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10 HIGHLIGHTS FROM 2016

10 HIGHLIGHTS FROM 2016WWW.MARQUES.ORG

MARQUESPO Box 10212LeicesterLE41 9HGT: +44 116 274 7355F: +44 116 274 7365E: [email protected]

MARQUESPO Box 10212LeicesterLE41 9HGT: +44 116 274 7355F: +44 116 274 7365E: [email protected]

WWW.MARQUES.ORG


CONTENTS

Resources for brand ownersEventsInforming membersEuropean trade mark and I policyInternational trade mark and IP policyGeographical indicationsDesignsNew ProjectsMARQUES LeadershipAwards and recognition

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MARQUESPO Box 10212LeicesterLE41 9HGT: +44 116 274 7355F: +44 116 274 7365E: [email protected]: www.marques.org

CONTENTS

Resources for brand ownersEventsInforming membersEuropean trade mark and I policyInternational trade mark and IP policyGeographical indicationsDesignsNew ProjectsMARQUES LeadershipAwards and recognition

12345678910

MARQUESPO Box 10212LeicesterLE41 9HGT: +44 116 274 7355F: +44 116 274 7365E: [email protected]: www.marques.org

websites will be prepared by the ACPTTeam.

9. MARQUES LEADERSHIP

• In March 2017, a new Chair, First Vice-Chair and Second Vice-Chair will begin theirtwo-year terms and a new Treasurer will beappointed.

• Elections for the Chairs and Vice-Chairs of the MARQUES Teams aretaking place at the end of 2016.

• Team member elections will take place in 2017, and all MARQUESmembers are invited to apply to join a Team.

10. AWARDS AND RECOGNITION

• The Kay-Uwe Jonas lecture during theSpring Meeting was given by Prof DrChristian Rohnke on the topic of “Lawvs Fact?”

• The 2016 Lewis Gaze MemorialAward was presented to SaraNavarro Joven during the AnnualConference in Villaitana. Secondplace went to Rubén Cano Perez and in third place was Lesly LauraCapucine Nowak.

• A new Volunteer Award in memory of David Goldring was inaugurated;the first award was presented to Dee Goldring, in memory of David,during the Annual Conference in Villaitana.

30TH ANNUAL CONFERENCEVillaitana, Alicante

LEWIS GAZE SCHOLARSHPVillaitana

websites will be prepared by the ACPTTeam.

9. MARQUES LEADERSHIP

• In March 2017, a new Chair, First Vice-Chair and Second Vice-Chair will begin theirtwo-year terms and a new Treasurer will beappointed.

• Elections for the Chairs and Vice-Chairs of the MARQUES Teams aretaking place at the end of 2016.

• Team member elections will take place in 2017, and all MARQUESmembers are invited to apply to join a Team.

10. AWARDS AND RECOGNITION

• The Kay-Uwe Jonas lecture during theSpring Meeting was given by Prof DrChristian Rohnke on the topic of “Lawvs Fact?”

• The 2016 Lewis Gaze MemorialAward was presented to SaraNavarro Joven during the AnnualConference in Villaitana. Secondplace went to Rubén Cano Perez and in third place was Lesly LauraCapucine Nowak.

• A new Volunteer Award in memory of David Goldring was inaugurated;the first award was presented to Dee Goldring, in memory of David,during the Annual Conference in Villaitana.


LEWIS GAZE SCHOLARSHPVillaitana


1. RESOURCES FOR BRAND OWNERS

• The Anti-Fraud Task Force was formed toaddress the issues of scam invoices andsimilar communications and to participatein collaborative initiatives with IP Offices –notably the EUIPO – kindred organisationsand stakeholders. The Task Force isassisting the EUIPO and the Swedishauthorities in a criminal case against a

large scam invoice operation.• MARQUES is establishing a Task Force to monitor Brexit, following the UK

referendum vote in June 2016, and to liaise with the UK government andother agencies and communicate developments to members.

• A report on the protection of well-known trade and company nameswas compiled and published by theMARQUES Famous and Well-KnownMarks Team. It addresses keyquestions in different jurisdictions.

• An overview of ISP liability for third-party infringements, covering recentcase law at the CJEU and nationalcourts, was published by theCyberspace Team. It covers both hostproviders and access providers.

• An update to the chart on the law and practice related to look-alikeproducts, compiled by members of the Unfair Competition Team, wasdistributed on a USB stick at the Annual Conference and is also available

on the MARQUES website. The Team hasalso prepared a new annex to the “Who’sbehind the mask?” guide.• The Regulatory Team has conducted asurvey on certification marks, which willsoon be available on the MARQUESwebsite.

