THANK YOU FOR HAVING PARTICIPATED IN ECTA’s 29TH ANNUAL CONFERENCE AND CELEBRATED OUR 30TH ANNIVERSARY IN BARCELONA FROM 15-19 JUNE 2010
A record number of more than 1000 partipants took part in our very successful event!
All documents relating to the conference, including all PowerPoint presentations, are added to ECTA’s website as they become available.
Please mark your agenda
Detailed programme and registration form will be available soon
GENERAL COURT
T-315/09 SAFELDAD (fig)
The trade mark is descriptive
T-482/08 ATLAS TRANSPORT
Use of a trade mark with additional verbal elements does not alter its distinctive character
T-547/08 Device of socks
The trade mark is therefore devoid of any distinctive character
T-118/08 TERRAEFFEKT matt & gloss
The trade mark is descriptive
T-35/09 PROCAPTAN vs. PROCAPS
The trade marks aurally, visually and conceptually similar
T-138/09 RIOJA (fig) vs. RIOJAVINA
The trade marks are visually, aurally and conceptually similar
T-487/08 KRENOZIN vs. KREMEZIN
The trade marks are visually and aurally similar
T-563/08 Capital Markets (fig) vs. CARBON CAPITAL MARKETS
In the overall impression, the visual and conceptual differences between the signs are sufficient to outweigh their limited phonetic similarity, particularly since, the relevant public is highly attentive and well informed
T-490/08 Capital Markets (fig) vs. Carbon Capital Markets (fig)
In the overall impression, the visual and conceptual differences between the signs are sufficient to outweigh their limited phonetic similarity, particularly since, the relevant public is highly attentive and well informed
T-255/08 JOSE PADILLA vs. JOSE PADILLA
No evidence of a well-known trade mark
T-407/08 meeting metro vs. Metromeet (fig)
There is a likelihood of confusion
COURT OF JUSTICE
C-51/09P BECKER/ BECKER ONLINE PRO vs. Barbara Becker
The General Court erred in law when assessing the conceptual similarity of the marks at issue
C-127/09, Coty Prestige Lancaster Group vs. Simex Trading
The Court of Justice replies to the question whether the proprietor of a trade mark for perfumes may oppose the resale by a third party of bottles of perfumes known as “testers”
C-569/08, Internetportal und Marketing GmbH vs. Richard Schlicht
Bad faith in the eu. Top Level Domain phase registration
ECTA Minutes of the WIPO Meeting of 7 May 2010
ECTA at WIPO sessions
Editorial Team: Annick Mottet Haugaard, ECTA President, Anne-Laure Covin, ECTA Legal Co-ordinator and Cathy van Vuuren ECTA Assistant
The Users Organisations met the Max Planck Institute (MPI) on 8 June 2010. ECTA was presented by Fabio Angelini, Chair of ECTA Law Committee and Anne-Laure Covin, ECTA Legal Co-ordinator. Read Anne-Laure Covin’s report
The 5 NGOs also met the MPI on 9 June 2010 to discuss further and in more details the MPI’s findings on the Study. ECTA was represented by Peter Müller, Chair of ECTA Professional Affairs Committee and Anne-Laure Covin, ECTA Legal Co-ordinator. Read Anne-Laure Covin’s report
Lord Mogg sent a letter on 2 June 2010 wherein he referred to the Provisional Portfolio which contains a brief description of each project proposal. The Management Board (MB) identified amongst the different proposals many similar needs and shared challenges between different the NPTOs. It also identified suggestions which appeared to overlap with current projects or activities funded by other bodies (e.g. DG TAXUD, DG Enterprise). These proposals would be best dealt with by those bodies rather than duplicating initiatives by the Cooperation Fund (CF). The CF projects should be self-contained ‘one-off projects’ and not ongoing activities without a date of project completion. The suggestions about the training of examiners and the ongoing TMView project represent challenges in terms of avoiding CF funding of open-ended activities. As TMView is falling under the CF, the MB will ask OHIM to find a solution in order to avoid discriminating against new participants who may wish to sign up to the project. See Annexes 1, 2, 3 and 4.
