ECTA - European Communities Trade Mark Association

Table of Contents

1 LAW

1.1 Trade Marks

• OHIM Joint Meeting of the ABBC and Meeting of the AB in Alicante
• ECTA Observer at OHIM Budget Committee

1.2 Geographical Indications

• ECTA Meeting with DG AGRI
• WIPO’s survey questionnaire on Appellations of Origin

1.3 Enforcement

• Sub group on legal framework of the European Observatory for Counterfeiting and Piracy - DG MARKT
• Swedish Presidency for the EU hosting the conference ”Enforcement of Intellectual Property Rights – With a Special Focus on Trademarks and Patents”- Stockholm

1.4 Domain Names

• New gTLDs - MARQUES and ECTA’s paper to ICANN

2 OFFICE PRACTICE

2.1 OHIM

• Success of test version of TMview
• Brussels workshop on Chinese trade mark system - 15 December 2009

2.2 WIPO

• SCT meeting

3 CASE LAW

Court of First Instance

T-473/08 THINKING AHEAD
The trade mark is devoid of any distinctive character

T-234/06 CANNABIS
The trade mark is descriptive

T-298/06 1000
The trade mark is descriptive

T-399/08 CLEARWIFI
The trade mark is descriptive

T-425/07 and T-426/07 100 (fig)-300 (fig)
The word elements 100 and 300 are descriptive

4 ECTA NEWS

• ECTA met CCBE – Judicial Architecture for trade marks
• ECTA at the conference "Postal Freight and Counterfeit: a sensitive equation" - Paris

1 Law

1.1 Trade Marks

OHIM Joint Meeting of the ABBC and Meeting of the AB in Alicante

ECTA represented by Anne-Laure Covin, ECTA Legal Co-ordinator, took part in the joint meeting of the Administrative Board and the Budget Committee on 16 November 2009 and in the meeting of the Administrative Board in Alicante. At the joint meeting, the main discussed topics were the Cooperation Fund and the Study.

Regarding the Cooperation Fund, Lord Mogg, the Chair of the Management Board of the Cooperation Fund, made a clear and interesting presentation on the progress of the project for the CF. The Consultant, Gartner also made a short presentation. The ECTA Minutes and all the annexes of this meeting can be found in OHIM-LINK Committee - Papers section. ECTA underlined that it fully supports the principle of solidarity mentioned by Lord Mogg as there is a clear need to give priority to national offices where there is a bigger demand for assistance. ECTA also referred to its letter of 10 November where it mentioned additional suggestions in connection with projects to be supported by the Cooperation Fund. ECTA reminded that it is supporting the Management Board in the implementation of the projects to be covered by the CF keeping in mind users’ interests and needs.

There will be an extraordinary joint meeting of the ABBC on 24 February 2010 where the Management Board will present their specific and more developed proposals for projects in order to get the approval of the Member States. The vote to deblock the 50 million euro will take place at the Budget Committee on 14 April 2010. The next joint meeting of the Administrative Board and of the Budget Committee will take place on 12 April 2010 in Alicante.

On 20 November 2009, Wubbo de Boer, OHIM President sent an update of the meetings of the Joint Meeting of the ABBC, the meetings of the AB and of the BC to the OHIM Users Group. This paper can be found in OHIM-LINK Committee - Papers section. OHIM communication on the Cooperation Fund can be found at: http://oami.europa.eu/ows/rw/news/i…

Regarding the study, Margot Fröhlinger, Director Direction D - Knowledge-based Economy, DG Internal Market and Services, made a report on the study referring to the Max Planck Institute as the contractor for the Study and mentioned that OHIM met them 2 weeks ago. Max Planck envisages to carry out interviews with national offices: comprehensive questionnaires and 15 face-to-face meetings with national offices (the choice of these 15 offices will be based on a balance between north and south territories of the EU, big and small countries). Concerning the users, Allensbach Institute’s, sub-contractor of Max Planck, will perform a comprehensive user’s survey with the 5 NGOs and other users (other associations, companies and individuals). These questionnaires should be sent by beginning of 2010, probably with a reply deadline of 6-8 weeks. There will be a public hearing with user associations during the Spring of 2010. All publicly available information ban be found on Max Planck’s website. The preliminary results of the study will be available by end of February 2010. They will be presented to the users during the spring. The final report and impact assessment of the Commission are expected by November 2010. These will be the basis for the drawing of the new TM Directive and CTM Regulation.

On 17 November 2009, the contractor Max Planck sent a letter (see Law Committee - Papers section) where they referred to the Study and informed about the different steps to be undertaken). They particularly mentioned in connection with the user associations: “…we are seeking your views on the overall “theme” of the Study, as well as on the individual points raised in the tender. We would be particularly interested in the results of any inquiries or comparative analyses that may have been carried out by your organisation as well as being informed about activities that are likely to be undertaken to develop the opinions on your organisation. We have made available on the website of our Institute a page dedicated to this Study, which will allow interested parties to follow the development of the Study, and allow any person to submit comments or other contributions of relevance for the Study. We would therefore appreciate it if you would inform your members accordingly.”

