Join us! Member Area

04-13 | 11 March 2013

Topics: Counterfeiting Domain Names EU Observatory Plain Packaging

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

 

"The Jury is still out"

 

Registration is now open

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

ECTA ROUND TABLE SESSION "Brand Owners’ life before and after IP Translator", 21 February 2013, Alicante

 

ECTA would like to thank our excellent speakers for this succesful event who brought together 85 participants!

 

Report of the event may be found HERE

Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • EU Observatory - Reports of the Working Groups meetings in Brussels
  • Canada: Adoption of the Combating Counterfeit Products Act - Bill C-56
1.2 Trade Marks
  • Plain packaging: New legislation in New Zealand
1.3 Trade Secrets
  • Public consultation on the protection against misappropriation of trade secrets and confidential business information
1.4 Domain Names
  • EURid signs MoU with UNESCO
2 OFFICE PRACTICE
2.1 OHIM
  • New CF & CP working groups meetings
  • 10 years of the Community Design, 8-9 April 2013, Alicante
2.2 WIPO
  • WIPO’s Global Brand Database Tops the 10 Million Mark
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-104/11 PERLE (fig)
The trade mark is descriptive

T-427/11 BIODERMA
Descriptiveness of the trade mark

T-662/11 SUNLESS / LONCAR-SUNLESS vs. Sunless (fig)
There is a likelihood of confusion

T-54/12 K2 SPORTS vs. KSPORT (fig)
The trade marks are different

T-159/11 MAR KO vs. WALICHNOWY MARKO (fig)
There is a likelihood of confusion

T-631/11 Christian Berg vs. B BERG (fig)
There is a likelihood of confusion

EUROPEAN COURT OF JUSTICE

C-561/11 Fédération Cynologique Internationale vs Federación Canina Internacional de Perros de Pura Raza
Interpretation of Article 9(1) of CTM Regulation

4 ECTA NEWS
  • ECTA Meetings with the European Commission and Parliament, 7 March 2013, Brussels
  • ECTA Round Table session "Brand owners life before and after IP Translator" - Report
  • ECTA Internet Committee- Election of the new Committee Chair

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

1 Law

1.1 Anti-counterfeiting

EU Observatory - Working Groups meetings in Brussels

In the framework of the EU Observatory, the Working Group meetings took place in Brussels.

ECTA members are actively involved in these meetings.

  • Public Awareness Working Group Meeting, 18 February 2013 - Annick Mottet Haugaard, ECTA Past President

Annick Mottet Haugaard reported that after a general introduction and an update on the status of each of the core projects of the EU Observatory for 2013, the groups discussed in details the IP Toolkit and the new EU Observatory website, which should be launched in June 2013.

Progress Report

The group then focused its attention on the preparation of the survey to be launched by the Edelman company on the measuring the level of understanding and awareness of basic intellectual property concepts by EU citizens as well as on the Project brief drafted by OHIM, which aims to the following results:

1. Development and implementation of a communication strategy to present the results of the “Impact of IP on economic performance” report and the IP perception study;
2. Organisation of a conference (possible title “IP and Consumers”) in Brussels on September 2013;
3. The development of an IP Online Information Centre;
4. Development of an IP content publication tool;
5. Development of tools/solutions for report publication (including P3, P4, P5 and P6);
6. IP Tool Kit update;
7. Users and trust relationships Migration scripts (from common gateway to Observatory website);
8. Definition and development of an awareness campaign based on a competition in EU schools;
9. Award event at the European parliament in spring 2014 (“Award ceremony for schools competition”);
10. Development and approval of the Observatory awareness campaigns plan based on the results of the IP perception study.

The next meeting of the Public Awareness Working Group is scheduled for 23 September 2013.

  • Enforcement Working Group Meeting, 20 February 2013 - Olivier Vrins, ECTA Council Member

His report of the meeting may be found HERE

The next Enforcement Working Group Meeting is scheduled for 25 September 2013.

  • Statistics Working Group Meeting and Legal Working Group Meetings, 19 February 2013 and 21 February 2013-Marius Schneider, Chair of ECTA Anti-counterfeiting Committee

Marius Schneider reported that during the meeting of 19 February, OHIM and the European Patent Office presented a joint research project for assessing the impact of various types of intellectual property rights on the economies in the European Union as a whole, in particular on gross domestic product, employment and wages. The study aims to obtain a concrete idea of how much IP there is in Europe, and how it is used; estimate the added value of IP rights, and their economic contribution in terms of growth and employment; identify the main drivers of IP active at company level; analyse the characteristics of entities that use IP more intensively; provide facts to be used for policymakers. The first aim of the study is to take place at industry level. Results are expected in June 2013. In a second step the research will focus on individual companies, comparing firms that use IP rights intensively with those that do not. These results, comparing financial results, employment and wages are expected in November 2013.
The working group has also discussed the progress of the Cooperation Fund data collection tool and the Rand methodology. The data collection tool is supposed to be ready in spring 2013 and the Corporation Fund project group will meet on 20 March 2013 to test the tool. Marius Schneider will participate in the meeting.
The development of complementary approaches to quantify infringements, specifically in the copyright sector, have also been discussed.

