1 October 2012Copyright

MARQUES conference 2012

From the Stop Online Piracy Act (SOPA) and the Anti-Counterfeiting Trade Agreement (ACTA) to tobacco branding and domain names, intellectual property has been front-page news in 2012. Proposed anti-piracy legislation has divided the press, the public and brand owners and for IP practitioners, court judgments on class headings, designs and non-conventional marks have further complicated an already complex legal system.

For MARQUES, the association of European trademark owners, this year’s efforts have been focused on making sense of these developments and campaigning for a harmonised approach to trademarks, branding and counterfeiting.

Since January, the team has been consulting with trademark organisations and legislative bodies including the World Intellectual Property Organization (WIPO), the Office for Harmonization in the Internal Market (OHIM) and the European Commission on IP developments and directives.

The organisation has also hosted regular seminars to educate brand owners on the changes, and in June, held its first conference in China.

MARQUES has voiced its criticism of the tobacco directive, its support for ACTA and its frustration at the unanswered questions raised by the Court of Justice of the EU’s (CJEU) IP Translator ruling on class headings under the Nice Agreement’s classification system.

The team has also been following and reporting on generic top-level domain (gTLD) developments, the Madrid Protocol and the EU Enforcement Directive, as well as court decisions such as PepsiCo v Grupo Promer Mon Graphic— the CJEU’s first substantive decision concerning a registered community design.

In September, MARQUES is hosting its 63rd annual meeting in Athens, Greece. This year’s theme is Trade Marks: Sign of the Times, and as well as providing the usual updates on OHIM, WIPO and CJEU case law, conference speakers will discuss domain name expansion, social media, new advertising technology and effective anti-counterfeiting measures.

“The aim is to discuss topical and ongoing trademark issues across the board, and bring brand owners and their representatives up to date on their ramifications,” says Shane Smyth, managing partner of FR Kelly’s Dublin practice and a MARQUES council member.

“There’s been a lot of uncertainty—for example, we want to know how patent offices will address classification, what are the approaches of various national patent offices towards nontraditional trademarks and thus, whether you will do best by filing non-traditional trademarks nationally or before OHIM or pursuing design registration; the conference will look at each of these issues in turn,” he says.

New media concerns

The conference will be formally opened by chair Nunzia Varricchio on Wednesday, and after an introduction from Smyth, proceedings will begin with a discussion on threats and opportunities in social media. The session will also cover mobile and augmented reality-based advertising—advertising which allows consumers to point their smartphone cameras at objects and images and trigger a 3D video.

“Our focus is on how to put protection in place and enforce it,” says Smyth. “Social media issues are a real concern for brand owners, as a huge amount of damage can be caused in a very short time, but we also want to discuss how social media can be used to a trademark owners’ advantage when promoting their goods and services. Compared to TV advertising, it’s a fraction of the cost and can reach a wide audience very quickly.”

Non-traditional marks

Non-traditional trademarks will also be discussed on Wednesday, in a session chaired by MARQUES design team chair David Stone, partner at Simmons & Simmons in London. Stone and other speakers will consider the use of non-traditional trademarks and recent rulings on registered and unregistered designs.

“One of the issues trademark owners have to address is the public disquiet if IP owners are seen to stretch the boundaries of what they are trying to enforce at a level that the public perceives to be unreasonable.”

From the Canadian federal court’s decision in the MGM roaring lion case to allow the registration of aural logos, to the CJEU’s clarification in PepsiCo v Grupo Promer Mon Graphic that goods themselves must be taken into account when assessing the overall impression of registered community designs, design registration and unusual marks have both been headline topics throughout 2012. According to Smyth, the session will inform attendees of the implications of these rulings, as well as identifying areas where further clarification is needed. “Recent judicial decisions have helped harmonise substantive design laws, but there are huge areas of disharmony that still exist in relation to enforcement,” he says.

“The courts, legal structures and associated costs vary dramatically across the EU, and there is a tendency to grant rights quickly and expeditiously, meaning your design registration may not be worth the paper it’s written on, and parties are left to fight it out in the courts.”

Anti-counterfeiting measures

The session on non-traditional trademarks will be followed by a discussion on civil litigation strategies, and Wednesday’s proceedings will end with a debate on IP’s relationship with anticounterfeiting and piracy measures.

“One of the issues trademark owners have to address is the public disquiet if IP owners are seen to stretch the boundaries of what they are trying to enforce at a level that the public perceives to be unreasonable,” says Smyth.

“For example, if someone goes on holiday and buys a counterfeit product, they don’t expect to have it seized from their luggage on their return. There’s a belief that enforcement shouldn’t occur at a private level, because it’s intrusive.

“In countries where counterfeiting can lead to severe and even excessive criminal sanctions, the public may feel it’s the trademark owner seeking to impose these sanctions and not the judicial system which is beyond brand owners’ control.”

Plain packaging

On Thursday, after an update on this year’s WIPO activities, chair of MARQUES programming team Willem Leppink and other speakers will look at retailers’ rights when reselling genuine goods.

This will be followed by a review of the latest gTLD developments and a choice of workshops on evidence collection, the challenges of protecting well-known brands, indigenous peoples’ rights and the introduction of plain tobacco packaging.

From December, Australia will become the first country to sell cigarettes in plain olive packets, without logos and adorned with graphic health warnings. Manufacturers British American Tobacco, Imperial Tobacco, Philip Morris and JTI appealed the decision, arguing it would destroy the value of their trademarks without compensation but in July, Australia’s high court dismissed the companies’ complaint.

Similar measures are being considered in the UK, Canada, New Zealand, China, France, India, South Africa, Norway and Uruguay. “Generally speaking, trademark owners are protective of any dilution of their ability to distinguish their products from those of their competitors, so companies are not just concerned about being able to put trademarks on their product, but the implications if the visual impact of their brand is lost in relation to merchandise,” Smyth explains.

“This could be the cause célèbre and in the future, similar directives could be applied to alcohol, or any product that is perceived to be bad for your health. So there has to be a debate on whether trademark owners generally wish to support tobacco trademark owners on the issue as a matter of principle, and it remains to be seen how this will play out.”

Annual updates

On Friday, MARQUES will hold its annual general meeting, which will be followed by updates on OHIM and CJEU case law, as well as the annual Lewis Gaze Memorial Scholarship presentation, an award offered to students demonstrating outstanding achievement in IP law, in memory of MARQUES’s first chairman.

The conference will then be officially closed by Varricchio, and Smyth hopes that come Friday, brand owners and their representatives will be better informed and equipped to deal with 2013’s IP challenges. “A lot of harmonisation and divergence has still to take place,” he says, “and brand owners must be careful to assert their rights in a manner which will not be counterproductive in the long run. Hopefully, this year’s conference will help trademark owners and practitioners achieve this.”

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