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.

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.