BARCELONA, 15-19 JUNE 2010
TRADE MARK AND DESIGN ARCHITECTURE - THE BUSINESS NEEDS
View the brochure
Quick menu
Table of Contents
1. LAW
1.1 Trade Marks
- Draft Council Conclusions on the Study
- New date for the Max Planck Institute’s Hearing of the Users Organisations - 8 June 2010 in Munich
1.2 Enforcement
- 8th round of ACTA negotiations on 12-16 April 2010 in New Zealand - Consolidated text – DG TRADE
- Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy on 11 May 2010 in Brussels - DG MARKT
- First plenary meeting of the European Observatory on Counterfeiting and Piracy on 10 June 2010 in Madrid – DG MARKT
- New simplified procedure for dealing with counterfeit goods detained by the UK Border Agency as from 16 April 2010
- Operation Spring Cleaning in the USA
1.3 Designs
- Hague Agreement- Change in the amounts of individual fee for the EU
- Hague Agreement- Norway’s accession to the 1999 Act
1.4 EU-China IP Dialogue
- Outcome of the 6th EU-China IP Dialogue of 8 and 9 April 2010 in Beijing – DG TRADE
1.5 Security interests in IP
- 43rd session of the UNCITRAL - 21 June-9 July 2010 in New York
- Possible comments on the draft Supplement to the UNCITRAL Legislative Guide on Secured Transactions to the UN Commission by 21 May 2010
2. OFFICE PRACTICE
2.1 OHIM
- OHIM E-business Group Meeting on 10-11 May 2010
- Decision naming members of the Boards of Appeals
- Cooperation agreements with China
- OHIM Annual Report 2009
- New version of opposition form
2.2 WIPO
- World Intellectual Property Day 2010 – Innovation - Linking the World
- WIPO new logo
3. CASE LAW
General Court
T- 187/08 Drawing of a dog
Application for restitutio in integrum rejected
T-7/09 Representation of a part of a drill chuck
The sign is not distinctive and has not become distinctive through use
T-109/08 Shape of a bottle
The sign is not distinctive and has not become distinctive through use
T-110/08 Shape of a bottle
The sign is not distinctive and has not become distinctive through use
T- 361/08 Representations of peacocks
The visual and aural differences found are such as to neutralise the weak conceptual similarity
T- 249/08 COIN (fig) vs Fitcoin
BOA should have taken into account all the earlier rights (not only the Italian earlier marks) to find no likelihood of confusion
T- 392/06 UniFLEXIO, UniVARIO, UniZERO vs unibanco (fig)
The opponent has failed to prove the use of a series of ‘Uni-marks “
Joined cases T- 303/06 - T-337/06 UNIFONDS, UNIRAK, UNIZINS (fig) vs. UNIWEB, UniCredit Wealth Management
Despite the fact that the earlier trade marks have been put to genuine use and despite the presence of the prefix “ uni “ common to all the trade marks in the series and to the trade marks applied for, the evidence submitted to the OHIM does not demonstrate the ability of this prefix, alone or combined with other elements, to associate the trade marks applied for with the series of earlier trade marks
T-225/09 CLARO vs Claro (fig)
The Appeal is inadmissible as applicant failed to file a written statement setting out the grounds of appeal within four months after the date of notification of the decision
4. ECTA NEWS
- ECTA OHIM Link Committee meeting in Alicante cancelled
- ECTA at WIPO sessions
- ECTA - WIPO meeting in Geneva
- ECTA Round Table in Paris
1 Law
1.1 Trade Marks
Draft Council Conclusions on the Study
After the meeting of 15 April, where an amended draft of the Spanish Presidency’s Council Conclusions on the future revision of the Trade Mark system in the EU was presented (see Flash 08-10, another Council Working Party meeting took place in Brussels on 28 April 2010. During this meeting, another amended draft was presented. It appears that this last version has obtained support from the majority of the delegations. A new amended draft (which might only contain slight changes) should be circulated in the coming days. This draft will be discussed at the meeting on 6 May in Brussels where permanent representatives will be present. The COREPER will meet on 12 May to adopt the final version which will be presented at the Competitiveness Council meeting on 25-26 May 2010.
