ECTA - European Communities Trade Mark Association

Table of Contents

1. LAW

1.1 Trade Marks

• OHIM Cooperation Fund - Extraordinary ABBC meeting

1.2 Geographical Indications

• ECTA’s comments sent to DG AGRI, DG MARKT and OHIM

1.3 Enforcement

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

• Final draft Council Resolution ”Enhancing the enforcement of intellectual property rights in the internal market” to be adopted on 1 March 2010

• Opinion of the European Data Protection Supervisor on the ACTA negotiations

1.4 Security Interests in IP

• United Nations Commission on International Trade Law - New York

2. Office Practice

2.1 OHIM

• Online poll on OHIM’s vital statistics

3. CASE LAW

General Court

T-11/09 JACK & JONES vs. James Jones
The trade marks are visually, aurally and conceptually similar

Court of Justice

C-408/08 COLOR EDITION
No need to have actual or potential economic interest in cancellation of a contested mark to apply for a declaration of invalidity. The trade mark is not distinctive

National Supreme Court

German Federal Supreme Court – “OPEL” case

The German consumer will not perceive the sign ’OPEL’ as an indication of origin of the goods, but rather as a reproduction of a detail of the original car

4. ECTA NEWS

• ECTA UK Round Table

• ECTA at OAMI users group meeting

• ECTA at WIPO sessions

  

  UNCITRAL

London RT Report

1 Law

1.1 Trade Marks

OHIM Cooperation Fund – Extraordinary ABBC meeting

The extraordinary joint meeting of the OHIM Administrative Board and Budget Committee took place on 24 February 2010 in Alicante. ECTA was represented by Anne-Laure Covin, ECTA Legal Co-ordinator. Following the note “Delivering the Cooperation Fund Programme” (see Flash 04-10),the purpose of this meeting, was to discuss the note itself, the further steps to take and the repartition of the €50m fund, the administrative costs of the handling of the Cooperation Fund (CF) and of the 4 fields of activities as described in the note.

The Chair of the Management Board (MB) of the CF explained what had been done since the last joint meeting of the ABBC in November 2009 in connection with the proposals set up in the note. He thanked the national trade mark offices and NGOs for the feedback received. He reminded of the 3 goals, the 8 principles and the different players of the CF.

Regarding the different fields mentioned in the note, Lord Mogg made the following comments regarding their status:

• Field 1, harmonization projects covering projects already underway (such as TMView, common classification goods and services database, seniority database) and 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): well advanced.

• Field 2, software packages comprising a predetermined list of projects to improve NOs e-services and back office facilitie: advanced.

• 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: there is a need for clear and detailed projects and proposals in order to properly use the money.

• 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.): same remark than for field 3.

Lord Mogg mentioned that with regard to the provisional distribution of the €50 million, no final allocation could be made until the MB had an idea of all project proposals, the likely costs of each, and the likely Member State sign-up for each.

The estimation of costs in connection with the fields will be as follows:

• Around €10 million for field 1;
• Around €20 million for field 2;
• Around €15 million for fields 3 and 4;
• Administrative costs of the management of the CF: around €5 million will be taken from the CF itself.

For Field 1, Category 2 (new candidates), Field 3 (information services) and Field 4 (enforcement activities), Lord Mogg specified that the national TM offices and NGOs would have until 12 March 2010 to submit any additional suggestions. It is clear from the meeting that any possible proposal submitted in connection with the fields 3 and 4 will have to be detailed and well presented to be taken into account by the MB. The Chairs of the ECTA Professional Affairs and Anti-Counterfeiting Committees shall be contacted in that respect.

