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Table of Contents

1. LAW

1.1 EU issues
  • Entry into force of the Treaty of Lisbon
  • EU Guide to unfair trading practices
1.2. Trade Marks
  • OHIM Cooperation Fund – ECTA’s letter to Lord Mogg
1.3. Enforcement
  • Sub-group on legal framework of the European Observatory for Counterfeiting and Piracy- DG MARKT
1.4. Geographical Indications
  • ECTA Meeting with DG AGRI
1.5 Designs
  • Accession by Germany to the 1999 Act of the Hague Agreement and level of the standard designation fee
  • Denunciation by Switzerland of the 1934 Act of the Hague Agreement

2. OFFICE PRACTICE

2.1. OHIM
  • Electronic-only CTM certificates
  • ".eu" Internet domain now available in all EU languages
  • CTM Bulletin changes
  • OHIM hosts "Trade Mark Trilateral"
2.2. WIPO
  • New Assignment
  • Paperless UDRP Proceedings
  • Collaboration of WIPO and OHIM in trade mark classification

3. CASE LAW

Court of First instance

T-486/08 SUPERSKIN
Registration partly refused for certain goods and services

T-353/07 COLORIS vs COLORIS (fig)
Genuine use of the earlier mark established

T-434/07 VOLVO vs SOLVO (fig)
Since the Board of Appeal refrained from carrying out a global assessment of the likelihood of confusion, its decision is annulled

T-484/08 VITS4KIDS vs KID Kits
The trade marks are visually, aurally and conceptually similar

4. ECTA NEWS

ECTA at the centennial of the Belgian Group of AIPPI

1 Law

1.1 EU issues

Entry into force of the Treaty of Lisbon

Following the entry into force of the Treaty of Lisbon on 1 December 2009, the European Union has formally replaced the European Community. Some treaties and European Institutions will then be renamed. The Lisbon Treaty amends the Maastricht Treaty or Treaty on European Union (TEU) and the Treaty establishing the European Community, with the latter to be known in future as the "Treaty on the Functioning of the European Union" (TFEU). The whole court system of the European Union will be known as the Court of Justice of the European Union, comprising three courts: the Court of Justice, the General Court and the Civil Service Tribunal. There will also be some changes to the court’s jurisdiction.

EU Guide to unfair trading practices

The European Commission has released new guide on the application of the Directive on Unfair Commercial Practices. The Directive, adopted in 2005, protects EU consumers from aggressive sales techniques and things like misleading packaging. The full guide can be found at: http://ec.europa.eu/consumers/right… The unfair practice website can also be consulted at: http://www.isitfair.eu/

1.2. Trade Marks

OHIM Cooperation Fund – ECTA’s letter to Lord Mogg

On 30 November 2009, Lord Mogg, Chair of the Management Board of the OHIM Cooperation Fund requested the Delegations and the five NGO Observers at the OHIM Administrative Board to further develop the projects to be supported by the Cooperation Fund and in particular those relating to the training and anti-counterfeiting areas (see OHIM Link Committee - Papers section). ECTA sent its response on 14 December. The four other NGOs (AIM, BUSINESS EUROPE, INTA and MARQUES) also sent their comments as well as fourteen Delegations namely Bulgaria, Czech Republic, Estonia, Finland, Germany, Hungary, Malta, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain and UK. The members of the Management Board and OHIM representatives will meet in Brussels on 21 December 2009 to further discuss the proposed projects in view of the extraordinary meeting of the Administrative Board of 24 February 2010 which will take place in Alicante.

1.3. Enforcement

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

The third meeting of the Sub-Group of experts on Legal Framework set up within the European Counterfeiting and Piracy Observatory took place on 11 December 2009 in Brussels. READ MORE

1.4. Geographical Indications

ECTA Meeting with DG AGRI

ECTA represented by Florent Gevers, Chair of ECTA Geographical Indications Committee, Fabio Angelini, Chair of ECTA Law Committee, and Anne-Laure Covin, ECTA Legal Co-ordinator, met on 11 December 2009 in Brussels ix representatives of the Unit "Agricultural product quality policy - H.2" of DG AGRI, namely Keijo Hyvonen, Head of Unit, Francis Fay, Deputy Head of Unit,Cristina Rueda, Administrator, Alessandro Tonoli,Administrator, Aiste Zegunaite, Policy Officer - Quality, Wojciech Ptak, Policy Officer – Quality. The report can be found at Geographical Indications Committee- Papers section.