The 5 NGO observers (AIM, BUSINESSEUROPE, ECTA, INTA and MARQUES) before the OHIM Administrative Board and Budget Committee could not take part in the Council Working Party meetings as these were exclusively reserved to delegations, the Commission and OHIM. They have therefore had no means to collaborate in the discussion process of the final draft which will be submitted before COREPER. However, the 5 NGOs want to raise their voice as they have some concerns. They are currently working on a possible joint statement which, if a common consensus is found, should be sent to the delegations, the Commission and OHIM prior to the 6 May meeting.
New date for the Max Planck Institute’s Hearing of the Users Organisations -
8 June 2010 in Munich
Due to the problems with air travel transportations, the Max Planck Institute hearing of the Users Organisations foreseen on 22 April 2010 was cancelled. The meeting will now take place on 8 June 2010 at the MPI in Munich. The agenda remains the same (see Flash 07-10).
ECTA will be presented by Fabio Angelini, Chair of ECTA Law Committee and Anne-Laure Covin, ECTA Legal Co-ordinator.
1.2 Enforcement
8th round of ACTA negotiations on 12-16 April in New Zealand - Consolidated text – DG TRADE
The 8th round of ACTA negotiations took place in Wellington, New Zealand from 12-16 April 2010. Due to the EU influence, the new consolidated text was made public for the first time. This text ensures that ACTA is in full line with the current EU legislation and that no modification of substantive intellectual property law in the EU will be necessary. It also ensures that large-scale infringements of IP rights with significant economic impact will be addressed and that the concerns raised by some parties are unfounded (e.g. limitation of civil liberties, harassment of consumers, access to generic medicines,etc.).
DG TRADE welcomed in its press release on 21 April 2010 the results of this 8th round.
Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy on 11 May 2010 in Brussels- DG MARKT
The seventh meeting of the Sub-Group of experts on Legal Framework set up within the European Counterfeiting and Piracy Observatory (formally planned on 21 April 2010) will take place on 11 May 2010 in Brussels. ECTA will be represented by Olivier Vrins, Member of the ECTA Anti-Counterfeiting Committee. A report will be published in the next Flash.
First plenary meeting of the European Observatory on Counterfeiting and Piracy on 10 June in Madrid – DG MARKT
The first plenary meeting for both the Member States and private sector representatives of the European Observatory on Counterfeiting and Piracy will take place on 10 June 2010 in Madrid.The agenda has not yet been finalised. ECTA, represented by Ann-Charlotte Söderlund, Member of the Anti-Counterfeiting Committee, will attend this meeting.
New simplified procedure for dealing with counterfeit goods detained by the UK Border Agency as from 16 April 2010
The United Kingdom has finally implemented a change in its laws to give full effect to Article 11 of the ‘Customs’ Regulation (EC 1383/2003), which provides for a ‘simplified procedure’ for dealing with the detention and destruction of consignments of counterfeit and pirated goods destined for the EU. READ MORE
Operation Spring Cleaning in the USA
On 26 April 2010, the federal partners of the U.S. National Intellectual Property Rights Coordination Center (“IPR Center”) announced that more than 3 million worth of counterfeit and pirated merchandise was seized by law enforcement around the country in the month of April. READ MORE
1.3 Designs
Hague Agreement- Change in the amounts of individual fee for the EU
In the framework of the Acts of the Hague Agreement of 1960 and 1999, new amounts for individual fee with any international application in which the European Union is designated and in connection with the renewal of an international registration designating the European Union will take place from 1 June 2010.
The complete communication can ve found at: http://www.wipo.int/edocs/hagdocs/e…
Hague Agreement- Norway’s accession to the 1999 Act
On 17 March 2010, Norway deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement concerning the International Registration of Industrial Designs. The 1999 Act and the declarations thereunder will enter into force in respect of Norway on 17 June 2010.
The complete communication can be found at: http://www.wipo.int/edocs/hagdocs/e…
1.4 EU-China IP Dialogue
Outcome of the 6th EU-China IP Dialogue of 8 and 9 April 2010 in Beijing – DG TRADE
On 8 and 9 April 2010 in Beijing, the EU and China held the sixth session of their Dialogue in IPR matters. The session was co-chaired by the European Commission (DG Trade) and the Chinese Ministry of Commerce (MOFCOM). READ MORE
1.5 Security interests in IP
43rd session of the UNCITRAL 21 June-9 July 2010
ECTA, represented by Sandrine Peters, Member of ECTA Law Commitee, will attend some days of the 43rd session of the United Nations Commission on International Trade Law (UNCITRAL) which will be held from 21 June to 9 July 2010 at the United Nations Headquarters in New York.
