Johannes Fuhrmann, Giuseppe Bertoli, Mila Misevska and Kasper Frahm

How do you ensure that trade mark proceedings reflect the reality in the market? That was the topic discussed in the panel on “You can explore market realities at EUIPO” at the MARQUES Annual Conference today. The panel was moderated by Kasper Frahm, Plesner, Denmark, a member of the MARQUES European Trade Mark Law and Practice Team.

Mila Misevska, Play ‘n Go Marks Ltd, Malta, a member of the MARQUES European Trade Mark Law and Practice Team, says she conducts lots of availability searches to minimise the risk of oppositions. She focuses on distinctiveness and availability to avoid challenges from third parties and searches both registered and unregistered trade marks.

“On average, I get 350 hits, of which 10 to 15 marks pose a risk,” said Mila. She has 10 questions to work through to decide the level of risk, covering: similarity, descriptive elements, commonly used elements, the current coexistence on the market, whether they are a direct/indirect competitor, your risk appetite, how aggressive the prior right owner is, timeline for launch, whether it is a new product or an existing line and industry/company-specific factors. 

But she said it is also important to remain flexible: “You can never predict how a specific trade mark owner will react.”

Giuseppe Bertoli, Director for Legal Affairs Department, EUIPO said market reality is important for both assessing applications and in inter partes cases. This means looking at the norms in the sector concerned. “There is nothing preventing the applicant from helping the Office in this task,” he said.

Til Todorski of Stockholm University was presented with the 2024 Lewis Gaze Memorial Scholarship by MARQUES Chair Antony Douglass

In the case of acquired distinctiveness, the burden is on the applicant to demonstrate distinctive character throughout the EU. “The issue of online evidence is of particular importance when it comes to proving acquired distinctiveness,” said Giuseppe.

He also discussed the issue of proving that a sign is commonplace based on several prior trade mark registrations. “This evidence is often discarded as it shows register reality rather than market reality,” said Giuseppe.

He highlighted recent cases including HYPERBURST – Energy Burst (R 998/2023-4), HYAL – HYALERA (T-497/23), Device of a horn (T-25/20), Dreamer – DREAMS (T-608/22) and LifeAfter – life (T-175/23). “The evidential burden on the applicant is rather heavy,” Giuseppe concluded.

Finally, Johannes Fuhrmann, Bomhard IP, Spain, who is Chair of the MARQUES European Trade Mark Law and Practice Team, explored how to introduce market realities into EUIPO proceedings.

“You need to show use by various traders in the market, but that is impossible for an EUTM as you would need it for all EU Member States,” he said. Similarly, on descriptive meaning, it is important to find evidence of the term being used descriptively. Dictionaries are also a good source but should be supplemented by other evidence.

Johannes discussed the use of market surveys in the context of the Sleepy Natural – NIVEA case (opposition B 3093528) and the LELE BROTHER – LEGO case. He also  examined the expansion of famous brands into new markets and the TIFFANY – TIFFANY GOLTS case (opposition B 3163833).

“The bottom line is: don’t just claim it, prove it with solid evidence and examples!” said Johannes.

Augusto Drumond, Margherita Gastaldi, Ann-Charlotte Järvinen and Sara Söderling

In the day’s first session, Sara Söderling, AWA Sweden AB, Sweden, a member of the MARQUES Designs Team moderated a discussion titled “You can succeed in online enforcement” which featured Augusto Drumond, Amazon, Luxembourg, who is a member of the MARQUES European Trade Mark Law & Practice Team as well as Margherita Gastaldi, Pandora, Denmark and Ann-Charlotte Järvinen, AWA Sweden AB, Sweden.

The panel discussed online enforcement strategies and how these can complement offline strategies, and explored the different enforcement options available.

The Annual Conference continues on Thursday afternoon with five workshops and several excursions available, before the Gala Dinner in the evening.

Catrin Turner, Noemi Parrotta, Sarah Bailey and Jesse Hofhuis

Attention turned to how to protect product designs and how consumers understand lookalikes at the MARQUES Annual Conference on Wednesday afternoon.

In part 3 of the programme, “You can understand local traditions in the protection of product design”, Jesse Hofhuis, AC&R, The Netherlands, a member of the MARQUES Programming Team, moderated a panel that compared the protection available for product designs in EU countries, looking at trade marks, designs, copyright and unfair competition.