Regarding the proposed financing arrangements, Lord Mogg underlined that for projects requiring software development, the CF will cover all of these development costs as well as integration and initial costs (for necessary training for examiners and users). Neither digitalisation nor running costs would be claimable. National offices must cover costs related to data conversation for ’feeding’ databases and costs related to hardware, software licences, hosting, running and maintenance of the software, by way of their contribution to the co-financing principle. Following the principles of co-financing, for projects of Field 1, Category 2, Field 3 and Field 4 other than software development, the CF will cover 80% of the costs while the remaining 20% will be convered by the participating National Offices which will be able to make non-financial contributions (work hours, providing necessary infrastructure etc.). However, for those countries benefiting from less financial means, named by Lord Mogg “Minnows”, it is envisaged to lower their participation to 10% or perhaps even less.

Lord Mogg’s Speaking Notes of the meeting including the detailed timetable can be found at OHIM-Link Committee - Papers section.

The next joint meeting of the ABBC will take place on 13 April in Alicante.

1.2 Geographical Indications

ECTA sent on 23 February 2010 its 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 to DG AGRI, DG MARKT and OHIM (see Flash 04-10). The comments and the accompanying letter can be found under the Papers Section of the Geographical Indications Committee. A meeting should be organised in April/ May with representatives with DG AGRI, DG MARKT, OHIM, Members of ECTA Management and ECTA Geographical Indications Committee and other actors of the GIs field such representatives of the Association OriGIn. Further details shall be communicated in due course.

1.3 Enforcement

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

The fifth meeting of the Sub-Group on Legal Framework set up within the European Counterfeiting and Piracy Observatory took place on 26 February 2010 in Brussels. The report of the meeting will be available on ECTA’s website soon under the Anti-Counterfeiting Committee - Papers section.

Final draft Council Resolution ”Enhancing the enforcement of intellectual property rights in the internal market” to be adopted on 1 March 2010

Following the revised version of the draft Council resolution of 28 January 2010 (see Flash 03-10), the Permanent Representatives Committee agreed on 17 February 2010 to submit the final text of the draft Resolution to the Competitiveness Council on 1 March 2010 for adoption.

Opinion of the European Data Protection Supervisor on the ACTA negotiations

Peter Hustinx, the European Data Protection Supervisor (independent supervisory authority devoted to protecting personal data and privacy and promoting good practice in the EU institutions and bodies), has warned that the current negotiations by the European Union aimed at strengthening the enforcement of intellectual property rights and combating counterfeiting may not be compatible with individual data protection rights. Mr Hustinx stated that he was not consulted by the European Commission on the content of the Anti-Counterfeiting Trade Agreement (ACTA) and was concerned about a potential incompatibility with data protection rights of some of the measures envisaged. These measures included large scale monitoring of Internet users and the imposition of obligations on Internet Services Providers to adopt "three strikes Internet disconnection policies".

Please refer to Mr. Hustinx’s opinion and press release.

The European Data Protection Supervisor website is: http://www.edps.europa.eu/EDPSWEB/

1.4 Security Interests in IP

United Nations Commission on International Trade Law - New York

From 8-12 February 2010, at its 17th session in New York, the United Nations Commission on International Trade Law – UNCITRAL (Working Group VI, Security Interests) continued its work on the preparation of a Supplement to the UNCITRAL Legislative Guide on Secured Transactions dealing with specific rights in intellectual property. READ MORE

2 Office Practice

2.1 OHIM

Online poll on OHIM’s vital statistics

As OHIM is willing to improve their services, they are requesting users to complete an online poll pointing them in the right direction. OHIM’s online polls are anonymous and the updated results are visible for all to see.

The poll can be found at: http://oami.europa.eu/ows/rw/questi…

3 Case Law

Summaries and case law provided by Darts IP

General Court

On relative grounds for refusal

Case: T-11/09 of 23 February 2010, Rahmi Ozdemir / OHIM – Aktieselskabet af 21. November 2001 (contested decision: R 858/2007-2 of 3 November 2008)

Trade marks:

Class: 25

Decision: The trade marks are visually (para. 26 to 29), aurally (para. 30 to 33) and conceptually (para. 34 to 36) similar. There is a likelihood of confusion (para. 38 to 41).