A note containing the provisional agenda of the session with annotations is available under: http://www.uncitral.org/uncitral/en….
Possible comments on the draft Supplement to the UNCITRAL Legislative Guide on Secured Transactions to the UN Commission prior to 21 May 2010
In accordance with the mandate given to UNCITRAL Working Group VI (Security Interests) by the Commission at its fortieth session, in 2007 to develop a draft Supplement to the UNCITRAL Legislative Guide on Secured Transactions dealing with security rights in intellectual property and with the Commission’s decision for the Working Group to expedite its work and submit the draft Supplement to the Commission at its forty-third session, to be held in New York from 21 June to 9 July 2010, for finalization and adoption, the Working Group, at its seventeenth session (New York, 8-12 February 2010), adopted the draft Supplement, submitted it to the Commission for finalization and adoption, and requested the Secretariat to make it available to Member States and international organizations for comment. (See Flash 05-10)
The text of the draft Supplement, as it resulted from its fourth reading by the Working Group is in the documents A/CN.9/700 and Addenda 1 2, 3, 4, 5, 6 and 7.
The observers such as ECTA are invited to make specific and succinct comments to the Commission by 21 May 2010.
For further information, please refer to the UNCITRAL website at: http://www.uncitral.org/uncitral/en…
2 Office Practice
2.1 OHIM
OHIM E-business Group Meeting on 10-11 May 2010
The E-business Users Group Meeting will take place on 10 and 11 May 2010 at OHIM. During this meeting, the future of MyPage services will be discussed. ECTA will be presented by Jordi Güell, ECTA Member. The agenda has not yet been communicated.
Decision naming members of the Boards of Appeals
The Administrative Board in its decision CA-10-20 has established on 12 April 2010 a reserve list of 10 people to be members of the Board of Appeals. There are 6 vacancies arising in the next years.
The decision can be found at: http://oami.europa.eu/ows/rw/resour…
Cooperation agreements with China
A new cooperation framework has been agreed with the Chinese authorities following a successful mission to China led by OHIM President Wubbo de Boer. Following meetings with Vice Minister Fu Shuangjian (State Administration for Industry and Commerce, SAIC) and Commissioner Tian Lipu (State IP Office, SIPO) on 29 April, new agreements were reached on a series of actions to be carried out under the EU-China IPR2 project and under bilateral agreements.
The complete communication can be found at: http://oami.europa.eu/ows/rw/news/i…
OHIM Annual Report 2009
OHIM’s Annual Report, covering the main activities of the office during 2009 in multimedia format is now available at http://oami.europa.eu/en/Annual_Rep…
New version of opposition form
OHIM has changed the opposition paper form to allow opponents to indicate whether their opposition is directed against a Community trade mark application or an International Registration. The downloadable forms can be found at: http://oami.europa.eu/ows/rw/pages/…
2.2 WIPO
World Intellectual Property Day 2010 – Innovation - Linking the World
This year’s World Intellectual Property Day took place on 26 April 2010, this date also marks WIPO’s 40th anniversary and focuses on how innovation technologies have created an interlinked and global society. World Intellectual Property Day is an annual event around which WIPO’s member states organize a range of activities to raise public awareness about the role of intellectual property (IP) in daily life, and to celebrate the invaluable contributions made by innovators and creators across the globe.
The complete communication can be found at: http://www.wipo.int/pressroom/en/ar…
WIPO new logo
WIPO unveiled its new logo on 26 April 2010 – a date which marks the 40th anniversary of the entry into force of the WIPO Convention and the 10th anniversary of World Intellectual Property Day. The new logo forms the cornerstone of a new visual identity for the Organization, in line with the new directions being taken to keep pace with the rapid evolution of intellectual property in the 21st century.
The complete communication and logo 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 absolute grounds for refusal
Case: T-187/08 of 20 April 2010, Rodd & Gunn Australia Ltd /OHIM (contested decision: R 1245/2007-4 of 12 March 2008)
Trade mark:
Classes: 16, 18, 25
Decision: Taking account of all the evidence produced before OHIM, it must be held that the failure to renew the mark did not result from exceptional circumstances but from a more general lack of vigilance on the part of CPA (para. 31). In those circumstances, the Board of Appeal did not err in rejecting the application for restitutio in integrum (para. 32).