During the session, panellist Catrin Turner, Airwair International Ltd, UK, described the Dr. Martens enforcement strategy and her role: “My job is to preserve the authenticity the history and the craftsmanship of our products.” She explained how she does this based on five principles: keep copies away from customers; chaos and complexity are your friends; work with the best and spend whatever you need to win; enforcement is global; and nice is banned.

She explained how these influence decisions including which rights to enforce, which jurisdictions to choose and which remedies to seek. “A lot of work we do is done informally. A lot of infringers are family-owned,” said Catrin, who accompanied her presentation with pictures of genuine Dr. Martens footwear and copies. But she added: “When it comes to litigation, nice is banned. Pace is really important. Don’t ask any favours. This goes against the grain for a lot of lawyers. “

Noemi Parrotta, Spheriens, Italy, a member of the MARQUES Famous & Well Known Marks Team provided an Italian perspective while Sarah Bailey, Simmons & Simmons, France, a member of the MARQUES Council and Regulatory Team, discussed product design protection in France and moderator Jesse summarised the Dutch position. They all placed the various IP rights in a hierarchy (see picture) which illustrated the inconsistency in Europe.

“Designs are good but drawbacks include uncertainty and very limited scope of protection,” said Noemi. She added: “Trade marks ideally are the most powerful tool for protection but absolute bars and lack of distinctiveness are challenges.” It is hard to prove acquired distinctiveness at the EU level, she said, but “it may be easier at a national level.”

She illustrated her presentation with cases involving the Vespa scooter, Tic Tac sweets, Moon boot and other products.

In France, said Sarah, “copyright is an easy right to rely on” compared to trade marks or designs, but she would normally recommend supplementing it with an unfair/parasitic competition claim.

Diverse views on consumer behaviour

MARQUES Cultural Evening at Artipelag

In part 4 of the conference, “You can navigate consumer values”, a panel of speakers with diverse expertise discussed how to understand consumers’ attitude to lookalikes. The panel was chaired by Michael Noth, Times Attorneys, Switzerland, Chair of the MARQUES Famous & Well Known Marks Team.

Prof. Dr. Alexander Genevsky, Rotterdam School of Management, Erasmus University, The Netherlands, provided a perspective from neuroscience. “Everything we feel and do is experienced and can be measured in the brain,” he said.

He brought an interdisciplinary perspective from economics, psychology and neuroscience and argued that brain-based methods of analysis will not replace but complement existing methods.

Alexander focused on the four Ps of neuroscience – preferences, process, prediction and perception – and shared examples of experiments, surveys and even a video of a brain being cut open. “Imagine brands as physical objects. You can observe and test the object but you need to understand its inner workings. Consumer neuroscience gives us insight into those inner workings,” he said.

Nigar Kirimova, Alexander Genevsky, Femke van Horen and Michael Noth

Femke van Horen, Professor of Consumer Behaviour, Vrije Universiteit, The Netherlands, discussed how consumers perceive copycat products and degrees of similarity. She argued that counter-intuitively a strong activation of the imitated brand will decrease copycat evaluation but a more subtle activation will be more successful, saying: “More subtle types of similarity are likely to freeride more effectively on the brand. “

She also shared evidence that imitation based on theme is more powerful than imitation based on features.

Finally, she shared the lessons from a new neuroscientific tool based on MRI scans, which can measure similarity in a more objective way and show when a survey is biased. In conclusion, she asked: Should the focus be on blatant similarity? Should only strong and distinctive marks receive protection? How should trade mark similarity be measured?

The final speaker, Nigar Kirimova, Essity GmbH, Germany, a member of the MARQUES Famous & Well Known Marks Team, asked: Which values are important for consumers? And what types of communication and branding are attractive to them?

Femke van Horen

She pointed out that for many consumers to day, brand values are not just about origin but include sustainability, innovation, convenience and lifestyle/aura. For FMCG products, which are bought quickly and frequently, all this has to be conveyed by the packaging.

Using the example of one of her own brands (Tempo tissues), Nigar illustrated how a brand engages with consumers by promoting kindness and “our soft side”. The challenge is to create a brand identity and purpose with a unique story that aligns with consumers’ values and stays relevant through innovation.

The question is: how to do this? Nigar said it is important to protect as many elements as possible of the packaging, avoid dilution and take advantage of unfair competition law where available. “Consumers care about more than just origin. They want to be part of the aura and image of the brand,” she said.

In the discussion after the presentations, the panel looked at whether trade mark reform is needed and if so what form it should take.

