ECTA - European Communities Trade Mark Association

Table of Contents

1. LAW

1.1 Trade Marks

• Study on the functioning of the European trade mark systems - Update

• OHIM Cooperation Fund – NGOs and ECTA letters

1.2 Enforcement

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

• Stakeholders’ consultation meeting on ACTA - DG TRADE

• Online consultation to ascertain the views of stakeholders on the EU legislation on customs enforcement of IPR – DG TAXUD

1.3 Domain Names

• ECTA AND MARQUES’ further comments to ICANN

2. OFFICE PRACTICE

2.1 OHIM

• New OHIM database for comparison of goods and services

• Proposed change on opposition suspensions and extensions

2.2 WIPO

• WIPO cybersquatting complaints decrease in 2009

• Global financial crisis’s impact on International trade mark filings in 2009

3. CASE LAW

General Court

T-427/07 MIRTO vs. Mirtillino (fig)
The trade marks are overall different

T-130/09 ELISE vs. eliza (fig)
The trade marks are visually, aurally and conceptually similar

T-423/08 UNIAGRO (fig) vs. HUNAGRO (fig)
The trade marks are visually, aurally and conceptually similar

T-364/08 NOLI vs. nollie (fig)
The goods are dissimilar

T-5/08 devices of a mug vs. Golden Eagle (fig), Golden Eagle Deluxe (fig)
There is a likelihood of confusion between the marks

Court of Justice

Joined cases C-236/08 to C-238/08 Google France SARL and Google Inc./ Louis Vuitton Malletier SA , Viaticum SA, Luteciel SARL, Centre national de recherche en relations humaines (CNRRH) SARL, Pierre-Alexis Thonet, Bruno Raboin, Tiger SARL
Reply in connection with the use of a trade mark in the paid referencing service called ‘AdWords’

Case C-287/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH / Günter Guni, trekking.at Reisen GmbH
Reply in connection with the use of a trade mark in the paid referencing service called ‘AdWords’

4. ECTA NEWS

• ECTA at OAMI users group meeting

• ECTA Benchmarking Round Table in Brussels

• ECTA at ITMA conference

• ECTA at WIPO sessions

1 Law

1.1 Trade Marks

Study on the functioning of the European trade mark systems - Update

An update on the status of the Study was given at the OAMI Users Group meeting held in Alicante on 15 March 2010 and also at the ECTA Benchmarking Round Table held in Brussels on 23 March 2010. An interim report was sent on 12 March 2010 by the Max Planck Institute to DG MARKT. The MPI collected views from stakeholders and interviewed OHIM and 16 NPTOs. 9 NPTOs were not interviewed (due to time constraints) and had to complete a questionnaire by end of March 2010. The interim report only indicates at this stage major elements of the contributions.

The representative of DG MARKT, Tómas Eichenberg, mentioned that an important number of NPTOs expressed that the CTM and national trade mark systems were not well balanced. Additionally, he indicated that the common position of the User Organisations is that further substantive law and procedural harmonisation is needed in order to have better harmonised pratices at the NPTOs. The aim of the Cooperation Fund should be to enable the establishment of common tools to help users to navigate through different systems. The NPTOs should make efforts to be faster and more efficient in delivering TM registrations. The Users organisations also seem concerned about the role of NPTOs regarding enforcement. Finally, most organisations have also agreed that the distribution of the 50% renewal fees should be the result of enhanced services provided by NPTOs and not on an automatic basis.

Regarding the Allensbach survey launched on 8 February 2010, the final report should be available on 12 May 2010.

The interim report was presented by the MPI at the Council Working Party meeting in Brussels on 25 March 2010. The aim of this meeting was to commence discussions and to receive feedback on what the most important areas are. It seems that the Spanish Presidency would like to have some general conclusions adopted on 25-26 May 2010 at the Competitiveness Council in order to give guidance to the Commission, especially in connection with possible legislative proposals. The Spanish Presidency is therefore currently working on a draft project which will be presented at the said meeting.

The final draft report of the Study is due on 12 August 2010 and the final report on 12 November 2010.

Regarding the Users hearing which will take place in Munich on 22 April 2010, the MPI sent a letter on 30 March 2010 to the Users associations (which can be found at the Law Commmittee - Position Paper section). Each association present at the hearing will have 10 minutes maximum to present its main ideas on the Study issues. ECTA will be represented by Fabio Angelini, Chair of ECTA Law Committee and Anne-Laure Covin, ECTA Legal Co-ordinator.
Thereafter, the hearing will continue with a selection of the following topics:
1) Further harmonisation of trade mark law (amendments of the Directive) including procedural law aspects;
2) Amendments of the CTMR:
-Adding a catalogue of sanctions (cf.Directive 48/2004/EC)
-Regulating use of a sign other than for purposes of distinguishing goods or services (cf. Art 5 (5) TMD);
3) Limitations of rights conferred, in particular genuine use of Community trade marks;
4) Wording of the lists of goods and services (“class headings”);
5) Fee structure;
6) Further questions addressed in OHIM’s contribution of 11 January 2010.