The Board of Appeal’s decision is upheld.
Case: T-7/09 of 21 April 2010, Schunk GmbH & Co. KG Spann- und Greiftechnik / OHIM (contested decision: R 1109/2007-1 of 31 October 2008)
Trade mark:
Classes: 7, 8
Decision: It is common practice in the sector in question to make one or several grooves on clamping chucks. Hence, the figurative trade mark applied for does not diverge from the practices in the sector and does not enable the consumer to identify the product as originating from a particular undertaking (para. 29 to 33).
The applicant has failed to demonstrate that the sign has become distinctive through use (par. 44 to 48).
The Board of Appeal’s decision is upheld.
Case T-109/08 of 27 April 2010, Freixenet /OHIM (contested decision: R 97/2001-1 of 30 October 2007)
Trade mark:
Class: 33
Decision: The trade mark applied for consists of the appearance of a bottle with two characteristics, namely a frosted surface and the golden colour. It is devoid of distinctive character since the colour and matt finish of the bottle do not enable the relevant public to determine the origin of the goods, in this case sparkling wine (para. 68-85).
The applicant has failed to demonstrate that the trade mark has become distinctive through use (para. 100 to 124).
The Board of Appeal’s decision is upheld.
Case T-110/08 of 27 April 2010, Freixenet / OHIM (contested decision: R 104/2001-1 of 20 November 2007)
Trade mark:
Class: 33
Decision: The trade mark applied for consists of the appearance of a bottle with two characteristics, namely a matt finish and the colour black. It is devoid of distinctive character since the colour and matt finish of the bottle do not enable the relevant public to determine the origin of the goods, in this case sparkling wine (para. 67-84).
The applicant has failed to demonstrate that the trade mark has become distinctive through use (para. 99 to 120).
The Board of Appeal’s decision is upheld.
On relative grounds for refusal
Case: T-361/08 of 20 April 2010, Peek & Cloppenburg and van Graaf GmbH & Co. KG / OHIM - The Queen Sirikit Institute of Sericulture (contested decision: R 1677/2007-4 of 10 June 2008)
Trade marks:
 |
 |
| Earlier trade mark | Community trade mark applied for |
Classes: 24, 25
Decision: The trade marks are visually (para. 55 to 57) and aurally (para. 58 to 60) different. It cannot be ruled out that part of the relevant public may recognise a peacock in the two figurative elements, which could thus indicate a certain conceptual similarity between the signs at issue (para. 62). However, such conceptual similarity must be regarded as weak because the signs indirectly suggest or transmit to the relevant public the same conceptual content (para. 64). The visual and aural differences found are such as to neutralise the weak conceptual similarity (para. 73).
The Board of Appeal’s decision is upheld.
Case: T-249/08 of 21 April 2010, Coin SpA / OHIM – Dynamiki Zoi AE (contested decision: R 1429/2007-1 of 15 April 2008)
Trade marks:
 |
Fitcoin |
| Earlier trade mark | Community trade mark applied for |
Classes: 16, 25, 28, 35, 36, 41
Decision: The existence of a likelihood of confusion must be assessed on the part of the public in the territory in which the earlier mark is protected. It follows that, in order to reject an opposition, it is necessary to establish that there is no likelihood of confusion on the part of the public throughout the territory in which the earlier mark/marks is/are protected (para. 24) .
By taking into account only of earlier Italian marks and by finding that there was no likelihood of confusion on that basis alone, even though the applicant had, in support of its opposition, also invoked earlier trade marks enjoying protection outside Italy and covering goods and services which are essentially identical to those covered by the earlier Italian marks, the Board of Appeal breached Article 8(1)(b) of Regulation No 40/94 (para. 25) .
The Board of Appeal’s decision is annuled.
Case: T-392/06 of 27 April, Union Investment Privatfonds GmbH / OHIM – Unicre-Cartao International De Credito, SA (contested decision: R 442/2004-2 of 10 October 2006)
Trade marks:
| UniFLEXIO | |
| UniVARIO | |
| UniZERO |
 |
| Earlier trade marks | Community trade mark applied for |
Class: 36
Decision: The opponent has failed to prove the use of a series of ‘Uni-marks “ (para. 49).
The Board of Appeal’s decision is upheld.