The CF Programme Manager, Simon White has been contacting Member States and NGOs in the last 2 weeks to discuss possible commitment to one or more of the project proposals set out in the Provisional Portfolio. Read Anne-Laure Covin’s report
Any ECTA member who wishes to volunteer for any of the CF projects identified in the attached report and has some availability in July should identify herself/himself rapidly and at the latest by Friday morning 2 July to the ECTA Legal Co-ordinator, Anne-Laure Covin (anne-laure.covin ecta.org) with ECTA President (annick.mottet lydian.be) in cc.
The eighth meeting of the Sub-Group of experts on 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. Read Olivier Vrins’ report
These reports can be found at: http://ec.europa.eu/internal_market…
Some members of the ECTA Anti-Counterfeiting Committe, namely Joe Cohen, László Bérczes, Marianne Decker, Frits Mutsaerts, Ruta Olmane and Olivier Vrins, have participated in these studies.
The first plenary meeting for both the Member States and private sector representatives of the European Observatory on Counterfeiting and Piracy took place on 10 June 2010 in Madrid. ECTA was represented by Ann-Charlotte Söderlund, Member of the Anti-Counterfeiting Committee. Read Olivier Vrins’ report
The US IP Enforcement Coordinator released on 22 June 2010 the US 2010 Joint Strategic Plan on IP Enforcement.
On 31 May 2010, ICANN published details of the draft 4 of the Applicant Guidebook and invited public comments. The details can be found at: http://www.icann.org/en/announcemen….
The public comment period will expire on 21 July 2010. As before, ECTA Internet Committee will work jointly with the MARQUES cyberspace team to submit comments.
In addition, ICANN released other related documents, namely summaries and analysis of comments on a range of previous consultations.
There is also a gTLD programme budget document also open for comments and a Market/Economic study coming shortly.
For details of the new domain programme, visit http://www.icann.org/en/topics/new-….
In the Flash 01-10, the news about the pending reforms under ccTLD .EE were announced and at that time, the start of the liberalization was expected as from 1 February 2010. Read the complete report from Riina Pärn
ECTA, represented by Sandrine Peters, Member of ECTA Law Commitee, is currently attending the 43rd session of the United Nations Commission on International Trade Law (UNCITRAL) which is 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….
OHIM is introducing a change in practice to improve the efficiency of how it deals with amendments suggested by the applicant to translations of goods and services and other text in certain CTM applications.
From 12 July 2010, the time limit for sending such amendments will be one month instead of two at present. This change applies to the small number of cases where applications are not made in one of the office’s main languages (DE, EN, FR, IT, ES) and translations of the list of goods and services and some other text are not supplied in one of these languages. At present, the office proposes a translation and allows two months for the applicant to respond.
OHIM published a series of video testimonials from SMEs explaining how Community trade marks and designs are helping them to do business in the single European market. The testimonials or “case studies” explain the background to the decision to choose Community-wide IP protection taken by a wide range of small to medium-sized enterprises with products and services.
Videos can be found at: http://oami.europa.eu/ows/rw/pages/…
Israel has become the 85th country to sign up for the Madrid System for the international registration of trade marks, and it will be possible to designate the country in an application to WIPO from 1 September 2010.
The complete communication can be found at: http://www.wipo.int/pressroom/en/ar…
WIPO launched on 1 June 2010 WIPO GOLD, a free, on-line global intellectual property (IP) reference resource that provides quick and easy access to a broad collection of searchable IP data and tools relating to, for example, technology, brands, designs, statistics, WIPO standards, IP classification systems and IP laws and treaties.
The complete communication can be found at: http://www.wipo.int/pressroom/en/ar…
An electronic filing interface is now available on WIPO’s website at http://www.wipo.int/hague/en.
Pursuant to Section 204(a)(i) of the Administrative Instructions established under Rule 34 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, WIPO has ascertained a specific manner and format for the electronic communications.
The complete communication can be found at: http://www.wipo.int/edocs/hagdocs/e…
with the support of Darts IP
Case T-315/09 of 9 June 2010, Oliver Hoelzer / OHIM (contested decision: R1157/2008-4 of 3 June 2009)
Trade mark:

Classes: 6, 12
Decision: The trade mark is descriptive. The relevant public, namely specialised companies in the freight transport sector, will understand the combination of the words ’safe’ and ’load’ as meaning that the goods are able to ensure the safety of the freight and that it therefore refers to one of the characteristics of these goods (paragraph 25).