ARBITRATION & MEDIATION SEMINARLondon


EUIPO WORKSHOPAlicante, Spain

1. RESOURCES FOR BRAND OWNERS

• The Anti-Fraud Task Force was formed toaddress the issues of scam invoices andsimilar communications and to participatein collaborative initiatives with IP Offices –notably the EUIPO – kindred organisationsand stakeholders. The Task Force isassisting the EUIPO and the Swedishauthorities in a criminal case against a

large scam invoice operation.• MARQUES is establishing a Task Force to monitor Brexit, following the UK

referendum vote in June 2016, and to liaise with the UK government andother agencies and communicate developments to members.

• A report on the protection of well-known trade and company nameswas compiled and published by theMARQUES Famous and Well-KnownMarks Team. It addresses keyquestions in different jurisdictions.

• An overview of ISP liability for third-party infringements, covering recentcase law at the CJEU and nationalcourts, was published by theCyberspace Team. It covers both hostproviders and access providers.

• An update to the chart on the law and practice related to look-alikeproducts, compiled by members of the Unfair Competition Team, wasdistributed on a USB stick at the Annual Conference and is also available

on the MARQUES website. The Team hasalso prepared a new annex to the “Who’sbehind the mask?” guide.• The Regulatory Team has conducted asurvey on certification marks, which willsoon be available on the MARQUESwebsite.

ARBITRATION & MEDIATION SEMINARLondon



is well received and viewed ascomprehensive and useful.• A Task Force has been established on theWIPO proposal for recommendationsrelating to the disclosure of an industrialdesign in an international application, and afirst submission made.• MARQUES will analyse and report on therecently published study of the EU designsystem, and liaise with other user

organisations.

8. NEW PROJECTS

• A new MARQUES Copyright Teamwas launched during 2016 to addresscopyright issues of interest to brandowners.

• A Luxury Brands Symposium isscheduled to be held in Hong Kong inMarch 2017.

• The Programming Team is planningJudges Meetings in China, Brazil andPortugal during 2017, as well ascoexistence agreement workshops in Bulgaria and the Netherlands and aworkshop on crisis management.

• Various MARQUES Teams plan to host webinars and podcasts during 2017.• A questionnaire on self-regulatory organisations, conducted by the

Regulatory Team, will be published in 2017.• Surveys on hashtags and AdWords caselaw (organised by the Brands & MarketingTeam) will be available soon.• A detailed study of the take-downpolicies and procedures of a range of socialmedia, online marketplaces and auction

COEXISTENCE WORKSHOPPoland


MEET THE JUDGESLondon

is well received and viewed ascomprehensive and useful.• A Task Force has been established on theWIPO proposal for recommendationsrelating to the disclosure of an industrialdesign in an international application, and afirst submission made.• MARQUES will analyse and report on therecently published study of the EU designsystem, and liaise with other user

organisations.

8. NEW PROJECTS

• A new MARQUES Copyright Teamwas launched during 2016 to addresscopyright issues of interest to brandowners.

• A Luxury Brands Symposium isscheduled to be held in Hong Kong inMarch 2017.

• The Programming Team is planningJudges Meetings in China, Brazil andPortugal during 2017, as well ascoexistence agreement workshops in Bulgaria and the Netherlands and aworkshop on crisis management.

• Various MARQUES Teams plan to host webinars and podcasts during 2017.• A questionnaire on self-regulatory organisations, conducted by the

Regulatory Team, will be published in 2017.• Surveys on hashtags and AdWords caselaw (organised by the Brands & MarketingTeam) will be available soon.• A detailed study of the take-downpolicies and procedures of a range of socialmedia, online marketplaces and auction

COEXISTENCE WORKSHOPPoland


MEET THE JUDGESLondon


2. EVENTS

• More than 800 people attended theMARQUES Annual Conference, held inVillaitana, Spain in September. There wasextensive participation from EUIPO andWIPO officials, with workshops held at theEUIPO offices in Alicante, on classification

tools and other services for the users, the Enforcement Database of theEuropean Observatory and mediation at the EUIPO.

• The Annual Conference also included a workshop on rebranding,organised by the Brands & Marketing Team, which was attended by morethan 100 people.

• Indigenous rights were addressed ina very well-received session at theAnnual Conference, which included akeynote address by US Ambassadorto the UN Human Rights Council,Keith Harper.

• The Spring Meeting in Frankfurtincluded the first MARQUESLeadership Forum, where Teamchairs and vice-chairs shared theirknowledge and experience.

• Three new practical workshops were held in October on issues regardingInternational Registrations, with speakers from the USPTO and WIPO.

