ECTA - European Communities Trade Mark Association

Table of content

1 LAW

1.1 Trade Marks

• Study on the functioning of the trade mark system in Europe – ECTA’s further contribution to the Max Planck Institute

• OHIM Cooperation Fund - ECTA Members volunteer for projects - Lord Mogg’s letter and annexes of 9 July 2010

1.2 Enforcement

• 9th ACTA Negotiating Round in Switzerland - 28 June-1 July 2010

• Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy on 6 July 2010 in Brussels - DG MARKT

1.3 Security interests in IP

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

2 OFFICE PRACTICE

2.1 OHIM

• Industrial design “key element” for China

2.2 WIPO

• Madrid Protocol - Change in the amounts of the individual fee for Bulgaria

3 CASE LAW

GENERAL COURT

T-85/08 Vektor-Lycopin
The trade mark is descriptive

T-557/08 MPAY24 vs. MPAY (fig)
Board of Appeal wrong to assume that goods and services have to be identical, or the signs very similar, in order for confusion to exist between two marks of weak distinctive character

T- 30/09 PETER STORM vs. peerstorm
There is a likelihood of confusion between the marks

COURT OF JUSTICE

Case C-558/08 Portakabin Ltd and Portakabin BV vs. Primakabin BV

The Court of Justice replies to questions regarding keyword advertising on the Internet by a reseller of second-hand goods manufactured by the proprietor of the trade mark

4 ECTA NEWS

• ECTA at WIPO sessions

• ECTA Round Table on 9 July 2010 in Riga

Editorial Board:Annick Mottet Haugaard, ECTA President, Anne-Laure Covin, ECTA Legal Co-ordinator, and Cathy van Vuuren, ECTA Assistant

1 Law

1.1 Trade Marks

Study on the functioning of the trade mark system in Europe – ECTA’s further contribution to the Max Planck Institute on 5 July 2010

Following the meetings with the Max Planck Institute (MPI) in Munich on 8 and 9 June 2010 (see Flash 12-10), ECTA has submitted a further contribution to the MPI on 5 July 2010.

OHIM Cooperation Fund- ECTA Members volunteer for projects - Lord Mogg’s letter and annexes of 9 July 2010

Following the last discussion with the Cooperation Fund Programme Manager, Simon White in connection with possible commitment to some of the project proposals set out in the Provisional Portfolio (see Flash 12-10), ECTA informed Simon White on 6 July 2010 that some ECTA Members have volunteered to participate in the below projects:

CF 1.1.3 Completion of common database on classification of goods and services
Annette Rasmussen, Member of the ECTA Law Committee

CF 1.1.4 Creation and harmonisation of seniority databases
Oscar Benito, Vice Chair of the ECTA Law Committee
Cristina Bercial, Secretary of the ECTA Law Committee
Sandrine Peters, Member of the ECTA Law Committee
Andreas Renck, Member of the ECTA Law Committee

CF 1.2.8 Designview - Common Design information tool
Elena Sonn, Vice Chair of the ECTA Design Committee
Andreas Thielmann, Member of the ECTA Design Committee

CF 1.2.9 Common tool on similarity of goods and services
Berenika Depo, Member of the ECTA Harmonization Committee

CF4.22 Multi-modular (TM, Design and Owners data), Database supporting Customs Actions
Annick Mottet Haugaard, ECTA President
Nuno Cruz, Member of the ECTA Anti-Counterfeiting Committee

Any other ECTA member who still wishes to volunteer for CF 1.1.3 and CF 1.2.9 projects should identify herself/himself in July to the ECTA Legal Co-ordinator, Anne-Laure Covin (anne-laure.covin ecta.org).

On 9 July 2010, Lorg Mogg sent a report and annexes (1 and 2) to the delegations and 5 NGOs Observers to provide an update on the last developments of the Cooperation Fund, especially with the 23 projects of the Portfolio.