Max Planck gave a deadline of 15 January 2010 to reply. ECTA President and Vice President together with Fabio Angelini, Chair of the Law Committee, Monika Wenz, Chair of the Harmonisation Committee and Max Oker-Blom, Past President of ECTA and member of the Law Commiittee, are currently preparing a reply. A first draft will be circulated this week to the Council members and Chairs of Committees. Comments are most welcome by 15 December 2009.

On 17 November 2009, ECTA also took part in the meeting of the OHIM Administrative Board where presentations were made. The ECTA Minutes and the annexes can be found at OHIM-LINK Committee - Papers section. The next Administrative Board meeting will take place on 13 April 2010 in Alicante.

Reported by Anne-Laure Covin, ECTA Legal Co-ordinator

ECTA Observer at the OHIM Budget Committee

Following ECTA’s request orally and formally on 6 November 2009, Robert Ullrich, OHIM Chair of the Budget Committee, informed in his letter of 19 November 2009 that ECTA had been granted the status of observer at the Budget Committee of OHIM. ECTA will then be able to attend the next meeting of the Budget Committee on 14 April 2010 in Alicante.

1.2 Geographical Indications

ECTA Meeting with DG AGRI

ECTA Geographical Indications Committee will meet the DG AGRI in Brussels on Friday 11 December 2009. List of participants, agenda of the meeting and report will be published on ECTA’s website when available.

WIPO’s survey questionnaire on Appellations of Origin – Lisbon System

As mentioned in Flash 19-09, WIPO has initiated a survey on the Lisbon System for he Protection of Appellations of Origin and their International Registration. ECTA Geographical Indications Committee is currently working on the answers to be sent to WIPO prior to the end of December 2009. Information and survey can be found at: http://www.wipo.int/lisbon/en/feedb…

1.3 Enforcement

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

The second meeting of the Sub-Group of experts on Legal Framework set up within the European Observatory on Counterfeiting and Piracy took place on 24 November 2009 in Brussels. READ MORE

Swedish Presidency for the EU hosting the conference ”Enforcement of Intellectual Property Rights – With a Special Focus on Trademarks and Patents”- Stockholm

The Swedish Minister of Justice Beatrice Ask has invited ECTA to take part in the conference ”Enforcement of Intellectual Property Rights – With a Special Focus on Trademarks and Patents”. It will take place in Stockholm on 15-16 December 2010 and ECTA will be represented by Marius Schneider ECTA Chair of the Anti-Counterfeiting Committee and Max Oker-Blom, ECTA Past President and Member of ECTA Law Committee. A report will be published.

1.4 Domain Names

New gTLDs - MARQUES and ECTA’s paper to ICANN

On 22 November 2009, comments from ECTA and MARQUES on ICANN’s new gTLD Applicant Guidebook (third draft) were sent to ICANN. The position paper was signed by Nick Wood, MARQUES Chair of the CyberSpace Team and Andrew Mills, ECTA Chair of the Internet Committee.

2 Office Practice

2.1 OHIM

Success of test version of TMview

The test version of TMview, the database providing access to more than 5m trade marks attracted around 5,000 visitors in the first 10 days of availability. The new service is designed to simultaneously search, free of charge, the databases of existing trade marks held by OHIM, WIPO, and the UK, Czech, Italian, Benelux, Portuguese and Danish IP Offices. The trade mark information from eight other European IP Offices is due to be included over the next few months and more will come at a later stage. The full release of TMview is planned for early 2010, but users can try the "Beta” or pre-release version immediately. Please find the complete communication at: http://oami.europa.eu/ows/rw/news/i…

Brussels workshop on Chinese trade mark system- 15 December 2009

A one day workshop on the Chinese trade mark system will be hosted by OHIM in Brussels on 15 December as part of the EU-China project on IPR ( IPR 2). OHIM and the European Patent Office - the implementing agency for IPR 2 - are in charge of organising the event. Presentations will be given by representatives from China’s State Administration for Industry and Commerce, and in particular the Trade Mark Office. OHIM’s President, Wubbo de Boer, will be there to open the event together with representatives from China. The complete communication can be found at: http://oami.europa.eu/ows/rw/news/i…

2.2 WIPO

SCT meeting

The twenty second session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications took place at WIPO from 23-26 November 2009. The Summary of the Chair has not yet been published. ECTA’s report will be published soon.

3 Case Law

Summaries and case law provided by Darts IP

Court of First Instance of the European Court of Justice

On absolute grounds for refusal

Case : T-473/08 of 17 November 2009, Apollo Group / OHIM (contested decision: R 728/2008-2 of 14 August 2008)

Trade mark:

THINKING AHEAD

Class: 41

Decision: The trade mark is devoid of any distinctive character. It constitutes, because of its inherent meaning which evokes the future, a principally promotional message (para. 31 to 39).