1.5. Designs

Accession by Germany to the 1999 Act of the Hague Agreement and level of the standard designation fee

On 13 November 2009, Germany 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 Germany on 13 February 2010. Germany’s accession brings the number of signatories to the Hague Agreement to 56 parties. The full communication can be found at: http://www.wipo.int/edocs/hagdocs/e…

Denunciation by Switzerland of the 1934 Act of the Hague Agreement

By notification received on 19 November 2009, the Government of Switzerland denounced the 1934 Act of the Hague Agreement with the Director General of the World Intellectual Property Organization (WIPO). The full communication can be found at: http://www.wipo.int/edocs/hagdocs/e…

2 Office Practice

2.1. OHIM

Electronic-only CTM certificates

OHIM introduced a new system of E-Certificates for registered CTMs from 9 December 2009, in a move to help reduce registration times. From this date, the Office will no longer issue paper certificates. The communication can be found at: http://oami.europa.eu/ows/rw/news/i… New “How-to” videos demonstrating OHIM’s E-Certificate system for CTMs are also now available on OHIM website. Please consult: http://oami.europa.eu/ows/rw/news/i…

".eu" Internet domain now available in all EU languages

European citizens, businesses and organisations can now register .eu website names using characters from all 23 official languages of the European Union thanks to new EU rules adopted by the Commission in June 2009. The complete communication can be found at: http://oami.europa.eu/ows/rw/news/i…

CTM Bulletin changes

Following changes to the CTM Bulletin introduced on 23 November, the B1 section of the Bulletin covering registrations is being published every day from Monday to Friday. In addition the renewals section (D1) is also being published daily when data is available. On days when no renewals are ready for publication, section D1 will be blank. All sections of the Bulletin will continue to be published as before on Mondays. The full communication can be found at:http://oami.europa.eu/ows/rw/news/i…

OHIM hosts "Trade Mark Trilateral"

OHIM hosted the eighth Trade Mark Trilateral meeting with the United States Patent and Trademark Office and the Japan Patent Office, on 9-11 December 2009. The annual event, which allows the discussion of projects of mutual interest benefitting trade marks users worldwide, was also attended by observers from WIPO and China’s State Administration for Industry and Commerce.

2.2. WIPO

New Assignment

On 1 December 2009, Ernesto Rubio has started in his new position of Special Advisor to WIPO. Wang Binying has taken over his responsibility of Deputy Director General from this date. In his letter of 30 November 2009 to ECTA, Ernesto Rubio expressed his appreciation for the excellent relationship between ECTA and WIPO during his mandate. ECTA is willing to convey special thanks to Ernesto for his excellent work and professionalism, we sincerely wish him the best for his new responsibility and look forward to further collaboration with his successor.

Paperless UDRP Proceedings

On 14 December 2009, the WIPO Arbitration and Mediation Center launched paperless UDRP procedures. This removes the requirement for mandatory filing and notification of paper pleadings in WIPO cases filed under the Uniform Domain Name Dispute Resolution Policy (UDRP). The full communication can be found at: http://www.wipo.int/pressroom/en/ar…

Collaboration of WIPO and OHIM in trade mark classification

WIPO and OHIM signed on 3 December 2009 a common understanding on future cooperation in trade mark classification in Vienna. WIPO will support the initiative undertaken by OHIM and a number of national trade mark offices in the European Union to establish a common database of acceptable indications of goods and services in an effort to harmonize classification practice and consequently facilitate the registration of marks in their respective offices. In its capacity as administrator of the International “Nice” Classification, WIPO will be available to arbitrate in case of a disagreement regarding the correct classification of a new term during the implementation of this project. The full WIPO communication can be found at: http://www.wipo.int/madrid/en/news/… The full OHIM communication can be found at: http://oami.europa.eu/ows/rw/news/i…

