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The ECTA blog provides entries of news and information in the fields of trade marks, designs, anti-counterfeiting and other related Intellectual Property rights within the European Union.

 

ECTA will hold two Workshops ''Implementation of Trade Mark Directive'' and ''IP implications of the Brexit'', in Riga, Latvia on 8 December 2016.  Both Workshops will be broadcast.  Please find below the links to the Webinars.

The first workshop will start at 11.00 Eastern European time and be divided into two sessions (i) ''Overview of the major elements of that new instrument in terms of substantive and procedural law'',and, (ii) ''Changes Foreseen by Implementation of TM Directive in Baltic States'', and will be introduced by Ruta Olmane, ECTA President, METIDA law firm, LV. 

The link to the webinar can be found HERE 

The Programme can be found HERE

The second workshop will start at 15.00 Eastern European time and discuss the ''IP implications of the Brexit'', and will be presented by Philip Harris, CITMA Council Member, Barrister, St Philips Stone Chambers, UK.

The link to the webinar can be found HERE

The Programme can be found HERE

ECTA takes pleasure in inviting students and professionals to take part in the
ECTA AWARD 2017.

The deadline for receipt of papers is 15 March 2017.

The purpose is to grant an Award to an individual who has written an article or an essay of importance for the development of European Trade Mark Law. It is intended to present the Award in Budapest at a special ceremony during the Association’s 36th Annual Conference.

This initiative shall have a great impact on both students and professionals involved, who will be motivated to improve their knowledge in their areas of interest, as well as to give their unique contribution in creating more unified solutions within the European Union trade mark jurisdictions.

The full ECTA Award criteria can be found HERE.

The synopsis for the Student category can be found HERE.

The synopsis for the Professional category can be found HERE. 

 

 

For its 11th edition, on 1st and 2nd December 2016, Premier Cercle™ will gather 100+ IP high-level speakers and 450+ delegates from corporate, private, institutional and academic worlds at the Pan-European Intellectual Property Summit (IP Summit) in Brussels. This two-days conference aims at discussing trademark, patent, trade secrets, copyright and design major recent evolutions, actions, issues and ongoing EU Reforms.

Further information can be found HERE. 

„The place to be“ for those with high potential in trademark law.

Be there when the trademark-law experts get together on the 24th November in the glamorous atmosphere of The Charles Hotel in Munich.

The Trademark -Law Symposium focuses current critical issues in trademark- law, particularly the European trademark- law reform that recently entered into force. In addition to an intensive exchange of experiences and ideas in a stylish ambience, this event will enable you to include the latest developments your daily practice without delay.

In addition to the several prestigious speakers, I am particularly pleased to introduce Mrs. Ruta Olmane, ECTA President,  who will open the symposium with her keynote address “Trademark Law Implications of the Brexit”, and Mr. Peter M. Müller, former ECTA president.

Readers of the ECTA newsletter may benefit from the following special offer:
Pay only €970 – a saving of €150 – if you submit your registration directly to me by the 30th September.

Please refer to the attached Trademark Symposium brochure HERE. 

I very much look forward to welcoming you personally in Munich.


 

Each month, the European Union Intellectual Property Office (EUIPO) distributes relevant information to our members on, amongst others, the Observatory, Webinars and the European Cooperation Fund. 

In the July Issue of the User Association Communication, you will find the following topics: 

        -DesignEuropa Awards News  

        -Cooperation EURid — EUIPO

        -New study on EU SMEs and intellectual property

        -EU-India Intellectual Property Cooperation

The July issue is available HERE.

 

On 24 June 2016, the results of the United Kingdom (UK) Referendum on the membership of the European Union (EU) showed that the UK voted to LEAVE the EU. This is an unprecedented situation. However, the UK will remain member of the EU for at least two years. Thus,  EUTMs and RCDs will remain in force in the UK and there is no immediate loss of IP. 
 
The European Communities Trademark Association (ECTA) asks its members to stay calm. The vote gives us a chance to think again and anew and there will be time to plan for each IP owner.
 
ECTA will of course keep its members informed regularly on the developments and the consequences for IP owners and practitioners following the Brexit result.
  

