ECTA’s 31st ANNUAL MEETING, PALERMO, SICILY, 20-23 JUNE 2012


"Breaking News"



ECTA - COAPI – AGESORPI – WIPO – OEPM WORKSHOP ON INTERNATIONAL REGISTRATION OF DESIGNS, MADRID, 21 MARCH 2012

After successful events in London, Rome, Paris and Hamburg, ECTA is pleased to invite you to attend a further workshop on international registrations of designs in order to promote the Hague System and to prove its great advantages. This workshop, held in collaboration with COAPI – AGESORPI – WIPO – OEPM will take place in Madrid on 21 March 2012. The language of the event will be Spanish.

Programme
Registration form


GRUR-ECTA JOINT BRUSSELS WORKSHOP “EUROPEAN TRADE MARK SYSTEM(S) UNDER REVIEW- A FIRST SUMMARY OF THE NEW LEGAL FRAMEWORK”, BRUSSELS, 30 MAY 2012

We regret to inform you that according to a communication received on Tuesday from the EU-Commission, the time-schedule for the legislative package for the reform of the European Trademark System has been further postponed and is not expected before June.

As a result, we are unfortunately no longer in a position to hold our GRUR-ECTA Joint Brussels Workshop on the 30 May 2012 but will have to postpone the Workshop according to the EU Commission’s new time-table. We hope to be able to offer the Workshop programme at a later date and will revert to you in due course.

We thank you very much for your understanding and apologise for any inconvenience caused by the cancellation/postponement of the event.


Quick menu

Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • ACTA referred to the CJEU and ECTA’s support to ACTA
1.2 Domain names
  • Liberalization of the .PT domain name registration
1.3 Geographical Indications
  • Commission Regulation (EU) No 164/2012
2 OFFICE PRACTICE
2.1 OHIM
  • OHIM’s Accessibility Service Standards
  • OHIM in talks with users
  • OHIM Euroclass
  • OHIM - Mexico
  • OHIM - New issue of IP C&C Newsletter now available for download
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-33/11 BIGAB
The trade mark has not been registered in bad faith

T-353/09 Montronix vs. mtronix
There is a likelihood of confusion

T-387/10 ANTAX vs. ARANTAX
There is a likelihood of confusion

T-424/10 (fig) vs. (fig)
Assessment of phonetic and conceptual similarity

T-378/09 SPAR (fig) vs. SPA GROUP
There is no likelihood of confusion

EUROPEAN COURT OF JUSTICE

C-488/10 Celaya Emparanza y Galdos Internacional SA vs. Proyectos Integrales de Balizamiento SL
Right of the holder of a Community design to prevent use by third parties of an infringing design

4 ECTA NEWS
  • OHIM Link Committee
  • ACTA
  • OHIM Liaison Meeting
  • Sister Associations
  • WIPO
  • OAMI Users Group

Editorial team: Sandrine Peters, Jean-Jo Evrard, Annick Mottet Haugaard, and Cathy van Vuuren


1 Law

1.1 Anti-Counterfeiting

ACTA referred to the CJEU and ECTA’s support to ACTA

The European Commission has decided to refer ACTA (the Anti-Counterfeiting Trade Agreement) to the Court of Justice of the European Union (CJEU) for review. The Court is to assess whether ACTA is incompatible - in any way - with the EU’s fundamental rights and freedoms, such as freedom of expression and information or data protection and the right to property in case of intellectual property.

As a result, many European and international business organizations concerned about the impacts of counterfeiting and piracy have expressed their support for the CJEU review and reaffirmed their support for ACTA and its importance to the European Union and its Member States.

Marius Schneider, the chairman of the ECTA Anti-Counterfeiting Committee has participated on 29 February 2012 in a joint press conference with BASCAP and INTA to support ACTA and to explain that the agreement is compliant with the acquis communautaire. On 1 March 2012 Olivier Vrins, Belgian member of the ECTA Anti-Counterfeiting Committee spoke as an expert at a public hearing in the European Parliament on the same topic.

