ECTA - European Communities Trade Mark Association

Table of Contents

1 LAW

1.1 Trade Marks

• OHIM Cooperation Fund - ABBC meeting - ECTA Wish list
• Liberia’s accession to the Madrid Protocol

1.2 Enforcement

• Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy DG MARKT
• Information meeting on customs activities relating to counterfeit and piracy - DG TAXUD
• Publication of DG TRADE survey about IPR enforcement outside the EU

1.3 Domain Names

• ICANN’s meeting in South Korea
• New gTLDs and IDN gTLDs – Trademark and Brand Owners greatest risks or ultimate online branding strategy?

1.4 Designs

• Serbia’s accession to the 1999 Act

1.5 Security Interests in IP

• UNCITRAL secured transaction seminar in London
• UN UNCITRAL Vienna

2 OFFICE PRACTICE

2.1 OHIM

• New RCD E-Filing feature
• OHIM’s E-Business Users Group Meeting
• SMEs in action
• Twitter and YouTube

2.2 WIPO

• Advisory Commmittee on Enforcement
• Nice Union meeting
• SCT meeting
• Survey on Appelations of Origin

3 CASE LAW

Court of First Instance

T- 339/07 PANORAMA
The trade mark is descriptive

T-146/08 ROCK vs REDROCK (fig)
The trade marks are visually and aurally different. There is no likelihood of confusion

T-307/08 Living & Co (fig) vs 4 OUT Living (fig)
The trade marks are visually, aurally and conceptually similar. There is a likelihood of confusion

T-140/08 KINDER vs KINDERJOHURT (fig)
Res judicata does not apply to opposition decisions. The trade marks are visually and aurally different

T-80/08 RNActive vs RNAiFect
The trade marks are visually, aurally and conceptually different

T- 273/08 FIRST vs First-on-Skin
The trade marks are visually, aurally and conceptually similar. There is a likelihood of confusion

T- 137/08 Combination of the colours green and yellow vs. combination of the colours green and yellow
The contested trade mark is become distinctive through use, the nullity action based of the unregistered trade mark consisting in the combination of the colours green and yellow is unfounded

T- 386/07 Aygill’s vs AGILE (fig)
Overall, the signs are similar, but to a low degree. Taking into account the identity of the goods, there is a likelihood of confusion

European Court of Justice

C-324/08 Makro CV, Metro Cash & Carry BV, Remo Zaandam BV / Diesel
Reply from ECJ in connection with the conditions of implied consent required by the principle of exhaustion of the trade mark right

4 ECTA NEWS

• ECTA OHIM LINK MEETING
• AIPPI 8th NGO Coordination Meeting

1 Law

1.1 Trade Marks

OHIM Cooperation Fund - ABBC meeting - ECTA Wish list

ECTA, represented by Anne-Laure Covin, ECTA Legal Co-ordinator, will attend the OHIM Administrative Board meeting and the joint meeting of the OHIM Administrative Board and Budget Committee in Alicante on 16 and 17 November 2009. The OHIM Cooperation Fund will be one of the topics of the meeting. Following the NGOs’ joint list of demands sent to OHIM on 17 September 2009, ECTA will send prior to these meetings an additional list of proposed projects to be covered by the OHIM Cooperation Fund (please refer to Flash 17-09 and 18-09). A report will be published in due time.

Liberia’s accession to the Madrid Protocol

On September 11, 2009, the Government of Liberia deposited with WIPO its instrument of accession to the Madrid Protocol concerning the International Registration of marks. The Madrid Protocol will enter into force, with respect to Liberia, on December 11, 2009. The complete communication can be found at: http://www.wipo.int/edocs/madrdocs/…

1.2 Enforcement

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

The first (inaugural) meeting of the Sub-Group of experts on Legal Framework set up within the European Counterfeiting and Piracy Observatory took place on 22 October 2009 in Brussels. The meeting was organised by the IPR Enforcement Unit of EU Commission’s DG MARKT. READ MORE

Information meeting on customs activities relating to counterfeit and piracy - DG TAXUD

On 23 October 2009, the European Commission Directorate General Taxation and Customs Union (DG TAXUD) invited interested parties to Brussels for a full day information meeting on customs activities relating to counterfeit and piracy. READ MORE

Publication of DG TRADE’s survey on IPR enforcement outside the EU

Following a survey of 2006, DG TRADE has now published results of a new survey about IPR enforcement outside the EU.

