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


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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.

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Table of Contents

1 LAW
1.1 General Court
2 OFFICE PRACTICE
2.1 Italy
2.2 OHIM
  • Alicante News
2.3 WIPO
  • Domain Names
  • Trade Marks
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-565/10 Highprotect
The trade mark is descriptive

T-417/10 (fig)
The trade mark is contrary to public policy or to accepted principles of morality

T-77/10 and T-78/10 L114 vs. L112
There is a likelihood of confusion

T-525/10 SERVUS vs. SERVO SUO
There is a likelihood of confusion

T-32/10 ELLE vs. ELLA VALLEY VINEYARDS
The Board of Appeal’s decision is annulled

T-207/11 EyeSense vs. ISENSE
The trade marks are different

T-298/10 BIODANZA vs. (fig)
Death of the proprietor of an CTM application – Genuine use

4 ECTA NEWS
  • ECTA Geographical Indications Round Table, Alicante, 16 February 2012
  • ACTA- Recent developments
  • Sisters Associations - Joint Meeting in Munich
  • WIPO - ECTA Annual Meeting
  • OAMI Users Group

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


1 Law

1.1 General Court

1. Amendments to the Instructions to the Register of the General Court has been published in the Official Journal L 68/20 dated 7 March 2012.

The document can be found HERE.

2. Practice directions to the parties before the General Court has been published in the Official Journal L 68/20 dated 7 March 2012.

The document can be found HERE.

A corrigenda can be found HERE.

2 Office Practice

2.1 Italy

The Italian National Office (UIBM) is now using the completely validated Italian translations of the Harmonized database as their accepted list of Goods and Services. This is a step forward in the OHIM harmonization project.

OHIM’s communication can be found HERE

2.2 OHIM

Alicante News

The OHIM has published Alicante News 02-2012.

The Alicante News includes the following:

  • Enhancing the quality of the opposition proceedings
  • Commissioner Barnier praises OHIM
  • Observatory transfer agreed by European Parliament
  • EuroClass expansion
  • Winners named in “HandsOffMyDesign” Competition
  • ECTA meet with OHIM
  • New Website Survey
  • Luxembourg trade mark and design news
  • Standard Case Law review

2.3 WIPO

Domain Names

WIPO prepares for launch of New gTLDs while Cybersquatting cases continued to rise.

WIPO’s press communication in this regards can be found HERE.


Trade Marks

WIPO has a record of International Trade Mark filings in 2011.

Indeed 2011 saw the highest number of International trade mark applications ever filed under WIPO’s Madrid System with 42,270 applications, or a 6.5 % increase compared to 2010. Applications from the member states of the European Union (EU) accounted for more than half (57.4%) of all international trade mark applications, and China remained the most designated country for trade mark protection.

WIPO’s press communication in this regards can be found HERE

3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-565/10 of 6 March 2012, ThysenKrupp Steel Europe AG vs. OHIM (contested decision: R 1038/2010-1 of 30 September 2010)

Trade mark applied for:
Highprotect

Class: 6

Decision: The trade mark is descriptive. The trade mark will be perceived as indicating that the goods concerned have a high level of protection against corrosion or wear or offer such protection (para. 17).

The Board of Appeal’s decision is upheld.


Case T-417/10 of 9 March 2012, Federico Cortes del Valle Lopez vs. OHIM (contested decision: R 175/2010-2 of 18 June 2010)

Trade mark applied for:


Classes: 33,35,39

Decision: The trade mark is contrary to public policy or to accepted principles of morality.

The term ’hijoputa’ has the same meaning as ’hijo de puta’, which means ’son of a bitch’ in Spanish. The Spanish public will find the mark in question highly offensive and profoundly indecent (para 17).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Cases T-77/10 and T-78/10 of 29 February 2012, Certmedica International GmbH vs. OHIM – Lehning entreprise (contested decision: R 934/2009-2 of 9 December 2009)

Trade marks:

L112 L114
Earlier trade mark Trade mark applied for

Class: 5

Decision:
1. The opponent has succeeded in proving genuine use of its trade mark in respect of ‘pharmaceutical products for the treatment of digestive maladies’ (para. 37 to 64).
2. Food supplements for medical purposes are similar to pharmaceutical products for the treatment of digestive maladies (para. 93 to 94). Sanitary preparations and dietetic foodstuffs concentrates with a shellfish base (including chitosan)’ are not similar to ‘pharmaceutical products for the treatment of digestive maladies (para. 122 to 136).

