Booking is now open for the next MARQUES Meet the Judges event, which takes place in Rome, Italy on Thursday 30 January 2025.

The event will be a roundtable discussion with eminent Italian judges, representatives of the Italian Patent and Trade Mark Office, members of the Italian and EUIPO Boards of Appeal and industry representatives.

It will start with a Buffet Lunch at 12.00 and conclude with a Drinks Reception at 18.30.

Topics covered in the discussion will include: proof of use, protection of well-known trade marks, including heritage brands, showing reputation and acquired distinctiveness through market surveys, patronymic trade marks, how to deal with gaps between market realities and the restrictive examination practices for non-conventional signs as trade marks.

Speakers include: Avv. Vittorio Cerulli Irelli, Avv. Elisa Vittone, Avv. Flavia Tamburrini, Avv. Lorella Cipriani (BOTTEGA VENETA), Avv. Laurence Morel-Chevillet (BULGARI) and Dr. Andrea Chianura (LAVAZZA).

The programme will also offer participants the chance to enjoy a special theatrical performance on “The Trials of Oscar Wilde”, written by Merlin Holland and John O’Connor.This event will be conducted in Italian will be held at the OFF/OFF Theatre, Via Giulia 20, Rome.

Registration is €325 (MARQUES members) or €450 (non-members). For more information, and to reserve your place, please visit the dedicated page on the MARQUES website.

The MARQUES Anti-Counterfeiting and Parallel Trade Team has published a paper on tracking and tracing technologies used to protect brands.

The paper looks at different types of technologies and their pros and cons.

It covers holograms, watermarks, security inks, chemical taggants, microprinting, QR codes and RFID, GPS, NFC, tamper-evident packaging, secure packaging design, blockchain, DNA marking, machine learning and AI, secure authentication apps, secure labels and seals, authentication tags and barcodes.

The paper looks in depth at two specific solutions, AlpVision Cryptoglyph and Fingerprint and PLASTIWARD in-plastic security. It also considers the use of watermarking in authentication of academic certificates, forgery prevention, copyright protection and data authentication and the recent resurgence in the use of RFID and QR codes as anti-counterfeiting tools by brands such as Moncler, Gucci and HP as well as by the wine industry.

The paper is written by Team members Todd Bontemps, Frank Jørgensen, Carsten Menebröcker, Elena Bojinova Miller, Maria Cecilia Romoleroux, Birgit Wuest and Ray Lei Zhao. It can be downloaded here (MARQUES log-in required).

Picture taken from the paper

As part of the MARQUES Regulatory Team’s focus on brand restrictions, Maria del Carmen Alvarado and Daniela Supo discuss some recent case studies in Peru.

Trade marks are far more than just logos or symbols – they are the essence of a brand’s identity, a bridge between consumers and the products they trust. In Peru, as in many parts of the world, this vital connection is being reshaped by stringent regulations aimed at promoting public health.

However, these brand restrictions, while well-intentioned, come with a cost: they challenge the very foundation of trade mark rights by curtailing how companies can express their uniqueness and value. As industries such as tobacco, pharmaceuticals, and food products grapple with increasing limitations on their use of trade marks, it raises a critical question: How far can regulation go before it starts eroding the power of brands to compete and thrive in the marketplace?

This analysis delves into the impact of Peru's brand restrictions, examining the fine line between public interest and the protection of intellectual property rights.

General considerations on brand restrictions

Brand restrictions encompass regulatory measures that limit the use of trade marks, including plain packaging, prohibitions on specific brand elements, and mandatory health warnings.

Although these measures are often introduced to promote public health, they also significantly restrict the ability of businesses to differentiate their products and communicate their brand values to consumers.

Empirical evidence from around the world suggests that the effectiveness of such restrictions is mixed. For instance, Australia’s plain packaging law for tobacco, which aimed to reduce smoking rates by removing brand identity from cigarette packs, has led to unintended consequences such as a rise in counterfeit products.

Similarly, in Peru, the introduction of brand restrictions has created new challenges for businesses, particularly in sectors such as tobacco, pharmaceuticals, and food.

Case study: processed foods and beverages

Peru’s Law on the Promotion of Healthy Nutrition for Children and Adolescents (Law No. 30021) introduces a series of restrictions on food advertising aimed at minors, particularly targeting processed food and non-alcoholic beverages high in sugar, fat or salt, with the goal of promoting healthier eating habits among individuals under 16 years old.

Specifically, Article 8 of the law prohibits advertisements that use visuals, characters, or messages likely to attract children under 16 or imply benefits such as enhanced strength, popularity or superiority.

For example, the use of colourful or animated characters often seen in children’s food packaging is restricted if they convey such messages. Additionally, advertisements that create misleading associations, such as suggesting that the consumption of a product provides health or social benefits, are also prohibited.

Prohibition on characters and visuals

The law explicitly prohibits the use of animated characters, both real and fictional, in advertising aimed at children under 16 if these elements suggest strength, popularity or superiority. Companies that incorporate such characters into their trade marks are significantly restricted in how they can market their products.