The working group on Legal Issues met on 21 February 2013 and adopted a working plan which consists in identifying best practices applied in certain Member States in a limited number of areas, to analyse them and to recommend these practices. The first three issues to be studied are storage and destruction of IP infringing goods, damages and legal costs and cooperation of different services in charge of fighting IP infringements within a Member State and between Member States. Once the working group has finished the study of these 3 subjects further points of interest will be identified. Marius Schneider has underlined the importance of studying sensitive issues like transit (and other suspensive customs procedures) and small consignments, but there was no consensus in the working group on the subjects.
A study will be made on the practical problems in relation to enforcement of intellectual property rights in 5 non-member countries of the European Union, namely China, India, Turkey, Russia and Brazil.
It has also been decided to examine the prospects of tracking and tracing in legitimate supply chains and in particular whether technologically measures are available to combat counterfeiting and piracy.

The next Legal Working Group Meeting is scheduled for 26 September 2013.

The next Statistics Working Group Meeting is scheduled for 24 September 2013.

The summary reports of the meetings and the related power point presentations are available for ECTA Members under section Anti-counterfeiting Committee.

The following meetings of the EU Observatory are also to be noted:

  • Public Sector Representatives Meeting, under Irish EU Presidency, in Dublin, on 22 April 2013;
  • Private Sector Representatives Meeting, in Brussels, on 29 April 2013;
  • EU Observatory Plenary Meeting, in Alicante on 28 ans 29 October 2013.

Finally ECTA is honoured to inform its Members that ECTA Survey on national authorities engaged in the fight against counterfeiting, prepared by the ECTA Anti-counterfeiting Committee, will be officially published on the new EU Observatory website.

The survey is available HERE

Canada: Adoption of the Combating Counterfeit Products Act - Bill C-56

On 1 March 2013, the Canadian Government introduced Bill C-56 called "Combating Counterfeit Products Act". It is an amending Act of Canada’s Copyright Act, Trade-marks Act and other consequential Acts and can be downloaded HERE

Keri Johnston, member of ECTA Anti-counterfeiting committee, reported that it grants greater powers to the customs officers, but has provisions that are unrelated to counterfeit goods.


1.2 Trade Marks

Plain packaging: New legislation in New Zealand

On 19 February 2013, New Zealand Associate Minister of Health Tariana Turia announced that following the public consultation process (consultation ended on 5 October 2012), the New Zealand government intends to introduce legislation by the end of the year enabling plain packaging of tobacco products.
He mentioned that the Ministry of Health will begin policy work on plain packaging immediately, and that legislation will be introduced “by the end of the year.” That legislation will go to a select committee for further public consultation and consideration.
However, the Minister’s statement leaves open the possibility that the government could actually delay passing the legislation while the Australian WTO/legal cases are resolved: “the Government will wait and see what happens with Australia’s legal cases, making it a possibility that if necessary, enactment of New Zealand legislation and/or regulations could be delayed pending those outcomes.”

The Minister’s statement can be found HERE


1.3 Trade Secrets

Public consultation on the protection against misappropriation of trade secrets and confidential business information

The European Commission has launched an interactive on-line consultation on the protection against misappropriation of trade secrets and confidential business information (See Flash 20-12.

This consultation is primarily targeted at the general public, citizens, SME’s, business associations/trade unions and the research community, but it is also addressed to any party (legal or natural person) with views on the protection of confidential business information.

The main objective of this consultation is to gather views regarding redress against misappropriation of confidential business information used by companies and research bodies in the EU. The aim is to understand whether the current legal framework is suited to ensure that competition is fair, and whether legal certainty and security in cross-border business activities can be improved in order to further encourage investment in research and development (R&D).

More information may be found HERE

The consultation document is available HERE

ECTA’s submission prepared by the ECTA Harmonization Committee may be found HERE


1.4 Domain Names

EURid signs MoU with UNESCO

On 27 February 2013, EURid and UNESCO have signed a Memorandum of Understanding (MoU).

Both parties will carry out common projects to contribute to the promotion of multilingualism in cyberspace with special focus on research and analysis of the International Domain Names (IDN) deployment, preparation of joint World Report(s) on the IDN deployment, cooperation in preparation of joint events, meetings and projects involving experts from various professional and academic communities, industry as well as other international, regional and national organizations.

More information may be found HERE


2 Office Practice

2.1 OHIM

New CF & CP Working Groups meetings

A new round of Cooperation Fund and Convergence Programme activities are scheduled.

Until 28 February, eight national offices (BX, FI, UK, IE, MT, PL, SK, LV) and CNIPA participated in the Working Group on the Future Software Package.

For more detailed information, please check HERE

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 and Antonio Andrade, Chair of ECTA Design Committee are amongst the speakers.