Each month, the European Union Intellectual Property Office (EUIPO) distributes relevant information to our members on, amongst others, the Observatory, Webinars and the European Cooperation Fund. 

In the June Issue of the User Association Communication, you will find the following topics: 

        -Management Board and Budget Committee Meeting  

        -European Cooperation Projects  

        -EDB Forum 2016

        -News on Tools 

The June issue is available HERE.

 

Each month, the European Union Intellectual Property Office (EUIPO) distributes relevant information to our members on, amongst others, the Observatory, Webinars and the European Cooperation Fund. 

In the May Issue of the User Association Communication, you will find the following topics: 

        -EUIPO Change of Name 

        -DesignEuropa Awards 

        -ETMDN-CP6

        -International Cooperation 

The May issue is available HERE.

 

 

Each month, the European Union Intellectual Property Office (EUIPO) distributes relevant information to our members on, amongst others, the Observatory, Webinars and the European Cooperation Fund. 

In the February Issue of the User Association Communication, you will find the following topics: 

        -Public consultation on the Office’s Strategic Plan 2020

        -OAMI User Group Meeting

        -ETMDN-Common tools

        -International Cooperation with non-EU Countries.

The February issue is available HERE.

The day before yesterday, 15 December 2015, the European Parliament adopted the European Trade Mark Legislative Package in its second reading.

The European Trade Mark Legislative Package aims to upgrade, streamline and modernize the current trade mark legislation in furtherance of making Union trade mark registration systems more accessible and efficient for businesses by having legal security, lower costs and complexity, increased speed and greater predictability.

Some of the changes brought up by the reform are: 

  • OHIM will be renamed the EU Intellectual Property Office;
  • The Community Trade Mark will be renamed as EU Trade Mark (EUTM);
  • A ‘one class per fee’ principle will be established;
  • The offsetting mechanism will cover the expenses of national offices, which have been incurred through the handling of Community trademark procedures;
  • National offices shall adapt the designation and classification of goods and services in order to comply with EU case law.

Following the adoption by the European Parliament, the European Union Trade Mark Directive and European Union Trade Mark Regulation will be published in the Official Journal of the European Union and enter into force after 20 and 90 days respectively.

ECTA has constantly been following the development of the European Trade Mark Legislative Package. Some of ECTA’s work and comments can be found in the below links:

Utilization of the OHIM surplus

ECTA’s comments prior to the meeting with the European Commission on 11 December 2014

ECTA’s comments on the proposals, of 18 July 2014, for a Regulation and Directive on the Community Trade Mark

Joint paper from BUSINESSEUROPE, AIM, ECTA, ICC-BASCAP,INTA and MARQUES: European Trade Mark Package

ECTA comments on the Draft Report by the Committee on Legal Affairs on the proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark (CTM -- - Regulation) and the proposal for a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (recast) (Directive)

Reform of the European Trade Mark system – ECTA’s comments on the Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark and on the Proposal for amending Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks

Reform of the European Trade Mark system – ECTA’s preliminary comments on the Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark1 and on the Proposal for amending the Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks

Goods in transit: Protection of well-known trade marks - Letter to Commissioner Michel Barnier

ECTA would like to thank all members of the ECTA Committees who have been working together on the EU trade mark legislative package and appreciates greatly all the work which has been done to secure for a high quality European Trade Mark system.

 

ECTA is delighted to announce that its workshop 'The EU Trade Mark Reform and its Implementing and Delegated Acts – Quo Vadis'  will be broadcasted in live and accessible via a live webinar through the below link:

http://player.cdn.tv1.eu/iptv/player/macros/ecta/workshop_101215  
 
The webinar, free of charge, will be hosted from 14h00 to 18h00 (CET) on 10 December 2015. 

Further information on the workshop in Munich can be found HERE. 

Please be informed that content will be displayed through the webinar link only on 10 December from 14h00 (CET) 

- With the participation of ECTA -

FORUM Institute‘s 15th Trademark Conference will be held in Alicante directly at the OHIM from 9th to 11th of March 2016.