In Resolution No. 104-2019/CCD-INDECOPI (25 June 2019), the advertising of a powdered beverage featuring an animated character dressed as a superhero and holding the prepared product with a caption at the top stating "activate your power" was sanctioned.

The Commission for the Supervision of Unfair Competition (CCD) ruled that the imagery and wording promoted the acquisition of strength as a benefit of consuming the product. The Commission noted that the superhero was depicted making a hand gesture symbolizing strength, which suggested that the product, “Kiwigén” was the source of power and energy.

Use of fruit images

Another important restriction under the Healthy Food Law pertains to the use of fruit images on processed food products that do not contain those natural ingredients. This regulation directly affects trade marks that incorporate such elements, forcing businesses to reconsider their branding strategies.

In Resolution No. 101-2019/CCD-INDECOPI, a company was fined for using a personified pineapple on the packaging of a beverage that did not contain pineapple as an ingredient.

Despite the company's argument that the image was a registered trade mark, the competent authority ruled that using the fruit in a misleading way violated the provisions of the law, particularly Article 8(m), which prohibits the use of images that falsely suggest the presence of natural ingredients.

The authority further established that the fact that the pineapple image was a registered trade mark did not exempt the company from complying with advertising regulations.

Celebrity and athlete endorsements

In addition to restrictions on characters and visuals, Peru’s Healthy Food Law limits the use of real-life figures such as celebrities and athletes in advertising aimed at children. The law seeks to prevent the association of unhealthy products with positive attributes such as athletic performance or social popularity.

In Resolution No. 112-2019/CCD-INDECOPI, a beverage company was fined for using the image of a well-known Peruvian soccer player in its advertising. The use of the athlete, combined with the product's positioning as a sports drink, was seen as promoting the idea that consuming the beverage would improve athletic performance, which is prohibited under Article 8(e) of the law.

Advertising warnings

Peru’s Healthy Food Law also mandates the inclusion of "high in" labels on food packaging for products that exceed the permissible levels of sugar, fat and sodium. These labels are intended to inform consumers about the potential health risks associated with consuming these products.

However, this requirement limits the space available for branding and marketing, as it obliges companies to allocate a significant portion of their packaging to these warnings.

This regulation echoes similar measures implemented in countries such as Chile, where "high in" labels have become mandatory for certain food products. In Peru, the requirement to include these warnings has prompted businesses to rethink their packaging design and how they present their brands to consumers.

Conclusions

The imposition of brand restrictions in Peru highlights the ongoing challenge of balancing public health objectives with the rights of trade mark holders. While these regulations aim to protect vulnerable consumers, particularly children, from unhealthy products, they also limit businesses’ ability to fully utilize their trade marks in differentiating their offerings and conveying their unique value propositions to the market.

Although Peru’s approach is somewhat less restrictive compared to countries such as Chile and Mexico, it still creates significant hurdles for companies, especially in the processed foods and beverages sector. The limitations on the use of characters, visual elements, and specific marketing strategies that are crucial for building brand recognition and consumer loyalty present serious challenges. These constraints can undermine a brand’s ability to effectively communicate with its target audience, especially younger consumers.

Moreover, the broader economic implications of these restrictions cannot be overlooked. Innovation may be stifled, as companies are forced to operate within narrower marketing frameworks, limiting their capacity to differentiate their products and engage consumers.

This is particularly challenging for small and medium-sized enterprises (SMEs), which often rely on creative branding strategies to remain competitive. SMEs may find it more difficult to comply with these regulations while maintaining their market presence and competitive edge.

It is vital that policymakers continually evaluate the impact of these restrictions and explore less burdensome alternatives that could achieve the same public health outcomes.

Striking the right balance is essential. Overly restrictive measures can dampen innovation, reduce competition, and diminish the inherent value of trade marks.

As Peru continues to implement and refine its brand restrictions, it is crucial to ensure that these measures remain proportionate, evidence-based, and considerate of their broader economic consequences, fostering both consumer protection and a competitive, innovative marketplace.

Maria del Carmen Alvarado and Daniela Supo are lawyers with Rodrigo, Elias & Medrano Abogados in Peru. Maria is also a member of the MARQUES Regulatory Team. 

Pictures provided by the authors

The EUIPO has published “EU Member States’ potential for protecting craft and industrial Geographical Indications”. The document looks at interest in protecting craft and industrial geographical indications (GIs) in the EU.

The study provides an overview of current national legal frameworks and assesses the extent to which there is a local (national) interest in the protection of craft and industrial GIs.

It found that 16 member states have adopted sui generis protection systems, which differ in terms of scope, administration, registration fees and enforcement measures.

It also found strong private sector support for protection but more moderate interest among public sector stakeholders: public authorities from eight member states indicated that their country could seek the opt-out under Article 19 of the new Regulation on Craft and Industrial GIs.

The new Regulation will fully apply by December 2025.

The study was based on 130 responses to a questionnaire from stakeholders in all 27 member states.

EUIPO is hosting a Geographical Indications Conference on 28-29 January 2025. More details are here.

The picture shows the cover of the study.

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.