1.2 Enforcement

9th ACTA Negotiating Round in Switzerland - 28 June-1 July 2010

DG TRADE has published a short report on the last Anti-Counterfeiting Trade Agreement (ACTA) negotiating round which took place in Lucerne in Switzerland from 28 June until 1 July 2010.

Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy on 6 July 2010 in Brussels - DG MARKT

The ninth meeting of the Sub-Group of experts on Legal Framework set up within the European Counterfeiting and Piracy Observatory took place on 6 July 2010 in Brussels. ECTA was represented by Ann-Charlotte Söderlund, Member of the ECTA Anti-Counterfeiting Committee.

The following matters were discussed: the summary of the responses received on the survey concerning evidence and right to information, the first plenary meeting of the European Observatory on Counterfeiting and Piracy (which took place on 10 June in Madrid, see Flash 12-10) and new topics to be worked on by the Legal Sub-Group.

The tenth meeting will take place on 8 September 2010 in Brussels.

1.3 Security Interest in IP

43rd session of the UNCITRAL 21 June-9 July 2010

ECTA, represented by Sandrine Peters, Member of the ECTA Law Committee, attended the 43rd session of the United Nations Commission on International Trade Law (UNCITRAL) which was held from 21 June to 9 July 2010 at the United Nations Headquarters in New York. READ Sandrine Peters’s report

2 Office Practice

2.1 OHIM

Industrial design “key element” for China

The head of the Chinese State Intellectual Property Office (SIPO), Commissioner Tian Lipu, has spoken of the importance of industrial design in his country’s IP strategy. The Commissioner led a delegation to OHIM to review the progress of cooperation between the two organisations.

The video interview can be found at: http://oami.europa.eu/ows/rw/news/i…

2.2 WIPO

Madrid Protocol - Change in the amounts of the individual fee for Bulgaria

A new individual fee, payable when Bulgaria is designated in an international application, in a designation subsequent to an international registration or in respect of the renewal of an international registration will take effect from 2 August 2010.

The complete communication can be found at: http://www.wipo.int/edocs/madrdocs/…

3 Case Law

with the support of Darts IP

General Court

On absolute grounds for refusal

Case:T-85/08 of 9 July 2010, Exalation Ltd vs. OHIM (contested decision:R1037/2007-4 of 17 December 2007)

Trade mark:

Vektor-Lycopin

Classes: 5, 29, 30

Decision: The trade mark is descriptive. In the mind of the relevant public, the combination Vektor-Lycopin, associated with the food, dietetic, sanitary, veterinary and pharmaceutical preparations covered by the application for registration, will evoke the property of those goods as transmitters of lycopene. The relevant public would consider that the goods at issue contain lycopene and allow consumers of them to assimilate that substance (para. 56).

The Board of Appeal’s decision is upheld.

On relative grounds for refusal

Case: T-557/08 of 7 July 2010, MPAY24 vs. OHIM – Ultra d.o.o. Proizvodnja elektronskih naprav (contested decision: R 221/2007-1 of 30 September 2009)

Trade marks:

MPAY24

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

Decision: The Board of Appeal erred in law by restricting its assessment of the likelihood of confusion to the premiss that a likelihood of confusion between two marks which are of weak distinctive character can exist only if they are used for goods and services which are identical or if the signs are identical or very similar (para. 45).

The Board of Appeal’s decision is annuled.

Case T-30/09 of 8 July 2010, Engelhorn KgaA vs. OHIM – The Outdoor Group Ltd (contested decision: R 167/2008-5 of 28 October 2008)

Trade marks:

Class: 25

Decision:
1. By submitting two catalogues, the proprietor of the earlier trade mark furnished sufficient information on the place, the duration, the nature and the extent of use of its trade mark. That information makes it possible to rule out token use for the sole purpose of preserving the rights conferred by the mark in question (para. 44).

