1 January 2011TrademarksNunzia Varricchio

Targeting a fair and balanced trademark protection system in Europe: The MARQUES experience

2011 has a lot of potential for significant and even more sophisticated challenges for brand owners.

MARQUES, the Association of European Trademark Owners, has been at the forefront of all those institutional and policy-making processes that have led or will lead to reform of IP legislation and practice.

The most significant matters that will affect the evolution of IP include: the development of the Madrid system of international trademark registration; the progress of the Study on the overall functioning of the European Trade Mark system; the still controversial debates around the ICANN’s new gTLDs programme; and several consultations launched by the European Commission on top-priority issues, likely to bring about significant impetus to new legislative and policy-making processes in the near future.

International reform

The Madrid system for international trademark registration has progressed favourably for trademark owners. On January 1, 2011, a major improvement to the Madrid Protocol international trademark system came into effect. With the full implementation of rule changes agreed by the Madrid Union in September 2009, all designated offices for a Madrid Protocol application will have to issue a statement of grant of protection when the examination is finalised.

The statement will be issued when there has been no problem with the application; when the relevant opposition period has ended without any opposition being filed; or if there has been an opposition, when that has been dealt with.

The change means that international brand owners have a lot more predictability about the fate of their applications.

MARQUES was instrumental in bringing about this change, recommending the reform in letters to the World Intellectual Property Organization (WIPO) and in representations before the meetings of the relevant working group. Such fundamental rule changes do not come about overnight and need to be thoroughly debated. This improvement is just one of many achievements for trademark owners that MARQUES can claim in the past few years.

MARQUES has been highly influential in representing brand owners’ views on the development of the international registration systems and other international instruments administered by WIPO. MARQUES is an official non-governmental observer at WIPO and has a long-standing tradition of co-operation with the International Bureau in all areas relevant to trademarks, industrial designs and geographical indications.

MARQUES’ designs team has recently made submissions to WIPO’s standing committee on trademarks, industrial designs and geographical indications on possible areas of convergence in industrial design law and practice. The team likewise closely follows the activities of the WIPO Ad hoc Working Group on the Legal Development of the Hague System for the International Registration of Industrial Designs.

As part of its objectives, MARQUES’ GIs team has provided an important contribution to discussions on a possible revision of the Lisbon Agreement for the protection of appellations of origin.

In June 2011, MARQUES will be represented at the Worldwide Symposium on Geographical Indications to be held in Lima, organised by WIPO in co-operation with the National Institute for the Defence of Competition and the Protection of Intellectual Property of Peru (INDECOPI) and the Ministry of Foreign Affairs of Peru, and will be given the opportunity of providing a presentation on the topic ‘Geographical Indications as Intellectual Property Rights’ to voice its perspective as a non-governmental organisation.

The study and the reform of the European trademark system

At the beginning of last March, the Max Planck Institute (MPI) published its report on the Study on the overall functioning of the European Trade Mark system, which was commissioned by the European Commission to provide an in-depth assessment of the current performance and any potential areas for improvement of the system.

MARQUES believes that the study represents a unique opportunity to fine-tune the trademark systems in Europe to benefit users and to promote further harmonisation of the Internal Market. Harmonisation represents the basic requisite to achieve the first and most cost- and time-effective policy of IP rights enforcement.

MARQUES maintains its approach that simple and cost-effective registration systems must be made available, as these are beneficial to the industry and to all those economic operators that need protection for their intellectual property rights, as part of the valuable assets of their business. It also supports that the national, regional and international trademark systems must continue to coexist and to represent equally efficient solutions that remain attractive for users.

A MARQUES’ special study task force was established last year to analyse and respond to the questions raised by the MPI. The study task force is currently reviewing the extensive report issued by the MPI—of more of 250 pages—and preparing for DG Markt’s user hearing on May 26, 2011.

At the heart of Europe

Although MARQUES members come from all over the globe, what makes it unique is that it is a European organisation representing brand owners’ interests worldwide. Much of its work is therefore focused on improving the trademark system in the EU and neighbouring countries.

To this end, the association has built up a warm and proactive, though not uncritical, relationship with OHIM. For example, MARQUES argued in favour of trademark users’ associations having observer status on OHIM’s administrative board and budget committee, and is one of the five associations that are now permanently represented there.

MARQUES supports OHIM’s active role in contributing to the enhancement of the trademark systems in Europe, to promote further harmonisation within the Internal Market and to increase competitiveness. The office can have a very important role in fostering convergence amongst the offices, both in terms of IP practices and tools.

As an experienced administrator of registration systems, the office may take the lead by helping to co-ordinate consultation of users, to collect their views and concerns on one side, and interfacing these with the needs and realities at national office level in both the EU and outside.

Both MARQUES’ officers and representatives of many of its teams attend the regular OHIM users’ group meetings.

The association secured representation in Europe before the European Commission’s register of representatives in 2010 and has made representations to the European Commission to be formally admitted to the observatory on counterfeiting and piracy as an interested representative association. It has always supported the Commission’s initiatives focusing on counterfeiting and piracy issues, through the activities of its anti-counterfeiting and parallel trade team and the Global Anti-Counterfeiting (GACG) Network, of which the association is an active member.

