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02-12 | 2 February 2012

Topics: ACTA EUIPO Cooperation Fund Lisbon System TM View

ECTA SEMINAR "CRUCIAL CHALLENGES FOR THE EUROPEAN TRADE MARK SYSTEM", BRUSSELS, 8 FEBRUARY 2012

In the framework of the Study on the overall functioning of the trade mark system in Europe and in view of the publication of the legislative package covering the Directive and Regulation on trade marks, ECTA will organize a seminar in Brussels on 8 February 2012 in the Silken Berlaymont hotel. The topics "territoriality of genuine use" and "class headings and means to facilitate clearance of the CTM register" will be discussed.

Programme
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ECTA GEOGRAPHICAL INDICATIONS ROUND TABLE, ALICANTE, 16 FEBRUARY 2012

Join us with experts from Producer Associations, the OHIM and professional representatives for a lively discussion on GIs and the Community Trade Mark System!

Programme
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ECTA - COAPI – AGESORPI – WIPO – OEPM WORKSHOP ON INTERNATIONAL REGISTRATION OF DESIGNS, MADRID, 21 MARCH 2012

After successful events in London, Rome, Paris and Hamburg, ECTA is pleased to invite you to attend a further workshop on international registrations of designs in order to promote the Hague System and to prove its great advantages. This workshop, held in collaboration with COAPI – AGESORPI – WIPO – OEPM will take place in Madrid on 21 March 2012. The language of the event will be Spanish.

Programme
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GRUR-ECTA JOINT BRUSSELS WORKSHOP “EUROPEAN TRADE MARK SYSTEM(S) UNDER REVIEW- A FIRST SUMMARY OF THE NEW LEGAL FRAMEWORK”, BRUSSELS, 30 MAY 2012

GRUR and ECTA are pleased to invite their members to attend on 30 May 2012 (from noon to 5pm) in Brussels at the Permanent Representation of the State of North-Rhine Westphalia to the European Union the workshop “European Trade Mark System(s) under review – A first summary of the new legal framework”. Please already mark your agenda. The detailed final programme and registration form will be made available soon.


Table of Contents

1 LAW
1.1 Enforcement
  • U.S. rogue website legislation updates
  • ACTA
2 OFFICE PRACTICE
2.1 Enforcement
  • U.S. Customs
2.2 OHIM
  • OHIM Website
  • OHIM Cooperation Fund
  • OHIM decision on reimbusement of fees
  • Benelux and OHIM
  • OHIM and TM View
  • OHIM in talks with users
  • OHIM Alicante News
  • OHIM Classification Manual
  • Spanish Trade Mark Office
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-513/10 Atrium
The trade mark is descriptive

T-249/10 KIKA vs. KICO (fig)
There is a likelihood of confusion

T-462/09 FAVOLIZIA vs. Ragolizia
There is a likelihood of confusion

T-522/10 HELLA vs. HELL (fig)
There is a likelihood of confusion

T-103/11 jusling (fig) vs. JUSTING (fig)
The claim of seniority cannot be upheld

T-304/09 BASMATI vs. fig
Action for passing off

T-260/08 VISUAL vs. VISUAL MAP
There is a likelihood of confusion

COURT OF JUSTICE

C-53/11P R10 vs. R10
Inadmissibility of an appeal before the Board of Appeal

4 ECTA NEWS
  • WIPO Working Group on Lisbon
  • WIPO Standing Committee
  • OHIM Link Committee
  • OHIM Liaison Meeting
  • Sister Associations

Editorial team: Sandrine Peters, Jean-Jo Evrard, Max Oker-Blom, and Cathy van Vuuren


1 Law

1.1 Enforcement

U.S. rogue website legislation updates

The US holiday weekend of 14-16 January 2012 witnessed a flurry of activity on the Hill over the Stop Online Piracy Act (SOPA) and the PROTECT IP Act (PIPA).

For further details please read James Bikoff report HERE.