Magnus Ahlgren, PRV

MARQUES Chair Antony Douglass, of Specsavers Optical Group Limited, Guernsey, this morning welcomed nearly 1,000 delegates to Stockholm for this year’s Annual Conference.

In a speech peppered with references to Abba songs, IKEA and cinnamon buns, Antony pointed out that the theatre stage is made entirely of recycled wood, which will be recycled again when it is taken down.

In his opening address, Magnus Ahlgren, Chief Legal Counsel, Head of Department at PRV, the Swedish Intellectual Property Office, also addressed IP and sustainability.

He focused on AI and its potential impact on trade mark law. “Trade marks and trade mark law have been relatively absent in the debate. But this does not mean AI will not have an impact on AI law. On the contrary,” he said.

Quoting David Bowie, he said the interplay between users and providers on the internet and social media is “highly relevant for trade mark law” thanks especially to the rise of influencers and deepfakes.

Welcome Reception at Stockholm City Hall on Tuesday night

He pointed out that: “We as consumers provide tech giants with tremendous amounts of data” on our habits, life choices, political stances and more. This enables platforms to experiment with how they promote and sell goods and services. “With general purpose AI the boundaries are going to become increasingly blurred … leaving you more in the open,” he said.

For example, intelligent fridges could cater for birthdays, dates and diets. What role will trade mark law play then? How relevant are the Google AdWords judgments of the CJEU concerning third-party-use? “They are relevant because the damage to the core function of a trade mark is the same,” said Magnus.

The EU AI Act addresses these issues to some extent, but trade mark owners need to think about how to ensure their marks remain distinctive in the age of AI, he concluded: “We have a duty to think of trade marks in a long-term perspective.”

How to win in the court of public opinion

Panel 1

Introducing the first panel session, “You can find your way in the court of public opinion”, moderator Lisa Pearson, Kilpatrick Townsend & Stockton LLP, USA and a member of MARQUES Dispute Resolution Team, described the “wake-up call” when IP litigation attracts press interest. “Now we’re in the 24-7 news cycle, brands are the new celebrities and the news cycle is ravenous for content,” she said.

Rob Mindell, of FTI Consulting, UK, a public relations specialist, described the nature of the news cycle and the reputational impact of IP litigation and asked: how does Goliath beat David in the court of public opinion?

Rob emphasised the importance of brands putting out their views or corrections to stories in time for newspaper first editions in the evening. He distinguished between first-order effect – the bad news – and second-order effect, such as customer and investor comments and complaints. “Second-order effects affect reputation,” he said.

Rob said there are three ways that Goliath can win against David by winning the hearts and minds of consumers: by showing the economic value of a premium brand; protecting consumer welfare interests and trust; and treating the small business (“David”) well.

He concluded with a video by KFC concerning its chickenstock image bank and campaign against copycats (“You can steal our images, but you will never steal our taste”). “It’s high risk, but so far it’s working,” said Rob.

David Gooder, Commissioner for Trademarks of the US Patent and Trademark Office, USA and former head of trade marks at Jack Daniel’s, spoke about a case where a cease-and-desist letter went viral for good reasons.

He discussed using core brand values to mitigate reputational risk in trade mark enforcement, based on developing an enforcement philosophy, incorporating the key values and applying the philosophy in practice.

“Who are we as a brand? What do we stand for? That is really fundamental,” said David, noting that an aggressive litigation strategy can be at odds with brand values. The next step is “to articulate what the harm is”. If you can’t do that, you need to step back and ask: why are we taking action here? Finally, ask: what is a win?

When Jack Daniel’s noticed a pattern in infringements, it adopted a policy and two over-arching values: (1) find ways to say “thank you” appropriately and creatively and (2) be careful picking fights with people “who buy ink by the barrel” – which today is anyone who is on social media.

Irina Beck, Nestlé

Jack Daniel’s had a persistent problem with take-offs of its famous brand name and logo. When a local author published a book with a cover based on the Jack Daniel’s brand, the company sent a polite letter requesting it be changed. This led to enormous social media coverage and 100% positive feedback across 80 countries. The book also sold well, with a new cover.

Today, “Jack Daniel’s polite cease and desist” continues to be a popular search term and the company still benefits from the positive coverage.

In her presentation, Irina Beck, legal counsel at Nestlé, Switzerland, spoke about striking a balance between “legal gain and reputational risk”. Nestlé always carries out an early case assessment (ECA) and asks: how far would we go?