This annual summit provides trademark practitioners from around the world with the opportunity to meet OHIM examiners and international trademark law experts and facilitates fruitful discussions.
The conference brings together worldclass international experts from private practice, officials and industry representatives in order to debate and deliberate on the most important issues affecting today‘s trademark and design law from all practical perspectives.
The first day focuses on recent developments in community trademark law, especially the much anticipated CTM reform. Case law of the courts in Luxemburg and decisions and appeals of the OHIM complete the first day.

The second is devoted to the protection, infringement and enforcement of trademarks and designs, moreover, the top 5 recent questions in trademark law will be discussed by the experts.

The third day gives you the opportunity to book one of three Workshops which deal with mediation, examination and appeals at the OHIM.

For more detailed information please click HERE or email Sandra Reiland Wilhelm at s.reiland-wilhelm@forum-institut.de 

.

The World Intellectual Property Office (WIPO), will hold a seminar on the Madrid System for the International Registration of Marks on 26-27 November 2015, in Geneva. 

The seminar provides practical information about, amongst others, filing applications and managing registrations.

Moreover,sessions will be held on the usage of the Madrid E-services.

The registration closes on 20 November 2015. 

For further information on the Seminar on the Madrid System, please click HERE. 

 

IP Key is organizing a set of seminars, with Chinese Trade Mark Office officials as the main speakers. 

The seminars will be available for all local companies and TM practioners. 

On 20 October 2015, the seminar will be hosted in Budapest. 

Further information is available HERE. 

On 23 October 2015, the seminar will be hosted in Prague. 

Further information is available HERE.

On 26 October 2015, the seminar will be hosted in Warsaw. 

Further information will be available soon on IP Key website: www.ipkey.org

 


 

During the last OAMI User Group meeting it was decided that, each month, the Office for Harmonization in the Internal Market (OHIM) will distribute relevant information to our members on, amongst others, the Observatory, Webinars and the European Cooperation Fund. 

In the September Issue of the User Association Communication, you will find the following topics: 

  • Work Package Guidelines 
  • IPR and firm performance in Europe: an economic analysis
  • Cooperation Fund and Convergence Programme
  • Harmonised Database incorporating Madrid Goods and Services

The September issue is available HERE. 



On 8 and 9 October 2015, the Academy of European Law (ERA), will hold their Annual Conference on Trade Marks and Designs in Europe, in Alicante Spain.

The Conference aims to meet the requirements of trade mark and design law practioners by keeping them informed about recent case law and the latest EU legislative developments. 

The key topics of the conference are the following: 

  • Key recent decisions regarding acronyms,sequences and letters as trade marks 
  • Landmark judgment on the registration and scope of protection of layout trade marks 
  • Impact of recent case law on shapes,lines and contours trade marks 
  • Improving brand protection in Europe 
  • Fine tuning from the CJEU on the Use criteria
  • Invoking national law and court decisions before the OHIM: new guidelines from the CJEU 
  • Latest update on registered and non-registered Community designs 
  • The Trade Mark Reform close to adoption

When registering for the event, ECTA members are provided with  a 25% conference fee discount by registering HERE.

Further information on the ERA annual Conference is available HERE.

 

by Jonathan Agmon, Member of the ECTA WIPO-Link Committee and the Internet Commitee* 

General

The domain names Uniform Rapid Suspension (URS) system is intended to offer a low-cost, faster relief for trademark rights holders in clear-cut cases of infringement caused by domain name registrations.[1]

History

By mid-2009 some 190 million domain names were registered. The expansion of the New gTLD space was discussed in earnest by ICANN and its partners. In April 2009, WIPO offered an Expedited Domain Name Suspension Mechanism (ESM).[3] In view of concerns that the New gTLDs will bring about a significant rise in cybersquatting, and the various concerns raised by stake holders, an Implementation Recommendation Team (IRT) was set up to provide advice on how best to implement additional Rights Protection Mechanisms for the New gTLDs.

