ECTA - European Communities Trade Mark Association

Table of Contents

1. LAW

1.1 EU Issues

• Commission Barroso II in place

1.2 Trade Marks

• Study on the European functioning of the trade mark system - Evaluating questions sent to MPI - Hearing of User Associations

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

• OHIM Cooperation Fund – Note on “Delivering the Cooperation Fund Programme”

1.3 Geographical Indications

• ECTA’s comments to DG AGRI

1.4 Enforcement

• 7th Round of Negotiations on ACTA

• Commission’s response to parliantary question on ACTA

1.5 Domain Names

• ICANN’s consultation on "Expressions of Interest"- MARQUES and ECTA’s joint comments

2. OFFICE PRACTICE

2.1. OHIM

• Update of OHIM Manual of Trade Mark Practice

• Progress on common classification database

3. CASE LAW

General Court

T-344/07 Homezone
The trade mark is distinctive

T-113/09 SupplementPack
The trade mark is descriptive

T-472/07 TRANSFORMERS ENERGON vs. ENERCON
The trade marks are visually, aurally and conceptually similar

T-289/08 Deutsche BKK
The trade mark is descriptive

4. ECTA NEWS

• ECTA at Sister Association meeting

• ECTA at OAMI users group meeting

• ECTA at AROPI’s Aropiades

1 Law

1.1 EU issues

Commission Barroso II in place

The Commission Barroso II (2010-2014) took effect from 10 February 2010 following the European Parliament’s approval of the new team of Commissioners on 9 February and the European Council’s confirmation of appointments on 10 February.

The Commissioners responsible for the relevant DGs for our activities are as follows:

• Michel Barnier (French nationality), DG MARKT, please refer to Flash 02-10 for his declarations on IP during his hearing in January 2010;

• Algirdas Gediminas Šemeta (Lithuanian nationality), DG TAXUD;

• Karel De Gucht (Belgian nationality), DG TRADE;

• Dacian Ciolos (Romanian nationality), DG AGRI;

• Neelie Kroes (Dutch nationality), DG Information Society & Media.

Some of these Commissioners have more than one DG under their supervision.

Please consult the press release at: http://ec.europa.eu/news/eu_explain…

Please consult the list of the Commission’s members and find more details at: http://ec.europa.eu/commission_desi…

1.2 Trade Marks

Study on the European functioning of the trade mark system - Evaluating questions sent to MPI - Hearing of User Associations

Following ECTA Law Committee’s work on the evaluating questions raised in the Study, ECTA sent its comments and responses to the Max Planck Institute (MPI) on 16 February 2010.

The MPI informed today that the hearing with User Associations will take place on 22 April 2010 in Munich. Further details should be communicated to all the Associations.

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

Following Flash 03-10, the Institut für Demoskopie Allensbach, subcontractor of the Max Planck Institute for Intellectual Property, Competition and Tax Law, has contacted in the last days CTM proprietors and representatives of CTM proprietors to respond to an on-line survey.

We again recommend ECTA members to actively participate in this survey in case they are contacted. We kindly advise them to take into consideration the ECTA papers (response to the MPI of 14 January 2010, see Flash 02-10 and comments on evaluating questions of the Study (dated 16 January 2010) when completing the online survey.

OHIM Cooperation Fund – Note on “Delivering the Cooperation Fund Programme”

OHIM Administrative Board and Budget Committees sent on 2 February 2010 to the Delegations of the ABBC a note titled “Delivering the Cooperation Fund Programme” which describes in more detail the contents and structure of the CF programmes and sets out the proposed initial framework within which National Offices (NOs) and users may submit initiatives. This note will be discussed at the extraordinary joint meeting of the OHIM Administrative Board and Budget Committee on 24 February 2010 in Alicante. ECTA will be represented by Anne-Laure Covin, ECTA Legal Co-ordinator.

This note has identified four fields as a base for future work:

• Field 1: Harmonization projects. This field is divided in two categories: Category 1, projects already underway (TMView, common classification goods and services database, seniority database) and Category 2, new candidates/possible new areas for further analysis (such as E-Learning modules for examiners from NOs or a Quality Management System for NOs and OHIM).
• Field 2: Software packages comprising a predetermined list of projects to improve NOs e-services and back office facilities. Two basic projects are covered: E-services provided to the end-user via the Internet and back office.
• Field 3: Information services comprising communication initiatives to help companies to better protect and enforce their trade mark and design rights at national and EU level, as well as training initiatives both for companies and their representatives.
• Field 4: Activities to facilitate the enforcement of trade mark and design rights comprising initiatives to facilitate the work of those responsible for the enforcement of trade mark rights (judges, custom authorities, police, etc.).