The ECA is a process to get ahead of the game, said Irina, based on stakeholder management, global presence, business unit coordination, cultural differences, legal and regulatory compliance and online media reaction. The ECA includes an assessment of reputational risk. But, she said, “sometimes the case can change … sometimes something can go wrong”.

Irina stressed the importance of setting boundaries based on business and legal interests, public perception and the opponent profile and shared examples of online enforcement of the NESPRESSO brand in South Korea and the MILO brand in Australia.

The cases showed the importance of “being careful who’s behind the scene” and paying attention to media coverage, she said. Her takeaways were: implement a proactive litigation management to identify and minimise reputational risks, proactively safeguard IP rights and keep a pulse on public opinion and build relationships with communication stakeholders.  

Jeremy Blum, Bristows

Jeremy Blum, Bristows, UK, a member of the MARQUES Dispute Resolution Team, talked about a case he had been involved in that showed the risks and rewards of litigation: Oatly v Glebe Farm (the PURE OATY case). He described it as a tale of two social media feeds.

“The mood music in the media immediately positioned it as David v Goliath,” said Jeremy. For example, a petition set up by two members of the public got 131,528 signatures to overturn an injunction that didn’t exist. “It doesn’t matter to the public what the legal accuracies or niceties are,” he added.

But, while Oatly was losing support, Glebe Farms gained unexpected popularity and took out advertising to capitalise on it. “If you want to win public opinion, just attack lawyers,” said Jeremy.

If you’re a David, he said, lean in to it: people love an underdog. Communicate with a sense of fun and do it in a measured tone; don’t be a victim or get angry. “The public will do it for you,” he said. “Don’t say it’s nothing personal; of course it’s personal. That sounds like you don’t care. Don’t justify your position on legal points but on fairness. Beware of how you are perceived and always act in the interests of the business."

New challenges for in-house counsel

Lisa Selar, Volvo Cars

Similar themes were picked up in session 2 of the Conference, “You can work outside your comfort zone” which featured Jennifer Godorn Wessman, Mölnlycke Health Care, Sweden and Lisa Selar, Volvo Cars, Sweden in a discussion moderated by Arthur Artinian, K & L Gates LLP, UK, who is a member of the MARQUES Council and Vice-Chair of the Brands & Marketing Team.

Arthur stressed that trade mark counsel increasingly have to deal with new issues, including handling marketing claims, sponsorship agreements and environmental claims as well as PR issues.

The panellists brought different perspectives. Jennifer is her company’s first full-time trade mark counsel and has to navigate the complex world of healthcare regulation. She said her approach is: “Identify the Crown Jewels, follow the money and start from there.”

By contrast, Lisa has been with Volvo for 20 years and the brand is very well known, and has even collaborated for a co-branded candy (which Lisa distributed to the audience). One of the challenges she faces is that AB Volvo and Volvo Cars are separate companies. The trade marks belong to Volvo Trademark Holding and are licensed to both companies who must comply with certain rules.

Volvo Cars also has its own brands devised by the Nomenclature Committee and there is a trend to be more descriptive. “That’s a challenge from a trade mark point of view,” said Lisa. “We have to explain when we cannot claim exclusivity,” she added.

“We take a slightly different approach,” said Jennifer. “My top advice is to add unique elements to packaging that we can enforce.” Mölnlycke also uses brand extensions such as Mepilex Up with the ad campaign “Things are looking Up.”

The company has to monitor claims including by third parties very carefully due to healthcare regulations. In one case, an influencer made an unauthorised off-label claim for the product. The post was very popular but the company had to ask her to take it down because it was misleading.

Panel 2

At Volvo, commercials are also now thoroughly reviewed by safety, sustainability and legal teams to ensure they do not make unwarranted claims, said Lisa. Claims are therefore more nuanced and qualified.

Other challenges counsel have to deal with concern sponsorship and CSR, which many companies are increasing to promote sustainability. “As a trade mark attorney, you may get a donations agreement on your desk. We cannot give a trademark licence in the agreement as that would be a gift in kind,” said Jennifer. Other details she has to monitor are ensuring products are properly disposed of and traceability.

Lisa said Volvo has reduced sponsorship in recent years but has launched Volvo World in Gothenburg and the Volvo For Life Fund focused on sustainability and its partner organisations.

Both speakers highlighted the challenges of complying with growing environmental regulation in the EU. Picking up on a theme from the first panel, Jennifer showed a video made with an artist which showed what Mölnlycke is doing to cut surgical waste. “It’s important in promoting values rather than features,” she explained.