The report issued by the IRT provided that the URS was "not meant to address questionable cases of alleged infringement (e.g., use of terms in their generic sense) or for anti-competitive purposes or denial of free speech, but rather those cases in which there is no genuine contestable issue as to the infringement and abuse that is taking place."[4]

The expansion of the New gTLDs was envisaged to place significant burden on rights holders. Brand owners facing multiple infringing web sites annually were envisioned to maintain portfolios of domain names they do not need. The URS system was designed to provide a faster means to stop the operation of an abusive site.[5] The IRT therefore recommended that the URS system would be mandatory for all the New gTLDs. The IRT also recommended that the rights of the registrant would be secured through a hearing and/or appeal and that instead of the "traditional" UDRP remedies of cancellation or transfer, the URS will provide the remedy of suspension for the life of the registration resolving to a specific error webpage.[6]

In June 2012, ICANN presented a Discussion Paper on the URS, having been in discussions with staff members of WIPO, the IPC, ICM Registry and Nominet, preceding the launch of the URS system in 2013. [7]

On 24 September 2012, ICANN published its Request For Information seeking service providers for the URS System[8] and on 20 February 2013 the National Arbitration Forum (NAF) was appointed as the first service provider to administer the URS system.[9] Following the appointment of NAF, the URS procedure was published on 1 March 2013 and the URS Rules, on 4 March 2013.

On 19 April 2013, the Asian Domain Name Dispute Resolution Centre (ADNDRC) joined NAF as the second service provider to administer cases under the URS system.[10]

The URS in a Nutshell

As opposed to the UDRP, the URS procedure applies to New gTLDs introduced after June 2013. Complainants must show a registered trademark and a clear-cut case of infringement. The Complaint is limited to 500 words, which would show why the domain name registrant has registered a domain name that

is identical or confusingly similar to a registered trademark in which complainant has rights and has shown use (through a declaration of use and specimen which was submitted to the Trademark Clearinghouse or submitted to the Panel in the Complaint),

the registrant has no rights to or legitimate interests in, and has been registered and is being used in bad faith.[11]

The URS case is commenced within 2 days of its filing, the response must be filed within 12 days, the Examiner appointed within 16 days, and the Determination issued within a total of 21 days, as opposed to a typical 60-day case length under the UDRP.

The cost of the URS, initially intended to be set between US$300 and US$500, is now US$375 for 1-14 domains names, under NAF, and US$360 for 1-5 domain names, under the ADNDRC.

Before its launch, various provisions in the URS system were criticised. Provisions that were criticised included the existence of an appeal process, the high burden of proof (which is clear and convincing evidence), the use of the bad faith use and registration test, the requirement of Clearinghouse registration-validated marks and word limitation, amongst others.[12]

The URS system was also criticised for facilitating the filing of a complaint against multiple respondents in multiple registries, in various languages. Such a variety of options meant that the URS system, as initially proposed, combined with the low fees to the provider, promised to create a process with too many "moving parts" which would be difficult to administer.[13]

While initially it was proposed that any new Rights Protection Mechanism (RPM) would avoid substantive determination in default cases, the URS system provided that Examiner determinations will take place in all cases. It was also provided that even if the expert determination finds for the Complainant, the Respondent would still have six months to file a response and "jump start" the entire process once again.[14]

Some, but not all, of these concerns were addressed. The URS system, for example, provides that if more than one domain name is included in a single complaint it must be registered by the same domain-name holder.[15] In addition, the timeframe for the filing of appeals, initially set at 2 years, was revised to 14 days from the date of the Expert determination.[16]

Decisions under the URS System

As of the date of this report, only NAF and ADNDRC provide URS system services. While WIPO is a prominent UDRP services provider, it has opted not to join the other providers. The analysis of each provider's cases to date follows.

NAF

The NAF was the first provider to begin offering the URS. The first case, commencing on 11 September 2013, was filed by Facebook for the disputed domain name <facebok.pw>.[17] Since its inception and at the time of making this report, NAF has administered some 286 cases. Of these 286 cases, 21 cases were denied, 13 are pending, 27 were withdrawn and 224 were suspended.