ACTA

On 26 January 2012, the EU and 22 of its Member States have signed the ACTA Agreement during an official ceremony in Tokyo, Japan. The signature has taken place in the climate of cyber attacks against the websites of the Polish government, whose ambassador has signed the agreement, and the website of the European Parliament. The press release can be found HERE.

ECTA together with a few other NGOs has signed a document entitled ‘Why You Should Support ACTA’, which can be found HERE.

The Belgian member of the ECTA Anti-Counterfeiting Committee Olivier Vrins will speak on ACTA at a workshop of the European Parliament on 1 March 2012. The programme can be found HERE.

2 Office Practice

2.1 Enforcement

U.S. Customs

The year 2011 proved to be another banner year for IP enforcement efforts by the U.S. Customs and Border Protection (CBP) and U.S. Immigration Customs Enforcement (ICE).

James Bikoffs’ comments on the the US report released on 9 January 2012 can be found HERE.


2.2 OHIM

OHIM Website

In the framework of the implementation of the OHIM Strategic Plan, OHIM advised that it will launch a project for developing a new OHIM website.

OHIM’s letter explaining the objective of the project can be found HERE.


OHIM Cooperation Fund

ECTA received a letter from Lord Mogg providing an update on the current achievements of the various projects and the further steps to be taken which can be found HERE.

Also Cristina Bercial-Chaumier, Secretary of the ECTA Law Committee reports on a phone call with Mr. Simon White on the same subject. The report can be found HERE.


OHIM Decision on reimbursement of fees

Decision Nº ADM-11-98 of the President of the Office, relating to the regularisation of the reimbursement of fees, has been published by OHIM.

The Decision can be found HERE


Benelux and OHIM

Mr. Edmund Simon, Director General of the Benelux Office of Intellectual Property visited OHIM and spoke about his organisation’s increasing involvement in the Cooperation Fund activities and about BOIP’s future challenges.

Mr. Simon concluded his visit with a video interview, in which he outlined the BOIP perspective on the matters covered.

The video can be found HERE


OHIM and TM View

OHIM Has launched the second version of the TM View. It offers new features to improve the user experience, including additional searching and filtering options. It has also expanded to include trade marks from the offices of Lithuania, Romania and Sweden. With this addition TMView now provides access to close to seven million trade marks from the seventeen participating offices.

Find out more HERE


OHIM in talks with users

The Office has started a series of meetings with the chairs of the trade mark and design Committees of the User Associations.

Over the past few weeks, OHIM staff from ICLAD have met with representatives from MARQUES and ECTA to discuss their collaboration and hear their views on a number of issues, such as their involvement in the development of the practice instructions – The Manual –, their view on OHIM’s quality management and the information OHIM provides through Alicante News.
The next meeting will be in March, with the Institute of Trade Mark Attorneys (ITMA).

Andreas Renck, Chair of the ECTA OHIM Link Committee took part in the meeting. A report of the meeting will be provided in the next Flash.


OHIM Alicante News

The OHIM has published Alicante News 01-2012

The Alicante News comes with a new look and feel, a revamped layout of the main page and the reorganisation of some of its sections. It however does not change the content of it.

The Alicante News further include the following:
- An interview of Paulo Monteverde about improvements in the Portuguese office, the possibility of an IP court and the Budweiser dispute.
- Promotes the use of the Classification Manual drafted by OHIM in order to properly file its applications and avoid possible objections.
- An article dealing with the question whether the Office should take into account Article 8 CDR ex officio where invalidity proceedings are instituted against a RCD but no explicit reference to Article 8 CDR is made by the applicant.
- It further refers to the new version of TMView (see above), to the fact that Spain has opt out for the Trade mark search and that Cyprus, France and Austria have joined the EuroClass project at the beginning of the year.


OHIM Classification Manual

The Knowledge Circle “Goods and Services Issues” has incorporated the Classification Manual in the Examination Manual as part B.3., which enters into force on 1 February 2012.

