ECTA - European Communities Trade Mark Association

Table of Contents

1 LAW

1.1 Trade Marks

• Appointments of OHIM President and other OHIM senior officials by the Council on 25 May 2010

• Conclusions on the future revision of the Trade Mark system in the EU by the European Council on 25 May 2010

• OHIM Cooperation Fund- Management Board’s meeting on 18 May 2010 in Brussels

• Max Planck Institute’s Hearing of the Users Organisations and 5 NGOs - 8 June and 9 June 2010 in Munich

1.2 Enforcement

• Online consultation to ascertain the views of stakeholders on the EU legislation on customs enforcement of IPR – DG TAXUD – ECTA’s contribution on 25 May 2010

• Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy on 31 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

1.3 Security interests in IP

• Draft Supplement to the UNCITRAL Legislative Guide on Secured Transactions – ECTA’s letter

• 43rd session of the UNCITRAL - 21 June-9 July 2010 in New York

2 OFFICE PRACTICE

2.1 OHIM

• Spanish seminars on international design protection in June 2010

• OHIM E-business Group Meeting on 10-11 May 2010

3 CASE LAW

General Court

T-464/08 Superleggera (fig)
The trade mark is descriptive

T-163/08 Golden Toast
The trade mark is descriptive

T-108/09 MEMORY
The trade mark is descriptive

T-243/08 MEMORY vs. EDUCA Memory game (fig)
The trade marks are visually, phonetically and conceptually different

4 ECTA NEWS

• ECTA and MARQUES at DG Information Society and Media on 18 May 2010 in Brussels

• ECTA at WIPO sessions

• ECTA at 9th NGO Coordination Meeting on 25 May 2010 in Boston

1 Law

1.1 Trade Marks

Appointments of OHIM President and other OHIM senior officials by the Council on 25 May 2010

The Council of the European Union decided on 25 May 2010 on the appointments of the next OHIM President, Vice President and other senior posts. António Campinos (PT) was appointed President, Christian Archambeau (BE) Vice-President, and Paul Maier (FR) President of the Boards of Appeal. The Council also decided on the appointment of the chairs of three Boards of Appeal: Théophilos Margellos (GR), Tomás de las Heras Lorenzo (ES) and Detlef Schennen (DE). All appointments will be for a period of five years. The new OHIM President will take up his new position on 1 October 2010 and the Vice President on 1 November 2010.

Conclusions on the future revision of the Trade Mark system in the EU by the European Council on 25 May 2010

Following the last COREPER meeting on 12 May 2010 (see Flash 09-10), the Competitiveness Council adopted the final version of the Conclusions on the future revision of the Trade Mark system in the EU on 25 May 2010.

OHIM Cooperation Fund- Management Board’s meeting on 18 May 2010 in Brussels

Darina Kylianova, the interim Chair of the OHIM Administrative Board, provided on 24 May 2010 the delegations and the five NGOs with an update on the last meeting of the Management Board (MB) of the Cooperation Fund (CF) which took place in Brussels on 18 May. The Programme Manager of the OHIM CF, Simon White, was introduced to the MB.

The discussions mainly focused on the proposed project portfolio. Many suggestions had been received from NOs and users, of which most were common interests. The portfolio brings these together as much as possible into a workable package. However, some proposals need further elaboration or go beyond the scope of the CF. The MB felt that it should concentrate on projects with a clearly defined beginning and end. The NOs and users will be informed about the state of their proposals. It seems likely that the portfolio will absorb the 50 million EUR and will be spent within the time allotted. The delegations will be addressed to consider the rapid provision of SNEs (managerially and technically skilled experts) to work in the Programme Office and on technical IT issues. The MB expressed its intention to progress rapidly between May and the November meetings of the OHIM Administrative Board and Budget Committee. A full written update from the MB is expected within weeks. The next CF MB meeting should take place in October 2010.

Max Planck Institute’s Hearing of the Users Organisations and 5 NGOs - 8 June and 9 June 2010 in Munich

The Users Organisations (around 15 associations) will meet the Max Planck Institute (MPI) on 8 June 2010. Please refer to Flash 07-10 for the Agenda. ECTA will be presented by Fabio Angelini, Chair of ECTA Law Committee and Anne-Laure Covin, ECTA Legal Co-ordinator.

The 5 NGOs will also meet the MPI on 9 June 2010 to discuss further and in more details the MPI’s findings on the Study. ECTA will be represented by Peter Müller, Chair of ECTA Professional Affairs Committee and Anne-Laure Covin, ECTA Legal Co-ordinator.

1.2 Enforcement

Online consultation to ascertain the views of stakeholders on the EU legislation on customs enforcement of IPR – DG TAXUD – ECTA’s contribution on 25 May 2010

As mentioned in Flash 07-10, 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). ECTA’s Anti-Counterfeiting Committee with the great support of its Member Olivier Vrins, drafted ECTA’s contribution in response to the consultation paper which was submitted to DG TAXUD on 25 May 2010.

Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy on 31 May 2010 in Brussels - DG MARKT

The eighth meeting of the Sub-Group of experts on the Legal Framework set up within the European Counterfeiting and Piracy Observatory took place on 31 May 2010 in Brussels. ECTA was represented by Ann-Charlotte Söderlund, Member of the ECTA Anti-Couterfeiting Committee.

