ECTA’s 29th ANNUAL MEETING, 30th ECTA ANNIVERSARY
BARCELONA, 15-19 JUNE 2010
TRADE MARK AND DESIGN ARCHITECTURE - THE BUSINESS NEEDS


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You can visit the website www.ectabarcelona2010.com for further details on the Conference!

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EARLY BIRD REGISTRATION UNTIL 31 MARCH 2010
  • ECTA will hold a Benchmarking Round Table in Brussels on 23 March 2010 ”Europe vs the United States: Is there something the European Trade Mark System can learn from the United States after all ? – A Benchmarking Round Table on the Community Trade Mark"

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  • ECTA will hold, in collaboration with APRAM, OHIM and INPI, a Round Table in Paris on 30 April 2010 ”La marque communautaire et les marques nationales: sont-elles en harmonie? - Le point de vue français"

    Detailed programme and registration form will be available soon
  • Please make sure that your ECTA annual subscription has been paid. Payment online is available

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Table of content

1. LAW

1.1 EU Issues
  • New President for EPO
1.2 Trade Marks
  • Study on the European functioning of the trade mark systems - Hearing of User Associations
  • OHIM Cooperation Fund – Lord Mogg’s letter and annexes
1.3 Enforcement
  • Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy - DG MARKT
  • European Parliament resolution on the transparency and state of the ACTA negotiations
  • Stakeholders’ consultation meeting on ACTA
1.4 Domain Names
  • Update on gTLD consultations

2. OFFICE PRACTICE

2.1 OHIM
  • Warning about unsolicited renewal demands

3. CASE LAW

General Court

T-564/08 SUDOKU SAMURAI BINGO
The trade mark is descriptive

T- 77/09 NATURE WATCH
The trade mark is descriptive

T- 15/09 EURO AUTOMATIC CASH
The Board of Appeal has not respected the rule according to which the competent authority is required to give reasons in relation to each of the individual goods and services when refusing an application

T- 31/09 LE GOMMAGE DES FACADES
The trade mark is descriptive

T-24/08 3d mark (shape of a bottle) vs 3d mark (shape of a bottle)
There is no likelihood of confusion between the marks

T-477/08 AVANZ vs. AVANZALENE
The trade marks are visually and phonetically similar. There is a likelihood of confusion

T- 321/07 AirPlus International vs device mark A+
Overall, the trade marks are dissimilar

4. ECTA NEWS

  • ECTA at OAMI users group meeting
  • ECTA at WIPO sessions

1 Law

1.1 EU Issues

New President for EPO

On 1 March 2010, the Administrative Board of the European Patent Office elected the new President-elect of the EPO, Benoit Battistelli who will take up his new position on 1 July 2010 to replace the current President Alison Brimelow. His mandate will last 5 years. Benoit Battistelli is the current head of the French National Intellectual Property Institute, INPI. His successor has not yet been appointed.

1.2 Trade Marks

Study on the European functioning of the trade mark systems - Hearing of User Associations

As mentioned in the Flash 04-10, the Max Planck Institute invited User Associations to a hearing on 22 April 2010 in Munich. Each Association can be represented by maximum two persons. ECTA will be represented by Fabio Angelini, Chair of ECTA Law Committee and Anne-Laure Covin, ECTA Legal Co-ordinator. The MPI will provide participants with further information on the hearing and topics by the end of March.

OHIM Cooperation Fund – Lord Mogg’s letter and annexes

Following the last extraordinary joint meeting of the OHIM Administrative Board and Budget Committee (see Flash 05-10), Lord Mogg sent a letter and annexes (Annex 1, Annex 2 & Annex 3) to the delegations and five NGOs. It has to be underlined that there is a new deadline of 19 March 2010 to submit additional suggestions for Field 1, Category 2 (new candidates), Field 3 (information services) and Field 4 (enforcement activities). Peter Müller, Chair of ECTA Professional Affairs Committee and Marius Schneider, Chair of ECTA Anti-Counterfeiting Committee, are currently working with their members on possible additional specifications relating to projects already submitted by the indicated deadline.

