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02-13 | 31 January 2013

Topics: Counterfeiting EU Observatory Geographical Indications IP Translator

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ECTA Round Table session "Brand owners life before and after IP Translator" - 21 February 2013, Alicante
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ECTA Workshop "Enforcement Challenges of IPRs in China and Europe" - 6 March 2013, Brussels
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REMINDER - ECTA AWARD
Please note that articles should be submitted to the ECTA Secretariat by 28 February 2013. Further information can be found HERE

Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • New EU Customs Regulation
1.2 Trade Marks
  • Plain Packaging: Public consultation launched by the Irish Governement following the publication of the revised Tobacco Directive - ECTA comments
1.3 Internet
  • Publication of the Code of EU Online Rights
1.4 Geographical Indications
  • Moldova-EU agreement on GIs
2 OFFICE PRACTICE
2.1 OHIM
  • Estonia and Lithuania implement Seniority project
  • Integration of Bulgarian Office in the "Harmonisation Community" project
  • Observatory: Public Awareness Working Group meeting, 18 February 2013, Brussels
  • 10 years of the Community Design, 8-9 April 2013, Alicante
2.2 WIPO
  • Surveys on Industrial Design Registration Procedures re-opened
  • Latest issue of the Bulletin ”Appellations of Origin”
2.3 National Offices
  • United Kingdom: Enhancements to Trade Mark Services
3 CASE LAW

Summaries and case law provided by

T-625/11 of 15 January 2013, BSH Bosch und Siemens Hausgeräte GmbH vs. OHIM
The trade mark is descriptive

T-413/11 of 15 January 2013, Welte-Wenu GmbH vs. OHIM – Commission Européenne
The trade mark is unlawful imitation of the European flag

T-544/11 of 16 January 2013, Spectrum Brands (UK) Ltd vs. OHIM – Koninklijke Philips Electronics NV
The trade mark is descriptive

T-582/11 and T-583/11 of 17 January 2013, Solar-Fabrik AG für Produktion und Vertrieb von solartechnischen Produkten vs. OHIM
The trade marks are devoid of any distinctive character

T-355/09 of 17 January 2013, Reber Holding GmbH & Co. KG vs. OHIM – Wedl & Hofmann GmbH
There is no genuine use of the earlier trade mark

T-137/12 of 18 January 2013, FunFactory GmbH vs. OHIM
The trade mark is devoid of any distinctive character

T-568/11 of 11 January 2013, Kokomarina vs. OHIM – Euro Shoe Group
There is a likelihood of confusion

T-237/11 of 15 January 2013, Lidl Stiftung & Co. KG vs. OHIM – Lactimilk, SA
There is a likelihood of confusion

T-451/11 of 15 January 2013, Gigabyte Technology Co., Ltd vs. OHIM – Robert A. Haskins
There is a likelihood of confusion

4 ECTA NEWS
  • IP Summit (Premier Cercle) - Regenerating Trade Mark - Report
  • Customs Training Road-Show, 21 - 24 January 2013, New Customs House, New Delhi, India-Report
  • ECTA Round Table session "Brand owners life before and after IP Translator" - 21 February 2013, Alicante
  • ECTA Workshop "Enforcement Challenges of IPRs in China and Europe" - 6 March 2013, Brussels

Editorial team: Ewa Grabiak, Jean-Jo Evrard and Annick Mottet Haugaard

1 Law

1.1 Anti-counterfeiting

New EU Customs Regulation

On 24 January 2013, the Internal Market and Consumer Protection committee of the European Parliament endorsed a new Regulation 5129/2013/EC setting out customs procedures for goods suspected of infringing intellectual property rights (the new Regulation). The Committee endorsed the agreement by 33 votes in favour and 3 against.

The new Regulation, which is poised to replace the Customs Regulation n°1383/2003/EC, forms part of a wider European intellectual property (IP) strategy. It will extend customs-enforcement measures to a larger number of IP rights than under the current regime and provide for the uncontested destruction of small consignments of goods. Notably, however, the new Regulation does not tackle the issue of suspected counterfeit goods that are purely in transit through the European Union.