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 finalized. ECTA, represented by Ann-Charlotte Söderlund, Member of the Anti-Counterfeiting Committee, will attend this meeting.

1.3 Security Interest

Draft Supplement to the UNCITRAL Legislative Guide on Secured Transactions – ECTA’s letter

Following the receipt of the draft Supplement to the UNCITRAL Legislative Guide on Secured Transactions dealing with security rights in intellectual property (see Flash 09-10), ECTA sent a letter to Renaud Sorieul, Secretary of the United Nations Commission on International Trade Law on 20 May 2010.

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….

2 Office Practice

2.1 OHIM

Spanish seminars on international design protection in June 2010

The Spanish IP office (OEPM), OHIM and WIPO will hold seminars (in Spanish) on 7 June in Madrid, on 9 June in Alicante and on 10 June in Barcelona to publicise the advantages of design protection at the national, EU and international levels. These seminars are aimed at designers, professional representatives, SMEs, design associations and academics. More information can be found at the OEMP website (http://www.oepm.es) and to register, you can contact areadifusion oepm.es.

OHIM E-business Group Meeting on 10-11 May 2010

The E-business Users Group Meeting took place on 10 and 11 May 2010 at OHIM. The agenda and documents can be found at OHIM Link Committee - Papers section.

Read reports from Jordi Güell, ECTA Member, Curell Suñol, ES and Carlos Alvarez Durán Corretjer, ES.

3 Case Law

Summaries and case law provided by Darts IP

General Court

On absolute grounds for refusal

Case: T-464/08 of 19 May 2010, Zeta Europe BV / OHIM (contested decision: R 666/2008-1 of 17 July 2008)

Trade mark:



Classes: 12, 18, 25

Decision: The trade mark that means "super light " in Italian is descriptive since it describes a characteristic of the goods (para. 24). The Board of Appeal’s decision is upheld.

Case: T-163/08 of 19 May 2010 - Arbeitsgemeinschaft Golden Toast eV / OHIM (contested decision: R 761/2007-1 of 31 January 2008)

Trade mark:

Golden Toast

Classes: 11, 30

Decision: The trade mark is descriptive and indicates a characteristic of the covered products, namely to “grill”. The final product is golden which implies that it is “coloré à point” (para. 23 to 33). The Board of Appeal’s decision is upheld.

Case: T-108/09 of 19 May 2010, Ravensburger AG / OHIM - Educa Borras, SA (contested decision: R 305/2008-2 of 8 January 2009)

Trade mark:

MEMORY

Classes: 9, 28

Decision: The trade mark is descriptive. The word "memory" describes directly and specifically one of the characteristics and purposes of the games for which the mark at issue was registered, namely memory games in which the key element for success is that the participants use and develop their memory well (para. 30 to 37). The Board of Appeal’s decision is upheld.

On relative grounds for refusal

Case: T-243/08 of 19 May 2010, Ravensburger AG / OHIM - Educa Borras, SA (contested decision: R 597/2007-2 of 8 April 2008)

Trade marks:

MEMORY

Class: 28

Decision: The element "educa" is the dominant element in the mark at issue. It is more distinctive that the element "memory game". Moreover, it has a dominant position in the structure and layout of the mak (para. 41). Therefore, considered as a whole, the trade marks are visually, phonetically and conceptually different (para. 43). The Board of Appeal’s decision is upheld.

4 ECTA News

ECTA and MARQUES at DG Information Society and Media on 18 May 2010

On 18 May, 2010 MARQUES represented by Nick Wood, Chair of MARQUES Cyberspace Committee and ECTA represented by Andrew Mills, Chair of the ECTA Internet Committee and Anne-Laure Covin, ECTA Legal Co-ordinator met representatives of DG Information Society & Media in Brussels to express their concerns regarding ICANN’s proposed expansion of the domain name system with the launch of new gTLDs. Different topics were discussed including the viability of ICANN granting virtual monopolies in generic terms or terms of public interest, the proposed mix of rights protection measures and the importance of accurate Whois data.

The final list of concerns was communicated to DG Information. Society and Media on 1 June 2010.

ECTA and MARQUES have submitted to ICANN in the last 6 months 7 joint papers (see Flash 21-09, Flash 03-10, Flash 04-10, Flash 07-10). ECTA will attend the ICANN Meeting in Brussels from 21-25 June 2010.

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

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 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

The twenty-third Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (scheduled for 19-22 April 2010) 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.

ECTA will be represented by Jan Wrede, Member of the ECTA Law Committee and Anne-Laure Covin, ECTA Legal Co-ordinator.



Working Group on the Legal Development of the Madrid System for the International Registration of Marks on 5-9 July 2010

The eighth session of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks 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…

ECTA will be represented at that session by Jan Wrede, Member of the ECTA Law Committee and Anne-Laure Covin, ECTA Legal Co-ordinator.



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 at 9th NGO Coordination Meeting on 25 May 2010 in Boston

ECTA represented by Annick Mottet Haugaard, ECTA First Vice-President and Anne-Laure Covin, ECTA Legal Co-odinator, attended the 9th NGO Coordination Meeting in Boston during the INTA conference on 25 May 2010. ECTA communicated its activity report since the last meeting of October 2009 in Buenos Aires and many topics were discussed (see Agenda). Minutes of the meeting will be made available.

The next meeting will take place in Paris during the AIPPI congress from 3-6 October 2010.