Five months after its inception, on 28 February 2014, the first decision denying a URS complaint was issued.[18] The case involved the founder of the Virgin Group, Richard Branson and the disputed domain name <branson.guru>. The Examiner noted that the high standard of proof required would mean that the "complainant’s failure to establish any one of the above three elements by clear and convincing evidence must result in a decision rejecting the complainant’s requested relief. “If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding…” (URS, para. 8.6.). The Examiner concluded that Virgin had failed to provide sufficient evidence showing that the Registrant had no legitimate interest nor that the disputed domain name was registered and used in bad faith because Virgin failed to show how the disputed domain name is used.[19] In essence, the disputed domain name was never used. However, other cases did turn differently and determined that the lack of use can be evidence of bad faith under the URS.[20]

As opposed to the UDRP the URS system provides for a de novo appeal mechanism. It seems that to date, only eight appeals have been lodged with NAF, representing that 3% of determinations are appealed. Of interest are the appeals involving a series of cases under the New gTLD “.email” between <Yoyo.email> of the UK and various respondents.[21]

In the first appeal involving the “.email” New gTLD, the disputed domain name <lufthansa.email> was registsred by Yoyo. The Complainant, Deutsche Lufthansa AG, sought to prevent Yoyo from using the disputed domain name. The Respondent argued there was no likelihood of confusion since it intended to provide a new email system whereby Yoyo serves as an email courier service. The Examiner ruled for Lufthansa, stating that the Respondent had failed to show "demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services."[22]

On appeal, the panel was split. The majority panel affirmed that "the Respondent says that <lufthansa.email> will be offered for free in order to get more users to the Respondent’s online service and thereby get money from “advertising” and “social media”.[23] The dissenting panelist found that the evidence presented failed to meet the “clear and convincing” burden of proof and that the respondent made a convincing enough argument for fair use.

The second appeal involved the disputed domain name <stuartweitzman.email>. The Complainant, Stuart Weitzman IP, LLC of New York alleged that the Respondent had no legitimate interest in the disputed domain name because the registration was made to prevent Stuart Weitzman from reflecting its registered trademark under the .email New gTLD disputed domain name. Yoyo provided that taking the disputed domain name was "to be used as an email ‘delivery gateway’, a door number where [the Respondent] could deliver mail to."[24] The Examiner was not convinced and suspended the disputed domain name, stating that the intended use would lead to a likelihood of confusion with the Complainant's mark. On appeal, the decision was reversed because the Complainant failed to show that the Respondent did not have legitimate interest in the <stuartweitzman.email> disputed domain name. The Appeal's panel distinguished the Lufthansa case, stating that in Lufthansa, the Respondent admitted to enjoying advertising receipts from the use of the disputed domain name, but that in the current case no such evidence was submitted into the record.

The third appeal involved the”.email” New gTLDs <lockheed.email> and <lockheedmartin.email>. The disputed domain names were suspended after the Examiner found that Yoyo's "intent [was] to monetize the free email service."[25] The appeal was denied, following the finding that there was sufficient evidence in the record to show that the Respondent intended to monetize its services using the disputed domain name.[26]

The fourth appeal in this series involved the <footlocker.email> domain name. The Examiner accepted the complaint and ordered the suspension of the disputed domain name, stating that "because the system is built on a foundation that includes Complainant’s domain name, this is enough to establish that the system is commercial in character and that Respondent intends to obtain commercial gain from the use of Complainant’s marks in its domain name."[27]  Once again, on appeal, the decision below was affirmed in a split decision. The majority panel in a lengthy reasoned opinion found that Yoyo had no legitimate interest in the FOOTLOCKER trademark or the disputed domain name. The majority panel also held that the Respondent was aware of the FOOTLOCKER trademark, received notice of it and registered it without the consent of the trademark owner. Respondent admitted that "it hopes to intentionally attract users to its courier system and to profit from doing so."[28] Although Respondent claimed "internet users will be unable or limited in their exposure to seeing Complainant’s mark", the majority panel ruled that "the ability of Respondent to be successful will depend on users familiarity with Complainant’s mark at some point in its system and thus will create a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location. Respondent cannot be insulated from proofs regarding this element simply because, despite laying out its plans, it does not have its business fully operational at this time." The dissent simply stated that dissents based on the views expressed in Deutsche Lufthansa AG v. yoyo.email. FA 1552833.

