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03-12 | 16 February 2012

Topics: ACTA EU Observatory EUIPO Convergence Programme

ECTA’s 31st ANNUAL MEETING, PALERMO, SICILY, 20-23 JUNE 2012

 

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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.

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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”. We regret that this workshop is only open to ECTA / GRUR members at this time.

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Table of Contents

1 LAW
1.1 Enforcement
  • Ireland
2 OFFICE PRACTICE
2.1 OHIM
  • OHIM Website
  • OHIM Convergence Programme
  • OHIM Quality Check Criteria
  • OHIM - European Observatory on Counterfeiting
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-321/09 arraybox
The trade mark is descriptive

T-205/10 fig vs. LA VICTORIA DE MEXICO
There is a likelihood of confusion

T-291/09 Pollo Tropical (fig) vs. Pollo Tropical (fig)
The application for registration has not been made in bad faith

T-305/10 DYNIQUE vs. DIPTYQUE
There is a likelihood of confusion

T-332/10 VIAGRA vs. VIAGURA
The trade mark applied for takes unfair advantage of the reputation of the trade mark "VIAGRA"

T-596/10 EuroBasket vs. Basket (fig)
There is no likelihood of confusion

4 ECTA NEWS
  • ECTA Seminar "Crucial challenges for the European Trade Mark System", Brussels, 8 February 2012
  • Working Group on the Review of Model International Form No. 1 of the Singapore Treaty on the Law of Trademarks, Geneva
  • WIPO Standing Committee
  • ACTA
  • OHIM Link Committee
  • OHIM Liaison Meeting
  • Sister Associations
  • WIPO
  • OAMI Users Group

Editorial team: Sandrine Peters, Jean-Jo Evrard, Annick Mottet Haugaard, and Cathy van Vuuren


1 Law

1.1 Enforcement

Ireland

The Irish Statutory Instruments, S.I. No. 30 of 2012, has amended some fees applicable to Patents, Trade Marks and Designs as from 1 February 2012.

The Statutory Instrument can be found HERE.

2 Office Practice

1.1 OHIM

OHIM Website

As per ECTA Flash 02-12 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.

ECTA has been invited to provide for a representative and Sarka Petivlasova, Hogan Lovells Alicante, will attend the meetings.

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


OHIM – Convergence programme

OHIM has launched an international Convergence Programme with national offices and user organisations to try and reach common ground on a series of issues where IP offices in the EU have different practices.

Dr. Tobias Dolde, Member of the ECTA Harmonization Committee, has been accepted to represent ECTA in the Working Group Absolute grounds-figurative and attended the kick-off meeting that took place from 7-9 February.

Tobias’ report on the meeting can be found HERE.

Further details on the Convergence Programme can be found HERE.

OHIM’s latest news notification in this regard can be found HERE and HERE
and HERE


OHIM Quality Check Criteria

ECTA provided a response to OHIM’s request for feedback on Quality Check Criteria.

See letter from OHIM President of 21 December, Quality Check Criteria for Opposition against CTM and Quality Check Criteria for Opposition against IR


OHIM - European Observatory on Counterfeiting

On February 14 the European Parliament approved the proposal to transfer the European Observatory on Counterfeiting and Piracy to OHIM and to change its name to the European Observatory on Infringements of Intellectual Property Rights.

The transfer, which was voted for by a large majority of MEPs, has to be formally adopted by the Council of the European Union under the ordinary legislative procedure before being finalised.
After the Council vote, the Regulation will be signed by the Presidents of the Parliament and the Council and will come into force twenty days after it is published in the Official Journal.

The Observatory is expected to ensure, among other things, the collection analysis and dissemination of relevant, objective and reliable data regarding the value of IP rights and the infringements of those rights. As stated by Internal Market Commissioner Michel Barnier during a visit to OHIM last week, the priority should be to "understand, explain and act" to protect creativity and innovation.

OHIM notification can be found HERE

The website of the European Observatory on Counterfeiting and Piracy can be found HERE

3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-321/09 of 2 February 2012, skytron energy GmbH & Co. KG vs. OHIM (contested decision: R R1680/2008-1 of 4 June 2009)

Trade mark:

arraybox

Classes: 9,37,38,42

Decision: The trade mark is descriptive. ’Array’ refers to an arrangement of elements and ’box’ refers to a container in the shape of a crate or box. Hence, taken as a whole, the word ’arraybox’ refers to a box which saves, stores, processes and evaluates data (para. 25).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-205/10 of 31 January 2012, Cerveceria Modelo, SA de CV vs. OHIM – Plataform Continental, SL (contested decision: R 322/2009-2 of 5 March 2010)

Trade marks:


LA VICTORIA DE MEXICO
Earlier trade mark Trade mark applied for

Class: 32

Decision: “VICTORIA” is the dominant element of the trade marks in suit (para. 46 and 54).
The trade marks are visually (para. 61 to 65), aurally (para. 66 to 69) and conceptually (para. 70 to 78) similar. There is a likelihood of confusion

The Board of Appeal’s decision is upheld.