The Board of Appeal’s decision is upheld.

Case : T-234/06 of 19 November 2009, Giampietro Torresan / OHIM – Klosterbrauerei Weissenohe GmbH & Co. KG (contested decision: R 217/2005-2 of 29 June 2006)

Trade mark:

CANNABIS

Classes: 32, 33

Decision: The trade mark is descriptive. CANNABIS refers to the cannabis plant, which is well known to the public as a result of media coverage and is used in the manufacturing processes of certain foodstuffs and beverages. The average consumer will therefore immediately and without further thought make a connection between the sign in question and the characteristics of the goods in respect of which the mark has been registered (para. 27 to 44).

The Board of Appeal’s decision is upheld.

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Case : T-298/06 of 19 November 2009, Agencja Wydawnicza Technopol sp. Z o.o. / OHIM (contested decision: R 447/2006-4 of 7 August 2006)

Trade mark:

1000

Classes: 16, 28, 41

Decision: The trade mark is descriptive. 1000 alludes to a quantity and will immediately be perceived by the relevant public, without further thought, as a description of the characteristics of the goods in question, in particular the number of pages and works, amount of data, or the number of puzzles in a collection, or the ranking of items referred to in them (para. 26 to 36).

The Board of Appeal’s decision is upheld.

By judgments rendered also on November 19, the Court has adopted the same reasoning in respect of the following trade marks :

222, 333 et 555 (T-200/07 to T-202/07, para. 28 to 37)

150, 250 and 350 (T-64/07 to T-66/07, para. 27 to 36).

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Case: T-399/08 of 19 November 2009, CLearwire Corp. / OHIM) (contested decision: R706/2008-1 of 30 June 2008)

Trade mark:

CLEARWIFI

Class: 38

Decision: The trade mark is descriptive. It can be perceived by the relevant public as designating a form of technology – wifi technology – which enables the wireless connection of computers and various items of electronic equipment, either with each other or to Internet access points, and which is resistant to external interference (para. 29 to 40). Therefore, the mark CLEARWIFI is likely to be perceived by the relevant public as an indication of the quality and purpose of the services in question (para. 25 to 51). The Board of Appeal’s decision is upheld.

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Case : T-425/07 and T-426/07 of 19 November 2009, Agencja Wydawnicza Technopol sp. z.o.o. / OHIM (contested decision: R 1274/2006-4 and R 1275/2006-4 of 3 September 2007)

Trade marks:

Classes: 16, 28, 41

Decision: Article 38(2) of Regulation No 40/94 provides that where a trade mark contains an element which is not distinctive, and where the inclusion of that element could give rise to doubts as to the scope of protection afforded, OHIM may request, as a condition for registration, that the applicant state that he disclaims any exclusive right to that element.

The word elements 100 and 300 are descriptive. Consequently, the inclusion of those signs in the marks applied for might give rise to doubts as to the scope of protection afforded to the marks (para. 25 to 28).

Since the applicant failed to submit the disclaimers referred to in Article 38(2) of Regulation No 40/94, the Board of Appeal was therefore correct to refuse registration of the marks applied for (para. 29 and 30).

The Board of Appeal’s decision is upheld.

		To find the full text of the trade mark decisions reported in the ECTA Flashes, please search the ECTA Info Database (including the free Darts-ip Europe Case Law database) available on ECTA’s website in the "member’ only" section under Publications - Flash. ECTA offers its members free access to Darts-ip search functions limited to ECJ and CFI decisions as well as for national decisions reported in ECTA Flashes. If you are interested in having full access to the 100,000 pan-European case law documents in darts-ip, additional information can be found on www.darts-ip.com.

4 ECTA News

ECTA met CCBE – Judicial Architecture for trade marks

ECTA represented by Annick Mottet Haugaard, ECTA First Vice President, Fabio Angelini, ECTA Chair of Law Committee, Peter Müller, ECTA Chair of the Professional Affairs Committee and Anne-Laure Covin, ECTA Legal Co-ordinator met representatives of the CCBE (Council of Bars and Law Societies of Europe, representing Europe’s lawyers) in Brussels on 26 November 2009.

The judicial architecture at the EU level in connection with trade marks was discussed. The discussion concentrated on whether it was better to have one specialised chamber in trade marks at the CFI or one specialised court in trade marks below the CFI. A more detailed report will be published soon.

ECTA at the Conference "Postal Freight and Counterfeit: a sensitive equation"

Postal parcels are an increasingly used means for the acquisition and circulation of counterfeit goods – including exportation and above all importation into the EU Member States and other relevant economic areas in the world (USA and Canada, Japan, Korea, among others). READ MORE