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03-13 | 15 February 2013

Topics: Counterfeiting Design View Domain Names EU - Dialogue with Third Countries EU Observatory gTLD IP Translator Plain Packaging

ECTA’s 32nd ANNUAL CONFERENCE, BUCHAREST, ROMANIA, 19-22 JUNE 2013

 

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Please be reminded that should you wish to apply for membership of a Committee for 2013-2016, please complete the on-line nomination form by 29 March 2013

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

ECTA COMMITTEE NOMINATIONS
Please be reminded that should you wish to apply for membership of a Committee for 2013-2016, please complete the on-line nomination form by 29 March 2013

Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • EU - Turkey Dialogue on IPRs, 3rd Working Group Meeting, 30 January 2013, Ankara
1.2 Trade Marks
  • Revision of the Tobacco Products Directive- Public Hearing on Tobacco Products, 25 February 2013, European Parliament
1.3 Domain Names
  • ICANN: Request for public comment on a revised draft of the New gTLD Registry Agreement
2 OFFICE PRACTICE
2.1 OHIM
  • Latvia- New Member of DesignView
  • Romania joins Seniority
  • 10 years of the Community Design, 8-9 April 2013, Alicante
2.2 WIPO
  • Director General’s Meeting with NGOs, 7 February 2013
2.3 National Offices
  • Lithuania: Publication of the 2012 Statistics on the legal protection of industrial property objects in the Republic of Lithuania
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-25/11 (fig)
The trade mark is devoid of any distinctive character

T-412/11 TRANSCENDENTAL MEDITATION
The trade mark is descriptive

T-225/06 bud vs. BUD
The sign is not of more than mere local significance

T-189/11 DISCO (fig) vs. DISCO DESIGNER
There is a likelihood of confusion

T-474/09 JACSON OF SCANDINAVIA AB vs. JACKSON SHOES
There is a likelihood of confusion

T-283/11 fon (fig) vs. nfon
There is a likelihood of confusion

T-66/11 BABIDU vs. babilu
There is a likelihood of confusion

T-504/11 Dignity vs. DIGNITUDE
The goods are different

4 ECTA NEWS
  • European IPR Helpdesk, INNOVACCESS network & China IPR SME Helpdesk - Stakeholders Meeting, 21 January 2013 - 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
  • Conference Aropiade 2013, 28 February - 1 March 2013
  • EU Observatory - Working Groups meetings in Brussels

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

1 Law

1.1 Anti-counterfeiting

EU - Turkey Dialogue on IPRs, 3rd Working Group Meeting, 30 January 2013, Ankara

The third meeting Working Group Meeting in the context of the official EU-Turkey dialogue on Intellectual Property Rights took place on 30 January 2013 in Ankara. The first part of the meeting focused on the update on the legislative developments regarding the pending IPR draft-laws, the developments regarding the issue of seized counterfeit goods which were released back to the Turkish market as a consequence of the Decision No. 2008/2 of July 2008 of the Turkish Constitutional Court and the follow-up on the discussion from the last meeting regarding the bad faith trade mark & design applications.

The second part of the meeting brought together the representatives of industries and associations. Hande Hançer, member of the ECTA Anti-counterfeiting committee attended on behalf of ECTA and gave a speech on the bad faith trade mark applications.

The reports of the meeting are available HERE and HERE


1.2 Trade Marks

Revision of the Tobacco Products Directive- Public Hearing on Tobacco Products, 25 February 2013, European Parliament

On 25 February 2013 the Environment, Public Health and Food Safety Committee (ENVI) is organizing a public hearing on the Tobacco Products in the context of the revision of the Tobacco Products Directive.

Linda McAvan, ENVI Rapporteur will lead the meeting.

The Agenda of the hearing may be found HERE

The event will be webstreamed and may be followed live via the ENVI webpage


1.3 Domain Names

ICANN: Request for public comment on a revised draft of the New gTLD Registry Agreement

On 5 February 2013 ICANN anounced the request for public comment on a revised draft of the New gTLD Registry Agreement that will serve as the contractual document between successful New gTLD Applicants and ICANN, and will govern the rights and obligations of new gTLD registry operators.

