ECTA - European Communities Trade Mark Association

Table of Contents

1. LAW

1.1 Trade Marks

• Study on the European functioning of the trade mark system – Allensbach ‘s survey

1.2 Enforcement

• Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy - DG MARKT

• Revised draft Council Resolution ”Enhancing the enforcement of intellectual property rights in the internal market”

1.3 Domain Names

• ICANN- Special Trade Mark Issues Consultation - MARQUES and ECTA’s joint comments

2. OFFICE PRACTICE

2.1. OHIM

• 0HIM disagrees with Benelux IP Office ruling on genuine use of a CTM

• Harmonization conference

• “Instructions to the Registry” updated by the Boards of Appeal

• OHIM launched a new version of MyPage

3. CASE LAW

Court of Justice

C-398/08 Vorsprung durch Technik
The slogan is distinctive

General Court

T-460/07 LIFE vs. LIFE BLOG
The trade marks are visually, aurally and conceptually similar

T-34/07 DSB vs. DSBW
The trade marks are visually and aurally similar. There is a likelihood of confusion

T-309/08 G STAR (word & fig) - G STAR RAW DENIM vs. G-Stor (fig)
The trade marks are visually, aurally and conceptually different

T-331/08 FRUTISOL vs. Solfruta
The trade marks are visually, aurally and conceptually weakly similar. There is no likelihood of confusion

4. ECTA NEWS

• ECTA at MARQUES’ seminar “Brand Owner’s Guide to Community Design”

1 Law

1.1 Trade Marks

Study on the European functioning of the trade mark system – Allensbach ‘s survey

In the framework of the Study on the functionning of the European trade mark systems, the contractor Max Planck Institute for Intellectual Property, Competition and Tax Law has asked the Institut für Demoskopie Allensbach to draft and launch a questionnaire addressing users’ views and opinions on the current state and expectations in connection with the CTM system and possibly also with national systems. On 18 January 2010, Max Planck Institute informed ECTA that the Allensbach questionnaire was going into the pre-test phase until end of January. The survey itself will run from the beginning of February until mid March. The recipients, around 1500, will be selected from amongst OHIM users. These could be user associations, companies and professional representatives (such as lawyers and trade mark attorneys). They will be invited by e-mail to participate in the survey. ECTA recommends its members falling into the sample to actively participate in this survey.

1.2 Enforcement

Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy - DG MARKT

The fourth meeting of the Sub-Group on Legal Framework set up within the European Counterfeiting and Piracy Observatory took place on 19 January 2010 in Brussels. READ M0RE

Revised draft Council Resolution ”Enhancing the enforcement of intellectual property rights in the internal market”

On 13 January 2010, the Council Resolution ”Enhancing the enforcement of intellectual property rights in the internal market” was discussed at the Council Working Party meeting in Brussels. The Member States have agreed to the main aspects of the Resolution focussing their discussion on the best way of implementing a better administrative cooperation. Following this meeting, there has been a revised version of the draft Council resolution. The Spanish Presidency is willing to confirm the Council conclusions in March 2010 at the Competitiveness Council meeting.

1.3 Domain Names

ICANN- Special Trade Mark Issues Consultation MARQUES and ECTA Joint comments

Following the publication of the Special Trademarks Issues Working Team (STI) Report’s on its recommendations to create a Trademark Clearinghouse and Uniform Rapid Suspension procedure to protect trademarks in the new global top-level domain (GTLD) programme, the ECTA Internet Committee and the MARQUES Cyberspace Committee submitted joint comments on 27 January 2010.

2 Office Practice

2.1. OHIM

0HIM disagrees with Benelux IP Office ruling on genuine use of a CTM

In the Opposition Decision of 15 January 2010 (Leno Merken B.V./Hagelkruis Beheer bv) the Benelux Office for Intellectual Property (BOIP) has stated that use of a CTM in one EU Member State (in the specific case, the Netherlands) is insufficient to constitute genuine use in the EU. This contradicts the Joint Statement of the Commission and the Council, which establishes that use of a Community trade mark within the meaning of Article 15 of the CTM Regulation in one EU Member State is sufficient to constitute genuine use in the EU. The complete communication can be found at: http://oami.europa.eu/ows/rw/news/i…

Harmonization conference

Representatives from several national IP offices and WIPO took part in a conference on harmonization of classification hosted at OHIM in Alicante on 28-29 January 2010. In addition to reviewing the EuroClass project, which offers a comparison of classification databases, the UK, German and Swedish offices exchanged views with OHIM on the next steps towards the creation of a common database of goods and services.

“Instructions to the Registry” updated by the Boards of Appeal

The Presidium of the Boards of Appeal adopted on 10 December 2009 an updated version of the Instructions to the Registry which entered into force on 1 January 2010. The main purpose was to adapt the Instructions to the codified version of the Community Trade Mark Regulation and to specify the rules concerning notification of decisions.