1.3 Enforcement

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

The Fifth meeting of the Legal Sub-Group of the Observatory on Legal Framework set up within the European Counterfeiting and Piracy Observatory took place on 26 February 2010 in Brussels. READ MORE

ECTA, represented by Olivier Vrins, Member of ECTA Anti-Counterfeiting Committee will attend the sixth meeting of the Legal Sub-Group which will take place on 19 March 2010 in Brussels. A report will be published in the next Flash.

European Parliament resolution on the transparency and state of the ACTA negotiations

The European Parliament adopted on 10 March 2010 at its plenary session a resolution on the transparency and state of play of the ACTA negotiations by 633 votes in favour, 13 against and 16 abstentions. The Parliament is concerned about the lack of transparency in the ACTA negotiations. It calls on the Commission and the Council to grant public and parliamentary access to the ACTA negotiation texts. It also underlines, unless it is immediately and fully informed at all stages of the negotiations, that it could take suitable action, including bringing a case before the Court of Justice to safeguard its prerogatives.

The press release is also available at: http://www.europarl.europa.eu/news/…

Stakeholders’ consultation meeting on ACTA

DG Trade has announced that there will be a stakeholder’s consultation meeting in Brussels on 22 March 2010 to inform and consult interested parties about the negotiation of the Anti-Counterfeiting Trade Agreement (ACTA). Marius Schneider, Chair of ECTA Anti-counterfeiting Committee, will represent ECTA at this meeting and a report will be available in the next flash.

Information from DG Trade can be found at: http://ec.europa.eu/trade/creating-…

1.4 Domain Names

Update on gTLD consultations

Following the last ICANN’s consultations ( comments on expressions of interest - http://forum.icann.org/lists/draft-… and comments on Special Trademark Interests report - http://forum.icann.org/lists/sti-re… , see Flash 03-10 and 04-10), ICANN has issued further documents for comments, all with a response deadline of 1 April 2010:

Whilst all have potential relevance to brand owners, the ECTA Internet Committee and MARQUES will be focussing their efforts on the Trademark Clearinghouse documents and, time permitting, may then consider the other two documents.

The ICANN meeting in Nairobi ran from 7-12 March 2010, and much of the content is available on the dedicated website at http://nbo.icann.org/.

The next ICANN meeting will take place in Brussels from 20-25 June 2010 and this will be very important for the new gTLD programme. ECTA will of course attend this meeting.

2 Office Practice

2.1 OHIM

Warning about unsolicited renewal demands

OHIM users have been complaining about receiving unsolicited approaches from unofficial registers or agents asking for money to renew Community trade marks. Some trade mark owners have paid much more than the standard renewal fees - often double the amount - under the false impression that the "renewal letter" had been sent by, or on behalf of, OHIM. The Office recommends the Users to check carefully the source of any request for payment, to consult their legal representatives and to visit OHIM’s website at http://oami.europa.eu/ows/rw/pages/….

3 Case Law

with the support of Darts IP

General Court

On absolute grounds for refusal

Case: T-564/08 of 4 March 2010, Monoscoop BV / OHIM
(contested decision: R 816/2008-2 of 30 September 2008)

Trade mark:

SUDOKU SAMURAI BINGO

Classes: 9, 28, 41

Decision: The trade mark is descriptive. Viewed as a whole, the trade mark could refer to a game which combines the characteristics of sudoku, a number puzzle, and those of bingo, a game in which the player has to fill a grid with numbers drawn at random.

The Board of Appeal’s decision is upheld.

Case: T-77/09 of 9 March 2010, hofherr communication GmbH / OHIM
(contested decision: R 1410/2008-1 of 4 December 2008)

Trade mark:

NATURE WATCH

Classes: 41, 43

Decision: The meaning of the expression ‘nature watch’ is the act of watching, keeping awake and being vigilant for the purpose, inter alia, of observing nature (para. 24).