In connection with OHIM’s contribution, ECTA is currently working on comments to be sent to DG MARKT and the MPI prior to the hearing of 22 April 2010.

OHIM Cooperation Fund - NGOs and ECTA letters

Following the last extraordinary joint meeting of the OHIM Administrative Board and Budget Committee and Lord Mogg’s letter and annexes to the delegations and five NGOs, AIM, BUSINESSEUROPE, ECTA and INTA sent on 12 March 2010 a joint letter in connection with field 4, enforcement activities proposing a tool for electronic exchange of data between OHIM, NPTOs, IP Enforcement Authorities and right holders.

ECTA also sent on 15 March 2010 a letter containing some proposals and comments regarding field 3, information services.

ECTA, represented by Anne-Laure Covin, ECTA Legal Co-ordinator, will have the opportunity to hear Lord Mogg’s report and update at the next joint meeting of the OHIM Administrative Board and Budget Committee in Alicante on 13 April 2010. A report will be made available in the Flash.

1.2 Enforcement

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

The sixth meeting of the Sub-Group of experts on Legal Framework set up within the European Counterfeiting and Piracy Observatory took place on 18 March 2010 in Brussels. READ MORE

Stakeholders’ consultation meeting on ACTA - DG TRADE

On 22 March 2010, the ACTA (Anti-Counterfeiting Trade Agreement) stakeholder’s meeting took place at the European Commission. Although all Commission DGs involved in IP were presented at the hearing to answer questions from the public, the meeting was conducted by Luc Devigne of DG TRADE. READ MORE

Online consultation to ascertain the views of stakeholders on the EU legislation on customs enforcement of IPR – DG TAXUD

DG TAXUD launched on 25 March 2010 an online consultation to ascertain the views of stakeholders on the EU legislation on customs enforcement of IPR (Council Regulation (EC) No 1383/2003). It states that the Commission has carried out a review of the regulation in collaboration with the Member States and that after completion of the public consultation, "if considered appropriate, the European Commission will prepare a proposal for a Regulation of the Council and of the European Parliament concerning Customs Enforcement of Intellectual Property Rights. The proposal would replace Council Regulation (EC) No 1383/2003".

The deadline to send contributions to DG TAXUD is 25 May 2010. ECTA Anti-Counterfeiting Committee is currently working on a paper which will be submitted prior to the deadline.

Details on the consultation can be found at: http://ec.europa.eu/taxation_custom…

1.3 Domain Names

ECTA AND MARQUES’ further comments to ICANN

The ECTA Internet Committee and the MARQUES Cyberspace Committee continue their cooperation on matters related to domain names. They jointly submitted on 1 April 2010 four documents to ICANN in response to public consultations. Three of the documents relate to aspects of the new generic Top Level Domain (gTLD) programme, in particular the Uniform Rapid Suspension proposal (a mechanism for quickly dealing with abusive domain registrations), the Trademark Clearinghouse(a reference database for trademark rights) and the Post Delegation Dispute Resolution Process (for dealing with issues that arise with a new gTLD after it is launched). MARQUES and ECTA are both members of the Intellectual Property Constituency, one of several constituencies that represent broad interest groups. In the fourth document, Proposed Framework for the Fiscal Year 2011 Operating Plan and Budget, the committees call for funding from ICANN to these constituencies to assist with practical issues such as secretariat and travel costs.

2 Office Practice

2.1 OHIM

New OHIM database for comparison of goods and services

A new OHIM database, developed to help examiners be more consistent and efficient in making comparisons of goods and services in their decisions, is to be rolled out to the public later this year. The database started to be used internally in December 2009. The office is currently identifying improvements, in consultation with examiners and users, which will be incorporated in future releases. Public access to the system is planned for the middle of this year.

OHIM’s note presented at OAMI Users Group meeting on 15 March 2010 can be found at the Paper section of the OHIM Link Committee. ECTA will have the opportunity to further comment on this note at the OHIM Link Committee Meeting which will be held at OHIM on 19 April 2010.

