- ECTA’s 29th ANNUAL MEETING, 30th ECTA ANNIVERSARY
BARCELONA, 15-19 JUNE 2010
TRADE MARK AND DESIGN ARCHITECTURE - THE BUSINESS NEEDS
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Table of content
1. LAW
1.1 Trade Marks
- OHIM Cooperation Fund - Lord Mogg’s comments
1.2 Geographical Indications
- WIPO’s survey questionnaire on Appellations of Origin – Lisbon System
1.3 Enforcement
- Swedish Presidency for the EU - Conference ”Enforcement of Intellectual Property Rights – With a Special Focus on Trademarks and Patents”
1.4 Domain Names
- ICANN- Special Trademark Issues Consultation
- Reforms under ccTLD.EE (Estonia) pending - Liberalization process expected to start as from 1 February 2010
2. CASE LAW
General Court
T-223/08 Bahman (fig)
Applicant not required to demonstrate the existence of an interest in bringing a declaration of revocation
T-476/08 BEST BUY (fig)
The trade mark is devoid of any distinctive character
T-27/09 Stella pack (fig) vs. Stella
Opposition proceedings and revocation proceedings are distinct and autonomous types of proceedings
T-412/08 TRIBION HARMONIS (fig) vs. TRIBION
The trade marks are visually and aurally similar, there is a likelihood of confusion
T-483/08 GIORDANO vs. GIORDANO
The goods are similar, there is a likelihood of confusion
T- 490/07 ran vs. R.U.N
The trade marks are visually, aurally and conceptually similar and the goods are similar
1 Law
1.1 Trade Marks
OHIM Cooperation Fund – Lord Mogg’s comments
On 23 December 2009, Lord Mogg, Chair of the Management Board of the OHIM Cooperation Fund sent an email to all Delegations and Observers wherein he thanked them for their proposed ideas and suggestions in connection with the use of the Cooperation Fund (see Flash 22-09). He mentioned that OHIM and the consultant Gartner are in the process of examining the proposals in order to prepare detailed analyses to submit to the Management Board in the coming weeks. Lord Mogg underlined that the Management Board is working on a first draft document and will meet in Brussels on 7 January 2010. He welcomed any other suggestions at the beginning of January, but he reminded that the Management Board has to now work on the proposals taking into account the procedural and budgetary arrangements in avoiding a bureaucratic presentation. Other Delegations sent their comments and proposals in connection with Lord Mogg’s letter of 30 November 2009 to OHIM and other Delegations on 22 December (France) and on 23 December (Lithuania).
1.2 Geographical Indications
WIPO’s survey questionnaire on Appellations of Origin – Lisbon System
As mentioned in Flash 21-09, ECTA Geographical Indications Committee worked on the WIPO survey on the Lisbon System for the Protection of Appellations of Origin and their International Registration. The Committee will send its answers to WIPO this week which will be posted on the ECTA website (Geographical Indications Committees - Papers Section).
1.3 Enforcement
Swedish Presidency for the EU - Conference ”Enforcement of Intellectual Property Rights – With a Special Focus on Trademarks and Patents”
The Conference “Enforcement of Intellectual Property Rights with a special focus on Trademarks and Patents” was hosted by the Swedish Presidency of the EU and introduced by the Swedish Minister of Justice at the conference centre Norra Latin in Stockholm. READ MORE
1.4 Domain Names
ICANN- Special Trademark Issues Consultation
The Special Trademarks Issues Working Team (STI) has published its report on its recommendations to create a Trademark Clearinghouse and Uniform Rapid Suspension procedure to protect trade marks in the new global top-level domain (GTLD) programme. The public comment period will end on 26 January 2010. The ECTA Internet Committee shall be working on a response to this together with the Cyberspace Committee at Marques and will be submitting a response before the deadline For more information, see the report at http://gnso.icann.org/issues/sti/st… and also http://gnso.icann.org/issues/.
Reforms under ccTLD.EE (Estonia) pending - Liberalization process expected to start as from 1 February 2010
The currently valid official regulations on registration of domain names under .EE (Official Regulations) allow only one second level country-code top-level domain name per person and the eligibility requirement regarding the local presence requirement shall be met. READ MORE
3 Case Law
with the support of Darts IP
General Court
On absolute grounds for refusal
Case: T-223/08 of 3 December 2009, Iranian Tobacco Co. / OHIM – AD Bulgartabac Holding Sofia (contested decision: R 709/2007-1 of 10 April 2008)
Trade mark:
Class: 34
Decision: Article 55(1)(a) of Regulation No 40/94, which deals, inter alia, with applications for declarations of revocation does not mention any requirement that the applicant demonstrate the existence of an interest in bringing proceedings. At most, it requires that an application for a declaration of revocation be brought by a natural or legal person or by a group or body which has the capacity to sue and be sued (para. 20). The applicant is not bound to demonstrate his good faith (para. 26).