There is a sufficiently direct and specific relationship from the point of view of the relevant public between the trade mark applied for and all the services referred to in the application for registration. Consequently, the trade mark is descriptive (para. 31 to 39).

The Board of Appeal’s decision is upheld.

Case: T-15/09 of 9 March 2010, Européenne de traitement de l’information (Euro-Information / OHIM
(contested decision: R 70/2006-4 of 18 November 2008 )

Trade mark:

EURO AUTOMATIC CASH

Classes: 9, 35, 36, 37, 38, 42

Decision: The Board of Appeal has violated the rule according to which when refusing registration of a trade mark, the competent authority is required to state in its decision its conclusion for each of the individual goods and services specified in the application for registration, regardless of the manner in which that application was formulated (para. 42 to 44).

The Board of Appeal’s decision is annulled.

Case: T-31/09 of 10 March 2010, Baid SARL / OHIM
(contested decision: R 963/2008-1 of 30 October 2008)

Trade mark:

LE GOMMAGE DES FACADES

Classes: 3, 19, 379, 35, 36, 37, 38, 42

Decision: The trade mark is descriptive. Given the meaning of the term ’gommage’ (a masonry cleaning process) together with the term ’façade’, the trade mark is perfectly capable of describing the purpose of the goods and services in question. The relevant public will thus immediately understand the purpose or function of the products for cleaning and renovating buildings, of non-metallic scaffolding and of the provision of services to clean the exteriors of buildings. The trade mark enables the public concerned immediately and without further reflection to ascertain that these goods and services are intended for the cleaning of façades (para 33).

The Board of Appeal’s decision is upheld.

On relative grounds for refusal

Case: T-24/08 of 4 March 2010, Weldebräu GmbH & Co. KG / OHIM – KOpola Holding A/S
(contested decision : R-1096/2006-4 of 15 November 2009 )

Trade marks:

Earlier trade mark Community trade mark applied for

Classes: 30, 32 33

Decision: There is only a low degree of visual similarity between the signs at issue (para. 29).

Since the signs at issue have significant differences and the applicant has not demonstrated in what way the earlier mark is highly distinctive, the mere fact that the two bottles have a helically formed neck does not lead to the conclusion that there is a likelihood of confusion between the marks at issue, despite the fact that the goods at issue are identical (para. 32).

The Board of Appeal’s decision is upheld.

Case: T-477/08 of 4 March 2009, Mundipharma AG / OHIM - ALK-Abello A/S
(contested decision: R 1694/2007-4 of 28 August 2008)

Trade marks:

AVANZ AVANZALENE
Earlier trade mark Community trade mark applied for

Class: 5

Decision: The trade marks are visually (para. 33 and 34 ) and phonetically (para. 35 and 36 ) similar. There is a likelihood of confusion (para. 39 to 45).

The Board of Appeal’s decision is upheld

Case: T-321/07 of 4 March 2010, Lufthansa AirPlus Servicekarten / OHIM - Applus Servicios Tecnológicos
(contested decision: R 310/2006-2 of 7 June 2007)

Trade marks:

AirPlus International
Earlier trade mark Community trade mark applied for

Classes: 9, 35, 36, 37 ,40 ,41, 42.

Decision: The trade marks are visually (para.32 to 35) and aurally (para.36 to 39) different. There is a low degree of conceptual similarity since they contain the concept “ plus “. However, that concept occurs in many trade marks and is part of the promotional vocabulary that any undertaking is entitled to use (para. 40 to 41). Overall, the trade marks are dissimilar (para. 43).

The Board of Appeal’s decision is upheld.

4 ECTA News

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, attended the 17th OAMI users group meeting in Alicante on 15 March 2010. The final agenda and documents can be found at the OHIM Link Committee Papers section. The report of the meeting will be soon available.

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…