Proposed change on opposition suspensions and extensions

OHIM is proposing a change in practice with regard to suspensions and extensions of time in opposition proceedings. If a suspension is requested by the opposition parties, the office proposes in future to grant it for a period of one year (instead of variable periods at present). Subsequent requests will be granted for the same period. During all suspensions any party will be able to opt out and bring the suspension to an end. With regard to extensions, it is proposed that any first request for an extension, which is received in time, will always be granted. However, any subsequent request for an extension of the same period of time will be refused, unless there is demonstrably a situation of force majeure for the party requesting the second extension.

OHIM’s note presented at OAMI Users Group meeting on 15 March 2010 can be found at the Paper section of the OHIM Link Committee. ECTA Law Committee is currently working on a position paper in this regard and will discuss this issue at the next OHIM Link Committee Meeting which will take place at OHIM on 19 April 2010.

2.2 WIPO

WIPO cybersquatting complaints decrease in 2009

WIPO’s dispute resolution services relating to Internet domain name cybersquatting cases handled 2,107 complaints from trade mark holders in 2009.While this represents a drop of 9.5% compared with 2008, the number of individual domain names involved in the cases was a record 4,688 for a single year. Since the UDRP’s launch in 1999, the WIPO Arbitration and Mediation Centre has received more than 17,000 cases covering 31,000 domain names.

The complete communication can be found at: http://www.wipo.int/pressroom/en/ar…

Global financial crisis’s impact on International trade mark filings in 2009

International trade mark filings under WIPO’s Madrid System for the International Registration of Marks (“the Madrid system”) dropped by 16% in 2009 as a result of the global economic downturn, though increases were observed among some major users of the system, notably the European Union (EU) (3.1%) and Japan (2.7%), as well as in the Republic of Korea (ROK) (+33.9%), Singapore (+20.5%), Croatia (+17.5%) and Hungary (+14.5%).

The complete WIPO communication can be found at: http://www.wipo.int/pressroom/en/ar…

3 Case Law

Summaries and case law provided by Darts IP

General Court

On relative grounds for refusal

Case T-427/07 of 19 March 2010, Mirto Corporacion Empresarial, SL / OHIM – Maglificio Barbara Srl (contested decision : R 875/2006-2 of 29 August 2007)

Trade marks:

MIRTO
Earlier trade mark	Community trade mark applied for

Class: 3

Decision: The trade marks are conceptually different (para. 48 to 60). Visually (para. 61 to 69) and aurally (para. 70 to 76), they are slightly similar. Overall, they are different (para. 77 to 79).

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Case T-130/09 of 24 March 2010, Eliza Corporation / OHIM – Went Computing Consultancy Group BV (contested decision: R 1244/2008-4 of 28 July 2008)

Trade marks:

ELISE
Earlier trade mark	Community trade mark applied for

Classes: 9, 37, 42

Decision: The trade marks are visually (para. 27 to 30) , aurally (para. 31 to 34) and conceptually (para. 35 to 40) similar. There is a likelihood of confusion (para. 42 to 43).

The Board of Appeal’s decision is upheld.

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Case T-423/08 of 24 March 2010, Inter-Nett 2000 kft / OHIM – Union de Agricultores, SA (contested decision : R 71/2008-2 of 22 July 2008)

Trade marks:

Earlier trade mark	Community trade mark applied for

Classes: 29, 31

Decision: The trade marks are visually (para. 36 to 40), aurally (para. 41 to 43) and conceptually (para. 44 to 48) similar (para. 44 to 48). Preserved, dried and cooked fruit and vegetables; jellies, jams and compote (class 29) are similar to fruit and garden herbs (class 31) (para. 26 to 31). There is a likelihood of confusion (para. 50 to 54).

The Board of Appeal’s decision is upheld.

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Case T-364/08 of 24 March 2010, 2nine Ltd / OHIM - Pacific Sunwear of California, Inc (contested decision: R 71591/2007-2 of 16 June 2008)

Trade marks:

NOLI
Earlier trade mark	Community trade mark applied for

Classes: 9, 14, 25, 26

Decision: « Sunglasses » (Class 9), « bracelets, rings, necklaces, watches, belly chains, chokers, earrings » (Class 14) , « barrettes, hair pins, hair clips, hair scrunchies » (Class 26) are dissimilar to « clothing, footwear, headgear » (Class 25) (para. 31 to 41).

The Board of Appeal’s decision is upheld.

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Case T-5/08 to T-7/08 of 25 March 2010, Société des Produits Nestlé / OHIM – Master beverage Industries Pte Ltd (contested decisions: R 563/2006-2, R-568/2006-2 and R-1312/2006-2 of 1 October 2007)

Trade marks:

Earlier trade marks	Community trade marks applied for

Class: 30

Decision: Given that the element consisting of the red mug and coffee beans cannot be regarded as entirely negligible in the overall impression created by the marks applied for, the comparison between the signs at issue cannot be limited to the elements of those marks which are of greater importance (para. 40 à 47). The trade marks are visually similar (para. 50 to 65) and some conceptual similarity between the marks at issue cannot therefore be ruled out (para. 68 to 73).