The document reflects the current practice of the Office and has also been brought in line with the 10th edition of the Nice Classification.

The Office is, nevertheless, aware of Case C-307/10 “IP TRANSLATOR” and the fact that the preliminary ruling, which will be handed down, may affect it.

The Office is also working with a number of National Offices in the Class Headings Project with a view, precisely, to converge with them on a common approach to the interpretation of the Nice Classification Class Headings.

Whenever any of the two issues described above comes about, the Office will certainly, and without delay, take the necessary steps to amend the practice as reflected in this manual, and to inform users accordingly.

OHIM Manual_Part B3- Examination of classification of G&S


Spanish Trade Mark Office

The Spanish National Office (OEPM) has reached the next step in the Convergence Programme Harmonisation Project by adopting as the accepted list of Goods and Services the completely validated Spanish translations of the English Harmonised database.

This signals a major step towards the creation of a new and robust European Trade Mark network based on one common practice.

The new database will be available for the users on the 31 of January on the OEPM Website.

3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-513/10 of 17 January 2012, Hamberger Industriewerke GmbH vs. OHIM (contested decision: R 291/2010-4 of 26 August 2010)

Trade mark:

Atrium

Classes: 19 and 27

Decision: The trade mark is descriptive. The term ’atrium’ refers in particular to the central area of a house in Roman architecture and to an open-air or glass-covered inner courtyard (para. 17). Building materials and floor coverings may be used for building or fitting out both the central area of a house and an inner courtyard (para. 18). Hence, the trade mark may serve to designate the intended purpose of the goods covered by the trade mark application (para.20).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-249/10
of 17 January 2012, Kitzinger & Co vs. OHIM – Mitteldeutscher Rundfunk and Zweites Deutches Fernsehen
(contested decision: R-1388/2008-4 of 25 March 2010)

Trade marks:

KIKA
Earlier trade mark Community trade mark applied for

Class: 16

Decision: The trade marks are visually (para. 32 to 38) and aurally (para.43) similar. There is a likelihood of confusion (para. 48).

The Board of Appeal’s decision is upheld.


Case T-462/09
of 12 January 2012, August Storck KG vs. OHIM – Radiotelevisione italiana SpA(RAI)
(contested decision: R-1779/2008-4 of 8 September 2009)

Trade marks:

FAVOLIZIA Ragolizia
Earlier trade mark Community trade mark applied for

Class: 30

Decision: The trade marks are visually and aurally (para.26) similar. There is a likelihood of confusion (para. 36).

The Board of Appeal’s decision is upheld.


Case T-522/10
of 17 January 2012, Hell Energy Magyarorszag kft vs. OHIM – Hansa Mineralbrunnen GmbH
(contested decision: R-1517/2009-1 of 5 August 2010)

Trade marks:

HELLA
Earlier trade mark Community trade mark applied for

Class: 32

Decision: The trade marks are visually (para. 48 to 50) and aurally (para.52 to 54) similar.
There is a likelihood of confusion (para. 67).

The Board of Appeal’s decision is upheld.


Case T-304/09
of 18 January 2012, Tilda Riceland Ltd vs. OHIM – Sa Grains Co. Ltd
(contested decision: R-513/2008-1 of 19 March 2009)

Trade marks:

BASMATI
Earlier sign Trade mark applied for

Class: 30

Decision: The opposition was based on an earlier non-registered trade mark or earlier sign used in the course of trade ( Article 8(4) of Regulation No 207/2009). The opponent claimed that it was entitled under the applicable law in the United Kingdom (section 5(4) of the Trade Marks Act 1994) to prevent, by means of an action for passing off, use of the trade mark applied for.

Under that provision, the opponent must establish, in accordance with the legal rules governing actions for passing off, as laid down by the laws of the United Kingdom, that three conditions are satisfied: the goodwill acquired (that is to say, the attractive force which brings in custom),misrepresentation and damage caused to that goodwill (para. 19).