The new Regulation is still subject to a plenary vote by the European Parliament in April 2013. Once the European Council confirms its agreement, the European Parliament will be asked to give its final endorsement at a second reading without further changing the text. If endorsed, it is scheduled to take direct effect in all Member States from 1 January 2014.

The official press release may be found HERE

The text of the new Regulation may be found HERE

ECTA was actively involved in the revision of the Customs Regulation in 2012.

ECTA Comments may be found HERE

1.2 Trade Marks

Plain Packaging: Public consultation launched by the Irish Governement following the publication of the revised Tobacco Directive - ECTA comments

As mentioned in the ECTA Flash 01-13, ECTA Law Committee prepared comments to the Public consultation launched by the Irish Governement following the publication of the revised Tobacco Directive.

ECTA comments were sent to the European Commission, Rapporteur at the European Parliament and Irish authorities in charge of the dossier.

ECTA comments may be found HERE

1.3 Internet

Publication of the Code of EU Online Rights

In December 2012, as part of its Digital Agenda for Europe initiative, the European Commission has published a Code of EU Online Rights (“the Code”) designed to educate citizens on their fundamental rights when connecting to and using the internet. The objective of the Code is to find simple explanations of their legal rights and obligations, set out in a transparent and understandable way.

As the Code does not create new rights, it is not by itself be enforceable; but the particular rights and principles are enforceable under the EU legal instrument from which they derive, which has been transposed and implemented into national legislation in the different EU Member States.

The Code makes easier for EU citizens and consumers to know the existing EU legislation as regards online rights, inspires trust and confidence among consumers when acceding and using online services and applications, and encourages consumers to conduct more activity online.

The code may be found HERE

1.4 Geographical Indications

Moldova-EU agreement on GIs

On 15 January 2013, the full text of the agreement between the European Union and the Republic of Moldova on the protection of geographical indications of agricultural products and foodstuffs was published in the Official Journal of the European Union.

The full text of the agreement may be found HERE


2 Office Practice

2.1 OHIM

Estonia and Lithuania implement Seniority project

On 10 and 11 January 2013, Estonia and Lithuania joined Latvia, Sweden, the Slovak Republic, Bulgaria, Benelux, Slovenia, Ireland, Hungary, Portugal and the Czech Republic in implementation of the Seniority Project.

The project, a part of OHIM´s Cooperation Fund, involves establishing links between entries in the national and Community databases and making the information accessible online.

Integration of Bulgarian Office in the "Harmonisation Community" project

On 14 January 2013, the Bulgarian version of the Common Harmonised Database on Classification of Goods and Services became available to the users through the Euroclass application.

Observatory: Public Awareness Working Group meeting, 18 February 2013, Brussels

Public Awareness Working Group meeting will take place on Monday, 18 February 2013 at the OHIM Liaison Office in Brussels.

Annick Mottet-Haugaard, ECTA Past President will attend the meeting on behalf of ECTA.

10 years of the Community Design, 8-9 April 2013, Alicante

This year OHIM celebrates 10th anniversary of the Community Design.

At this occasion OHIM cordially invites you to attend the 2-day conference, which will take place on 8 and 9 April 2013 in Alicante.

Fabio Angelini, Chair of ECTA Law Committee is amongst the speakers.

More information may be found HERE

You can register HERE

2.2 WIPO

Surveys on Industrial Design Registration Procedures re-opened

The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) requested the Secretariat to extend for an additional period of two months the two surveys that were conducted in April and May 2012, as part of the Study on the Potential Impact of the Work of the SCT on Industrial Design Law and Practice (document SCT/27/4). Accordingly, the two surveys, namely one for Offices and another for Users, have been reopened for completion until 7 March 2013.

ECTA Design Committee participated last year and submitted ECTA comments regarding the survey.

The comments may be found HERE

Latest issue of the Bulletin ”Appellations of Origin”

The latest issue of the Bulletin ’”Appellations of Origin” (No. 41 - January 2013) is available HERE

2.3 National Offices

United Kingdom: Enhancements to Trade Mark Services

The implementation of the new IT system for processing Trade Marks is scheduled for February 2013. It will see the introduction of electronic case handling and workflow which, following the bedding-in period, will result in processing efficiencies.

