The next MARQUES Meet the Judges event will take place at the Off/Off Theatre in Rome on 30 January 2025, from 13:00 to 17:00 CET.

Participants will include judges from the Italian courts, including the Supreme Court of Cassation, members of the Italian Board of Appeals, the EUIPO Boards of Appeal, guests from the Italian Patent and Trade Mark Office and industry representatives.

Topics to be covered include:

• proof of use requirements and the ensuing enforceability of earlier rights;
• the value of market surveys to prove reputation or acquired distinctiveness and the standard requirements that market surveys and other ex parte evidentiary materials should meet;
• the protection of well-known brands, and, in this framework, of heritage brands;
• unconventional trade marks (such as colours, shapes, slogans, product trade dress, sound and multi-media trade marks), in relation to market realities and brand owners’ needs, and the difficulties in obtaining registration of these; and
• the protection of patronymic trade marks

Full details of the programme and speakers will be announced soon.

The meeting will be held in Italian. It will be followed by a performance of a play (Two Man Play – an excerpt from The Trials of Oscar Wilde by Merlin Holland and John O’Connor, which is based on the 1895 libel trial of Oscar Wilde) and an aperitif.

Full details will be available on the MARQUES events page soon but in the meantime we encourage you to save the date!

A section on Portugal has been added to the chart on self-regulatory organisations (SROs) for advertising and unfair competition matters.

The chart is compiled by the MARQUES Unfair Competition Team and can be downloaded on the Team’s page on the MARQUES website (MARQUES log-in required).

Team member Nuno Cruz of J Pereira da Cruz S A in Lisbon has completed the questionnaire for Portugal. The project is led by Philippe Probst of Fuhrer Marbach & Partners in Switzerland.

The chart now covers Finland, France, Germany, Italy, Portugal, Sweden, Switzerland, Turkey and the USA.

Its purpose is to provide corporate lawyers and attorneys with a practical, user-friendly overview of self-regulatory organisations for advertising and unfair competition matters.

With growing digitalisation and globalisation of advertising and other business activities, it is increasingly important for businesses to familiarise themselves with self-regulation of advertising and other matters.

The chart covers advertising and unfair competition matters, but not consumer protection matters or industry-specific organisations.

The five questions for each jurisdiction encompass: existence and identity of self-regulatory organisations; matters handled; rules, eligible parties and fees; procedure; and penalties and enforceability.

If you have any questions, please contact a member of the Unfair Competition Team.

The number of classes covered in trade mark applications in 2023 fell by 2% compared to 2022, according to data published by WIPO.

The annual World Intellectual Property Indicators (WIPI) Report found that there were 11.63 million trade mark applications covering 15.23 million classes in 2023.

According to the WIPI, the highest volume of filing activity came from applicants based in China with a combined domestic and abroad application class count of around 7.4 million; followed by US applicants (849,876), those based in the Russian Federation (543,692), and applicants from India (496,293) and Germany (441,293).

Among the top five origins, both India (+6.1%) and the Russian Federation (+30.1%) experienced growth in filings in 2023, while China (–3.4%), Germany (–7.3%) and the US (–10.1%) saw declines.

Applications from 13 of the top 20 countries of origin fell in 2023. The biggest declines were in Switzerland (-10.5%), Türkiye (-17.6%) and the US (-10.1%).

But trade mark filing grew in seven of the top 20, including Indonesia (+10%), Mexico (+11.1%), the Russian Federation (+30.1%) and Brazil (+8.5%).

In 2023, the research and technology sector accounted for 20.1% of global reported non-resident trade mark filing, followed by the health (13.7%), clothing and accessories (12.4%) and leisure and education (10.1%) sectors.

According to the WIPI, there were an estimated 88.2 million active trade mark registrations across 155 IP offices globally in 2023, an increase of 6.4% compared to 2022.

China had the highest number of trade mark registrations in force in 2023 (46.1 million) followed by the offices of India and the US, with nearly 3.2 million registrations in force each.

The WIPI also includes data on patents, designs, plant varieties and geographical indications. Find out more on WIPO’s website here. The image above is also taken from this page.

Registration is now open for the fourth edition of the European Trade Mark and Design Education Programme (ETMD EP) for Paralegals.

