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.