As the world witnesses a shift towards deglobalization and increased protectionism, most notably with the US leaving, or threatening to leave, numerous international organisations and treaties and/or terminating free trade agreements, trade mark practitioners must prepare for significant changes in brand protection and strategy.

In this blog post, the MARQUES Intellectual Asset Management Team anticipate various scenarios and explore the potential implications of these trends, focusing on the challenges and opportunities that may arise for brands and their legal guardians.

The resurgence of local brands

One of the most immediate effects of deglobalization is the potential resurgence of local brands. As countries prioritize domestic industries and consumers become more inclined to support local businesses, traditional local brands may gain prominence.

This shift could mark the end of the recent trend of consolidating brand portfolios to save costs and reduce complexities.

Trade mark practitioners will need to adapt by focusing more on protecting local brand assets, ensuring they are well-positioned in their respective markets.

International collaboration and treaties

The possibility of countries disregarding international treaties, such as the Berne Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), poses a significant challenge for trade mark protection.

As countries and governments decide not to feel bound by these treaties, multinational companies may need to reconsider their strategies, focusing on strengthening local brands to maintain market relevance. This could involve:

• Investing in local market research: Understanding local consumer preferences and cultural nuances will be crucial for developing strong local brands.
• Tailoring marketing strategies: Customized marketing campaigns that resonate with local audiences can enhance brand loyalty and market penetration. ·
• Collaborating with local partners: Forming strategic alliances with local businesses can provide valuable insights and facilitate smoother market entry.

Shift from global to national trade mark exhaustion

Article 6 of the TRIPS Agreement allows its members to choose their own exhaustion regime. Although we have not heard about countries considering changing their current exhaustion regime, it’s not unthinkable that in the light of the deglobalization countries that previously adhered to the doctrine of global trade mark exhaustion may now adopt national exhaustion policies.

This shift would mean that once a product is sold in one country, trade mark rights are not exhausted globally, allowing trade mark owners to control the distribution and resale of their products within each country.

Challenges in enforcing trade mark rights

Enforcing trade mark rights as a foreign trade mark owner may become increasingly difficult. Local procedural laws may require bonds or other security before granting access to courts, creating barriers for foreign entities.

This situation may necessitate the establishment of more local entities or licensees who can act as the party taking action against trade mark infringements.

Practical implications for trade mark practitioners

1. Staying informed about international developments: Keeping abreast of changes in international treaties and collaboration efforts is crucial. Practitioners must be proactive in understanding how these changes impact their clients and advising on the best strategies.
2. Adapting to local markets: Trade mark practitioners must develop a deep understanding of local markets and regulations, ensuring that their clients’ brands are protected and promoted effectively within each jurisdiction
3. Strategic portfolio management: With the potential end of brand portfolio consolidation, practitioners will need to advise clients on managing a diverse range of local brands, balancing the benefits of local relevance with the complexities of maintaining multiple trade marks.
4. Navigating enforcement challenges: Practitioners must be prepared to address the procedural hurdles of enforcing trade mark rights in foreign jurisdictions, potentially establishing local entities or licensees to act on behalf of their clients.

This blog post was contributed by Michel Rorai and Mark Devaney, members of the the MARQUES IAM Team

Photo: Intisar Ali/Creative Commons

The MARQUES Anti-Counterfeiting and Parallel Trade Team has compiled a guide to reporting infringing content on online marketplaces and social media.

The guide covers more than 30 platforms, including Alibaba, Amazon, eBay, Facebook, Indiamart, Lazada, Mercadolibre, Shein and TikTok.

For each platform, the guide provides basic information including a link to the notice and take-down procedure, a summary of this procedure, details of which rights can be invoked, what evidence is required and any blocking mechanism available on the website.

It also includes a summary of recent experience (positive, negative or neutral).

The guide has been compiled by members of the Team and is available to download from the Team page on the MARQUES website (log-in required).

Any enquiries should be directed to Stefan Schröter, Maria Cecilia Romoleroux or another member of the ACPT Team.

There are still a few places available at the next Meet the Trade Mark Judges event, which takes place at UCL-IBIL on Tuesday 25 March (6.00 pm-7.30 pm).

MARQUES members can register at the discounted rate of £30 per person.

The meeting promises to be lively and informative as the chair, the Rt Hon Professor Sir Robin Jacob, will pose a set of pre-selected questions from the audience to the panel. The panellists are:

• Nina Korjus – Chairperson of the 4th Board of Appeal, EUIPO
• The Honourable Mrs Justice Joanna Smith – High Court
• Al Skilton - Senior Hearing Officer, UKIPO.
• Andrej Stec - Référendaire, EU General Court

More information and registration details are available on the UCL-IBIL website here.

Attendees can also submit questions for the panel to Roland Mallinson, MARQUES Exec member, by email until 21 March.

We are very pleased to let you know that Claudia Pappas of Thyssenkrupp Intellectual Property GmbH (Germany) took office as Chair of MARQUES at the Spring Team Meeting, held in Barcelona on 13-14 March 2025.

Claudia succeeds Antony Douglass of Specsavers Optical Group Ltd (UK), who has completed his two-year term.

Claudia joined Thyssenkrupp in 2016, having previously worked in private practice, and heads the trade mark department.

She was formerly 1st vice-Chair of MARQUES and has long been involved in the association, including on the Programming Team and the Corporate Focus Group.

Leo Longauer of LVMH (France) succeeds Claudia as 1st Vice-Chair and Tapio Blanc of F. Hoffmann-La Roche AG (Switzerland) becomes 2nd Vice-Chair.

All these appointments are for two years.

Claudia, Leo and Tapio talk about their plans and priorities for their terms of office in a special edition of the Talking MARQUES podcast, available on the MARQUES website and on Spotify.

