Class 46 readers may be interested in joining the next MARQUES Licensing for Beginners Workshop.

The workshop takes place online on Monday 25^th November from 15:00 to 16:30 CET and simulates a contract negotiation exercise.

Participants will have the opportunity to step into the shoes of a party to a new trade mark licence, taking a position on key issues that are important for their company. The participants will then actively negotiate the licence, seeking compromises and solutions that will ensure a mutually beneficial relationship.

The webinar will be led by Mark Devaney (Abion, UAE), Chair of the MARQUES Intellectual Asset Management Team. Gonzalo Barboza (Ellipse IP, Spain), Richard Groos (King & Spalding LLP, USA) and Bill Budd (Virgin Enterprises Limited, UK) will act as moderators during the group discussion sessions.

During the workshop, participants will be separated into groups and placed in breakout rooms to review confidential instructions as to their party’s interests and needs. After reviewing the materials they will be placed with a group representing the other party for a negotiation exercise. The groups will then reconvene, to discuss the solutions that were negotiated and compare and contrast different negotiating styles and approaches.

The number of participants is strictly limited to 20 to ensure active engagement in the workshop.

Registration is open now and costs €100 (MARQUES members) or €135 (non-members).

Find out more and register on the MARQUES website here.

Yulia Yarnykh of the MARQUES Brands and Marketing Team provides an update on two important developments in Russia that may affect trade mark owners

Bill limiting IP rights of companies originating from unfriendly states

The bill on amending certain provisions of the Russian Civil Code to limit IP rights of legal entities and individuals from unfriendly states has recently been introduced to the State Duma.

Following the legislative initiative, the Russian Government prepared the Official Response which states that the bill contradicts part 1 Article 443 of the Russian Constitution which guarantees IP protection.

Moreover, the suggested amendments will violate a number of Russian international obligations and commitments, which grant the same level of IP protection to foreign rights holders as to Russian citizens and legal entities.

The Official Response further states that Russian law contains mechanisms that do not violate the Constitution and international treaties but which allow the introduction of limitations on the ability of foreign rights holders from unfriendly states to execute their IP rights. These legal mechanisms do not provide for the full termination of the IP rights of the indicated persons.

Concluding the Official Response, the Government notes that the legal relationship in the IP sphere addressed by the bill is already and sufficiently regulated.

In accordance with applicable legal requirements, the bill has been introduced to the Parliament for its October session. The State Duma Legal Department has been requested to provide its legal opinion on the bill.

It remains to be seen if the bill will be passed and/or if it will be amended. We will provide an update once more is known.

Anonymisation of IP holders’ information

Starting from 30 September 2024, rights holders are entitled to have their details anonymised following the Oder of the Russian Government #1209, dated 2 September 2024.

An applicant who files an application to record their IP right, including by way of licence of assignment, can request that their details are not shown on the IP Register of Rospatent.

This measure is available for any legal or natural person regardless of their origin and domicile until 31 December 2025.

Neither the Russian Government nor Rospatent provided any explanation as to why this amendment was introduced.

Some legal practitioners speculate that it was done for data protection purposes, while others believe that the reason are Western sanctions – but how exactly it helps to resolve this is not clear.

Whatever the consideration behind the novelty, foreign rights holders who do not want to publicise their filing activity in Russia can consider taking advantage of this currently available option. 

Yulia Yarnykh is a partner of Semenov & Pevzner in Moscow and a member of the MARQUES Brands and Marketing Team

Reza Badamchi discusses a recent case involving an Iranian and a Belgian company in this post for Class 46.

In 2020, an Iranian company submitted an application to register a trade mark for confectionery and sweets business. The trade mark had already been registered by a Belgian company but the Iranian company had a letter of consent issued by the Belgian owner.

The Iranian Trade Mark Office rejected the application on the grounds that the mark in question was already registered by the Belgian company that had issued the letter of consent. 

Objection filed

The applicant objected to this refusal of its application by filing an objection before the article 170 Commission under the by-law of the Patents, Industrial Designs, and Trade Marks Registration Law of 2007. 

The Commission found that the same trade mark cannot simultaneously be registered by two owners because it misleads the ordinary consumers. Therefore, regardless of the letter of consent for a peaceful coexistence issued by the Belgian company, it rejected the objection and confirmed the refusal of the application, citing articles 30 and 32 of the Patents, Industrial Designs, and Trade Marks Registration Law of 2007. 