The lists of projects in Field 1, Category 1 (ongoing harmonization projects) and Field 2 (software packages) have already been defined by the Management Board (MB) and all detailed information will be made available to NOs, who will then be able to ‘sign up’ to those projects in which they wish to participate. Based on the participation levels and a technical analysis provided by Gartner, the MB will decide on the amount of CF monies to allocate to these projects.

For Field 1, Category 2 (new candidates), Field 3 (information services) and Field 4 (enforcement activities), the MB will assess all further suggestions which have have to be received by the AB/BC Secretariat from EU Trade Mark & Design Offices and users before by mid- March 2010 to be then able to offer NOs a Portfolio of projects to sign up. These suggestions will complete the ones already sent by EU Trade Mark & Design Offices and users associations in the last months. The MB will also define the projects in these fields which can be offered to NOs by way of a provisional “Portfolio of Projects”. After taking into account the level of participation desired by NOs in these projects, and the anticipated cost in conjunction with the remaining monies in the CF, the MB will decide on the final list of projects for which it proposes financing from the CF.

The NOs will then face two “waves of applications. The first wave should run from 1 March to 1 May 2010 during which they should formally express their commitment to sign up for the Field 1, Harmonization projects already running and Field 2, Software package projects. Thus, the MB will be able to assess all suggestions and then produce a provisional “Portfolio” to make available to NOs by mid-April 2010. The second wave of applications will run from 1 May to 1 July 2010, to allow NOs to apply for initiatives included in this Portfolio of projects. The Portfolio will be developed by the MB after assessing NOs and users’ suggestions in light of the goals and principles of the Fund. Should the MB require further information regarding any of the submitted suggestions, the NOs and users’ associations concerned will be contacted in an informal manner. The MB will then determine which of the projects in the Portfolio can be adopted, thus completing the final list of CF projects, in light of the number of NOs interested, the estimated costs and feasibility for each project and the remaining monies available in the CF.

ECTA’s Committees will work on possible additional suggestions in connection with Field 1, Category 2 (new candidates), Field 3 (information services) and Field 4 (enforcement activities).

1.3 Geographical Indications

ECTA, following its meeting with representatives of DG AGRI on 11 December 2009 (see Flash 22-09) will send this week their comments and recommendations regarding Annex B Geographical Indications of the Commission’s communication to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions on agricultural product quality policy (dated 28 May 2009). ECTA paper will be posted on the Geographical Indications Paper section.

1.4 Enforcement

7th Round of Negotiations on ACTA

The 7th round of negotiations on the proposed Anti-Counterfeiting Trade Agreement (ACTA) took place in Guadalajara, Mexico, on 26-30 January 2010. The discussions focused on civil enforcement, border enforcement and enforcement of rights in the digital environment. The participants reaffirmed their commitment to enhance transparency. The next meeting would be hosted by New Zealand in April 2010 and the participants have agreed to conclude the agreement by the end of 2010. Please consult DG TRADE’s press release.

Commission’s response to parliantary question on ACTA

The Commission has provided a written response to MEP Christian Engström’s question (Verts/ALE) on ACTA : ”…the Anti-Counterfeiting Trade Agreement will be in line with the body of EU legislation, which fully respects fundamental rights and freedoms and civil liberties, such as the protection of personal data. This includes the Intellectual Property Rights’ relevant aspects of the Telecoms package. ACTA should not contain measures restricting end-users’ access to the Internet that would not be appropriate, proportionate and necessary within a democratic society and without a prior, fair and impartial procedure…”

The full response is available at: http://www.europarl.europa.eu/sides…

1.5 Domain Names

ICANN’s consultation on "Expressions of Interest"- MARQUES and ECTA’s Joint comments

ICANN has been issuing many documents for consultation in the last months. Amongst them, ICANN has raised the concept of “Expressions of Interest” and has proposed that potential applicants, when filing a new generic top-level domain, formally submit an expression of interest and file a "deposit" payment of USD 50,000. The ECTA Internet Committee in conjunction with the MARQUES Cyberspace Team jointly responded to the ICANN’s consultation and sent their comments on 26 January 2010. The joint paper cover the question of the “Expression of Interest” idea, the manner in which it has been proposed and the concerns about what one might read into such expressions.