Cases: T-303/06 and T-337/06 of 27 April, UniCredito Italiano SpA / OHIM – Union Investment Privatfonds GmbH (contested decisions: R 196/2005-2 and R 211/2005-2 of 5 September 2006 / R456/2005-2 and R 502/2005-2 of 25 September 2006 )
Trade marks:
| UNIFONDS | UNIWEB |
| UNIRAK | UniCredit Wealth Management |
 |
|
| Earlier trade marks | Community trade marks applied for |
Class: 36
Decision: The likelihood of association between the trade mark applied for and a series of earlier trade marks may be invoked only if two conditions are cumulatively satisfied. Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a “ series “. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series (para. 34).
In the present case, despite the fact that the earlier trade marks have been put to genuine use and despite the presence of the prefix “ uni “ common to all the trade marks in the series and to the trade marks applied for, the evidence submitted to the OHIM does not demonstrate the ability of this prefix, alone or combined with other elements, to associate the trade marks applied for with the series of earlier trade marks (para. 48).
The Board of Appeal’s decision is upheld.
Case T-225/09 of 28 April 2010, Claro, SA / OHIM – Telefonica, SA (contested decision: R 1079 of 26 February 2009)
Trade marks:
 |
CLARO |
| Earlier trade mark | Community trade mark applied for |
Classes: 9, 38
Decision: The appeal lodged before the Board of Appeal is inadmissible since the applicant has failed to file a written statement setting out the grounds of appeal within four months after the date of notification oif the decision, as prescribed by article 60 CTMR (para. 22 to 34).
The Board of Appeal’s decision is upheld.
4 ECTA News
ECTA OHIM Link Committee Meeting in Alicante cancelled - new date
Due to the eruption of the Icelandic volcano and the resulting massive air travel disruptions across Europe, ECTA 25th OHIM Link Committee did not take place in Alicante on 19 April 2010. The OHIM Link Committee might meet OHIM representatives in Barcelona on 15 June.
ECTA - WIPO meeting in Geneva
ECTA will meet representatives of WIPO for its annual meeting on 7 May 2010 in Geneva. ECTA will be represented by Simon Reeves, ECTA President, Annick Mottet Haugaard, ECTA Vice President, Fabio Angelini, Chair of ECTA Law Committee, Leopold von Gerlach, Chair of ECTA Design Committee and Anne-Laure Covin, ECTA Legal Co-ordinator.
ECTA at WIPO sessions
- Working Group on the review of Rule 3(4) to (6) of the Regulations Under the Singapore Treaty on the Law of Trademarks on 28-29 June 2010
Due to the same reasons, 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 was also postponed. It will take place on 28 and 29 June at WIPO.
The agenda and the working document can be found at:
http://www.wipo.int/meetings/en/det…
- Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications on 30 June, 1-2 July 2010
Due to the eruption of the Icelandic volcano and the resulting massive air travel disruptions across Europe, the twenty-third Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (scheduled for 19-22 April 2010) was postponed. It will take place on 30 June, 1 and 2 July at WIPO.
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.
- Working Group on the Legal Development of the Madrid System for the International Registration of Marks on 5-9 July 2010
ECTA will attend the eighth session of the Working Group on the Legal Development of the Madrid Systemfor the International Registration of Marks which will take place at WIPO from 5 to 9 July 2010. The draft agenda can be found at:
http://www.wipo.int/edocs/mdocs/mad…
- Working Group on the Development of the Lisbon System (Appellations of Origin) on 30-31 August and 1-3 September 2010
ECTA will attend the Working Group on the Development of the Lisbon System (Appellations of Origin) on 30 -31 August and 1-3 September 2010. No documents have been communicated by WIPO so far.
ECTA Round Table on 30 April 2010 in Paris
In the framework of the Study on the functioning of the European trade mark systems and following the last ECTA Round tables in London on 26 February 2010 and 23 March 2010 in Brussels, ECTA and APRAM arranged on 30 April 2010 a Round Table in Paris (in French) titled "La marque communautaire et les marques nationales: sont-elles en harmonie? Le point de vue français" (Community and National trade marks: are they in harmony? The French point of view). The speakers were representatives from OHIM and INPI, French in-house counsels, trade mark attorneys and lawyers. It was attended by 40 trade mark attorneys and in-house counsels. A comprehensive report will be published in the next Flash. All presentations, CVs and photographs of the speakers will be made available on ECTA website under the Events - past Round Table section.