ADNDRC

The ADNDRC was the second provider to begin offering the URS. The first ADNDRC case was filed on n 25 February 2015 concerned the the domain name <alibaba.work>. The disputed domain name resolved to a parking page and was suspended.

In total, to date, the ADNDRC has published 24 cases, 21 of which cite Alibaba Group Holding Ltd. as the complainant. Of the total 24 cases, 3 cases were withdrawn, 1 rejected and the rest suspended. No appeals were recorded.

The single case that was rejected involved the disputed domain name <alibaba.website>. The Respondent argued that the term Alibaba refers to the famous character from the One Thousand and One Nights stories and therefore is susceptible to fair use in respect of a website devoted exclusively to this character. While, the disputed domain name was not in use, the Examiner found that as such there is no clear evidence of bad faith, setting a higher standard than the UDRP for showing bad faith registration and use of a disputed domain name.[29]

Were the URS Goals met?

As noted above, the URS was designed to provide a rapid, low-cost procedure to address clear-cut cases of cybersquatting in the New gTLD world. Clearly, the URS is providing a cheaper, faster procedure for tackling cybersquatting cases. Most cases reviewed by the author are straightforward, having a showing of a registered trademark and clearly identify a reason for bad faith use and registration.

Under the administration of the NAF, the URS system has been in operation for just over a year and a half with the NAF having administered only 286 cases, which means some 15 cases on average in a month. In comparison, at present, WIPO deals on average, over 200 UDRP cases per month. At its lowest year (2003), WIPO administered some 100 UDRP case per month on average. With the ADNDRC joining the system, after some two months of operation, a combined 27 cases per month on average are far from what the UDRP draws as an alternative dispute resolution mechanism for disputes over domain names.

The launch of nearly 600 New gTLDs and the substantial growth of the domain name industry over 2014 should have led to a wider use of the URS system.[30] Industry research also suggests that there is a marked increase in New gTLD domain name cybersquatting.[31]

However, the URS system has not been inundated by cases whereas there has been a steady increase in the number of UDRP cases filed over time. One possible cause could be that brand owners are late to register domain names in the New gTLD space and that such brand owners also fail to monitor the New gTLD space.

It may be that given sufficient time, the URS will receive more attention and many more cases, though at present the system is far from working at what one would call full capacity.

*Views expressed in this article do not necessarily reflect the official opinion of the European Communities Trade Mark Association (ECTA). Responsibility for the views and information expressed in the article lie entirely with the author. 

[1] https://www.icann.org/resources/pages/urs-2013-10-31-en

[2] The URS does not apply to cc TLDs or to the traditional gTLDs  (.aero, .arpa, .asia, .biz, .cat, .com, .coop, .edu, .gov, .jobs, .info, .int, .mil, .mobi, .museum, .name, .net, .org, .post, .pro, .tel, .travel, and .xxx) unless they have adopted the URS.

[3]  (offering  a simple process with an automatic default determination and suspension).

[4] http://archive.icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf .(The ITR felt that the main mechanism to protect Rights Holders should be the IP Clearinghouse („IPC“)

[5] Id. at 25.

[6] Id. at 26.

[7] http://prague44.icann.org/node/31773

[8] https://www.icann.org/en/system/files/files/urs-24sep12-en.pdf

[9] http://newgtlds.icann.org/en/announcements-and-media/announcement-2-20feb13-en

[10] http://newgtlds.icann.org/en/announcements-and-media/announcement-2-19apr13-en

[11] URS Rules 1.2.6.1, 1.2.6.2, 1.2.6.3

[12] http://www.wipo.int/export/sites/www/amc/en/docs/icann021210.pdf

[13] https://icann.adobeconnect.com/p78kt5ggfhx/?launcher=false&fcsContent=true&pbMode=normal

[14] Depending when the response is filed and the amount of disputed domain names in question, there would be a re-examination fee to be paid by the Respondent.

[15] URS Rules 3(c)

[16] URS 12.4

[17] http://www.adrforum.com/domaindecisions/1515825D.htm

[18] http://www.adrforum.com/domaindecisions/1545807D.htm

[19] Currently the disputed domain name is not used.