The Board of Appeal’s decision is upheld.
Case T-482/08 of 10 June 2010, Atlas Transport GmbH / OHIM–Alfred Hartmann (contested decision: R1858/2007-4 of 9 September 2008)
Trade mark:
ATLAS TRANSPORT
Class: 39
Decision: The use of the trade mark with additional verbal elements such as ’the duesseldorfer’, ’ATC’ and ’gesellschaft’ does not alter the distinctive character of the trade mark within the meaning of Article 15 (2) (a) CTMR.
The Board of Appeal’s decision is annulled.
Case T-547/08 of 15 June 2010, X Technology Swiss Gmbh /OHIM (contested decision: R846/2008-4 of 6 October 2008)
Trade mark:

Class: 25
Decision:
The trade mark applied for is a positional mark characterised by an orange colouration, of the shade “Pantone 16-1359 TPX”, in the form of a hood covering the toe of each article of hosiery.
By reason of the absence of any significant divergence from the norms or customs of the hosiery sector, it would be perceived by the relevant public as a decorative element. The trade mark is therefore devoid of any distinctive character ( para. 59 ).
The Board of Appeal’s decision is upheld.
Case T-118/08 of 15 June 2010, Actega Terra GmbH / OHIM (contested decision: R 1467/2007-1 of 7 January 2008)
Trade mark applied for:
TERRAEFFEKT matt & gloss
Class: 2
Decision: The trade mark is descriptive. The terms ’terra’ and ’effekt’, and the combination of these two terms ’terraeffekt’ enables the German-speaking public immediately and without further reflection to detect the description of a fundamental characteristic of the goods in question, namely that the use of the goods will result in a particular finish i.e. an ’earthy effect’ (para. 41).
The verbal element ’matt & gloss’ is composed of two words, the first of which is an English and German word meaning ’matt’ and the second of which is an English word meaning ’shiny’ (para. 43). Thus, taken as a whole, it is not greater than the sum of its parts and is descriptive for the relevant English-speaking and German-speaking public (para. 46).
The Board of Appeal’s decision is upheld.
Case T-35/09 of 2 June 2010, Procaps, SA / OHIM – Biofarma SAS (contested decision: R 867/2007-4 of 24 November 2008)
Trade marks:
| PROCAPTAN | PROCAPS |
| Earlier trade marks | Community trade mark applied for |
Classes: 5, 35, 39, 40, 44
Decision: 1. The trade marks are aurally, visually (para. 56 to 58) and conceptually (para. 59 to 60) similar.
2. ’Pharmaceutical and sanitary products; plasters, material for dressings; disinfectants, products for destroying vermin, fungicides and herbicides’ (class 5) are similar to import, export, purchasing and sales of consumer goods and products of all kinds, in particular pharmaceutical, veterinary and sanitary preparations, surgical apparatus and hospital supplies (class 35) distribution of consumer goods and products of all kinds, in particular pharmaceutical, veterinary and sanitary preparations, surgical apparatus and hospital supplies’ (class 39) manufacture of consumer goods and products of all kinds, in particular , cosmetics,pharmaceutical, veterinary and sanitary preparations, surgical apparatus and hospital supplies’ (class 40) medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. (class 44) (para. 40 to 45).
There is a likelihood of confusion ( para. 62). The Board of Appeal’s decision is upheld.
Case T-138/09 of 9 June 2010, Felix Munoz Arraiza / OHIM – Consejo Regulador de la Denominacion de Origen Calificada Rioja (contested decision: R 721/2008-2 of 29 January 2009)
Trade marks:
![]() |
RIOJAVINA |
| Earlier trade mark | Community trade mark applied for |
Classes: 30, 33, 35
Decision:
1. The trade marks are visually (para. 49 to 50), aurally (para. 51) and conceptually (para. 52) similar.
2. There is a low degree of similarity between wine (class 33) and vinegar (class 30) and sole agencies, representation services, wholesaling, retailing, export, import, all the aforesaid relating to vinegars (class 35) (para. 35 to 43).
3. The low degree of similarity between the goods and services concerned is offset by the high degree of similarity between the marks at issue. There is a likelihood of confusion (para. 55).
The Board of Appeal’s decision is upheld.