2 Office Practice

2.1 OHIM

Update of OHIM Manual of Trade Mark Practice

The OHIM Manual of Trade Mark Practice has been updated. It combines the parts of the existing Guidelines which are unchanged since the last formal revision, with amendments reflecting current Office practice. The summary of the changes to the manual can be found at: http://oami.europa.eu/ows/rw/pages/…

Progress on common classification database

The EuroClass project, allowing the comparison of classifications for goods and services from participating European offices, has taken another step forward with the integration of the Danish, Maltese and Swiss offices. EuroClass allows easy comparison of the differences in classification between 16 European offices and gives access to the accepted terms in each office.Progress is also being made in parallel towards the creation of such a common database, with some offices currently validating translations and a large number of others expressing interest. OHIM is developing an electronic tool to coordinate the work of introducing new terms, and the modification or deletion of existing ones. In case of disagreement on such changes among participating offices, WIPO will act as arbiter. The complete communications can be found at:
http://oami.europa.eu/ows/rw/news/i…
http://oami.europa.eu/ows/rw/news/i…

3 Case Law

Summaries and case law provided by Darts IP

General Court

On absolute grounds for refusal

Case: T-344/07 of 10 February 2010, O2 (Germany) GmbH & Co. OHG / OHIM (contested decision: R 1583/2006-4 of 5 July 2007)

Trade mark:

Homezone

Classes: 9, 38, 42

Decision: The Board of Appeal did not err in inferring from the meaning of each of the trade mark components that one of the possible meanings of the word element ‘homezone’ is ‘Heimbereich’ (home area) or ‘Nahzone’ (local area) (para. 33). However, it failed to establish that the trade mark “Homezone” could designate goods in class 9 or services in classes 38 and 42 or one of its characteristics (para. 36 to 69). It also failed to establish that the trade mark was devoid of any distinctive character in relation to the goods and services in question (para. 77 to 81).

The Board of Appeal’s decision is annuled.

Case: T-113/09 of 9 February 2010, PromoCell bioscience alive GmbH Biomedizinische Produkte / OHIM (contested decision: R 993/2008-4 of 15 January 2009)

Trade mark:

SupplementPack

Classes: 1, 5, 41, 42

Decision: The trade mark is descriptive since it will be understood directly by the relevant public as referring to goods or services which are intended to supplement a basic offer of goods or services in the relevant sectors (para. 37).

The Board of Appeal’s decision is upheld.

Case: T-289/08 of 11 February 2010, Deutsche Betriebskrankenkasse (Deutsche BKK) / OHIM (contested decision: R 318/2008-4 of 29 May 2008)

Trade mark:

Deutsche BKK

Classes: 36, 41, 44

Decision: The trade mark is descriptive. BKK is the abbreviation of the German word ’Betriebskrankenkasse’ which is a specific type of statutory health insurance fund. The combination of this abbreviation with the word ’Deutsche’ (German) does not render the sign distinctive (para. 38-54). The applicant has failed to establish that the trade mark has become distinctive through use (para. 62-95).

The Board of Appeal’s decision is upheld.

On relative grounds for refusal

Case: T-472/07 of 3 February 2010, Enercon GmbH / OHIM – Hasbro, Inc (contested decision: R 959/2006-4 of 25 October 2007)

Trade marks:

Classes: 16, 18, 24, 25, 28, 32

Decision: The trade marks are visually (para. 36 to 37), aurally (para. 38 to 39) and conceptually (para. 40 to 43) similar. There is a likelihood of confusion (para. 45).

The Board of Appeal’s decision is upheld

4 ECTA News

ECTA at Sister Association meeting

ECTA represented by Anne-Laure Covin, ECTA Legal Co-ordinator, took part in the annual Sister Association meeting in Lisbon on 12 February 2010. Besides ECTA, this meeting was attended by the following associations: APRAM (represented by APRAM Vice President, Bertrand Geoffray), ITMA (represented by ITMA President Gillian and ITMA First Vice President Maggie Ramage), MARQUES (represented by MARQUES Council Member and former Chairman, Tove Graulund and MARQUES External Relations Officer, Alessandra Romeo), UNION (represented by UNION President, Phillipe Overath, UNION Past President, Joao Pereira da Cruz, UNION Vice-President Trade Marks Commission Laurent Overath and UNION Member, Joao Pimenta). Hans Peter Kunz-Hallstein, GRUR President, could unfortunately not take part in the meeting.

Many issues were discussed during the meeting, such as the Study on the functioning of the European trade mark systems, the OHIM’s communication to Max Planck Institute, the OHIM Cooperation Fund, the architectural architecture at the EU level. It was agreed that the associations will meet in Boston during the INTA’s conference to follow up on the different issues.

ECTA at 17th OAMI users group meeting

ECTA represented by Joao Pereira da Cruz, Chair of ECTA Harmonization Committee and Anne-Laure Covin, ECTA Legal Co-ordinator will attend the 17th OAMI users group meeting in Alicante on 15 March 2010. OHIM will send prior to the meeting the agenda and the working documents. ECTA members will be of course informed in due course.

ECTA at AROPI’s Aropiades

The Association Romande de Propriété Intellectuelle (AROPI) organized its first international Congress, AROPIADES 2010 on 14-15 January 2010 with the assistance of WIPO at its headquarters in Geneva. READ MORE