This is also being used as an opportunity to introduce some customer enhancements, based on feedback we have received, including more user friendly access to information and web services.

Changes are to be implemented in two phases, with approximately a 6 week gap between the phases.

The first phase of changes to Trade Mark services will start on 11 February 2013.

More information may be found HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-625/11 of 15 January 2013, BSH Bosch und Siemens Hausgeräte GmbH vs. OHIM (contested decision : R 340/2011-1 of 22 September 2011)

Trade mark applied for: ecoDoor

Class: 7,9,11

Decision: The trade mark is descriptive.

The element ‘eco’ will be perceived to mean “ecological” and the element “door” has its normal meaning. The term “ecodoor” will be understood immediately by the relevant public to mean “a door the construction and mode of operation of which are ecological” (para.24).

The Board of Appeal’s decision is upheld.


Case T-413/11 of 15 January 2013, Welte-Wenu GmbH vs. OHIM – Commission Européenne (contested decision : R 1590/2010-1 of 12 May 2011)

Contested trade mark:

Classes: 7,12

Decision: The sign included in the brand is an imitation brand within the meaning of Article 6 ter, paragraph 1 a) of the Paris Convention, of the European flag (para. 44).

Neither the existence of the two verbal elements of the mark in question or the image of
cross in the middle of this brand are likely to exclude the establishment by the audience, a link between, on the one hand, the applicant and the goods covered by the marks at issue and, secondly, institutions, bodies, offices or agencies of the Union or other international intergovernmental organization which uses the European flag (para. 64).


Case T-544/11 of 16 January 2013, Spectrum Brands (UK) Ltd vs. OHIM – Koninklijke Philips Electronics NV (contested decision : R 1289/2010-1 of 14 July 2011)

Contested trade mark: STEAM GLIDE

Class: 9

Decision: The trade mark is descriptive.

The expression “steam glide”, associated with the goods in issue, is apt to describe directly and specifically one of the characteristics of those goods,
that is, their capacity to glide smoothly over ironed clothes by virtue of the steam generated (para. 36).

The Board of Appeal’s decision is upheld.


Case T-582/11 and T-583/11 of 17 January 2013, Solar-Fabrik AG für Produktion und Vertrieb von solartechnischen Produkten vs. OHIM (contested decisions : R 245/2011-1 and R 246/2011-1 of 1 September 2011)

Trade marks applied for: Premium XL Premium L

Classes: 9,11

Decision: The element "Premium" is a laudatory term to characterize better quality products. The letters "L" and "L" are frequently used in everyday language to describe the size (extra wide width) of a product, even outside the garment sector. The marks will be perceived as a mere combination of elements common laudatory and, unable to identify the commercial origin of the goods in question (para. 26).

The Board of Appeal’s decision is upheld.


Case T-355/09 of 17 January 2013, Reber Holding GmbH & Co. KG vs. OHIM – Wedl & Hofmann GmbH
(contested decision : R 623/2008-4 of 9 July 2009)

Trade mark applied for:

Walzertraum
Earlier trade marks Trade mark applied for

Class: 30

Decision:Whether the applicant has demonstrated a certain continuity of use of the earlier mark, this use is nevertheless embedded in geographical and quantitative limits narrow and local, so that it can be described as genuine use in relation to its nature and its importance (para. 49).

The Board of Appeal’s decision is upheld.


Case T-137/12 of 18 January 2013, FunFactory GmbH vs. OHIM (contested decision : R 1436/2011-4 of 19 January 2012)

Trade mark applied for:

Class: 10

Decision: The trade mark is devoid of any distinctive character.
The shape of the vibrator does not depart significantly from the norm or customs of the sector and some shades from the disposition of nested spheres, the arrangement of buttons around the logo in the command area of different color and shape triangular, are not likely to reverse this finding (para. 32).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-568/11 of 11 January 2013, Kokomarina vs. OHIM – Euro Shoe Group (contested decision : R 1814/2010-1 of 21 July 2011)

Trade marks

DMG
Earlier trade marks Trade mark applied for

Class: 25

Decision: The trade marks are visually (para. 40 to 41) and aurally (para. 43 to 45) similar.