The programme is aimed at professionals working as intellectual property administrators, legal assistants or company employees who deal with legal or similar matters.

It will run from January 2025 to May 2025 and 60 places are available. The programme is led by EUIPO staff and IP professionals.

Applications can be made from now until 18 November 2024.

The programme includes about 80 hours of activities (ie about 5 hours a week) and costs €750.

Participants must pass two intermediate online exams and one final exam to obtain a certificate.

More information is available on the EUIPO Academy Learning Portal, including the promotional page and programme guidelines.

The sixth edition of the ETMD EP for practitioners will run in 2026 and will have 60 places. Further details have not yet been announced.

You can learn more about the ETMD EP, and MARQUES participation in it, in episode 21 of the Talking MARQUES podcast, which is available on the MARQUES website here.

Image from EUIPO website announcement

What is quiet luxury? That was the question addressed on the second day of the Luxury Brands Symposium in Vienna, in a session chaired by Noemi Parrotta, Spheriens, Italy, a member of the MARQUES Famous & Well Known Marks Team

Tobias Bayer, Editor-in-chief, The Italian Fashion Magazine, Italy discussed the emergence of quiet luxury in the fashion industry. Before COVID, fashion was dominated by elegant and bold styles led by brands such as Gucci, Virgil Abloh’s Off-White and Stone Island.

But since 2020, the industry been influenced by the simple styles evident in TV shows such as Succession and Peaky Blinders. “After the loud period, we came into a new period,” said Tobias. This is typified by Loro Piana, Zegna, The Row, Totême and Khaite.

“Quiet luxury is a bit of a fuzzy concept,” said Tobias. “It’s not boring. On the contrary, it’s quite remarkable.” It is characterised by timeless fashion, lack of logos and trade marks, noble fabrics and materials, sustainability and noteworthy construction.

On Thursday evening, Mag Astrid Fialka-Herics, Head of the Jewellery and Watches Department, Dorotheum, Vienna gave a talk on “Magnificent Jewels – Outstanding Brands” which was accompanied by a performance by the Streichquartett Klosterneuburg. This was followed by a Champagne Reception and Dinner.

Monica Vibeke Kristensen, Associate GC, and Serena Trotta, both from Loro Piana, Italy explained how the company has a vertically integrated value chain in Italy and was acquired by LVMH in 2013. Monica said the key aspects of quiet luxury are: products, aesthetics, quality and sustainability. “You have to touch it to understand it. From an IP perspective, this is the biggest challenge we face,” she said.

Products tend to be minimalistic, with straight lines and simple colours, but use high-quality materials. “This is going to stay, and it will make our job as lawyers hard and intense,” said Monica. Serena developed the theme of the collision of quiet luxury and traditional legal protection

She highlighted the challenge of counterfeits and copycats (also known as dupes – both high level and low level). The latter are particularly difficult to handle, said Serena, though unfair competition law can be useful. The company’s strategy is to collaborate with brands, platforms and authorities and to educate consumers to grow brand awareness.

Christoph Bartos, Boards of Appeal, Head of the Examination Board of the EUTM Education Programme, EUIPO, Spain emphasised the unitary character of the EU trade mark, and the need for classification to be clear and precise. “Quiet luxury has a problem – you don’t have trade marks,” he said.

He discussed cases where applications for position marks have been refused, including T-307/23 regarding two stripes on a shoe, R 1774/2023-1 for a line and a red heart on a piece of clothing. However, in R 1291/2023-2 a line on a shoe was accepted for registration and an EUTM was registered for colours on a sleeve (19030653).

Christoph also summarised recent decisions on pattern marks, sound marks and movement marks and initiatives such as a Common Communication and CP11. “I see some hope for registration of non-traditional marks based on inherent distinctiveness,” said Noemi.

“Maybe silence itself is a luxury,” said Dr. Reinhard Hinger, Chamber President of the Appellate Court of Vienna, Austria. While he said he had not found any cases specifically on quiet luxury, he presented 12 trade mark decisions that provided some useful points.