Case T-291/09 of 1 February 2012, Carrols Corp. vs. OHIM – M. Giulio Gambetolla (contested decision: R 632/2008-1 of 7 May 2009)

Trade marks:



Earlier trade mark Contested trade mark

Classes: 25,41,43

Decision: The application for registration of the contested trade mark has not been made in bad faith. The applicant has not provided the slightest evidence establishing a presumption
that the intervener could not be unaware of the existence of its earlier American trade mark (para. 62). The intervener’s filing of the application for a Community trade mark was merely a normal and foreseeable step in its restaurant-sector activities (para. 67). The information provided by the applicant is insufficient to establish the well-known character of the American earlier trade mark at the time when the application for registration of the Community trade mark was filed (para. 78). There is nothing in the case-file to indicate that the intervener had no intention to use the mark when it was registered (para. 79). The proposal for financial compensation in the amount of USD 5 million for the transfer of the Community trade mark, made by the intervener to the applicant, whilst considerable, does not by itself establish bad faith on the part of the intervener (para. 88). The fact that the signs at issue are identical does not establish bad faith on the part of the intervener, where there are no other relevant factors (para. 90).

The Board of Appeal’s decision is upheld.


Case T-305/10 of 7 February 2012, Marlies Hartmann-Lamboy vs. OHIM – Diptyque SAS (contested decision: R 1217/2009-1 of 7 May 2010)

Trade marks:

DYNIQUE DIPTYQUE
Earlier trade mark Trade mark applied for

Classes: 3,44

Decision: The trade marks are visually (para.27 to 28 ) and aurally (para.29 to 30) similar.
There is a likelihood of confusion (para. 33).

The Board of Appeal’s decision is upheld.


Case T-332/10 of 25 January 2012, Viguara S.A. vs. OHIM – Pfizer Inc.
(contested decision: R 946/2009-1 of 20 May 2010)

Trade marks:

VIAGRA VIAGURA
Earlier trade mark Trade mark applied for

Classes: 5,32 33

Decision: The trade mark ’VIAGRA’ has a reputation throughout the European Union (para.30).
There is a high degree of similarity between the trade marks at issue (para. 42) and the degree of similarity is such that a connection between the marks is likely to be made (53). The stimulating and aphrodisiac properties claimed for commercial purposes by non-alcoholic beverages in class 32 of the trade mark applied for coincide with the therapeutic properties of the goods of the ’VIAGRA’ trade mark, or at least with the image given by these goods (para. 66). As regards the goods ’alcoholic beverages, liqueurs, brandy, wines’ in class 33 covered by the trade mark applied for, drinks containing guarana have other fortifying and stimulating effects on the mind and the body, as well as properties which are beneficial for health, similar to a drug (para. 68). Therefore, given the huge success and reputation of the earlier trade mark, the consumer will be inclined to buy the goods of the trade mark applied for thinking that they will have a similar effect to the goods of the earlier trade mark (para. 77). Hence, the trade mark applied for is likely to take unfair advantage of the distinctive character or the repute of the trade mark ’VIAGRA’.

The Board of Appeal’s decision is upheld.


Case T-596/10 of 2 February 2012, Almunia Textil, SA vs. OHIM – FIBA-Europe eV (contested decision: R 280/2010-1 of 6 October 2010)

Trade marks:

EuroBasket
Earlier trade mark Trade mark applied for

Classes: 9,25,28,41

Decision:
1. Games, playthings and gymnastic and sporting articles (cl. 28) are similar to entertainment, sporting activities and providing of games (cl. 41) (para. 27). Games and playthings(cl. 28) are similar to “software for games” (cl. 9) (para. 28).
2. The trade marks are visually (para. 37), aurally (para. 38) and conceptually (para. 39) similar.
3. However, taking into account the weak distinctive character of the term “basket” and the visual differences between the trade marks in suit, there is no likelihood of confusion (para. 50).

The Board of Appeal’s decision is upheld.

4 ECTA News

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 organized a seminar in Brussels on 8 February 2012. The topics "territoriality of genuine use" and "class headings and means to facilitate clearance of the CTM register" were discussed. Max Oker-Blom (ECTA Secretary General) and Ewa Grabiak’s report on the seminar can be found HERE


Working Group on the Review of Model International Form No. 1 of the Singapore Treaty on the Law of Trademarks Geneva

The Working Group on the Review of Model International Form No. 1 of the Singapore Treaty on the Law of Trademarks met on 31 January 2012 in Geneva and ECTA was represented by Donald Schnyder, Member of the ECTA Law Committee.

The form as reviewed as well as the summary of the chair can be found HERE.


WIPO Standing Committee

The WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical indications (resumed 26th session), was held on 1-3 February, Geneva, Switzerland and was attended by Andrew Mills, Chair of the ECTA Internet Committee. A report of the meeting will be provided in the next Flash.

The agenda and further documents can be found HERE


ACTA

On 2 March 2012, Marius Schneider, Chair of the ECTA Anti-Counterfeiting and Ewa Grabiak, ECTA Legal Coordinator, will attend a meeting organized by INTA to discuss the ACTA developments and to evaluate and decide the next steps to be taken bearing in mind the Parliament vote on ACTA in June.


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 Coordinator, and Andreas Renck, Chair of the ECTA OHIM Link Committee will attend.


OHIM Liaison Meeting

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


Sister Associations

The Sister Associations Meeting will take place in Munich, Germany, on 9 March. Max Oker-Blom, ECTA Secretary General, Peter Müller, ECTA Second Vice President and Ewa Grabiak, ECTA Legal Coordinator will attend.


WIPO

ECTA Representatives are meeting WIPO on 3 April 2012 in Geneva. Should you have any questions to be raised, please send an e-mail asap to Fabio Angelini (Chair of the ECTA Law committee).


OAMI Users Group

The next OAMI Users Group meeting will take place in Alicante on 17 April 2012. Should you have any questions to be raised, please send an e-mail asap to Andreas Renck (Chair of the ECTA OHIM Link Committee).

The official minutes of the last OAMI Users Group meeting have been made available HERE.

Ireland Enforcement OHIM