Appeal

The applicant then filed an appeal before the civil court objecting to the commission’s decision.

In a ruling in September 2023, the court found the commission’s decision unacceptable and reversed the decision.

The civil court argued that the Iranian applicant and the Belgian owner have a joint venture contract between themselves; to refuse the regulation application would therefore limit the owner’s ownership rights because one of the applicants is the owner of the previously registered trade mark.

Therefore, there is no obstacle to registration of the application and the assumption that consumers will be misled is not justified. 

After the court decision became final the application was successfully registered.

Reza Badamchi is managing partner of Reza Badamchi & Associates in Tehran and a member of MARQUES

EUIPO and Europol have published a joint report titled “Uncovering the Ecosystem of Intellectual Property Crime: A Focus on Enablers”.

The report shows the importance of IP crime and how it is linked to other criminal activities carried out by organised crime groups.

It shows that IP infringements do not only have an impact on the companies facing economic losses, but also on health, safety, security and the environment.

The report is available to download on EUIPO’s website here.

Some key findings of the study are:

• Organised crime groups take advantage of worldwide demand for low-priced goods, misleading consumers into purchasing fake goods
• Approximately 86 million fake items were seized in the EU in 2022, with an estimated value exceeding €2 billion
• Counterfeit goods represent an estimated 5.8% of EU trade, with video games, board games, packaging materials, toys, cigarettes and recorded CD and DVDs being the most commonly seized products
• Sophisticated criminal operations use legal entities and loopholes – such as producing fake goods outside the EU and adding logos, tags and packaging in the EU – to reach consumers with their goods
• Over 1,400 investigations into IP crime were opened in 2023 through the European Multidisciplinary Platform Against Criminal Threats (EMPACT)

The report is an operational action deliverable supporting EMPACT to tackle IP Crime, counterfeiting of goods and currencies. It gathers information on the threats behind IP crime and relevant data in preparation of the Serious and Organized Crime Threat Assessment (SOCTA).

Photos of pesticides © Carabinieri, Europol, Romanian National Police, reproduced with permission

There are still some places available at the fifth MARQUES Luxury Brands Symposium, which takes place in Vienna on 7 and 8 November 2024. Register now to ensure you don't miss out!

The agenda for the event covers a range of topical issues including 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.

The registration fee also includes a Champagne Reception and Dinner on 7 November. 

You can find out more about the event in the recent Talking MARQUES podcast with Ariane Hettenkofer and Carolina Montero Peralta.

Click here to see the full agenda and list of speakers, and reserve your place. We look forward to seeing you there!

Photo of the Anantara Palais Hansen Vienna Hotel taken from its website

Class 46 readers may be interested in a survey being conducted on the application of the Trade Secrets Directive.

According to information sent by the Observatory on Infringements of Intellectual Property Rights to MARQUES:

In June 2024, the Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs of the European Commission commissioned a study to support the intermediate report on the application of the Trade Secrets Directive pursuant to Article 18(2) of the Directive.

The study aims to assess the state of play of the application of the Directive in practice and recent on the ground developments in the area of trade secrets protection post-adoption of the Directive in order to support the intermediate report on the application of the Directive.

The EU Commission entrusted with this task the London School of Economics and Political Science together with CSIL Milan.

The intermediate report will paint a picture of the first lessons learned and (including the economic) impact of the Directive with respect to the areas of research and innovation, as well as the effects on the mobility of employees and on the exercise of the right to freedom of expression and information.

For this purpose, it will be vital to assess how the provisions in the Directive are applied in practice by SMEs, research institutions and larger companies. To assess these potential effects of the application of the Directive, current data on impact and stakeholder feedback will form a vital part of the study.

The Observatory says that completing the survey will take no more than 15 minutes. It is open until 1 November 2024 here.

In view of the challenging IP environment in China, the question arises whether acquiring the status of well-known trademark (Articles 13 and 14 of the Chinese Trademark Law) helps to enjoy wider protection. Hens de Koning-Ghijsen (a member of the MARQUES China Team), Kenny Ren (member of the Famous and Well-Known Marks Team) and Dan Plane (member of the China Team) discuss in this post for the Class 46 blog.

Marks can acquire such well-known status in China in three ways:

1. by trying cases before the Trademark Office and Trademark Appeal and Re-examination Board (TRAB) – such as oppositions, appeals and invalidations;
2. through enforcement by the Administration for Industry and Commerce (AIC) against trade mark infringement and counterfeits; and
3. in civil litigation against trade mark infringement.