• A new workshop on arbitrating and mediating trade marks was held bythe Dispute Resolution Team in London inApril.• The annual Ask the Trade Mark Judgesmeeting was held in London in October,with a panel of four judges and an audienceof about 200 people.

30TH MARQUES ANNUAL CONFERENCEVillaitana, Alicante



2. EVENTS

• More than 800 people attended theMARQUES Annual Conference, held inVillaitana, Spain in September. There wasextensive participation from EUIPO andWIPO officials, with workshops held at theEUIPO offices in Alicante, on classification

tools and other services for the users, the Enforcement Database of theEuropean Observatory and mediation at the EUIPO.

• The Annual Conference also included a workshop on rebranding,organised by the Brands & Marketing Team, which was attended by morethan 100 people.

• Indigenous rights were addressed ina very well-received session at theAnnual Conference, which included akeynote address by US Ambassadorto the UN Human Rights Council,Keith Harper.

• The Spring Meeting in Frankfurtincluded the first MARQUESLeadership Forum, where Teamchairs and vice-chairs shared theirknowledge and experience.

• Three new practical workshops were held in October on issues regardingInternational Registrations, with speakers from the USPTO and WIPO.

• A new workshop on arbitrating and mediating trade marks was held bythe Dispute Resolution Team in London inApril.• The annual Ask the Trade Mark Judgesmeeting was held in London in October,with a panel of four judges and an audienceof about 200 people.

30TH MARQUES ANNUAL CONFERENCEVillaitana, Alicante



• Members of the International TradeMark Law & Practice Team publishedarticles in HouseMARQUES on USregistrations and oppositions in Mexico.• MARQUES was represented at anumber of WIPO discussions, including theSCT Meeting, Hague Working Groupmeeting and Madrid Working Groupmeetings.• On domain name issues, the MARQUES

Cyberspace Team made submissions to ICANN with respect to theIndependent Review of the Trademark Clearinghouse (TMCH) DraftReport; took part in EuroDIG 2016; and submitted comments on the newUDRP.

6. GEOGRAPHICAL INDICATIONS

• MARQUES was represented atWIPO’s Working Group on the LisbonAgreement in Geneva and joined therelevant parts of the SCT meetingremotely.

• The Geographical Indications Team isnow monitoring the GI aspects of theTTIP negotiations. It is alsomonitoring EU proposals to extend GI protection to non-agriculturalproducts.

7. DESIGNS

• Members of the Designs Team helped toshape the now-concluded CP6 project(graphic representation of designs).•MARQUES continues to provide commenton the EUIPO Design Guidelines, and hasreceived feedback indicating that its input

WIPOGeneva, Switzerland


MARQUES AND WIPOGeneva

• Members of the International TradeMark Law & Practice Team publishedarticles in HouseMARQUES on USregistrations and oppositions in Mexico.• MARQUES was represented at anumber of WIPO discussions, including theSCT Meeting, Hague Working Groupmeeting and Madrid Working Groupmeetings.• On domain name issues, the MARQUES

Cyberspace Team made submissions to ICANN with respect to theIndependent Review of the Trademark Clearinghouse (TMCH) DraftReport; took part in EuroDIG 2016; and submitted comments on the newUDRP.

6. GEOGRAPHICAL INDICATIONS

• MARQUES was represented atWIPO’s Working Group on the LisbonAgreement in Geneva and joined therelevant parts of the SCT meetingremotely.

• The Geographical Indications Team isnow monitoring the GI aspects of theTTIP negotiations. It is alsomonitoring EU proposals to extend GI protection to non-agriculturalproducts.

7. DESIGNS

• Members of the Designs Team helped toshape the now-concluded CP6 project(graphic representation of designs).•MARQUES continues to provide commenton the EUIPO Design Guidelines, and hasreceived feedback indicating that its input

WIPOGeneva, Switzerland


MARQUES AND WIPOGeneva


3. INFORMING MEMBERS

• A dedicated sub-group has been set up onLinkedIn for corporate members to shareexperiences. This is managed by the IAMTeam.• A series of articles was published inHouseMARQUES on the evolvingrelationship between consumers andbrands, written by members of the IP

Outer Borders Team.• The IP booklist available on the MARQUES website has been expanded

and the databases of educational programmes and professionalaccreditation updated. These are maintained by members of theEducation Team.

• HouseMARQUES started thepublication of a series of articles ontrade mark licensing issues, writtenby members of the IAM Team.

• The MARQUES Class 46 and Class 99blogs and social media (Facebook,LinkedIn and Twitter) continued toadd more followers.