There is a likelihood of confusion (para. 48 to 53).

The Board of Appeal’s decision is upheld


Case T-237/11 of 15 January 2013, Lidl Stiftung & Co. KG vs. OHIM – Lactimilk, SA (contested decision : R 1154/2009-4 of 1 March 2011)

Trade marks:

RAM BELLRAM
Earlier trade marks Trade mark applied for

Class: 29

Decision: The trade marks are visually (para. 93 to 96) and aurally (para. 97 to 100) similar.

“Cheese” in Class 29 is highly similar to “milk” in Class 29 (para. 85 to 90)

There is a likelihood of confusion (para. 103 to 109).

The Board of Appeal’s decision is upheld.


Case T-451/11 of 15 January 2013, Gigabyte Technology Co., Ltd vs. OHIM – Robert A. Haskins (contested decision : R 2047/2012-2 of 20 May 2011)

Trade marks:

GIGABITER Gigabyte
Earlier trade mark Trade mark applied for

Classes: 37, 42

Decision: 1.The trade marks are visually (para. 84), aurally (para. 85) and conceptually (para. 87 and 88) similar.

2. “Installation of computer and network systems; repair services for computers and computer peripherals, computer networks and associated peripheral devices; computer installation and maintenance services; repair and maintenance of motherboards, VGA cards, servers, personal computers and internet hardware equipment” in Class 37 and “computer services, namely, designing, creating, implementing computer equipment and (global) networks for others; operational and technical support services relating to computers and computer peripherals, computer systems and computer network analysis, consulting and management services, computer information technology management and consulting” in Class 42 are similar to “Obliterating electronically stored data to render such data unreadable and irretrievable from electronic equipment and components on which such data has been stored” in Class 42 ( para.47 to 81).

3. There is a likelihood of confusion (para.89 to 99).

The Board of Appeal’s decision is upheld.


4 ECTA News

IP Summit - Regenerating Trade Marks, 10-11 December 2012 - Report

The IP Summit - Regenerating Trade marks organized by Premier Cercle took place on 10 and 11 december 2012 in Alicante.

ECTA was one of the official partners of the event.

Ewa Grabiak, ECTA Legal Coordinator attended the event on behalf of ECTA.

Her report is available HERE

Customs Training Road-Show, 21 - 24 January 2013, New Customs House, New Delhi, India-Report

Shravan Kumar Bansal, member of ECTA Anti-counterfeiting Committee attended the meeting on behalf of ECTA.

His report of the meeting may be found HERE

ECTA Round Table session "Brand owners life before and after IP Translator" - 21 February 2013, Alicante

You may find below further details regarding the event:

  • Round Table session will be held in English
  • Round Table session will start from 16.30 and will end by a cocktail reception
  • Location : Camara Oficial de Comercio Industria, Calle Cervantes 3, 03002 Alicante, Spain
  • Please return completed registration form to ECTA Secretariat by 15 February 2013
  • As the places are limited (Max 60 places), please send us the completed registration form at your earliest convenience

ECTA Workshop "Enforcement Challenges of IPRs in China and Europe"- 6 March 2013, Brussels

We are pleased to invite you to the ECTA Workshop "Enforcement Challenges of IPRs in China and Europe", which will bring together the representatives of the European Commission, the Official Mission of China to the EU and China Helpdesk.

  • Round Table session will be held in English
  • Round Table session will start from 12.00 until 17.00
  • Location : Hotel SILKEN Berlaymont, Boulevard Charlemagne 11 -19, 1000 Brussels, Belgium
  • Please return completed registration form to ECTA Secretariat by 25 February 2013
  • As the places are limited (Max 60 places), please send us the completed registration form at your earliest convenience

ECTA cordially invites you to attend the upcoming ECTA events!

Do not miss the opportunity to meet our excellent speakers!


United Kingdom Anti-counterfeiting, Geographical Indications, Internet, Trade Mark National Office Practice