This article focuses on the first option.

Acquiring well-known status

Obtaining the status of a well-known trade mark may take quite a while, will involve substantial costs, and the submission of a lot of evidence to prove a substantial awareness by the relevant sector of the public, the duration of use of the trademark, the extent and geographical scope of advertising activities, other records of well-known status being granted, and other factors which may make the mark well known.

Once such well-known status has been acquired, the scope of protection proves to be limited:

• The recognition of a trade mark as well-known happens on a case-by-case basis, so the successful recognition of a well-known mark in one case does not necessarily mean that another case will lead to the same result;
• The protection of the well-known status is further limited to identical and similar goods, and to other goods only if other factors apply, such as any association between the goods and services, the distinctiveness of the mark, the degree of its reputation and the possible confusion that will be caused among relevant consumers;
• TMO and TRAB prefer to rely on prior registrations rather than on the well-known status of a trademark.

Therefore, we find ourselves still arguing in each case (including simple oppositions) that our trade marks are well-known, submitting all the above-mentioned evidence and referring to cases where this has been confirmed by the relevant judge. At the same time, because we do not want to be dependent on the sometimes divergent decisions of the various bodies, we maintain trade mark registrations in the relevant classes (and ever growing sub-classes).

In our experience, and in cases where we both rely on a prior registration and the well-known status of the trade mark – which we do in all cases – the TMO and TRAB inevitably issue a decision solely on the basis of the prior registration, avoiding applying the provisions of Article 13.3 of the PRC Trademark Law by stating that this is no longer necessary since there is a prior registration in place.

For example, in an opposition against an infringing trade mark in class 31 we received a favourable decision for all goods mentioned in the application because of our prior registration, except for “grass for cats”, which appeared to be part of a new subclass and was not covered by our prior registration. This was not something to worry about in practical terms, but in such case it would have been a logical step – in view of our consistent argumentation – to have the status of well-known trade mark cover such “loose ends”.

Another question is why, in spite of the recent legislation to counter bad faith filings and the huge amount of bad faith applications still going on, TMO does not maintain a list of trade marks that have (once) been recognised as well-known trade marks to pre-emptively reject applications for identical or similar trade marks for identical or similar goods.

Fifth Amendment

Last but not least, the proposed amendment to the Chinese trademark law (Fifth Amendment draft) is particularly relevant on these points. This amendment imposes stricter trade mark use obligations (by the obligation to periodically submit of evidence of use, US-style), primarily to combat bad faith applications. If this amendment would lead to a decrease in bad faith registrations, then hopefully, the need for trade mark owners to file defensively may decrease as well.

However, it remains to be seen whether this obligation to provide evidence of use will actually be of any real help to owners of well-known trademarks where: (i) the well-known status of a trade mark is only granted on a case-by-case basis and therefore they need to have an extensive portfolio of defensive registrations, and (ii) trade mark owners may lose their “back-up” defensive registrations in other classes where they will not be able to prove use of their trademarks in these other classes. As a result, well-known trade mark owners are likely to end up with valid registrations of their trade marks by third parties for goods or services for which they have no evidence of use.

Is well-known protection worthwhile?

In short, and while the status of well-known trade mark in China certainly is a “nice to have”, it does not practically lead to a substantially better protection of the well-known trade mark or less cost, at least not yet. Due maintenance by registrations in all classes, and the regular filing of oppositions and cancellations in a huge number of cases is still needed.

The proposed Fifth amendment of the Chinese Trademark Law might end up assisting with these issues in the longer term, but for now, owners of trade marks that have been recognized as a well-known trade mark would need to take a huge “leap of faith” that the scope of the protection of the well-known trade mark – if granted in the particular case – will indeed extend to goods in those other classes.

This brings me to the actual utility of even spending the money required to obtain that first “well-known” trade mark decision. If owners of “well-known” trade marks just end up still having to oppose everything and maintain defensive registrations, and TMO or TRAB never find your mark’s prior well-known status as a standalone basis for rejection of the opposed/invalidated mark, we really have to question the wisdom of even obtaining the status for all but the biggest brands.

Hens de Koning-Ghijsen is legal counsel at Heineken and Vice-Chair of the MARQUES China Team

Kenny Ren is Legal Manager at Christian Louboutin and a member of the MARQUES Famous and Well-Known Marks Team

Dan Plane is a lawyer with East IP and a member of the MARQUES China Team