Asked by Arthur for one piece of advice for in-house counsel, Jennifer said: “You have to be a business strategist as much as a lawyer.” Lisa agreed, adding: “There are always risks. It’s important to explain them in an easy way.”

The MARQUES Annual Conference is taking place until Friday. More reports will be posted during this week.

Photos by MARQUES staff

The latest episode of the MARQUES podcast, Talking MARQUES, looks at the EUIPO Trade Mark and Design Education Programme (ETMD EP).

This year’s Education Programme, which had about 60 students, was recently completed.

The podcast features Sandra Müller of Squire Patton Boggs and Guido Donath of Donath Law, who both took part in the Education Programme this year.

Sandra is Chair of the MARQUES Education Team and Guido is a member of the European Trade Mark Law and Practice Team.

In the podcast, they describe what the Education Programme is and how it works as well as how it has changed over time.

They also explain how MARQUES volunteers are involved and the benefits that brings.

Finally, Sandra provides an insight into some of the other projects the Education Team is working on.

Talking MARQUES is the MARQUES podcast, with a new episode every few months. You can listen to the latest episode, and all episodes, on the MARQUES website here and on Spotify.

Find out more about the ETMD EP on the EUIPO website here.

The Lookalike Chart developed by the MARQUES Unfair Competition Team has been updated with a new format.

The information on each of the 50 jurisdictions covered can now be accessed via an interactive world map. The map shows which countries are covered and clicking on these loads up the detailed information for the country.

The map-based format is easier to access and understand than the previous spreadsheet-based format.

The Lookalike Chart includes information on the law and practice regarding lookalikes in each country covered. It provides an overview of the position but is not a substitute for specific local advice.

The information is provided by legal experts in each jurisdiction and coordinated by members of the Team.

The Lookalike Chart map can be accessed on the MARQUES website here.

If you have any questions or feedback please contact a member of the Team.

MARQUES, in cooperation with Stockholm University and the Swedish Anti-Counterfeiting Group, is hosting an IP training programme for law students, lawyers and other practitioners on Monday 23 September, ahead of the MARQUES Annual Conference.

The event will be held at the Albano Campus of Stockholm University and online from 3pm to 5pm. It will bring together stakeholders, brand owners, legal experts and practitioners from private and public entities.

The title of the training is “From Strategy to Practice – Theoretical and Practical Aspects of IP Law”.

Companies taking part will share best practices from different industries. They include:

• SKF (Johan Bravert, Director, Group Brand Protection)
• H&M (Sandra Looft, Legal Counsel)
• Marshall (Ellinor Wilow, Legal Director IP & Brand Protection)
• On (Anna Jakobsson, Global Head of Intellectual Property)
• Philips (Edanela Perez Broce, Senior IP Counsel Trademarks & Designs)
• Essity (Anna Hedberg, Trademark Attorney/Nigar Kirimova, Trademark Attorney)
• Stockholm University (Eleonora Rosati, Professor of Intellectual Property Law, Co-Director of the LLM in European Intellectual Property Law)
• The Swedish Anti-Counterfeiting Group (Anna Bladh Redzic, Partner at Sandart law firm)

To register for this event, please email Sandra.looft@hm.com by 18 September, indicating whether you will attend in person or virtually.

Class 46 readers are encouraged to share this information with students and others who may be interested in attending the training session.

Booking is now open for the Luxury Brands Symposium, which takes place in Vienna, Austria on Thursday 7 and Friday 8 November 2024.

The Luxury Brands Symposium is a very popular meeting which brings together industry and legal experts to discuss the latest developments and trends affecting luxury brands in industries such as fashion, cosmetics, beverages, jewellery and financial services.

Topics on the agenda of this Symposium include:

• the impact of artificial intelligence on the luxury industry;
• the latest developments in greenwashing and what they mean for luxury brands; and
• the rise of quiet luxury, including the role of non-traditional trade marks.

This intimate meeting will provide extensive opportunities for discussion and networking among like-minded professionals. It will also include a Champagne Reception and Dinner on 7 November and lunch on 8 November.

Registration is €850 (MARQUES members) or €950 (non-members). You can find out more and register for the Symposium on the MARQUES website here.

MARQUES has agreed a special rate for delegates wishing to stay at the Anantara Palais Hansen Vienna Hotel of €325 per night. This can be booked when making your registration.

Photo of Anantara Palais Hansen Vienna Hotel from their website