1. NTM Europe & Central Asia Subcommittee Mock Trademark Application

2. The Project Mock application based on fictional case
Submissions from 18 countries
Jury of in-house counsel to consider quality of advice given to the client

3. Mette Andersen, Cecilia Emanuelson and Alix Willems
The Jury
Mette Andersen, Cecilia Emanuelson and Alix Willems

4. The Facts and the “Client”
N’Obile, a newly established and well-funded manufacturer of cosmetics, decides to move into the rather underdeveloped market for cosmetics for men
N’Obile would like to distribute its products from luxury outlets but expects variations from country to country in line with national markets; N’Obile would like to avoid high-street chains (such as Boots in the United Kingdom or DM in Germany)

5. The Goal and the Product
From the outset, the company has wished to distinguish itself from the usual industry approach for such products in that it refrains from styling the packaging in the usual “male” colors of black and blue and from plastering the outsides with the usual techno-babble of formulae and other claims designed to appeal to male customers.

6. The Mark
The colors that the company wants to use on its packaging, will be “a warm but not too saturated brown with a slightly yellowish tone”. The caps also might have some sort of texture. The jars and tubes themselves will be coloured in a sort of pale green with a touch of, but not quite turquoise.

7. The Goal and the Product
The products will be advertised as “skin care,” as “cosmetics” is a word to be avoided at all costs. The products will be packaged for the most part in glass jars and plastic tubes.
The styling is special insofar as the tube caps/jar lids will be covered in brown “leather”. Your client says they are not sure yet on the exact production process, it will either be real leather treated with a water-repellant nano-coating or faux leather with a natural touch.

8. The Goal and the Product
The front side of the jars and upper side of the tubes will not have writing in a contrasting color, but instead will feature the company name only in an embossed or engraved form.
The company name will be in a comparatively large font size. The “small print” will be on the back of the tubes and on the bottom of the jars, respectively, probably in white. The products will be sold in a packaging of a similar style.

9. Your Task
Advise your client on his chances for a trade mark application in your national jurisdiction. Since the products have not been finalized yet, you also may suggest minor modifications.

10. Question 1
What trademarks should N’Obile apply for? How should the marks be depicted/described?

11. Question 2
Provide the specification of the list of goods and services for the trademark application(s).

12. Question 3
In case you think that your national trademark office might refuse to register the mark on absolute grounds, please advise what evidence of acquired distinctiveness may be submitted.

13. Question 4
If your country accepts surveys, please advise your client on its design. (Which consumers should be asked to participate in the survey and what are the main three questions you would ask in the survey?)

14. Submissions

15. Benelux
Carole de Roeck Gevers

16. Ekaterina Savova Bulinvent
Bulgaria
Ekaterina Savova Bulinvent

17. Franck Soutoul and Jean-Philippe Bresson Inlex IP Expertise
France
Franck Soutoul and Jean-Philippe Bresson Inlex IP Expertise

18. Germany
Uwe Lüken, Bird & Bird and Klaus Rosenhagen, Zwipf Rosenhagen Partnerschaft

19. Gabriella Sasvari SBGK Patent and Law Offices
Hungary
Gabriella Sasvari SBGK Patent and Law Offices

20. Sumi Nadarajah, FRKelly Bernadette Walsh, MacLachlan & Donaldson
Ireland
Sumi Nadarajah, FRKelly Bernadette Walsh, MacLachlan & Donaldson

21. Italy Diletta Binda, Studio Legale SIB
Massimo Gori, SIB Società Italiana Brevetti
Elisabetta D’Amore, SIB Società Italiana Brevetti

22. Bronislavs Baltrumovics Agency Tria Robit
Latvia
Bronislavs Baltrumovics Agency Tria Robit

23. Živka Kostovska Petošević
Macedonia
Živka Kostovska Petošević

24. Kristine Aarflot Bryn Aarflot AS
Norway
Kristine Aarflot Bryn Aarflot AS

25. Anna Stopińska-Ślefarska, Polservice Ewa Kacperek, Hogan Lovells
Poland
Anna Stopińska-Ślefarska, Polservice Ewa Kacperek, Hogan Lovells

26. Slovenia
Jasna Habič, ITEM

27. Spain
Riccardo Ciullo, Baker & McKenzie Cristina Duch, Baker & McKenzie Carolina Montero Peralta, Abril Abogados

28. Isik Ozdogan Moroglu Arseven Law Firm
Turkey
Isik Ozdogan Moroglu Arseven Law Firm

29. UK
Kate O’Rourke, Charles Russell Emma Pitcher, Boult Wade Tennant Mark Pearce, Bond Dickinson

30. Finland
Kaisu Korpua, Roschier

31. Baptista Monteverde & Associados
Portugal
Cláudia Tomás Pedro
Baptista Monteverde & Associados

32. Russia
Marina Grineva, Euromarkpat
Pavel Gorokhov, Baker & McKenzie

33. Taras Kulbaba, Petošević Anna Ostanina, KU Leuven @ HUB
Ukraine
Taras Kulbaba, Petošević Anna Ostanina, KU HUB

34. Sweden
Claes Agnvall, Zacco

35. The Rating

36. Learnings from the Project
Jury considered “as a client” the quality of advice of counsel in particular
- How best to distinguish client’s products from those of client’s competitors
- How to protect client’s equities from look-alikes/counterfeits
- What protection and enforceability could be obtained in the respective countries?

37. Learnings from the Project
Valuable source for in-house counsel looking for advice in the respective countries
Project setup can be a model for other “friendly competition” of counsel
Learnings included as INTA online resource

38. Thank you on behalf of the team
Alice Gould, Emma Pitcher and Martin Prohaska-Marchried