3. The trade marks are visually (para.100 to 101) and aurally (para. 102) similar. There is a likelihood of confusion in respect to the goods that are deemed similar (para. 108).

The Board of Appeal’s decision is upheld.


Case T-525/10 of 29 February 2012, Azienda Agricola Colsaliz di Faganello Antonio vs. OHIM – Weinkellerei Lenz Moser AG (contested decision: R 1571/2009-2 of 16 August 2010)

Trade marks:

SERVUS SERVO SUO
Earlier trade mark Trade mark applied for

Class: 33

Decision: The trade marks are visually (para.35 to 44), aurally (para. 45 to 52) and conceptually (para. 53 to 60) similar. There is a likelihood of confusion (para.65).

The Board of Appeal’s decision is upheld.


Case T-32/10 of 9 March 2012, Ella Valley Vineyards (Adulam) Ltd vs. OHIM – Hachette Filipacchi Presse (HFP) (contested decision: R 1293/2008-1 of 11 November 2009)

Trade marks:

Earlier trade mark Trade mark applied for

Classes: 16,33

Decision:
1. On account of the success of “Elle magazine”, the earlier mark is well known in the periodical and book sectors in the European Union, or at least in a substantial part of it (para. 32).

2.The trade marks are visually (para. 50 to 51), aurally (para. 52) and conceptually (para.53) different. In the light of the differences existing between the signs at issue and notwithstanding the reputation of the earlier mark, there is no likelihood that the public might establish a link between the trade marks within the meaning of art. 8(5) CTMR (para. 56).

The Board of Appeal’s decision is annulled.


Case T-207/11 of 9 March 2012, EyeSense AG vs. OHIM – Osypka Medical GmbH (contested decision: R 1098/2010-4 of 4 February 2011)

Trade marks:

EyeSense ISENSE
Earlier trade mark Trade mark applied for

Classes: 9,10,42

Decision: The pertinent public is composed of specialised German consumers (para. 17). The trade marks are visually (para.32) and aurally (para. 33) different.

The Board of Appeal’s decision is upheld.


Case T-298/10 of 8 March 2012, Christina Arrieta D. Gross vs. OHIM – Rolando Mario Toro Araneda (contested decision: R 1149/2009-2 of 13 April 2010)

Trade marks:

BIODANZA
Earlier trade mark Trade mark applied for

Classes: 16,41,44

Decision:
1. In the event of the death of the proprietor of an application to register a
Community trade mark, that application is transferred to another person, to be determined according to the provisions of the law of succession of the Member State referred to in Article 16(1) of Regulation No 207/2009 (para. 39). In order to ensure the efficient conduct of the proceedings before OHIM, it is for the new proprietor of such an application to register its transfer with OHIM. However, regardless of the moment when that registration takes place, the new proprietor of the application for registration must be considered as having acquired that status from the moment of death of the initial applicant (para.40).
2. The opponent has not succeeded in proving genuine use of its trade mark (para. 60 to 83).

Neither Article 42 nor any other provision of Regulation No 207/2009 expressly provides that the application seeking proof of genuine use shall be refused in the event of bad faith on the part of the party making the application. Nor can such a rule be implied from the applicable provisions (para.85).

The Board of Appeal’s decision is upheld.

4 ECTA News

ECTA Geographical Indications Round Table, Alicante, 16 February 2012

The detailed report of the meeting drafted by Mrs Edith Van den Eede can be found HERE.


ACTA - Recent developments

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

ECTA has participated in an updated joint letter in support of ACTA with a list of 119 signatories. The letter was sent in connection with the Council meeting of 16 March 2012, and besides the Ministers of the EU Council the following bodies received a copy thereof : the Danish Presidency and the Council members, the Permanent Representations of all the EU Member States and the Trade Ministers, De Gucht’s Cabinet and concerned Services at the EU Commission.


Sisters Associations - Joint Meeting

The Sisters Associations Meeting took place in Munich (Germany) on 9 March 2012 .
ECTA was represented by Max Oker-Blom (ECTA Secretary General), F. Peter Müller (ECTA Second Vice-President) and Ewa Grabiak (ECTA Legal Coordinator).

The report of the meeting can be found HERE.


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