Case T-487/08 of 16 June 2010, Kureka Corp. / OHIM – Sanofi-Aventis ( contested decision: R 1631/2007-4 of 15 September 2008)
Trade marks:
| KRENOZIN | KREMEZIN |
| Earlier trade mark | Community trade mark applied for |
Class: 5
Decision:
1. The trade marks are visually (para. 81 to 84)and aurally (para. 85 to 86) similar.
2. There is a similarity between pharmaceutical preparations for the treatment of the heart (class 5) and Pharmaceutical preparations, all being for use in the treatment of renal disease, liver disease, diabetes mellitus and Crohn’s disease, all being in form of capsules, sachets or pouches, jelly, dried jelly, or provided in bottles, and all being for oral administration, and none being administered intravenously or being for use in the treatment of heart conditions (class 5). However, the the goods in question do not display a high level of similarity, because their therapeutic indications differ greatly. (para. 70 to 77).
3. There is a likelihood of confusion (para. 90)
The Board of Appeal’s decision is upheld.
Case T-563/08 of 22 June 2010, CM Capital Markets Holding, SA / OHIM – Carbon Capital Markets Ltd (contested decision: 15/2008-1 of 26 September 2008)
Trade marks:
![]() |
CARBON CAPITAL MARKETS |
| Earlier trade mark | Community trade mark applied for |
Class: 36
Decision: The trade marks are visually (para. 47 to 49) and conceptually (para. 56 to 60) different. Aurally, they are slightly similar (para. 50 to 54).
In the overall impression , the visual and conceptual differences between the signs are sufficient to outweigh their limited phonetic similarity, particularly since, the relevant public is highly attentive and well informed (para. 61).
The Board of Appeal’s decision is upheld.
Case T-490/08 of 22 June 2010, CM Capital Markets Holding, SA / OHIM – Carbon Capital Markets Ltd (contested decision: R16/2008-1 of 3 September 2008)
Trade marks:
![]() |
![]() |
| Earlier trade mark | Community trade mark applied for |
Class: 36
Decision: The trade marks are visually (para. 50 to 51) and conceptually (para. 57 to 62) different. Aurally, they are slightly similar (para. 52 to 56).
In the overall impression, the visual and conceptual differences between the signs are sufficient to outweigh their limited phonetic similarity, particularly since, the relevant public is highly attentive and well informed (para. 63).
The Board of Appeal’s decision is upheld.
Case T-255/08 of 22 June 2010, Eugenia Montero Padilla / OHIM – José Maria Padilla Requena (contested decision: R 516/2007-2 of 1 March 2008 )
Trade marks:
| JOSE PADILLA | JOSE PADILLA |
| Earlier trade mark | Community trade mark applied for |
Classes: 9, 25, 41
Decision: 1. In order to rely on Article 6bis of the Paris Convention (well known trade mark), the applicant must adduce proof that, at the date of application for registration of the mark applied for, the earlier mark JOSE PADILLA relied on by her was well known in a Member State and used for goods which are identical or similar to those covered by the trade mark applied for (para. 53).
The applicant has not put forward any evidence providing information on use of the name José Padilla as a trade mark. Although the documents provided by the applicant evidence the success of the music composed by José Padilla and his renown and reputation as a composer, the fact remains that these are no more than indications of the artistic nature of the musical works of the deceased composer, not indications of the commercial origin of the goods and services which are marketed with the reference to the name José Padilla, in particular films, DVDs (Digital Versatile Discs) or television programmes (para. 54).
2.Copyright cannot constitute a ‘sign used in the course of trade’ within the meaning of Article 8(4) of Regulation No 40/94 (para. 65).
The Board of Appeal’s decision is upheld.
Case T-407/08 of 25 June 2010, MIP Metro Group Intellectual Property GmbH & Co. KG / OHIM – CBT Comunicacion Multimedia, SL (contested decision : R 387/2007-1 of 12 June 2008)
Trade marks:
| meeting metro |
![]() |
| Earlier trade mark | Community trade mark applied for |
Classes: 9, 16, 35, 41
Decision: The trade marks are visually (para. 36 to 39) and aurally (para. 40) similar. Conceptually, they are identical (para. 41).