[20] See for example on Appeal - http://www.adrforum.com/domaindecisions/1552833A.htm

[21] Yoyo.email is not yet active on the Internet – see http://yoyo.email

[22] http://www.adrforum.com/domaindecisions/1552833F.htm

[23] http://www.adrforum.com/domaindecisions/1552833A.htm

[24] http://www.adrforum.com/domaindecisions/1554808F.htm

[25] http://www.adrforum.com/domaindecisions/1563665F.htm

[26] http://www.adrforum.com/domaindecisions/1563665A.htm

[27] http://www.adrforum.com/domaindecisions/1565344F.htm

[28] http://www.adrforum.com/domaindecisions/1565344A.htm

[29] http://www.adndrc.org/diymodule/URS_decisionView.php?num=00053&caseid=HKS-1500021

[30] http://www.verisigninc.com/en_US/innovation/dnib/index.xhtml [4 million new domains were registerd in 2014 with a current base of nearly 300 million domain names in total]

[31] http://www.worldtrademarkreview.com/Blog/detail.aspx?g=679f2763-dc11-4016-88ef-9391c0e6d50b

 


ECTA is pleased to announce the creation of the ECTA Copyright Committee.

The new ECTA Committee was approved during the ECTA 34th Annual Conference in Hamburg.

Dr. Christian Freudenberg and Fabio Angelini will work together as Chair and Vice-Chair respectively.  

If you are interested in joining the Copyright Committee please send an application to ecta@ecta.org together with a brief CV and some background information including your reasons for wanting to join the Committee.


The EU Council has made available the latest version of the trade mark Directive and Regulation:

The text of the Community Trade Mark Regulation proposal can be found HERE.

The text of the Trade Mark Directive  proposal can be found HERE.

The cover note from the General Secretariat to the Permanent Representative Committee is available HERE.

 

Published on 5 June 2015 

The first EDB Forum for companies and enforcement authorities will be held on 8 and 9 September at OHIM in Alicante.

The EDB Forum is a unique opportunity for companies to: 

  • Meet enforcers from the 28 Member States of the EU
  • Share experiences with other companies of their sector
  • Discuss the latest enforcement trends with enforcers and companies alike

What else does the conference offer?

  • Parallel workshops by economic sector for right holders to present enforcers of the 28 Member States the problems they face
  • An exhibition for companies to show enforcers how their genuine products should be identified with the help of EDB
  • Meeting areas for one-to-one discussions between right holders and enforcers
  • Training sessions on EDB to help with keying-in of data

Take a look at the outline of the attached agenda we have prepared. The working language of the event is English.

THE PARTICIPATION IN THE EDB FORUM IS FREE OF CHARGE FOR ENFORCEMENT AUTHORITIES AND RIGHT HOLDERS

The only condition for right holders to register is to have an account in EDB and at least one product created in their portfolio.

The deadline for registration is 30 June. For right holders we will reserve places for current EDB users until 19 June. After that, participation will be on a first come first served basis and a selection will be made according to the quotas by type of companies and industry sectors. To register, click here http://www.amiando.com/EDBForum

For more information on the EDB and to request an account in this free tool, click here: https://oami.europa.eu/ohimportal/en/web/observatory/enforcement-database

 
published on 1 June 2015 

ECTA is pleased to announce the launch of the Hamburg 34th Annual Conference Application.

The ECTA conference App makes sure you stay connected and up-to-date with everything surrounding the conference.

By using the application you will be able to find the delegates list, network with fellow delegates, manage your personal agenda, keep track of last-minute programme changes, find exhibitors and media partners and much more!  
 
You can find the application through the following link: www.eventmobi.com/ecta15

Bookmark the app and save it to your home screen in order to easily access the agenda and other event-related information with just one click.

Please click HERE for  a video introduction to the application. 
 

Published on 21 May 2015 

WIPO, the World Intellectual Property Organization, is conducting a survey on dependency principle issues for Madrid users.

WIPO highly values your opinion with respect to the ongoing discussion on dependency principle issues and would like to encourage you to complete this survey.
 
The survey is available HERE for completion online until 31 May 2015.     
 