These covered horses, hotels, caviar, beer, fashion retail (ZARA HOME v AZRA HOME), movies (Rat Pack Filmproduktion v RAT PAC), drinks (F1 v Formula1), vehicles, entertainment (LADY GAGA v GAGA), tourism (AIDA CRUISES v AVIDA) and music (the shape of an organ).

Finally, Christoph returned to provide some insights on protection of marks with a reputation under Article 8(5) and in particular the various factors taken into consideration in assessing whether there is a link (ie, whether the contested mark calls the earlier reputed trade mark to mind): degree of similarity of signs, degree of closeness of goods and services, strength of reputation, degree of inherent distinctive character, existence of likelihood of confusion and any other factor.

The MARQUES Luxury Brands Symposium is taking place in Vienna this week. The first day focused on artificial intelligence (AI) and sustainability.

In the morning, a panel discussed recent developments in AI and how they might impact the luxury goods industry. In the first presentation, Katie Warner, Field Fisher, UK said AI has the potential to revolutionise creative processes and content generation.

She discussed how AI raises concerns about data and privacy, misrepresentations, employment, ethics and IP. While the UK has taken a generally hands-off approach to regulation, the EU has been more active with the passing of the EU AI Act.

In terms of IP rights, there are different risks associated with inputs and outputs of AI systems. One question is on the copyrightability of AI-generated works, and this remains open. “Different courts have come to different conclusions,” she said.

Katie is acting for Getty Images in its litigation against Stability AI concerning the latter’s text-to-image generative AI model. The litigation in the UK courts includes claims for copyright, database right and trade mark infringement and passing off. Trial is set for June 2025. “The UK courts have not had an opportunity to consider the application of IP to generative AI, so the outcome will be very important for the industry,” she said.

Creativity is at the heart of luxury sectors, said Dr Valentina Moscon, Max Planck Institute for Innovation and Competition, Senior Research Fellow, Intellectual Property and Competition Law, Germany. In Europe, there is a low threshold for originality for copyright and a broad scope of protection.

Generative AI presents both an opportunity and a challenge for luxury brands, she said, in terms of training and products. “Generative AI is capable of creating outputs that are identical the original input,” she said. This generates questions including: could similarities be regarded as copyright infringement? If so, who is liable? And is there any exception or limitation?

“We don’t know how the technology will develop but we are risking massive copyright infringement,” she said. But she added that we should not overlook the benefits of AI, which are highlighted in the recent Draghi report. Issues being discussed include a specific liability regime in relation to copyright infringement in the context of generative AI, exemptions from liability and an output-based lump-sum remuneration system.

Agnis Leznins, Chillhop Music, The Netherlands, discussed AI and the music industry. The music industry is expected to be worth €45 billion by 2029 with 100,000 new songs uploaded every day just to Spotify. Agnis played three snippets of songs and showed four images for the audience to guess which were AI-generated. (All of them were.)

AI is having an impact on every aspect of the music industry, he said, from drafting agreements to mixing/mastering and even music generation. This leads to loss of revenue and work opportunities, an unimaginable quantity of digital content, greater stress on the energy sector, cultural and societal shifts and other disruption.

He concluded by asking: what is the value of AI art? How do we educate people about AI and technology? How will creatives earn a living in a world where they have been replaced by computers? And what do we do when AI becomes sentient?

Bharat Kapoor, Vice President – Authentix – Online Brand Protection, USA, said Goldman Sachs expects investments in AI to reach $200 billion in 2025. Forbes predicts that AI will contribute $15.7 trillion to the global economy by 2030.

Bharat examined how AI will impact the luxury industry in various ways, including the use of AI agents. “It’s going to change consumer behaviour,” he said, using examples from popular generative AI tools. “We need to develop some moderation tools around AI.”

Finally, he looked at what actions can be taken against rogue AI sites which promote counterfeits and other illegal activity.

The session was chaired by Carolina Montero, ECIJA, Spain. During an extended Q&A, the panel and audience discussed topics including brand protection, designs, anticounterfeiting, sustainability and ethics.

Greenwashing

Sustainability was covered further after lunch. “Consumers expect to get sustainable products and services and investors and business partners also want sustainability,” said Michael Noth, TIMES Attorneys, Switzerland, Chair of the MARQUES Famous & Well Known Marks Team, who chaired the session. “Sustainability makes you more competitive and can strengthen your brand.”

