQUES Teams will be posted on this blog and in the HouseMARQUES newsletter soon.

Warning over fees in Venezuela

Tue, 06 Mar 2018 15:38:00 GMT


We are pleased to publish this guest post by Ricardo Alberto Antequera, which will be of interest to IP rights owners and applicants in Venezuela:

In January this year, the Government of Venezuela published a revised Exchange Agreement. It sets out the new foreign currency system base which must be used to calculate and pay official fees at public authorities. This obviously includes fees paid at the national IP Office.

In light of this situation, SAPI issued a communication on 2 February which informed that in order to preserve rights from third parties in regards to trade marks or patents subject to payment of official fees due to deadlines, such as renewals, annuities or granting fees, a brief confirming the interest in securing/maintaining those rights, will be sufficient until further notice, since payment of official fees is suspended until SAPI receive new instructions from the Secretary of Finance concerning the new official fees system to be implemented.

Brand owners holding trade mark rights in Venezuela should thus be alert to this new situation.

Not only must brand owners make sure that the mentioned notices are filed in connection with pending applications and registrations that might be up for renewal, they may also want to ensure that their representative is sent the official fees in question notwithstanding the fact that fees cannot be paid at the Office. The reason for this perhaps unconventional step is the likelihood that when the Office publishes the new official fees, the deadline to pay the amounts that suddenly become due is expected to be extremely short.

It is better to be prepared than to be unable to pay and lose your rights.

Ricardo Alberto Antequera is managing partner of Antequera Parilli & Rodríguez in Caracas and a member of MARQUES

World IP Day: Women in innovation and creativity

Tue, 06 Mar 2018 08:26:00 GMT

(image) This year’s World Intellectual Property Day, on Thursday 26 April, celebrates the brilliance, ingenuity, curiosity and courage of the women who are driving change in our world and shaping our common future

Announcing this year’s theme, WIPO said:

Every day women come up with game-changing inventions and life-enhancing creations that transform lives and advance human understanding from astrophysics to nanotechnology and from medicine to artificial intelligence and robotics.

And in the creative sphere, whether in the movies, animation, music, fashion, design, sculpture, dance, literature, art and more, women are re-imagining culture, testing the limits of artistry and creative expression, drawing us into new worlds of experience and understanding.

The important and inspiring contributions of countless women around the globe are powering change in our world. Their “can do” attitude is an inspiration to us all. And their remarkable achievements are an invaluable legacy for young girls today with aspirations to become the inventors and creators of tomorrow.

More than ever before, women are taking up leadership roles and making their voices heard in the science, technology, business and the arts. This is good news. With women and men working together, we strengthen humanity’s hand, and improve our ability to enrich our shared cultural wealth and develop effective solutions to alleviate poverty, boost global health, and safeguard the environment.

The time is ripe to reflect on ways to ensure that increasing numbers of women and girls across the globe engage in innovation and creativity, and why this is so important.

This year’s World Intellectual Property Day celebration is an opportunity to highlight how the intellectual property (IP) system can support innovative and creative women (and indeed everyone) in their quest to bring their amazing ideas to market.

To find out more:

  • Visit WIPO’s dedicated page, and download a poster, bookmark, postcards and a pictogram
  • Search for #worldipday on social media
  • Post photos and posters on the Facebook page
  • Submit details of events for inclusion on the map

And let us know via the comments if you are planning anything for World IP Day!

EUIPO webinars during March 2018

Mon, 05 Mar 2018 10:20:00 GMT

(image) The EUIPO Academy is presenting the following webinars this month. All webinars are held on Tuesdays and start at 10am CET:

  • 6 March: Use of a trade mark in a form different than the registration – recent case law and principles (Speaker: Luca Rampini – ICLAD; Level: Advanced)
  • 6 March: SMEs, defend your rights (Blanca Arteche and Bente Waldstrom – Observatory; Intermediate)
  • 13 March: Colour combinations: getting back to WYSIWYG (Roland Mallinson – Taylor Wessing and MARQUES; Advanced)
  • 13 March: Decisions of the Trimester of the EUIPO Boards of Appeal (Christoph Bartos – Boards of Appeal; Advanced)
  • 20 March: Calculation of Proof of Use periods before and after the Legislative Reform (José Antonio Garrido – Operations Department; Intermediate)
  • 20 March: Limitations, withdrawals and Proof of Use requests (Claudia Schlie – Operations Department; Intermediate)
  • 27 March: Decisions of the Trimester of the GC and the CJEU (Martin Fischer – ICLAD; Advanced)
  • 27 March: E-filing of Inspections and Legalisations (Daniele Pietro Messa and Alexandra Levald – Customer Services Department; Intermediate)

All the webinars are free to access and can be viewed live or recorded. Find out more and sign up here.