ICANN proposes to revise the New gTLD Registry Agreement in connection with developments since the last posting of the Applicant Guidebook in June 2012 and a general review of the contractual needs of the new gTLD program. Among the proposed changes, ICANN has added the Public Interest Commitments Specification.

The deadline to submit comments is 26 February 2013.

More information may be found HERE


2 Office Practice

2.1 OHIM

Latvia- New Member of DesignView

On 5 February 2013, Latvia joined the DesignView database, becoming the ninth office to do so.

More offices are expected to join in the coming months.


Romania joins Seniority

On 11 February 2013 Romania implemented the Seniority Project.

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

Romania is 13th EU National Office to implement the Seniority Project.


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

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

On 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 the ECTA Law Committee is amongst the speakers.

More information may be found HERE

You can register HERE


2.2 WIPO

Director General’s Meeting with NGOs, 7 February 2013

Victoria Wisener, ECTA Member attended the meeting on behalf of ECTA. Her report of the meeting can be found HERE

The video of the meeting is available HERE


2.3 National Offices

Lithuania: Publication of the 2012 Statistics on the legal protection of industrial property objects in the Republic of Lithuania

On 8 February 2013, the Lithuanian Office published the official statistics for 2012 on the legal protection of industrial property objects.

As underlined in the official press release, in 2012 national trade mark filings made by the applicants of Republic of Lithuania went up by 0.8%, and registrations surged 7.4%. Furthermore, Lithuanian entrepreneurs are no more afraid to explore foreign markets: in 2012 filings for Community trade marks registered soared by 49.3%.

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-25/11 of 29 January 2013, Germans Boada, SA vs. OHIM (contested decision: R 771/2010-1 of 28 October 2010)

Trade mark applied for:


Class: 8

Decision: Taken together, the characteristics of the mark sought is in the form of a carrelette manual, do not differ significantly from the customs of the sector and do not sign a distinctive character requested, it being a mere variant of what was customary in the sector (para. 49).
The applicant has failed to demonstrate that the mark applied for has acquired distinctive character throughout the Union by its use (para. 91)
The Board of Appeal’s decision is upheld.


Case T-412/11 of 6 February 2013, Maharishi Foundation Ltd vs. OHIM (contested decision: R 1293/2010-2 of 2 March 2011)

Trade mark applied for:

TRANSCENDENTAL MEDITATION

Classes: 16,41,44,45

Decision: The trade mark is descriptive. The expression ‘transcendental meditation’ refer to the action or practice of focusing one’s mind for a period of time, in silence or with the aid of chanting, for religious or spiritual purposes or as a method of relaxation, on issues relating to a spiritual realm (para. 79).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-225/06 of 22 January 2013, Budejovicky Budvar vs. OHIM – Anheuser-Busch, LLC (contested decisions: R 234/2005-2 of 14 June 2006, R-241/2005-2 and R-802/2004-2 of 28 June 2006, R 305/2005-2 of 1 Sepember 2006)

Trade marks:

bud BUD
Earlier appellation of origin Trade mark applied for

Classes: 16,21,25,32,33,35,38,41 and 42

Decision: The applicant has not proved that the sign relied on was of more than mere local significance within the meaning of Article 8(4) of Regulation No 40/94 with respect to Austrian territory (para. 58 to 64)

The Board of Appeal’s decision is upheld.


Case T-189/11 of 24 January 2013, Peter Yordanov vs. OHIM – Distribuidora commercial del frio, SA (contested decision: R 803/2010-2 of 14 January 2011)

Trade marks:


DISCO DESIGNER
Earlier trade mark Trade mark applied for

Class: 11

Decision: The trade marks are visually (para. 51 to 56), aurally (para. 57) and conceptually (para. 58) similar. There is a likelihood of confusion (para. 65).

The Board of Appeal’s decision is upheld.