The European Commission’s press releases regarding the referral to the CJEU can be found HERE and HERE

1.2 Domain names

Liberalization of the .PT domain name registration

A new version of the Regulation for registration of .PT comes into force on 1 March 2012.

The new Regulation will allow users to more easily register a .pt domain name without having to be associated with a brand or company and, domain names are no longer limited to a word trade mark.

A sunrise period will going on for 60 days namely from 1 March to 30 April 2012.

The new Regulation No 340473/12 is available HERE.

Details on the requirements for the Sunrise Period can be found HERE.

A FAQs on the subject matter can be found HERE

1.3 Geographical Indications

Commission Regulation (EU) No 164/2012

The Commission Regulation (EU) No 164/2012 of 24 February 2012 amending Annex III to Regulation (EC) No 110/2008 of the European Parliament and of the Council on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks has been published in the Official Journal L053 dated 25 February 2012.

2 Office Practice

1.1 OHIM

OHIM’s Accessibility Service Standards

Following the OHIM President’s letter sent to the User Associations on 18 October 2011 regarding the accessibility of the OHIM Examiners (see Flash 19-11) and ECTA’s reply, a further letter was received from OHIM President, Mr. António Campinos.


OHIM in talks with users

As per ECTA Flash 02-12 the Office has started a series of meetings with the user associations. Over the past few weeks, OHIM staff from ICLAD have met with representatives from MARQUES and ECTA to discuss their collaboration and hear their views on a number of issues, such as their involvement in the development of the practice instructions – The Manual –, their view on OHIM’s quality management and the information OHIM provides through Alicante News.

Andreas Renck, as Chair of the ECTA-OHIM Link Committee had a meeting with Ralph Pethke, Director of legal affairs and Deputy Director of ICLAD of OHIM on 20 January 2012.

Ralph Pethke and Andreas Renck had a very fruitful discussion about how ECTA could help OHIM to improve its legal practice and its quality standards. Ralph Pethke emphasised that certain surveys about quality standards and the ranking of those standards will be circulated to user organisations shortly. ECTA has participated by submitting the criteria in relation to opposition proceedings.

At the same time, OHIM would like to have an active discussion about improving its main document for daily working, namely the OHIM Manual. OHIM is usually revising this document at the beginnig of each year and have a final version approximately in April or May of each year. OHIM would then provide this document to ECTA for discussion purposes at the annual meeting. OHIM and Ralph Pethke specifically suggested a liaison meeting at the ECTA annual conference with ECTA members for discussion of potential changes to the Manual. While changes would likely not be implemented during the current calendar year, it would be possible to make those changes for the next year.

Ralph Pethke also stressed that OHIM will currently continue to have both the Guidelines as well as the Manual since the Guidelines are provided for in the CTMR and to be approved by the Administrative Board. However, since the Guidelines cannot be changed quickly as need be, in particular not adapted to recent General Court or ECJ decisions, the focus will be on the Manual to reflect the day-to-day practice.

Finally, Ralph Pethke emphasised that OHIM wants to improve its quality, in particular by reflecting case law trends appropriately in their Manual and their daily practice.

Overall, the meeting was very fruitful and it showed that OHIM wants to further involve user organisations in the improvement of its own services.

A copy of the agenda can be found HERE


OHIM Euroclass

The Slovenian Intellectual Property Office (SIPO) and the United States Patent and Trade Mark Office (US-PTO) have joined the EuroClass project. The total number of participating Offices has now risen to 25.

OHIM Communication can be found HERE.


OHIM - Mexico

OHIM President António Campinos travelled to IMPI Mexico. He spoke of OHIM’s potential role in assisting the EU Delegation to develop IP protection programmes and emphasised the advantages of a more intensive use of the CTM by Mexican companies and of the recently ratified Madrid Protocol.
His visit concluded with the signing of a Memorandum of Understanding between OHIM and the Mexican national Office – IMPI.