Photograph taken by MARQUES External Relations Officer Alessandra Romeo

The Libyan Trade Mark Office (TMO) has recently announced various changes which are of importance to brand owners with trade marks in the country.

1. A resolution made in November 2024 and active from 1 January 2025 increases the renewal fees for foreign owners of Libyan trade marks to USD2000 per year, a total of USD20,000 for the 10-year term. This is a very significant increase and will likely result in some brand owners choosing not to renew marks in Libya or instead re-filing marks (with the associated loss of the earlier filing date).
2. In early January 2025 notification was given by the TMO of the cancellation of any trade mark applications filed between 2 April and 2 September 2024, a period when the TMO operations were suspended. Applicants who filed marks during this time will need to re-file these applications, which may impact the priority date for these marks.
3. A few days ago the TMO announced a new suspension of acceptance of new applications from 5 March until 10 April 2025. New marks cannot be filed during this time, although other operations including oppositions and renewals will continue. The suspension is to allow the TMO to process a backlog of work. Applicants intending to file Libyan marks during this period should take advice on how they can obtain the earliest possible filing date on the resumption of acceptance of applications and whether to use the new system at this time.

The MARQUES International Trade Mark Law and Practice Team are monitoring these developments and will provide updates if the situation changes.

Written by Jess Le Gros, a member of the Team.

A workshop on deepfakes took place during the MARQUES Spring Team Meeting in Barcelona today. Around 200 MARQUES Council and Team members are attending the Spring Meeting this week.

The speakers at the workshop were Julia Holden (Trevisan & Cuonzo, Italy), Thomas Hertl (Arnecke Sibeth Dabelstein, Germany) and Maiken Toftgaard (Poul Schmith/Kammeradvokaten, Denmark) of the MARQUES Copyright Team and Graeme Murray (Marks & Clerk, UK) and Howard Shire (Troutman Pepper Hamilton Sanders, US) of the MARQUES Education Team. The workshop was moderated by Sandra Müller (Squire Patton Blogs, Germany) of the Education Team.

Introducing the workshop, Sandra said deepfakes are easy to create and hard to protect. They are one of the biggest threats to society today and they also impact brands. She said the workshop would address what tools can IP practitioners use to address this threat?

What are deepfakes?

Graeme kicked off the workshop by defining disinformation and deepfakes. He said the latter encompasses brand manipulation, political manipulation, entertainment manipulation and fraudulent deepfakes.

He also shared examples of deepfakes, including those featuring Bruce Willis, the Pope wearing a puffer jacket and Elon Musk kissing Giorgia Meloni, illustrating both how realistic and how damaging they can be.

Legal tools

The 2022 EU Code of Practice on Disinformation has at least 44 signatories (including Google, Meta, X and TikTok) who have committed to tackling the spread of disinformation online. There are efforts to encourage more signatories to join.

The Commission sets goals but they are not legally binding on signatories. Julia described the Code as a “toolkit to fight disinformation” that is “reasonably effective”.

For example, under the Code very large online platforms report every six months on what they are doing on implementation.

By contrast the EU Digital Services Act is legally binding for online platforms and intermediaries regarding illegal content, imposing stricter regulations on the largest players for the dissemination of harmful data. However, the Act does not define disinformation.

The EU AI Act can also play a role in regulating deepfakes. Maiken said that while it does not ban deepfakes it imposes certain disclosure obligations.

The Act takes a risk-based approach to AI tools: most deepfakes would likely be classified as low risk unless they are political in which case there would be additional requirements.

The panel also discussed country-specific regulations, including criminal and administrative provisions, in Italy, Germany, Denmark, the UK and the US – and in various US states.

Tips and strategies for brand owners

During the Q&A part of the workshop, the panelists discussed challenges including who can take action, the risks for brands of attacking deepfakes, how to act in a timely way and how to prove damage.

Advice included: crawling the internet; working with social media operators; take a case-by-case approach; have a deepfake strategy in place including identifying the source; and work with marketing to get consents.

The Spring Meeting continues with Team meetings today, followed by a dinner and the annual Kay Uwe Jonas Lecture this evening and Team presentations tomorrow.

The Office for Intellectual Property (BOIP) has published its new strategic plan, BOIP 2030. It focuses on service excellence, legal quality, and raising IP awareness.

The details of the plan and a video animation are available on the BOIP website here.

BOIP’s vision is: “Intellectual property is an integral part of every business plan in the Benelux” and its core statement is: “By delivering the highest service quality and fostering strong partnerships, we enable businesses to turn their ideas into value.”

The plan has three strategic themes: BOIP Delivers, BOIP Connects and BOIP Commits.

The Office states: “BOIP is committed to ensuring that its services are not only reliable but also human-centric, addressing the diverse needs of its users. By focusing on accessibility, quality, and customer-centricity, we aim to make the resources and support offered by BOIP available to all.”

The plan has nine strategic goals:

1. Accessibility of information and services
2. Quality of administrative and legal output
3. Customer-centric service design
4. Enhancing the understanding of our environment
5. Strengthening the IP network
6. Facilitating integration of IP into business
7. A sustainable organization
8. An inspiring employer
9. A societal contributor

BOIP 2030 comes into effect this year, with outcomes continuously monitored and evaluated annually.

BOIP is part of the Benelux Organisation for Intellectual Property and has the following remits: to implement the Benelux Convention on Intellectual Property (BCIP) and the Implementing Regulations; to promote the protection of trade marks and designs in the Benelux countries; to perform additional tasks in other fields of intellectual property law, as directed by the Administrative Council; and continual evaluation and, if necessary, amendment of  Benelux legislation governing trade marks and designs, in the light of international, EU and other developments.

Image from BOIP website