In 2010, MARQUES prepared submissions to the Commission’s consultation on the review of the EU laws on customs enforcement of IP rights and recently provided a response to its report on the enforcement of intellectual property rights. MARQUES agreed with the Commission’s statement that effective means of enforcing intellectual property rights are essential for promoting innovation and creativity.

While Directive 2004/48/EC has harmonised the minimum means available to rights holders for fighting infringements, provided a common platform for the exchange of information, and assisted administrative co-operation between national authorities and the Commission, MARQUES considers that the fight against counterfeit and pirated goods is so important, and the potential damage to the European Union and its citizens so great, that a review of the directive would be justified.

Particularly, specific additional challenges have arisen from the digital environment, and the limitations of the existing legal framework may need to be clearly assessed and any relevant gaps bridged.

MARQUES also provided responses to the consultation on the Tobacco Directive, particularly focused on the troubling legislative proposal to introduce so-called generic or plain packaging for tobacco products. MARQUES has formally raised serious concerns that the considered ‘plain packaging’ policy option would be inconsistent with the EU legal framework and the international intellectual property treaties and obligations, particularly with respect to the protection of trademarks.

Consequently, it has strongly opposed the plain packaging provision outlined in the public consultation document and has requested that the European Commission consider alternative policy options that can achieve important public health initiatives without undermining the intellectual property rights of its members and international treaties.

Following the recent launch of an amicus curiae team, MARQUES has made representations in important trademark cases in Europe upon their referral to the Court of Justice of the European Union, including the Nokia Corporation v Her Majesty’s Commissioners of Revenue & Customs (HMRC) case on transhipment, the Leno Merken BV v Hagelkruis Beheer bv (ONEL/OMEL) case on genuine use of CTMs and the CIPA v UK IPO (IP Translator) case on the use of class headings.

The new challenges of the information age

An issue of ever growing concern to brand owners is the protection of domain names and trademarks on the Internet.

Among the most pressing priorities is the proposed expansion of the domain name space with the launch of new generic top-level domains. MARQUES’ devoted team has been at the forefront of raising the concerns of brand owners before ICANN, submitting comments on the brand protection mechanisms proposed, including the clearinghouse, the Uniform Rapid Suspension, the financial framework/operating budget from 2011 and the post delegation dispute resolution procedure, as well as the Draft Applicant Guidebook, version 4.

This work has been undertaken in close co-operation with other associations, especially ECTA, and a meeting with representatives of the European Commission’s DG Information Society & Media in Brussels has taken place to express concerns at ICANN’s proposed expansion of the domain name system with the launch of new gTLDs.

MARQUES has continued its mission in this area and has recently addressed a briefing note to ICANN’s Government Advisory Committee commenting on all the issues of concern related to the new gTLD process and urging the ICANN Board to demonstrate that it would act in the public interest and implement bold measures to ensure that cybersquatting, bad faith registration and WHOis abuse may be prevented.

More about MARQUES’ mission and regular activities

For nearly a quarter of a century, MARQUES has represented brand owners’ interests through a variety of activities. It has organised many educational and networking events, notably the Annual Conference, the Trade Mark User Forum (which brings together brand owners and IP offices in Europe) and the annual Judges Meeting, at which European trademark judges of the specialised CTM courts meet.

In addition, MARQUES provides information to members via its newsletter, blog, case database and comprehensive website, as well as other occasional publications; works closely with other brand owners’ groups and international organisations to improve protection for trademarks and associated IP rights throughout the world, and presents the Lewis Gaze Memorial Award annually to an outstanding student in the field of trademarks.

MARQUES has more than 700 corporate members from both brand owners and law firms, from Europe and beyond. Many representatives of the member companies participate actively in the teams, which work on topical issues such as trademark law and practice, cyberspace, designs, geographical indications and regulatory matters.

A vital role

The globalisation of trade and the growth of rapid electronic communication present great opportunities for owners of valuable brands to reach new markets and extend their products to new areas. But they also bring enormous challenges, from clashing trademarks to the risk of dilution and the rapid spread of counterfeits.

An effective brand protection strategy involves addressing issues as varied as the Internet, unfair competition, valuation and parallel imports. Given the demands on time and resources, many trademark counsels find it invaluable to work alongside their peers in other organisations and benefit from the extensive work undertaken by and through MARQUES.

MARQUES is unique in representing the interests of brand owners in Europe before the key authorities in the EU and beyond, and takes a practical, commercial approach that reflects its members’ interests. For example, at the AGM, all industry members can vote on major policies and appointments. The same practice applies to the MARQUES Council whenever there is a vote on a substantive issue.

As the improvements to the Madrid Protocol show, this approach can lead to real reforms to benefit trademark owners. We are already beginning to see the fruits of similar intensive work in the EU and at ICANN, and MARQUES members are even now working on further initiatives to help make the lives of trademark owners simpler and more effective, enabling them to spend more time focused on their most important work—maximising the value of brands to their business.

Nunzia Varricchio is chair the Association of European Trademark Owners and the senior trademark attorney for DSM. She can be contacted at: nunzia.varricchio@dsm.com

Visit www.MARQUES.org to find out about upcoming events, the work of the various teams, the latest trademark news on the Class 46 blog and much more.

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