He highlighted recent legislation under the European Green Deal, including the EU Taxonomy Regulation, Corporate Sustainability Reporting Directive and Sustainable Financial Disclosure Regulation. New/upcoming legislation includes the Directive on consumer empowerment for the green transition, the EU Green Claims Directive, unfair competition law, soft law and codes of professional associations. 

Michael stressed the importance of making statements that you can prove and asked: are luxury goods by nature sustainable? After all, they are designed to be long-lasting, are passed on to future generations, are produced in limited quantities and produced to high standards with well-sourced materials.

Dr Stefan Ottrubay, President of the Supervisory Board of the Esterhazy Company, Austria, traced the origins of the Esterhazy Foundation back to the 16^th century. The Foundation has about 50 trade marks in various fields. “By definition we are extremely green,” he said. “All our agricultural activities for 20 years have been totally organic.”

Danae Motta, Robeco Switzerland Ltd, provided a perspective from the investment industry. “The term sustainability is a little bit grey,” she said. This has led to questionable claims, and there are limited resources available to scrutinise them. She said that the SFDR, CSRD and the EU Taxonomy will help to regulate this area.

But she said there is a lack of guidance, in particular regarding social sustainability (the S in ESG). Robeco therefore launched the Fashion Engagement strategy, focusing on five areas: decent work, natural resource stewardship, circular business models, stakeholder management and governance and policies.

In the past year, Robeco has held meetings with all its luxury holdings and some suppliers. “Long-term investments are necessary to support the transition,” she said. Learnings include that traceability and due diligence are among top priorities of sustainability teams, and that challenges remain due to supply chain complexity, data availability, supplier education and limited guidelines.

“Change is slow and comes from many different places,” she said, but there are several things that companies can do to start, including auditing supply chains, checking on health and safety and promoting living wages. She also stressed that collaboration is key and that greenwashing issues will continue to arise due to the complexity of supply chains. “Instead of shaming companies, I want to highlight those that are willing to act,” she said.

Michael Regner, Hotel Industry Expert, Founder and shareholder of several Hotel Industry Platforms (MRP hotels (advisory), ECHO Partners AG (Hotel Investment Fund), LOISIUM Hotels, Xenios Hospitality Holding), Austria, spoke about understanding the global green transformation.

He highlighted that consumers often seek token examples of sustainability – such as paper straws – while overlooking much bigger problems such as food waste, water usage and private flights. “Customers want greenwashing,” he observed, and added: “Luxury travel is not sustainable.”

But there are things companies can do to promote sustainability, such as reducing their infrastructure footprint, being embedded in the local region, promoting earthbound travel and using local suppliers and regional products.

Finally, Christoph Köchert, A.E. Köchert, Austrian “Imperial Royal Court Jeweller”, Austria said that family-run firms promote responsible relationships and  social engagement. In the jewellery industry, two big issues are gold mining and gemstones. But, despite efforts to promote sustainability, Christoph said there is still a risk that the approach is “too superficial”.

“We need to delve deeper into supply chains especially for luxury brands which promise perfection,” said Christoph. He concluded that “there is no more sustainable investment than jewellery” as it is fully recyclable and upcyclable and will retain and even increase value.

Class 46 readers may like to know that the next MARQUES Coexistence Agreement Workshop is on Tuesday 26^th November from 15:00 to 16:30 CET. It will follow the successful MARQUES format for these workshops.

Participants will be presented with a case study involving two brands and invited to discuss how to negotiate a coexistence agreement to benefit both of them.

The workshop will be led by Claire Lehr (Edwin Coe LLP, UK), Chair of the MARQUES Programming Team. Zorana Joksovic of MSA IP, Serbia and Bahia Alyafi of Alyafi IP Group, Qatar will act as moderators during the group discussion sessions.

Participants will be able to learn about and compare approaches to negotiating agreements, drawing on expertise from different sectors and jurisdictions.

The number of participants is strictly limited to 20 to ensure everyone actively engages in the workshop.

Registration is now open and costs €100 (MARQUES members) or €135 (non-members). Find out more and reserve your place here.