Published on 15 May 2015 

ECTA's Press Release on Diplomatic Conference for the Adoption of a new Act of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration

As part of its task to promote the development and improvement of trade mark law and other forms of intellectual property, in particular in the European Union, ECTA has followed with great attention the initiatives of WIPO aiming at revising the Lisbon Agreement.

ECTA has attended most of sessions of the Working Group on the Development of the Lisbon System, since 2009, and is also represented at the Diplomatic Conference.

In its current form, and with only 28 members, the Lisbon system is not sufficiently attractive and needs to be revised. Its provisions should be more aligned with those of TRIPS, and should reflect the growing importance of bilateral treaties adopted in this field. Therefore, ECTA strongly supports the revision of the Lisbon Agreement.

In particular, ECTA welcomes:

- The modification of the current treaty, in lieu on the adoption for a separate protocol;

- The introduction of a dual regime of appellations of origin and geographical indications. This is consistent with the EU regulations in the foodstuff and wine sectors;

- The inclusion of the possibility for intergovernmental organizations to adhere to the treaty. This will open the accession to the EU, and will simplify the protection of geographical indications with its trade partners;

- The adoption of a significant level of protection for appellations of geographical indications, which would extend to misuse, imitation or evocation, as well as to the use of the protected term in a form which would be detrimental to, or exploit unduly, its reputation. This form of protection would be consistent with the corresponding EU regulations;

Besides, ECTA follows with specific interest the negotiations on controversial issues, including on genericness and conflicts with prior trade marks.

- With respect to the fact that registered appellations of origins and geographical indications cannot become generic, some limitations could be allowed, and the proposal regarding “dormant” registrations is an interesting one: i.e. when a given term is not used in a member state by the producer’s association, and is being progressively used in good faith by third parties, without any preventive action being taken.

- With respect to conflicts with prior trade marks, ECTA has always advocated for a more balanced relationship, and will closely monitor the outcome of the negotiations.

For further details, please contact the ECTA secretariat, ecta@ecta.org.


Published on 12 May 2015 

On 21 April 2015, subsequent to intensive negotiations, the European Parliament together with the Council have reached an agreement with the Commission during an inter-institutional discussion on the trade mark reform package.

The trade mark package aims to upgrade, streamline and modernize the current trade mark legislation in furtherance of making Union trade mark registration systems more accessible and efficient for businesses by having legal security, lower costs and complexity, increased speed and greater predictability.

The provisional agreement states amongst others that:

1. 5%-10% of OHIM revenue will be 'offset' to national offices;

2. Funding for cooperation projects is set to be 15 % of the yearly revenue of OHIM;

3. A reduced level of fee is to be paid by applicant and proprietors of trade marks.

The provisional agreement still requires to be formally confirmed by the European Parliament Legal Affairs Committee and the Council before being put to a vote in the European Parliament.

The formal confirmation is expected to happen in September 2015.

ECTA has been following the trade mark reform since the Commission had presented the proposals for the reform on April 2013.

ECTA has within these years been involved in sending its advice, comments and joint statements with regards to the trade mark reform. Several of these documents can be found through the following links:

Utilization of the OHIM surplus

ECTA’s comments prior to the meeting with the European Commission on 11 December 2014

ECTA’s comments on the proposals, of 18 July 2014, for a Regulation and Directive on the Community Trade Mark

Joint paper from BUSINESSEUROPE, AIM, ECTA, ICC-BASCAP,INTA and MARQUES: European Trade Mark Package

ECTA comments on the Draft Report by the Committee on Legal Affairs on the proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark (CTM -- - Regulation) and the proposal for a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (recast) (Directive)

Reform of the European Trade Mark system – ECTA’s comments on the Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark and on the Proposal for amending Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks

Reform of the European Trade Mark system – ECTA’s preliminary comments on the Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark1 and on the Proposal for amending the Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks

Goods in transit: Protection of well-known trade marks - Letter to Commissioner Michel Barnier

ECTA would like to thank all members of the ECTA Committees who have been working together on the trade mark legislative package and appreciates greatly all the work which has been done to secure for a high quality European Trade Mark system.


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