The following list of priority countries has been established. It includes three categories, starting with those countries in which the situation regarding IPR protection and/or enforcement needs to be considerably improved: 1. China 2. Indonesia, the Philippines, Thailand, Turkey 3. Argentina*, Brazil*, Canada, India, Israel, Korea, Malaysia, Russia*, Ukraine*, USA, Vietnam.

The * symbol identifies countries in which substantial improvements have been noted in the wake of the IPR Dialogues established between them and the Commission. The respective IPR situations will be closely monitored, with a view to reassessing the status of these countries on the basis of the continuation of their progress. The Commission press release is available under the link: http://trade.ec.europa.eu/doclib/pr… The full report and the country reports are available under: http://ec.europa.eu/trade/creating-…

1.3 Domain Names

ICANN’s meeting in South Korea

Between 25 and 30 October 2009, ICANN held a meeting in Seoul, South Korea. The meeting was extensive and covered over 100 separate topics. However, the hot topics of the sessions were concerned with Internationalised Domain Names (IDNs) and the plans for new generic top-level domains (gTLD). For members wishing to read-up about the meeting, see the dedicated meeting site at http://sel.icann.org/. Significantly, the meeting approved internationalised domain names at the country level (IDN ccTLDs), that is domains in non-Latin scripts (such as, for example, Arabic). It is expected that these will be operational around the middle of 2010. Other reports suggest that ICANN staff have reported that the introduction of the new gTLDs will not now take place until the second quarter of 2010 at the earliest.

New gTLDs and IDN gTLDs – Trade mark and Brand Owners greatest risks or ultimate online branding strategy?

Since the opening of the Internet to commerce, through the dotcom boom and dotcom bust to the dotcom revival, the dotcom registry has dominated for Internet global business purposes. This is about to change, dramatically and permanently… READ MORE

1.4 Designs

Serbia’s accession to the 1999 Act

On September 9, 2009, the Government of Serbia 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 will enter into force in respect of Serbia on December 9, 2009. The complete communication can be found at: http://www.wipo.int/edocs/hagdocs/e…

1.5 Security Interests in IP

UNCITRAL secured transaction seminar in London

On 14 October 2009, David Latham, Member of ECTA Law Committee, attended the seminar "IP rights and the UNCITRAL secured transaction project: the draft recommendations and their potential consequences for British lenders and IP owners" held in London. READ MORE

UNICITRAL Conference at the UN in Vienna

As mentioned in FLASH 18-09 the UNCITRAL Working Group meeting is taking place this week in Vienna (2-6 November 2009). The Legislative Guide should be finalised to be adopted at the next meeting of UNCITRAL on 8-12 February 2010 in New York. ECTA is represented by Christian Gassauer-Fleissner, Barbara Kuchar, Michael Wolner and Max W. Mosing. A report should soon be published.

2 Office Practice

2.1 OHIM

New RCD E-Filing feature

An updated version of RCD E-Filing was released, providing an option for uploading all the views (up to seven) in one click. The order of the views can then be rearranged. The option is available by clicking on the "Bulk Upload" button which is located under the "Views for Design" sub-section in the RCD E-Filing form. The communication can be found at: http://oami.europa.eu/ows/rw/news/i…

OHIM’s E-Business Users Group Meeting

OHIM’s E-Business Users Group met in Alicante on 27 October 2009 to discuss the state of play in the Office’s online tools and future developments. Presentations are now available on OHIM website (http://oami.europa.eu/ows/rw/news/i…). Jorge Bento of J. Pereira da Cruz and Carlos Alvarez of Durán-Corretjer attended the meeting on behalf of ECTA. Their report can be found on the section Papers of the OHIM-Link Committee.

SMEs in action

OHIM is celebrating the international success of smaller European companies in a new section of their website titled, "SMEs in Action". They gathered the stories of 15 SMEs who have chosen the Community trade mark to help them tackle the opportunities of the single European market. For more information, please consult: http://oami.europa.eu/ows/rw/news/i…

Twitter and YouTube

From 26 October 2009, OHIM has been using Twitter, YouTube and other new Internet communication media, in order to improve the flow of information to customers. OHIM’s Twitter account has been created under the name, OAMITWEETS. OHIM has also videos on YouTube, at http://www.youtube.com/user/OAMItubes. For more information, please consult: http://oami.europa.eu/ows/rw/news/i…

2.2 WIPO

Advisory Commmittee on Enforcement

ECTA represented by Christophe Maillefer, Member of ECTA Anti-Counterfeiting Committee, attended the fifth session of the Advisory Committee on Enforcement at WIPO (2-4 November 2009). The Working documents can be found at: http://www.wipo.int/meetings/en/det… A report will be published in the next flash.

