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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
FRIDAY, 25 OCTOBER 2024
Ruling on co-existence agreements in Iran

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

Posted by: Blog Administrator @ 13.44
Tags: Iran, co-existence,
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THURSDAY, 24 OCTOBER 2024
New report on IP and organised crime

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

Posted by: Blog Administrator @ 10.11
Tags: EUIPO, Europol, IP crime,
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WEDNESDAY, 23 OCTOBER 2024
Last few places available at Luxury Brands Symposium

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

Posted by: Blog Administrator @ 12.17
Tags: Luxury Brands Symposium, Vienna,
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FRIDAY, 18 OCTOBER 2024
Survey on Trade Secrets Directive

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.

Posted by: Blog Administrator @ 11.55
Tags: trade secrets, Observatory,
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THURSDAY, 17 OCTOBER 2024
Well-known trade marks in China

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

Posted by: Blog Administrator @ 10.58
Tags: China, well-known marks, ,
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WEDNESDAY, 16 OCTOBER 2024
Talking MARQUES: Luxury Brands Symposium, Vienna

Episode 22 of the Talking MARQUES podcast is now available. This episode focuses on the fifth edition of the Luxury Brands Symposium, which takes place in Vienna on 7 and 8 November.

The episode features Ariane Hettenkofer of Kroher Strobel in Germany and Carolina Montero Peralta of ECIJA in Spain. Both are members of the MARQUES Famous and Well-Known Marks Team.

In the podcast, they discuss the programme, themes and speakers for the Symposium. They also reflect on the broader challenges for luxury brands today.

The Symposium will cover topics 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.

It will also include a Champagne Reception and Dinner on 7 November and lunch on 8 November.

You can listen to the Talking MARQUES podcast on the MARQUES website and on Spotify.

Booking for the Luxury Brands Symposium is now open and spaces are filling up fast. Registration is €850 (MARQUES members) or €990 (non-members).

Find out more and reserve your place on the dedicated page here.

The next episode of Talking MARQUES will be published later this year.

Posted by: Blog Administrator @ 08.55
Tags: Luxury Brands Symposium, Vienna,
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WEDNESDAY, 9 OCTOBER 2024
German fraud case over misleading EUIPO invoices

A German criminal court has found three defendants guilty of fraud for sending misleading invoices to EUIPO customers.

MARQUES, as one of the user associations involved in the EUIPO Anti-Scam Network since the beginning, is grateful to the EUIPO for sharing the following information about a recent case in Germany.

In September 2024, the Munich Court found three defendants guilty of commercial gang fraud for sending misleading invoices to EUIPO customers. Each defendant was sentenced to one year and 10 months of imprisonment, suspended with a three-year probation period.

The Court also ordered the confiscation of around €200,000 – the amount the fraudsters unlawfully obtained – to be used for compensation.

The EUIPO considers this an important legal precedent, as a criminal court in an EU Member State has ruled that the sending of misleading payment requests to IP users is a criminal offence of fraud.

The decision paves the way for current and future investigations and indictments in other jurisdictions.

In December 2020, following numerous reports from customers, the EUIPO filed a criminal complaint for suspected fraud before the competent Public Prosecutor’s Office in Germany.

The fraud scheme consisted of letters sent under the name ‘IP Register UG’, which closely resembled official fee invoices. The letterhead featured the designation "European IP Register", and the subject line highlighted "Data publication from Office for Harmonisation in the Internal Market (OHIM)” – the EUIPO’s former name.

These misleading letters included a "total due" amount, a payment deadline and bank details. Only in small print, barely legible at the bottom of the letters, was the invoice described as a proposal.

Between November 2020 and April 2021, the defendants wrongfully received payments of approximately €200,000 from unsuspecting customers.

In this case, the court convicted the defendants of commercial gang fraud. In a similar case in Sweden in 2017, the defendants were convicted of gross fraud. These cases set legal examples for treating these schemes as criminal fraud.

EUIPO warns IP users to beware of misleading payment requests and not to pay before checking.

To protect customers, EUIPO will continue to publish scam letters and emails in a searchable database of misleading payment requests available on the EUIPO website and further relayed on social media channels.

EUIPO says it strongly advises customers to carefully check any communication they receive in relation to their trade mark or design applications.

If you receive suspicious communications or have any doubts, you can contact CustomerCare@euipo.europa.eu. You can also contact the members of the MARQUES Anti-Fraud Task Force, who are listed here.

Find out more on EUIPO’s website here. This news was also reported on the IPKat blog here.

Picture from EUIPO website

Posted by: Blog Administrator @ 10.41
Tags: EUIPO, misleading invoices, scam,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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