The Board of Appeal’s decision is upheld.
Case: T-476/08 of 15 December 2009, Media-Saturn-Holding GmbH / OHIM (contested decision: R 591/2008-4 of 28 August 2008)
Trade mark:
Classes: 1,2,5,6,7,8,9,10,11,12,14,15,16,17,20,21,22,27,28,35,37,38,40,41,42
Decision: The trade mark is devoid of any distinctive character. It will be perceived by the pertinent public as a laudatory message (para. 23 to 32).
The Board of Appeal’s decision is upheld.
On relative grounds for refusal
Case: T-27/09 of 10 December 2009, Stella Kunststofftechnik GmbH / OHIM – Stella Pack S.A. (contested decision: R 693/2008-4 of 13 November 2008)
Trade marks:
| Stella pack (fig) | Stella |
| Earlier trade mark | Contested trade mark |
Classes: 6, 16, 21
Decision: Opposition proceedings and revocation proceedings are two distinct and autonomous types of proceedings, each with their own effects. It is possible to entertain revocation proceedings irrespective of whether opposition proceedings based on the mark to which the application for revocation relates have been brought and are still pending (para. 32).
The Board of Appeal’s decision is upheld.
Case: T-412/08 of 15 December 2009, Trubion Pharmaceuticals / OHIM – Merck KGaA (contested decision: R 1605/2007-2 of 3 July 2008)
Trade marks:
|
TRUBION |
| Earlier trade mark | Community trade mark applied for |
Class: 5
Decision: The trade marks are visually (para. 47 to 49) and aurally (para. 50 to 52) similar. “Pharmaceutical preparations, pharmaceutical preparations for use in the fields of immunology and oncology” are similar to “dietetic preparations for medical use”. Those goods fulfil in general terms the same function, namely to improve the medical condition of patients. In addition, they display a certain complementary connection given that a doctor may prescribe dietetic preparations for medical use in the course of medical treatment. Moreover, they generally share the same distribution channels (para. 57 to 59).
There is a likelihood of confusion (para. 57 to 59). The Board of Appeal’s decision is upheld.
Case: T-483/08 of 16 December 2009, Giordano Enterprises Ltd / OHIM – José Dias Magalhaes & Filhos Ida (contested decision: R 1864/2007-2 of 28 July 2009)
Trade marks:
| GIORDANO | GIORDANO |
| Earlier trade mark | Community trade mark applied for |
Classes: 18, 25
Decision: “Clothing” and “ headgear” are similar to “footwear” (para. 20 to 21). “Bags” are also similar to “ footwear “. Those goods are aesthetically complementary and, at least sometimes, sold in the same specialised retail outlets as well as in major retail establishments (para. 22 to 29 ). There is a likelihood of confusion (para. 32 to 33).
The Board of Appeal’s decision is upheld.
Case: T- 490/07 of 17 December 2009, Notartel SpA – Societa informatica del Notario / OHIM – SAT. 1 SatellitenFernsehen GmbH (contested decision: R 1267/2006-4 of 22 October 2007)
Trade marks:
| ran | R.U.N. |
| Earlier trade mark | Community trade mark applied for |
Classes: 35, 38, 42
Decision:
1. The trade marks are visually, aurally and conceptually similar (para. 50 to 55).
2. Services of ‘providing of data transmission services on a network’ (class38) are highly similar to the services of ‘transmission and broadcasting of radio and television programmes, including transmission by wire, cable, satellite communications and similar technical means, transmission of sound or images by satellite; collection and supply of news; providing press information and information other than for advertising purposes’ (class 38), since the contents of the transmission services covered by the latter specification (sounds, images, news, press information) are all to be considered data which can be the subject of a transmission service through a computer network (para. 59 to 63). A similarity exists between ‘software programming and production’ (class 42) and ‘computer programs on tapes, cassettes, cartridges and modules, discs, films, punched cards, punched tape and semi-conductor memories; electronic data carriers’ (class 9), because the programming directly and immediately result in the programs in Class 9, and the respective goods and services are highly complementary, in the sense that producers of computer programs often provide the service of maintaining and updating those programs (para. 64 to 68) There is a likelihood of confusion (para. 71).
The Board of Appeal’s decision is upheld.