OHIM communications can be found HERE and HERE


OHIM - New issue of IP C&C Newsletter now available for download

The February edition of IP Cooperation and Convergence, translated into 22 languages, provides the latest update on the progress made by the Cooperation Fund and Convergence Programme projects. With the major effort concentrated in 2012, and around 280 people already involved, work on the projects is at full speed. The end goal is to share common tools and reduce the differences in practices between offices in order to make things easier for users.
 IP C&C includes a report on the new, more powerful version of TMView, launched at the beginning of February. TMView has aggregated data from three new National Offices, taking the number of participant offices to 17, and offers improved and more comprehensive search functionalities.

This edition also focuses on the latest developments from selected projects such as the Database supporting Enforcement of IP Rights and the Future Software Package, the biggest single project from the Cooperation Fund.

OHIM communication can be found HERE.

The newsletter can be found HERE.

3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-33/11
of 14 February 2012, Peeters Landbouwmachines BV vs. OHIM – Fors MW
(contested decision: R 210/2010-1 of 4 November 2010)

Trade mark:

BIGAB

Class: 7

Decision:
Even if the intervener knew or should have known of the applicant’s use of the sign BIGA for the marketing of vertical feed mixers, it did not act in bad faith by seeking registration of the mark at issue (para. 38).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-353/09 of 1 February 2012, mtronix OHG vs. OHIM – Growth Finance AG (contested decision: R 1557/2007-4 of 23 June 2009)

Trade marks:

Montronix mtronix
Earlier trade mark Trade mark applied for

Class: 9

Decision:
1. The following goods are similar: “Weighing apparatus and instruments” and “measuring and checking apparatus and instruments” (para. 34). “Magnetic data carriers, recording discs” and “apparatus for recording, transmission or reproduction of sound or images” (para. 35). “Cash registers, calculating machines” and “computers” (para.36)

2. The trade marks are visually (para. 40 to 42), aurally (para. 43 to 44) and conceptually (para. 45) similar.There is a likelihood of confusion (para.52).

The Board of Appeal’s decision is upheld.


Case T-387/10 of 2 February 2012, Klaus Goutier vs. OHIM – Euro Data GmbH & Co. KG, Datenverarbeitungsdienst (contested decision: R 126/2009-4 of 1 July 2010)

Trade marks:

ARANTAX ANTAX
Earlier trade mark Trade mark applied for

Classes: 35,36,45

Decision:
1. The opponent has furnished proof of genuine use of his trade mark for “tax consultancy”.

2.“Tax consultancy” in class 35 is similar to the following services: “auditing”, “business consultancy and advisory services” and “bookkeeping” in class 35 (para.55 to 59), “mergers and acquisitions” in class 36 (para.61) and “legal services” in class 45 (para. 63).

3. The trade marks are visually (para.69 to 71) and aurally (para. 72) similar. There is a likelihood of confusion (para.79).

The Board of Appeal’s decision is upheld.


Case T-424/10 of 7 February 2012, Dosenbach-Ochsner AG Schuhe und Sport vs. OHIM – Sisma SpA (contested decision: R 1638/2008-4 of 15 July 2010)

Trade marks:



Earlier trade mark Contested Trade mark

Classes: 24,25

Decision:
The contested mark and the earlier figurative marks are visually different (para. 25 to 41). A phonetic comparison is not relevant in the examination of the similarity of a figurative mark without word elements with another mark (para. 45). The trade marks are conceptually similar (para.48 to 52). The contested decision is vitiated by errors in the assessment of phonetic similarity and conceptual similarity.

The Board of Appeal’s decision is annulled.