4. EUROPEAN TRADE MARK AND IP POLICY

• Senior members of the MARQUES EU Trade Mark Law & Practice Teamattended the EUIPO Trade Mark Liaison Meeting, and senior members ofthe Anti-Counterfeiting & Parallel Trade Team attended meetings of the

EU Observatory, as well as members of theMARQUES Executive and the ExternalRelations Officer. This is a vital part ofMARQUES’ work to represent the viewsand concerns of brand owner membersbefore IP agencies and institutions.




3. INFORMING MEMBERS

• A dedicated sub-group has been set up onLinkedIn for corporate members to shareexperiences. This is managed by the IAMTeam.• A series of articles was published inHouseMARQUES on the evolvingrelationship between consumers andbrands, written by members of the IP

Outer Borders Team.• The IP booklist available on the MARQUES website has been expanded

and the databases of educational programmes and professionalaccreditation updated. These are maintained by members of theEducation Team.

• HouseMARQUES started thepublication of a series of articles ontrade mark licensing issues, writtenby members of the IAM Team.

• The MARQUES Class 46 and Class 99blogs and social media (Facebook,LinkedIn and Twitter) continued toadd more followers.

4. EUROPEAN TRADE MARK AND IP POLICY

• Senior members of the MARQUES EU Trade Mark Law & Practice Teamattended the EUIPO Trade Mark Liaison Meeting, and senior members ofthe Anti-Counterfeiting & Parallel Trade Team attended meetings of the

EU Observatory, as well as members of theMARQUES Executive and the ExternalRelations Officer. This is a vital part ofMARQUES’ work to represent the viewsand concerns of brand owner membersbefore IP agencies and institutions.




• Led by the EU Trade Mark Law & PracticeTeam, MARQUES reviewed the EUIPOupdates to Trade Mark Guidelines.• MARQUES has provided input on theEuropean Commission’s draft delegatedand implementing acts following the EUtrade mark reform package.• The Anti-Counterfeiting & Parallel TradeTeam made a submission to the EuropeanCommission on the implementation of the

EU Customs Regulation, and also attended the “Follow the Money”conference in Rotterdam in April and the EU Customs Meeting in Brusselsin July.

• MARQUES, through the AmicusCuriae Team, is represented as anintervener in the Red Bull blue/silvercolour combination trade mark cases(Board of Appeal decisions T-101/15and T-102/15) now before the EUGeneral Court.

5. INTERNATIONAL TRADE MARKPOLICY

• The MARQUES International Trade Mark Law & Practice Team submitteda letter to the Madrid Working Group setting out users’ concerns andpriorities for improving the international trade mark system.

• MARQUES sent comments to WIPO regarding WIPO’s proposed draftExamination Guidelines on Classification.• MARQUES representatives, includingmembers of the China Team, visited Chinain October/November to take part in theofficial meetings of the TM5 and ID5 – uponinvitation by the EUIPO – as well as theChina Trademark Festival organised by theChina Trademark Association.

30TH ANNUAL CONFERENCEVilliatana, Alicante

MARQUES USPTO WIPOAmsterdam


• Led by the EU Trade Mark Law & PracticeTeam, MARQUES reviewed the EUIPOupdates to Trade Mark Guidelines.• MARQUES has provided input on theEuropean Commission’s draft delegatedand implementing acts following the EUtrade mark reform package.• The Anti-Counterfeiting & Parallel TradeTeam made a submission to the EuropeanCommission on the implementation of the

EU Customs Regulation, and also attended the “Follow the Money”conference in Rotterdam in April and the EU Customs Meeting in Brusselsin July.

• MARQUES, through the AmicusCuriae Team, is represented as anintervener in the Red Bull blue/silvercolour combination trade mark cases(Board of Appeal decisions T-101/15and T-102/15) now before the EUGeneral Court.

5. INTERNATIONAL TRADE MARKPOLICY

• The MARQUES International Trade Mark Law & Practice Team submitteda letter to the Madrid Working Group setting out users’ concerns andpriorities for improving the international trade mark system.

• MARQUES sent comments to WIPO regarding WIPO’s proposed draftExamination Guidelines on Classification.• MARQUES representatives, includingmembers of the China Team, visited Chinain October/November to take part in theofficial meetings of the TM5 and ID5 – uponinvitation by the EUIPO – as well as theChina Trademark Festival organised by theChina Trademark Association.

30TH ANNUAL CONFERENCEVilliatana, Alicante

MARQUES USPTO WIPOAmsterdam


annual conference, which included a keynote address by us ambassador to the un human rights council,...

Documents