The Board of Appeal erred in rejecting the opposition on the ground that the
applicant had not proved that it was proprietor of the sign in question, without analysing specifically whether the applicant had acquired rights over that sign in accordance with the law of the United Kingdom (para. 29).

The Board of Appeal’s decision is annulled.


Case T-260/08
of 24 January 2012, Indo Internacional, SA vs. OHIM – Visual SA
(contested decision: R-700/2007-1 of 15 April 2008)

Trade marks:

VISUAL VISUAL MAP
Earlier sign Trade mark applied for

Class: 44

Decision: The trade marks are visually (para. 34 to 35), aurally (para.36) and conceptually (para. 37 to 39) similar. There is a likelihood of confusion (para. 42).

The Board of Appeal’s decision is upheld.


On seniority

Case T-103/11
of 19 January 2012, Tiantian Shang vs. OHIM
(contested decision : R-1388/2010-2 of 14 December 2010)

Trade marks:



Trade mark applied for Trade mark of which seniority is claimed

Classes: 18, 25

Decision: In order to uphold the claim of seniority of the earlier national mark for the purposes of the application for registration of the Community mark, three cumulative conditions must be fulfilled: the earlier national mark and the Community mark applied for must be identical; the goods or services covered by the Community mark applied for must be identical to, or contained within, those covered by the earlier national mark; and the proprietor of the marks at issue must be the same (para. 14).

The condition that the sign and mark must be identical must be interpreted restrictively (para. 17).

In the present case, the trade marks are not identical. Therefore, the claim of seniority of the earlier mark for the Community mark applied for cannot be upheld. (para. 21 to 23)

The Board of Appeal’s decision is upheld.


COURT OF JUSTICE

Case C-53/11P
of 19 January 2012, Nike International Ltd vs. OHIM – Aurelio Munoz Molina
(contested decision: T-137/09 of 5 August 2010)

Trade marks:

R10 R10
Earlier sign Trade mark applied for

Class: 25

Decision: A person who brings an appeal before the Board of must show that he has locus standi within the four month period provided for in Article 59 of Regulation No 40/94, otherwise the appeal will be declared inadmissible (para. 54).

Therefore, if there has been an assignment of the sign on which the opposition was based without that assignment being taken into account during the procedure before the Opposition Division, the assignee must adduce, within the four month period provided for in Article 59 of Regulation No 40/94, before the Board of Appeal the necessary proof that he became the owner of that sign by transfer in order to show that he has locus standi otherwise the appeal will be declared inadmissible (para 55).

The Board of Appeal cannot award an additional time-limit (para.52).

The General Court’s decision is annulled.


4 ECTA News

WIPO Working Group on Lisbon

The WIPO Working Group on Lisbon took place in Geneva on 12-16 December 2011. ECTA was represented by Florent Gevers, Chair of the ECTA Geographical Indication Committee and Jan Wrede Member of the Geographical Indication Committee. A report of the meeting can be found HERE.

The documents of the meeting can be found HERE


WIPO Standing Committee

The WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical indications (resumed 26th session), will be held on 1-3 February, Geneva, Switzerland, Andrew Mills and António Andrade will attend.

The agenda and further documents can be found HERE


OHIM Link Committee

The next OHIM Link Committee Meeting will take place in Alicante on 17 February, Alicante. Annick Mottet Haugaard (ECTA President), Ewa Grabiak (ECTA Legal Co-ordinator) and Andreas Renck (Chair of the the ECTA OHIM Link Committee) will attend.


OHIM Liaison Meeting

The OHIM 7th Liaison Meeting on Technical Cooperation will take place in Alicante on 5-6 March. Andreas Renck (Chair of the ECTA OHIM Link Committee) will attend.


Sister Associations

The Sisters Associations Meeting will take place in Munich, Germany, on 9 March. Max Oker-Blom (ECTA Secretary General), F. Peter Müller (ECTA Second Vice-President) and Ewa Grabiak (ECTA Legal Co-ordinator) will attend.

Enforcement Enforcement, OHIM