Case T-378/09 of 31 January 2012, Spar Handelsgesellschaft mbH vs. OHIM – Spa Group Europe Ltd & Co. KG (contested decision: R 123/2008-1 of 16 July 2009)


SPA GROUP
Earlier trade mark Trade mark applied for

Classes: 16,35,41,44

Decision:
The trade marks are visualy (para.31 to 38), aurally (para. 39 to 47) and conceptually (para. 48 to 53) different. Overall, there is a weak similarity (!) (para. 54), but taking into account the circumstances of the case, the similarity is not sufficient to create a likelihood of confusion (para.69).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Design

Case C-488/10 of 16 February 2012, Celaya Emparanza y Galdos Internacional SA vs. Proyectos Integrales de Balizamiento SL

The Court replies to questions referred by the Juzgado de lo Mercantil n° 1 de Alicante y n° 1 de Marca Comunitaria (Spain) and relating to the interpretation of Article 19 (1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs that is worded as follows:

“A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those
Purposes”

The Court’s replies are as follows:

1. Article 19 (1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that, in a dispute relating to infringement of the exclusive right conferred by a registered Community design, the right to prevent use by third parties of the design extends to any third party who uses a design that does not produce on informed users a different overall impression, including the third party holder of a later registered Community design.

2. The answer to the first question is unconnected with the intention or conduct of the third party.

4 ECTA News

OHIM Link Committee

The OHIM Link Committee met OHIM Management on 17 February 2012. ECTA was represented by Annick Mottet Haugaard (ECTA President), Ewa Grabiak (ECTA Legal Coordinator), Andreas Renck (Chair of the ECTA OHIM Link Committee), Fabio Angelini (Chair of the ECTA Law Committee), Benjamin Fontaine (Secretary of the ECTA Geographical Indications Committee), Keith Hodkinson (Member of the ECTA Design Committee), Anette Rasmussen (Member of the ECTA Law Committee) and Franc Enghardt (Member of the ECTA Harmonization Committee).

After an update on OHIM’s performance under the Strategic Plan and OHIM’s new approach to knowledge management, the latest developments regarding the Convergence Programme, the Cooperation Fund and the EU Observatory were discussed.

The representatives of both organisations then had a fruitful discussion on the topics proposed by ECTA, namely:

- the representation of registered designs in OHIM under Article 4 of the Community Design Regulation and the practice of other Offices;
- OHIM’s practice in relation to Geographical Indications;
- preparation dealing with evidence - the different approaches in each country and how OHIM could deal with it;
- the reimbusement of costs in OHIM proceedings and how to improve the collection of costs awards.

The minutes of the meeting will be published next week on the ECTA website under the the OHIM Link Committee - papers section.


ACTA

On 2 March 2012, Marius Schneider (Chair of the ECTA Anti-Counterfeiting) and Ewa Grabiak (ECTA Legal Coordinator) will attend a meeting organized by INTA to discuss the ACTA developments and to evaluate and decide the next steps to be taken bearing in mind the Parliament vote on ACTA in June.


OHIM Liaison Meeting

ECTA has been invited to attend the OHIM 7th Liaison Meeting on Technical Cooperation and Trade Marks, which will take place on 5 and 6 March and 21 and 22 May 2012 respectively. Andreas Renck (Chair of the OHIM Link Committee) will represent ECTA at the meeting on Trade Marks.


Sister Associations

The Sisters Associations Meeting will take place in Munich, Germany, on 9 March. Max Oker-Blom (ECTA Secretary Generla), Peter Müller (ECTA Second Vice President) and Ewa Grabiak (ECTA Legal Coordinator) will attend.


WIPO

ECTA Representatives are meeting WIPO on 3 April 2012 in Geneva. Should you have any questions to be raised, please send an e-mail asap to Fabio Angelini (Chair of the ECTA Law Committee).


OAMI Users Group

The next OAMI Users Group meeting will take place in Alicante on 17 April 2012. Should you have any questions to be raised, please send an e-mail asap to Andreas Renck (Chair of the ECTA OHIM Link Committee).

The official minutes of the last OAMI Users Group meeting has been made available HERE.