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-486/08 of 9 December 2009, Liz Earle Beauty Co. Ltd /OHIM (contested decision: R 1656/2007-4 of 15 September 2008)

Trade mark:

SUPERSKIN

Class: 3, 5, 44

Decision: The trade mark is descriptive. It will be immediately be perceived by the relevant public, without further thought, as designating goods and services which have as their intended purpose high quality skin, that is to say, beautiful and/or healthy skin (para. 37).

Registration is refused in respect of all the goods and services covered by the application except for perfumes, nail and hair care preparations, antiperspirants, deodorants, dentifrice, hair colouring preparations, hair spray, eyecare preparations, nail varnish, nail varnish remover, artificial nails, hygienic care and cosmetic treatments for the hair (class 3) and hygienic care and cosmetic treatments for the hair). The sign at issue does not have a sufficiently direct and specific relationship with those goods and services (para. 41 and 43).

The Board of Appeal’s decision is annulled in part.

On relative grounds for refusal

Case: T-353/07 of 30 November, Esber, SA/OHIM–Coloris Global Coloring Concept (contested decision: R 1060/2006-1 of 28 June 2007)

Trade marks:

Coloris
Earlier trade mark Community Trade mark applied for

Classes: 2, 16

Decision:

1. The complex signs used in the evidence differ, essentially, from the earlier word mark as a result of the presence of the word elements ‘global coloring concept’ and ‘gcc’ together with the image of a globe and, sometimes, the additional word element ‘colorants & technologies’ below the sign. However, those complex forms, including the earlier word mark do not have any differences which alter the distinctive character of the earlier mark, within the meaning of Article 15(2)(a) of Regulation No 40/94. Consequently, the Board of Appeal did not err when it took those signs into consideration for the purpose of assessing the evidence of genuine use of the earlier mark (para. 28 to 36).

2. Considered as a whole, the evidence submitted by the intervener supports the finding of the Board of Appeal that genuine use of the earlier mark in the course of the relevant period in France had been established (para. 39 to 50).

The Board of Appeal’s decision is upheld.

Case: T-434/07 of 2 December 2009, Volvo Trademark Holding AB/OHIM – Elena Grebenshikova (contested decision: R 1240/2006-2 of 2 August 2007)

Trade marks :

VOLVO
Earlier trade mark Community Trade mark applied for

Class: 9

Decision: The trade marks are visually (para. 33 to 37) different and aurally (para. 38 to 41) similar. The existence of a degree of similarity between the signs at issue as regards one of the relevant aspects examined, namely phonetic similarity, precludes the conclusion that one of the essential conditions for the application of Article 8(1)(b) is lacking. In those circumstances, the Board of Appeal was required to carry out a global assessment of the likelihood of confusion (para. 50). Since the Board of Appeal refrained from carrying out such a global assessment, it must be held that it infringed Article 8(1)(b) of Regulation No 40/94.

The Board of Appeal’s decision is annulled.

Case: T-484/08 of 9 December 2009, Longevity Health Products, Inc./OHIM – Merck KGaA (contested decision: R 716/2007-4 of 28 August 2008)

Trade marks:

VITS4KIDS Kids Vits
Earlier trade mark Community Trade mark applied for

Class: 5

Decision: The trade marks are visually (para. 32), aurally (para. 33) and conceptually (para. 34) similar. There is a likelihood of confusion (para. 38). The Board of Appeal’s decision is upheld.

4 ECTA News

ECTA at the centennial of the Belgian Group of AIPPI

Belgium is one of the oldest national groups of AIPPI. It was constituted in Brussels in 1909.

Annick Mottet Haugaard, ECTA Vice President, and Florent Gevers, ECTA Past President and Chair of ECTA Geographical Indications Committee and ECTA member of honor, attended its Centennial event. READ MORE