Nice Union meeting

The twenty-eighth session of the Preparatory Working Group on Nice Classification will take place at WIPO on 16-20 November 2009. All documentation can be found at: http://www.wipo.int/meetings/en/det… An Ad hoc group within the ECTA Law Committee is currently working on the Nice Classification.

SCT meeting

The twenty-second session of the Standing Committee on the Law of Trade marks, Industrial Designs and Geographical Indications will take place at WIPO on 23-26 November 2009. All documentation can be found at: http://www.wipo.int/meetings/en/det…

Survey on Appelations of Origin

WIPO has initiated a survey on the Lisbon System for the Protection of Appellations of Origin and their International Registration. Answers are expected by the end of 2009 and will be discussed at the next Working Group on the Development of the Lisbon System (Appellations of Origin) in the first part of 2010. Information and survey can be found at: http://www.wipo.int/lisbon/en/feedb…

3 Case Law

Summaries and case law provided by Darts IP

3.1 Court of First Instance of the European Court of Justice

• On absolute grounds for refusal

Case : T- 339/07 of 28 October 2009, Juwel Aquarium GmbH & Co. KG / OHIM – Christian Potscha (contested decision: R 214/2006-1 of 28 June 2007)

Trade mark: PANORAMA

Classes: 11, 16, 20

Decision :

The trade mark is descriptive for aquarium lamps, indoor aquariums and terrariums and furniture and chassis for aquariums and terrariums. It is directly informing the relevant public, at least in the German speaking regions, about an essential characteristic of the products, which is to say the particularly large view on the content of the aquarium or terrarium (para. 35 to 36).

The Board of Appeal’s decision is upheld.

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• On relative grounds for refusal

Case : T-146/08 of 13 October 2009, Deutsche Rockwool Mineralwool GmbH & Co. OHG / OHIM – Redrock Construction s.r.o. (contested decision: R 506/2007-4 of 18 February 2008)

Trade marks :

Rock
Earlier trade mark																					Community trade mark applied for

Classes: 1,2,17,19,36,37

Decision :

The trade marks are visually (para.59 to 67) and aurally (para. 68 to 74) different. There is a slight conceptual similarity (75 to 81). In view of the differences between the trade marks, there is no likelihood of confusion (para. 84 to 88).

The Board of Appeal’s decision is upheld.

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Case : T-307/08 of 20 October 2009, Aldi Einkauf GmbH & Co. OHG / OHIM – Goya Importaciones y Distribuciones, SL (contested decision: R 1199/2007-1 of 7 May 2008)

Trade marks:

Earlier trade mark																					Community trade mark applied for

Classes: 18, 25

Decision :

The trade marks are visually (para.26 to 28), aurally (para. 29) and conceptually (para. 30) similar. Overall, there are similar (para. 31). There is a likelihood of confusion (para. 32 to 37).

The Board of Appeal’s decision is upheld.

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Case : T-140/08 of 14 October 2009, Ferrero SpA / OHIM – Tirol Milch reg.Gen.mbH. Innsbruck (contested decision: R 682/2007-2 of 30 January 2008)

Trade marks :

KINDER
Earlier trade mark																				Contested trade mark

Classes: 29, 30

Decision :

1. The principle of res judicata, which prohibits a final judicial decision being called into question, is not applicable so far as concerns the relationship between a final decision in opposition proceedings and an application for a declaration of invalidity, given, inter alia, first, that proceedings before OHIM are administrative and not judicial and, second, that the relevant provisions of Regulation No 40/94, namely Article 52(4) and Article 96(2) (now Article 53(4) and Article 100(2) of Regulation No 207/2009) lay down no rule to that effect The findings made in the final opposition proceedings decision could not be entirely ignored when deciding an invalidity action having the same parties, the same subject matter and the same grounds, provided that those findings or decided issues are not affected by new facts, new evidence or new grounds. That assertion is no more than a specific expression of the case-law according to which the previous decisions of OHIM are a factor which may be taken into consideration in assessing whether a sign is suitable for registration ( para. 35 ).

2. The trade marks are visually and aurally different ( para. 55 to 59 ).

The Board of Appeal’s decision is upheld.