The Board of Appeal was wrong to find, in the contested decisions that the marks at issue were dissimilar. Since there is similarity, albeit slight, at the visual and conceptual levels, the Board of Appeal should have assessed the likelihood of confusion between the marks at issue (para. 74).

The Board of Appeal’s decision is annulled.

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Court of Justice

Preliminary ruling

Reference for a preliminary ruling from the French Supreme Court, 23 March 2010, Google France SARL and Google Inc./ Louis Vuitton Malletier SA , Viaticum SA, Luteciel SARL, Centre national de recherche en relations humaines (CNRRH) SARL, Pierre-Alexis Thonet, Bruno Raboin, Tiger SAR (joined cases C-236/08 and C-238/08)

The ECJ replies to questions referred by the French Supreme Court in connection with the use of a trade mark in the paid referencing service called ‘AdWords’

The ECJ’s reply reads as follows:

1. Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.

2. An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.

3. Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.

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Reference for a preliminary ruling from the Austrian Supreme Court, 25 March 2010, Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH / Günter Guni, trekking.at Reisen GmbH (Case C-287/08)

The ECJ replies to a question referred by the Austrian Supreme Court in connection with the use of a trade mark in the paid referencing service called ‘AdWords’.

The ECJ’s reply reads as follows:

Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with or similar to that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or by an undertaking which is economically connected to it or, on the contrary, originate from a third party.

4 ECTA News

ECTA at 17th OAMI users group meeting

ECTA represented by João Pereira da Cruz, Chair of ECTA OHIM Link Committee and Anne-Laure Covin, ECTA Legal Co-ordinator attended the 17th OAMI users group meeting in Alicante on 15 March 2010.

Besides the update on the Cooperation Fund and on the Study on the functionning of the European trade mark systems (ref to 1.1), many topics were discussed. Amongst them, OHIM presented some notes on the following matters:

• Update on cooperation activities;
• Suspensions and extensions of time in opposition proceedings: ECTA Law Committee is currently working on a position paper;
• Professional representation of non-EU applicants for CTM: ECTA Law and Professional Affairs Committees are currently working on a position paper;
• OHIM’s Database for Comparison of Goods and Services: ECTA Law Committee is currently working on some comments;
• Provision of written evidence: ECTA’s satisfaction was expressed with the note during the meeting.

Regarding possible comments (such as on the surplus, new competences, changes in the regulations) on the OHIM‘s communication sent to the Max Planck Institute in January 2010, Wubbo de Boer, OHIM President, suggested that the Users Associations send their comments and recommendations to DG MARKT and the MPI.

The agenda, the OHIM’s and Users’ notes can be found at the OHIM Link Committee, Papers section.

ECTA Benchmarking Round Table in Brussels

On 23 March 2010, ECTA arranged a Round Table titled "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". It was attended by some 40 representatives of national trade mark offices, trade mark attorneys and in house counsel from various EU member states. Among the lecturers were Lynne Beresford, Commissioner for Trademarks within the USPTO and Oliver Varheyli and Tómas Eichenberg, both from DG MARKT. The Round Table was opened by Annick Mottet Haugaard, ECTA First Vice President and chaired by Max Oker-Blom, Past President of ECTA and Adjunct Professor at the Hanken School of Economics. The discussions were lively and stimulating. The comments and responses from both the representatives of the Commission and the participants were very positive. A more comprehensive report will be published in the next Flash. All presentations, CVs and photographs of the speakers can be found on our website under the Events section.

ECTA at ITMA spring conference

ITMA’s Spring Conference, under the title of “The Magic of Trade Marks – the UK in Europe – Protecting your Assets”, took place in London from 24-26 March 2010, with ITMA President Gillian Deas in the chair. READ MORE

ECTA at WIPO sessions

ECTA represented by Jan Wrede, Member of ECTA Law Committee and João Pimenta, ECTA Member 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 and the following documents have been published at WIPO’s website (http://www.wipo.int/meetings/en/det…) :

• Grounds for Refusal of All Types of Marks;
• Technical and Procedural Aspects Relating to the Registration of Certification and Collective Marks;
• Draft Questionnaire Concerning the Protection of Names of States Against Registration and Use as Trademarks;
• Possible Areas of Convergence in Industrial Design Law and Practice;
• Non-Paper from the Delegation of the United Kingdom on Future Work on Harmonization of Designs Law.

ECTA, represented by João Pimenta, ECTA Member will also attend 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 and the working document can be found at: http://www.wipo.int/meetings/en/det…