[Guest post] EUIPO BoA IP Case Law Conference Report #3 – “Reconciling the Old with the New: Challenges of Trade Mark Modernization”

The IP Case Law Conference (IPCLC), “Decoding Decisions: Insights from Selected Case-Law” continues and it's now time of the second report. This post has been kindly prepared by Katfriend Mindia Davitadze (Stockholm University). Here’s what he writes:

EUIPO BoA IP Case Law Conference Report #3 – “Reconciling the Old with the New: Challenges of Trade Mark Modernization”

by Mindia Davitadze

The third session of the conference delved into the challenges of trademark modernization, under the theme “Reconciling the Old with the New: Challenges of Trade Mark Modernization”.

Yann Basire - Director General 

of CEIPI and Director

of the French section of CEIPI

The discussion sought to explore the underlying reasons driving the necessity for trademark modernization and the legal obstacles it presents, against the backdrop of evolving industries, business methodologies, consumer trends, and technological innovations. Esteemed professionals from both private and public sectors analyzed the acceptance and adoption of non-traditional trademark forms like motion and multimedia from the applicant's perspective.

Augusto Drumond (Principal Legal Counsel at EU IP OPERATIONS, Amazon) led the panel, which featured distinguished speakers, namely: Yann Basire (Director General of CEIPI and Director of the French section of CEIPI), Christoph Bartos (Member of the First and the Third Boards of Appeal, EUIPO), Nedim Malovic (Trademark/IP Counsel at Assa Abloy), and Desirée Russo (Trademark Counsel for PUMA SE).

Dr Basire kicked off the session reflecting on the placing limits on acceptable use of a mark in a form differing from the one registered. He discussed extensively the law on permissible variations within article 18(1)(a) of the EUTMR. He said that the rational of the provision is “designed solely for the benefit of the rights holder, who is given the opportunity to develop and modernize his trademark without having to register a new trademark and without the risk of being penalized for lack of serious use”. Basire brought relevant CJEU case law with this regard and explored the meaning of “overall equivalence”.

Then it was the turn of Mr Bartos, who addressed the role of subcategories in genuine use while applying article 18 of the EUTMR. He highlighted important aspects to take into account, being “signs” and “goods and services” and then discussed the differences in applications of those notions. With regard to the case law, he submitted that the CJEU has been consistent, starting from the Aladin case with regard to the categorization. However, as regards the application stage, case law seems inconsistent, creating further difficulties. Mr Bartos discussed extensively various CJEU cases, showcasing how decisions differ from one to another when different subcategories are considered.

Nedim Malovic, IPKat contributor and
Trademark/IP 
Counsel at Assa Abloy

Following him, Mr Malovic shared insights on assessing non-traditional trademarks. At first, he addressed absolute grounds for refusal prescribed under article 7(1) of the EUTMR and introduced the newest EUIPO BoA and General Court cases. He mainly talked about the difficulties and legal challenges on the road to registering non-traditional trademarks. Mr Malovic also shared statistics, which prove that registered numbers of non-conventional trademarks remain low with a decreasing trend: in 2023, they were 0,29% of the total number of registered trademarks before the EUIPO.

Last but not least, Ms Russo tackled the challenges of revamping trademarks from an in-house counsel’s perspective. She walked the audience through the history of the Puma brand and shared the interesting story behind it, including the evolution of the “jumping cat”. She also touched upon the importance of marketing activities, collaboration with celebrities and maintenance of brand ambassadors, which all serve as an important and crucial tool in building positive bonds with the consumers.

Stay tuned for the next session, where we'll report on the intricacies of “IP Code-Breaking in the Era of AI Advancements”.

Other IPCLC Reports:

• EUIPO BoA IP Case Law Conference Report #1 – “An Odyssey Through the Evolving Landscape of Trade Mark General Court Judgments”
• EUIPO BoA IP Case Law Conference Report #2 – “A Deep-Dive into latest Design Case-law and Developments: Multi-layered Perspectives”