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Case : T-80/08 of 28 October, CureVac GmbH / OHIM – Qiagen GmbH (contested decision: R 1219/2006-1 of 11 December 2007)

Trade marks:

RNActive																					RNAiFect
Earlier trade mark																					Community trade mark applied for

Classes: 1, 5

Decision :

The trade marks are visually (para. 38 to 41), aurally ( para. 42) and conceptually (para.43 to 45 ) different.

The Board of Appeal’s decision is upheld.

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Case : T- 273/08 of 28 October 2009, X-Technology R & D / OHIM – Ipko-Amcor BV (contested decision: R 281/2007-4 of 15 May 2008)

Trade marks :

FIRST																					First-on-Skin
Earlier trade mark																					Community trade mark applied for

Class: 25

Decision :

The trade marks are visually (para. 34 to 35), aurally ( para. 36) and conceptually (para.37 to 41 ) similar. There is a likelihood of confusion (para. 42 to 49).

The Board of Appeal’s decision is upheld.

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Case : T- 137/08 of 28 October 2009, BCS SpA/ OHIM – Deere and Company (contested decision: R 222/2007-2 of 16 January 2008)

Trade marks :

Combination of the colours green and yellow
Unregistered earlier trade mark																												Contested trade mark

Classes: 7, 12

Decision :

1. The contested trade mark is become distinctive through use ( para. 33 to 68 ). 2. The nullity action based of the unregistered trade mark consisting in the combination of the colours green and yellow is unfounded. The applicant ceased, at least from 1973 to 1982, to use the combination of the colours green and yellow on its goods in Italy. Although it would have been possible for the applicant to acquire a non-registered right in its sign through the use from 1983 to 1996 it did not do so. It is also apparent that it did not use the combination of the colours green and yellow in a consistent and uniform manner. On the contrary, it used a number of shades of green and yellow as well as a combination of the colours green and white. It follows that the suspension of use of the combination of the colours green and yellow as a mark and the varying use of those colours were liable to prevent the public from systematically associating the applicant with a specific combination of colours ( para. 73 and 74 ).

The Board of Appeal’s decision is upheld.

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Case : T- 386/07 of 29 October 2009, Peek & Cloppenburg / OHIM – Redfil SL

(contested decision: R 1324/2006-2 of 26 July 2007)

Trade marks :

Aygill’s
Earlier trade mark																					Community trade mark applied for

Classes: 18, 25, 28

Decision :

The trade marks are visually ( para. 24 to 28 ) and aurally ( para. 29 to 31 ) similar. Conceptually, they are different ( para. 32 to 33 ), but the conceptual difference is not, in the circumstances of the case, such as to neutralise the similarities found to exist ( para. 38 ). Overall, they are similar, but to a low degree ( para. 39 ). Taking into account the identity of the goods , there is a likelihood of confusion ( para. 40 to 46 ).

The Board of Appeal’s decision is upheld.

3.2 European Court of Justice

Preliminary ruling

Reference for a preliminary ruling from the Dutch Supreme Court lodged on 15 October 2009- Makro CV, Metro Cash & Carry BV, Remo Zaandam BV / Diesel (Case C-324/08)

The ECJ replies to a question in connection with the conditions of implied consent required by the principle of exhaustion of the trade mark right.

The ECJ’s reply reads as follows : Article 7(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that the consent of the proprietor of a trade mark to the marketing of goods bearing that mark carried out directly in the European Economic Area by a third party who has no economic link to that proprietor may be implied, in so far as such consent is to be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market in that area which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his exclusive rights.

4 ECTA News

4.1 ECTA OHIM LINK MEETING

The 24th ECTA OHIM-Link meeting will take place in Alicante on 6 November 2009. ECTA will be represented by Simon Reeves (ECTA President), Joao Peirera da Cruz (ECTA Chair of OHIM Link Committee), Doris Bandin (Member of ECTA Law Committee), Luis-Alfonso Duran (ECTA Past President, Member of ECTA OHIM Link Committee and ECTA Law Committee), Keith L. Hodkinson (Member of ECTA OHIM Link Committee and ECTA Design Committee), Nikolaos Lyberis (Member of ECTA OHIM Link Committee and ECTA Anti-Counterfeiting Committee) and Anne-Laure Covin (ECTA Legal Co-ordinator). The Minutes of the meeting will be published on ECTA website.

4.2 AIPPI 8th NGO Coordination Meeting

ECTA, represented by Luis-Alfonso Duran, took part in the 8th NGO Coordination meeting organised by AIPPI in Buenos Aires on October 12, 2009. The Minutes of the report will be published on ECTA website.