Case T-474/09 of 24 January 2013, Fercal-Consultadoria e Serviços, Lda vs. OHIM – Jacson of Scandinavia AB (contested decision: R 1253/2008-2 of 18 August 2008)

Trade marks:

JACSON OF SCANDINAVIA AB JACKSON SHOES
Earlier company name Trade mark applied for

Class: 25

Decision: Given the similarity of the elements "jackson" and "jacson", printing overall released by the signs in conflict and identity of these products, there is a risk of confusion between the mark applied for and the earlier trade name for the intervener (para. 37).

The Board of Appeal’s decision is upheld.


Case T-283/11 of 29 January 2013, Fon Wireless Ltd vs. OHIM – nfon AG (contested decision: R 1017/2009-4 of 18 March 2011)

Trade marks:


nfon
Earlier trade mark Trade mark applied for

Classes: 9,38

Decision: The trade marks are visually and aurally (para. 49 to 52) similar. Conceptually (para. 53 to 61), they are also similar. There is a likelihood of confusion (para. 103 to 109).

The Board of Appeal’s decision is upheld.


Case T-66/11 of 31 January 2013, Present Service Ullrich GmbH & Co. KG vs. OHIM – Punt-Nou, SL (contested decision: R 773/2010-2 of 19 November 2010)

Trade marks:

BABIDU babilu
Earlier trade mark Trade mark applied for

Class: 35

Decision: The trade marks are visually (para. 55 to 59) and aurally (para. 63 to 66) similar.
There is a likelihood of confusion (para. 78).

The Board of Appeal’s decision is upheld.


Case T-504/11 of 4 February 2013, Paul Hartmann AG vs. OHIM – Protecsome SAS (contested decision: R 1197/2010-4 of 28 July 2011)

Trade marks:

Dignity DIGNITUDE
Earlier trade mark Trade mark applied for

Classes: 5,25

Decision: Hosiery, underclothing, underpants and underwear in Class 25 are not similar to napkin pants and absorbent pads for incontinence purposes in Class 5 (para. 37 to 46).

The Board of Appeal’s decision is upheld.


4 ECTA News

European IPR Helpdesk, INNOVACCESS network & China IPR SME Helpdesk-Stakeholders Meeting, 21 January 2013 - Report

On 21 January 2013 the European IPR Helpdesk and other associated initiatives destined to provide the assistance in the matters related to the Industrial Property, organized the annual meeting of stakeholders.
The meeting brought together all the most important stakeholders associated to these official European initiatives, the representatives of the European Commission, as well as the representatives of the National Intellectual Property Offices. It was a good opportunity to have an overview of all initiatives related to Intellectual Property and supervised by the European Commission.

Ewa Grabiak, ECTA Legal Coordinator, attended the meeting on behalf of ECTA. Her report of the meeting is available HERE.

The power point presentations may be found below:


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

Registration for this event is closed. A report will be published in the next Flash.


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.

  • Workshop will be held in English
  • Workshop 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

Conference Aropiade 2013, 28 February - 1 March 2013, Nyon

The conference will be dedicated to the Intellectual Property in the field of sport.

Lorenz Ehler, ECTA Member will attend the Conference on behalf of ECTA.

The programme may be found HERE


EU Observatory - Working Groups meetings in Brussels

ECTA Members are actively involved in the Working Groups for the EU Observatory.

The following Working Groups meetings will take place in Brussels:

  • Public Awareness Working Group meeting, 18 February 2013 - Annick Mottet Haugaard, ECTA Past President, will attend the meeting on behalf of ECTA.
  • Legal Working Group meeting, 21 February 2013 - Marius Schneider, Chair of the ECTA Anti-counterfeiting Committee will attend the meeting on behalf of ECTA.
  • Enforcement Working Group meeting, 20 February 2013 - Olivier Vrins, ECTA Council Member and Member of the ECTA Anti-counterfeiting Committee will attend the meeting.

Anti-counterfeiting, Domain Name, Trade Mark National Office Practice, OHIM, WIPO