The Board of Appeal’s decision is upheld.

Court of Justice

Case: C-408/08 P, Lancôme parfums et beauté & Cie SNC / OHIM – CMS Hasche Sigle (contested decision: R 1583/2006-4 of 5 July 2007)

Trade mark:

COLOR EDITION

Class: 3

Decision:

1. Article 55(1)(a) of Regulation N° 40/94 provides that an application for a declaration of invalidity based on an absolute ground for invalidity may be submitted by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which has the capacity in its own name to sue and be sued.

No reference is made to an interest in bringing proceedings ( para. 38 ) There is no basis for appellant claim that Article 55(1)(a) must be interpreted as requiring there to be an actual or potential economic interest in cancellation of a contested mark in order for it to be possible to apply to OHIM for a declaration of invalidity of that mark.

2. After having found that the sign ‘COLOR EDITION’ was composed exclusively of indications which may serve to designate certain characteristics of the goods in question, the General Court held that the association of the terms ‘color’ and ‘edition’ was not unusual but a normal construction in light of the lexical rules of the English language and that the mark in respect of which registration had been sought did not therefore create, for the target public, an impression sufficiently far removed from that produced by the simple juxtaposition of the verbal elements of which it was composed to alter its meaning or scope. That reasoning is not vitiated by any error of law para. 64).

The General Court’s decision is upheld.

National Supreme Court

Case: German Federal Supreme Court (Bundesgerichtshof), 14 January 2010, Opel/Autec

This decision follows on from the ECJ judgement of 25 January 2007 (Adam Opel AG/Autec AG), see Flash 04-07.

The case raises the question as to whether, in Germany, the proprietor of the trade mark ’OPEL’ registered for vehicles and toys can prevent the distribution of model toy cars that are scale models of the original cars bearing the original car manufacturer’s trade mark on the relevant space.

In its decision, the ECJ held that the affixing by a third party of a sign identical to a trade mark registered for toys to scale models of vehicles cannot be prohibited under Article 5(1)(a) of the directive unless it affects or is liable to affect the functions of that trade mark (para.22). It is for the referring court to determine, by reference to the average consumer of toys in Germany, whether the use at issue in the main proceedings affects the functions of the Opel logo as a trade mark registered for toys (para. 25).

The German Federal Supreme Court takes the view that the German consumer will not perceive the sign ’OPEL’ as an indication of origin of the goods, but rather as a reproduction of a detail of the original car. Opel’s action is dismissed.

French case law has adopted a similar point of view (see notably Paris Court of Appeal, 31 October 2008, La Fondation Belem/Han).

4 ECTA News

ECTA UK Round Table

The third of ECTA’s series of Round Tables in different Member States, to give stakeholders in Member States a better understanding of the CTM system, the impact of OHIM’s activities and to learn from the experience of local practitioners, took place at the offices of Lovells in the City of London, on 26 February 2010. READ MORE

ECTA at 17th OAMI users group meeting

ECTA represented by Joao Pereira da Cruz, Chair of ECTA OHIM Link Committee and Anne-Laure Covin, ECTA Legal Co-ordinator will attend the 17th OAMI users group meeting in Alicante on 15 March 2010. The final agenda has been communicated by OHIM today. The attachments of the agenda will be posted on the OHIM Link Papers Section.

ECTA at WIPO sessions in April

ECTA represented by Jan Wrede, Member of ECTA Law Committee, will attend the twenty-third Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications which will take place at WIPO on 19-22 April 2010.

The agenda can be found at: http://www.wipo.int/edocs/mdocs/sct…

ECTA has also been invited to the first session of the Working Group on the review of Rule 3(4) to (6) of the Regulations Under the Singapore Treaty on the Law of Trademarks. The session will take place at WIPO on 22 (afternoon) - 23 April 2010.

The agenda can be found at: http://www.wipo.int/edocs/mdocs/stl…