MARQUES 2019 - Brands Confronting Change

Zac Casstevens and Daniel Comerford,

The 33rd MARQUES Annual Conference took place in Dublin this year from September 17th to 20th at the Citywest Hotel and Conference Centre. The event was very well attended by over one thousand delegates and was at capacity. We would like to take this opportunity to thank here the many clients, trademark professionals and old friends who were in attendance during the conference and who took the time to stop by our Booth. And, thank you to the MARQUES Committee for organizing such an insightful and relevant conference.

8 insights into global trademark activity

The theme of MARQUES this year was “Brands Confronting Change”. The conference programme, as found on the MARQUES website, was divided into eight sessions and also contained four thought-provoking workshops which took place in the afternoon of Day 3:

  • China Trademark Association
  • Comparative and Sponsored Advertising
  • Managing Split Brands in the Age of the Internet
  • Food, Fashion and Festivals - Whose Culture is it Anyway?

The event was formally opened by Susie Harris, the Chair of the MARQUES Counsel and General Counsel at The Plum Guide. During her opening speech Harris spoke about the issue of brands and cultural appropriation: “Cultural appropriation has proven difficult for even the biggest brands to navigate.”

Gerry Barrett, Controller of Patents Designs and Trade Marks, Irish Patents Office took the floor next and gave his opening address. He informed us that the IPO brand is also confronting change and is soon to be renamed as the Intellectual Property Office of Ireland. He himself will have the new title of Controller of IP. From an Irish perspective, the biggest challenge for brands today, Barrett said, was the possibility of a no-deal Brexit. 

Over three days the conference covered the following eight topics in depth:

1. Change is all around  - is your brand ready?

This session challenged brand owners “to think about the megatrends shaping the world in the years ahead and to consider how those megatrends will have an impact on their brands.” It was chaired by Robert MacDonald, partner at Gowling WLG in Canada. During his address MacDonald highlighted the shifting values around trending social issues (such as the environment). He stated that this change demanded intuitive adaptation by brand owners to avoid courting controversy online. “Your product may be ubiquitous today, but like the plastic straw, gone tomorrow,” he noted.

2. Impact of global developments on IP

The session was chaired by Gregor Vos, Brinkhof (The Netherlands). Speakers Ginevra Saylor, Gowling WLG (Canada), Adrienne Gormley @ Dropbox (Ireland) and David Taylor, Hogan Lovells (Paris) LLP (France) discussed changes in technology, marketing and communication and how they are affecting the protection of trademarks and the practice of IP. 

3. Damages in trademark infringement cases

This session was chaired by Bjorn Bahlmann, Boehmert & Boehmert (Germany) with international speakers Jeremy Blum, Bristows (UK), Lisa Pearson, Kilpatrick Townsend & Stockton (USA), Jiao Hongbin, King & Wood Mallesons (China), William Lobelson, Germain & Maureau (France), Bahia Alyafi, Alyafi IP Group (Qatar) and Timme Geerlof, Windt Le Grand Leeuwenburg (The Netherlands). The panel discussed key issues and general principles of damages and their calculation and quantification in the USA, UK, France, The Netherlands, China and Saudi Arabia. 

4. Evocation in the equation - surprising reasons why geographical indications matter

Chaired by Ortrun Günzel, df-mp Dörries Frank-Molnia & Pohlman (Germany) with panelists Marcus Höpperger, Senior Director of the Department for Trademarks, Industrial Designs and Geographical Indications, Brands and Designs Sector, WIPO (Switzerland), Jürg Simon, Lenz & Staehelin (Switzerland) and Carleen Madigan, Irish Whiskey Association (Ireland) a broad discussion took place on the State of the Union (politics), the scope of protection of GIs and practical advice for brand owners. 

5. Evidence of disclosure

Day 3 began with this session chaired by Mikas Miniotas, AAA Legal Services (Estonia). He was joined by David Brophy, FR Kelly (Ireland), Amelle Benabdellaziz, JT International 

(Switzerland) and Arnaud Folliard-Monguiral, Team Leader, Litigation, International Cooperation and Legal Affairs Department, EUIPO (Spain). Session 5 addressed “how the EUIPO allows the introduction of evidence of disclosure and compared and contrasted this treatment of introducing evidence of disclosure (prior art) with that used by the European Patent Office.”

6. In a changing world do “tax havens” have a future?

Chaired by Patricia McGovern, DFMG Solicitors (Ireland) with speakers Peter Vale, Grant Thornton (Ireland) and Lodewijk Berger, Jones Day (The Netherlands) this insightful segment talked about recent and significant changes in the global tax environment, and what the near future holds for for IP held in “tax havens”.

This session was followed by the presentation of the Lewis Gaze Memorial Scholarship. 

7. A year of EUIPO practice after the reforms

The final day opened with the penultimate conference session. The chair of this session was Robert Guthrie, Osbourne Clarke (UK). Speakers included Dimitris Botis, Deputy Director of the International Cooperation and Legal Affairs Department, EUIPO (Spain), Jana Bogatz, D Young & Co LLP (Germany), Petra Goldenbaum, CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern mbB (Germany) and Roland Mallinson, of Taylor Wessing (UK). The speakers presented recent developments and talked about the practicalities that have arisen in the 12 month period since EU trademark reforms. There was also a study of the transposition of the EU Trade Mark Directive in EU Member States, and new information on the impact of Brexit. Rory O’Neill gives a good overview of this session in his WIPR article Marques 2019: clarity needed on non-traditional marks.

8. CJEU and general court case law in 2018/2019

The final conference session was chaired by Shane Smith of IP firm FR Kelly (Ireland). Prof. Dr. Alexander von Muhlendahl, Bardehle Pagenberg (Germany) and Prof. Charles Gielen, of NautaDutilh (The Netherlands) joined Smith to discuss important recent judgments from the Court of Justice of the EU and the EU General Court, with a focus on learnings for trademark and design practitioners.

Social Programme

As always there was a busy social programme arranged for attendees. The conference began with a Welcome Reception on the evening of Day 1 in the hotel which was a great success. We enjoyed mingling with our clients, trademark attorneys and ‘trademarketers’!  

At the end of Day 2 delegates took a cultural tour of the Guinness storehouse. In the evening of Day 3 the black tie gala dinner and dance took place in the Citywest hotel and it was a great evening with plenty of Irish music and craic!

MARQUES 2019 was formally closed by Susie Harris on Day 4 and was followed by a farewell lunch for delegates in the hotel. 

Early Bird MARQUES 2020 Meetings

MARQUES 2020 will take place in Stockholm, Sweden from September 22nd-25th. Please get in touch with us now and we will contact you directly to schedule a meeting with you at MARQUES 2020 as soon as the programme is released. 

Can’t wait until September 2020? Learn more about our NameCheck trademark management solution today!

New call-to-action