The decision can be found at: http://oami.europa.eu/ows/rw/resour…

OHIM launched a new version of MyPage

OHIM launched on 18 January 2010 a new version of MyPage, the personalised online platform making it easier to do e-business with the office. The new MyPage incorporates improved features based on feedback received from users, allowing easy access to client information for representatives, and an overview of CTM and Opposition files for all users.

The complete communication can be found at: http://oami.europa.eu/ows/rw/news/i…

3 Case Law

Summaries and case law provided by Darts IP

Court of Justice

On absolute grounds for refusal

Case: C-398/08 P of 21 January 2010, Audi AG / OHIM (contested decision: T-70/06 of 9 July 2008. See ECTA Flash 16-08)

Trade mark:

Vorsprung durch Technik

Classes: 9, 12, 14, 25, 28, 37 to 40, 42

Decision: The Court of Justice annuls a decision of the General Court that hold that the slogan "Vorsprung durch Technik" (advance or advantage through technology ) was devoid of any distinctive character he relevant public perceives the mark, first and foremost, as a promotional formula (1). The Court of Justice decides that the slogan is distinctive (2).

1. The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character (para. 45).

The General Court did not substantiate its finding to the effect that the mark applied for will not be perceived by the relevant public as an indication of the commercial origin of the goods and services in question; in essence, rather, it merely highlighted the fact that that mark consists of, and is understood as, a promotional formula ( para.46 . The assessment carried out by the General Court under Article 7(1)(b) of Regulation No 40/94 is vitiated by an error in law (para. 49).

2. Even if it were to be supposed that the slogan ‘Vorsprung durch Technik’ conveys an objective message to the effect that technological superiority enables the manufacture and supply of better goods and services, that fact would not support the conclusion that the mark applied for is devoid of any inherently distinctive character. However simple such a message may be, it cannot be categorised as ordinary to the point of excluding, from the outset and without any further analysis, the possibility that that mark is capable of indicating to the consumer the commercial origin of the goods or services in question (para. 58).

The message does not follow obviously from the slogan in question. The combination of words ‘Vorsprung durch Technik’ (meaning, inter alia, advance or advantage through technology) suggests, at first glance, only a causal link and accordingly requires a measure of interpretation on the part of the public. Furthermore, that slogan exhibits a certain originality and resonance which makes it easy to remember. Lastly, inasmuch as it is a widely known slogan which has been used by Audi for many years, it cannot be excluded that the fact that members of the relevant public are used to establishing the link between that slogan and the motor vehicles manufactured by that company also makes it easier for that public to identify the commercial origin of the goods or services covered. (para. 59).

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General Court

On relative grounds for refusal

Case: T-460/07 of 20 January 2010, Nokia Oyj / OHIM – Medion AG (contested decision: R 141/2007-2 of 2 October 2007)

Trade marks:

LIFE	LIFE BLOG
Earlier trade mark	Community trade mark applied for

Classes: 9, 38, 41

Decision: The trade marks are visually (para.54 to 55), aurally (para. 56) and conceptually (para. 57 to 58) similar. There is a likelihood of confusion (para. 71).

The Board of Appeal’s decision is upheld.

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Case: T-34/07 of 21 January 2010, Karen Goncharov / OHIM – DSB (contested decision: R 1330/2005-2 of 4 December 2006)

Trade marks:

DSB	DSBW
Earlier trade mark	Community trade mark applied for

Classes: 37, 41, 43

Decision: The trade marks are visually (para.43 to 44) and aurally (para. 45 to 46) similar. There is a likelihood of confusion (para. 54).

The Board of Appeal’s decision is upheld.

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Case: T-309/08 of 21 January 2010, G-Star Raw Denim kft / OHIM – ESGW Holdings Ltd (contested decision: R 1232/2007-1 of 14 April 2008)

Trade marks:

G_STAR

G STAR RAW DENIM

Earlier trade marks	Community trade mark applied for

Classes: 9, 25

Decision: The trade marks are visually different (para. 28 and 29), aurally similar (para. 30) and conceptually different (para. 31 to 33). The visual and conceptual differences between the marks prevent any assumption of a possible link between them within the meaning of Article 8(5) of Regulation No. 40/94.

The Board of Appeal’s decision is upheld.

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Case: T-331/08 of 28 January, REWE-Zentral AG / OHIM – Grupo Corporativo Teype, (contested decision Case R 1679/2007-2 of 21 May 2008)

Trade marks:

FRUTISOL	Solfruta
Earlier trade mark	Community trade mark applied for

Classes: 29, 30, 32

Decision: The trade marks are visually (para. 17), aurally (para. 18 and 19) and conceptually (para. 20 to 22) weakly similar. The Board of Appeal made a significant error in finding that the two signs at issue are highly similar. That error undermines the Board of Appeal’s assessment of the likelihood of confusion.

The Board of Appeal’s decision is annulled.

4 ECTA News

ECTA at MARQUES’s seminar “Brand Owner’s Guide to Community Design”

On 19 January 2010, MARQUES held an evening seminar entitled "Brand Owners Guide to Community Designs" in Paris, France. READ MORE