2. The trade marks are visually (para. 58 to 62), aurally (para. 63 to 64) and conceptually (para. 65 to 68) similar. There is a likelihood of confusion (para. 79 to 80).

The Board of Appeal’s decision is upheld.

Court of Justice

Preliminary ruling

Reference for a preliminary ruling from the Hoge Raad der Nederlanden (The Netherlands), Case C-558/08, 8 July 2010, Portakabin Ltd and Portakabin BV vs. Primakabin BV

The Court of Justice replies to questions regarding keyword advertising on the Internet by a reseller of second-hand goods manufactured by the proprietor of the trade mark.

The ECJ’s replies are as follows:

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

2. Article 6 of Directive 89/104 must be interpreted as meaning that, where use by advertisers of signs identical with, or similar to, trade marks as keywords for an internet referencing service is liable to be prohibited pursuant to Article 5 of that directive, those advertisers cannot, in general, rely on the exception provided for in Article 6(1) in order to avoid such a prohibition. It is, however, for the national court to determine, in the light of the particular circumstances of the case, whether or not there was, in fact, a use, within the terms of Article 6(1), which could be regarded as having been made in accordance with honest practices in industrial or commercial matters.

3. Article 7 of Directive 89/104 must be interpreted as meaning that a trade mark proprietor is not entitled to prohibit an advertiser from advertising – on the basis of a sign identical with, or similar to, that trade mark, which that advertiser chose as a keyword for an internet referencing service without the consent of that proprietor – the resale of goods manufactured and placed on the market in the European Economic Area by that proprietor or with his consent, unless there is a legitimate reason, within the meaning of Article 7(2), which justifies him opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark. The national court, which must assess whether or not there is such a legitimate reason in the case before it;

–cannot find that the ad gives the impression that the reseller and the trade mark proprietor are economically linked, or that the ad is seriously detrimental to the reputation of that mark, merely on the basis that an advertiser uses another person’s trade mark with additional wording indicating that the goods in question are being resold, such as ‘used’ or ‘second-hand’;

–is obliged to find that there is such a legitimate reason where the reseller, without the consent of the proprietor of the trade mark which it uses in the context of advertising for its resale activities, has removed reference to that trade mark from the goods, manufactured and placed on the market by that proprietor, and replaced it with a label bearing the reseller’s name, thereby concealing the trade mark; and

–is obliged to find that a specialist reseller of second-hand goods under another person’s trade mark cannot be prohibited from using that mark to advertise to the public its resale activities which include, in addition to the sale of second-hand goods under that mark, the sale of other second-hand goods, unless the sale of those other goods, in the light of their volume, their presentation or their poor quality, risks seriously damaging the image which the proprietor has succeeded in creating for its mark.

4 ECTA News

ECTA at WIPO sessions

• Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications on 30 June, 1-2 July 2010

ECTA represented by Antonio Andrade, Chair of the ECTA Design Commitee, attended the twenty-third Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications took place on 30 June, 1 and 2 July at WIPO. READ Antonio Andrade’s report

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

ECTA 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, attended the eighth session of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks which took take place at WIPO from 5 to 9 July 2010. READ Florent Gevers and Anne-Laure Covin’s report

• 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…

ECTA Round Table on 9 July 2010 in Riga

In the framework of the Study on the functioning of the European trade mark systems and following the last ECTA Round tables in London, Brussels and Paris, ECTA held in collaboration with OHIM and the Estonian, Latvian and Lithuanian trade mark offices, a Round Table in Riga on 9 July 2010: ”The Community Trade Mark and the National Trade Marks: are they in harmony? The Baltic countries’ points of view". Read Ruta Olmane and Alina Bogdanovica’s report

All presentations, CVs and photographs of the speakers are available on our website under the Events section.

The next Round Tables will take place in Helsinki on 13 September 2010 (giving the Scandinavian countries’ points of view) and in Cracow on 22 October 2010 (giving the Eastern countries’ points of view).