There is a likelihood of confusion (para. 46). The Board of Appeal’s decision is annulled
Case C-51/09P of 24 June 2010, Barbara Becker /OHIM – Harman International Industries, Inc. (contested decision: T-212/07 of 2 December 2007)
Trade marks:
| BECKER | Barbara Becker |
| BECKER ONLINE PRO | |
| Earlier trade marks | Community trade mark applied for |
Class: 9
Decision: The Court of Justice sets aside the judgment of the General Court that has held that the trade marks at issue were visually, phonetically and conceptually similar. As regards the assessment of the conceptual similarity, the Court of Justice decides that the general Court erred in law in basing its assessment on general considerations taken from the case-law without analysing all the relevant factors specific to the case (para. 40). Although it is possible that, in a part of the European Union, surnames have, as a general rule, a more distinctive character than forenames, it is appropriate, however, to take account of factors specific to the case and, in particular, the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character (para. 36). Account must also be taken of whether the person who requests that his first name and surname, taken together, be registered as a trade mark is well known, since that factor may obviously influence the perception of the mark by the relevant public (para. 37). Furthermore, it must be held that, in a composite mark, a surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname. The finding with respect to such a role may be based only on an examination of all the relevant factors of each case (para. 38).
Reference for a preliminary ruling from the Oberlandesgericht Nürnberg (Germany), case C-127/09, 3 June 2010, Coty Prestige Lancaster Group / Simex Trading
The Court of Justice replies to the question whether the proprietor of a trade mark for perfumes may oppose the resale,by a third party, of bottles of perfumes known as „testers“ , made available by him to an authorised specialist dealer belonging to a selective distribution network based in Singapore. and resold in Germany by a parallel importer.
The ECJ’s reply is as follows :
Where ‘perfume testers’ are made available, without transfer of ownership and with a prohibition on sale, to intermediaries who are contractually bound to the trade mark proprietor for the purpose of allowing their customers to test the contents, where the trade mark proprietor may at any time recall those goods and where the presentation of the goods is clearly distinguishable from that of the bottles of perfume normally made available to the intermediaries by the trade mark proprietor, the fact that those testers are bottles of perfume which bear not only the word ‘Demonstration’ but also the statement ‘Not for Sale’ precludes, in the absence of any evidence to the contrary, which it is for the national court to assess, a finding that the trade mark proprietor impliedly consented to putting them on the market .
Reference for a preliminary ruling from the Oberster Gerichtshof (Austria), case C-569/08, 3 June 2010, Internetportal und Marketing GmbH / Richard Schlicht
The Court of Justice replies to questions relating to the concept of « bad faith « within the meaning of Article 21(3) of Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain.
The CJ’s replies are as follows :
1. Article 21(3) of Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration must be interpreted as meaning that bad faith can be established by circumstances other than those listed in Article 21(3)(a) to (e) of that regulation.
2. In order to assess whether there is conduct in bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004, read in conjunction with Article 21(3) thereof, the national court must take into consideration all the relevant factors specific to the particular case and, in particular, the conditions under which registration of the trade mark was obtained and those under which the .eu top level domain name was registered.
With regard to the conditions under which registration of the trade mark was obtained, the national court must take into consideration, in particular:
– the intention not to use the trade mark in the market for which protection was sought;
– the presentation of the trade mark;
– the fact of having registered a large number of other trade marks corresponding to generic terms; and
– the fact of having registered the trade mark shortly before the beginning of phased registration of .eu top level domain names.
With regard to the conditions under which the .eu top level domain name was registered, the national court must take into consideration, in particular:
– the abusive use of special characters or punctuation marks, within the meaning of Article 11 of Regulation No 874/2004, for the purposes of applying the transcription rules laid down in that article;
– registration during the first part of the phased registration provided for in that regulation on the basis of a mark acquired in circumstances such as those in the main proceedings; and
– the fact of having applied for registration of a large number of domain names corresponding to generic terms.
The Minutes of the WIPO meeting can be found at the Law, Design and Geographical Indications Committees - Papers Sections. The next meeting should take place in April 2010.
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 took 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) is taking 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…):
ECTA is being represented by António Andrade, Chair of the ECTA Design Committee.
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 by Florent Gevers, Member of the ECTA Law Committee and Chair of the ECTA Geographical Indications 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.
The meeting documents can be found at: http://www.wipo.int/meetings/en/det…