More information may be found HERE

You can register HERE


2.2 WIPO

WIPO’s Global Brand Database Tops the 10 Million Mark

On 20 February 2013, WIPO officially announced a major expansion of its public database of trade mark and brand information. The newest addition of six national collections of trademark records – including the entire United States Patent and Trade mark Office (USPTO) collection – takes the Global Brand Database from 2.2 to 10.9 million records, making it the world’s largest free, public trade mark search facility.

The full official press release may be found HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-104/11 of 1 February 2013, Ferrari F.lli Lunelli SpA vs. OHIM (contested decision: R 1249/2010-2 of 8 December 2010)

Trade mark applied for:



Class: 33

Decision: The trade mark is descriptive. The term "pearl" is used to describe a oenology "slightly sparkling wine» (para. 26).

The Board of Appeal’s decision is upheld.


Case T-427/11 of 21 February 2013, Laoratoire Bioderma vs. OHIM (contested decision: R 861/2009-1 of 28 February 2011)

Contested trade mark:

BIODERMA

Classes: 3,5,44

Decision: The mark in question can be understood as indicating the origin of a product natural skin care or natural skin (para. 48).

It must be considered descriptive of the goods and services that have the essential characteristic finding a preservation of the skin during use or implementation (para. 53).

However, it is not descriptive substances adapted for medical use, in Class 5. In respect of these products, the possibility of an effect on the skin during use is too far for there to be the point of view of the relevant public is a sufficiently direct and specific relationship with brand concerned (para. 54).

The Board of Appeal’s decision is partly annulled.


On relative grounds for refusal

Case T-662/11 of 29 January 2013, Thomas Müller vs. OHIM – Loncar SL (contested decision: R 2508/2010-2 of 27 September 2011)

Trade marks:

SUNLESS
LONCAR-SUNLESS  
Earlier Trade marks Trade mark applied for

Classes: 6,19,22,24

Decision:
1. The trade marks are visually (para. 57 to 69) and aurally (para. 70 to 72) similar.
2. Metal shutters in Class 6 and non-metal shutters in Class 19 are similar to tarpaulins/awnings (para. 39 to 44)
3. There is a likelihood of confusion (para. 78 to 83).

The Board of Appeal’s decision is upheld.


Case T-54/12 of 31 January 2013, K2 Sports Europe GmbH vs. OHIM – Karhu Sport Iberica, SL (contested decision: R 986/2010-4 of 29 November 2011)

Trade marks:

K2 SPORTS
Earlier Trade mark Trade mark applied for

Classes: 18,25,28

Decision: The word sport is descriptive and cannot be decisive with regard to the overall impression created by the signs at issue (para. 32).

The trade marks are visually (para. 36 to 41) and aurally (para.42 to 45) different. There is a weak conceptual similarity (para. 48). Overall, they are different (para. 50).

The Board of Appeal’s decision is upheld.


Case T-159/11 of 4 February 2013, Marek Marszalkowski vs. OHIM – Mar-Ko Fleischwaren GmbH & Co. KG (contested decision: R 760/2010-4 of 11 January 2011)

Trade marks:

MAR KO
Earlier Trade mark Trade mark applied for

Class: 29

Decision: The trade marks are visually (para. 39 to 42) and aurally (para. 43 to 44) similar.
There is a likelihood of confusion (para. 103 to 109).

The Board of Appeal’s decision is upheld.


Case T-631/11 of 20 February 2013, Caventa AG vs. OHIM – Anson’s Herrenhaus KG (contested decision: R 2014/2010-1 of 15 September 2011)

Trade marks:

Christian Berg
Earlier Trade mark Trade mark applied for

Classes: 25, 28

Decision:
1. The trade marks are visually (para. 45), aurally (para. 45) and conceptually (para. 46 to 53) similar.
2. The gymnastic and sports articles and appliances are similar to clothing articles (para. 36 to 39).
There is a likelihood of confusion

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-561/11 of 21 February 2013, Fédération Cynologique Internationale vs Federación Canina Internacional de Perros de Pura Raza

The Court replies to a question referred by the Alicante Court relating to the the interpretation of Article 9(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) (‘the Regulation’)

The Court’s reply is as follows:

Article 9(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand.


4 ECTA News

ECTA Meetings with the European Commission and Parliament, 7 March 2013, Brussels

On Thursday 7 March 2013 an ECTA delegation, composed of the ECTA Management and the Chairs of ECTA Law , Anti- counterfeiting and Harmonization Committees, met the high representatives of the DG Internal Market, DG Trade, DG Enterprise and Industry, as well as members of Commissioner’s Barnier cabinet.

For the first time ECTA met the Members of the European Parliament, Malgorzata Handzlik, Rapporteur in the Tobacco Directive and Christian Engstrom, member IMCO and JURI committees to express ECTA position regarding the possible standardized packaging in Europe.

The above meetings were a good opportunity to enhance ECTA’s relations with the leading European institutions and to measure the impact of ECTA’s contributions.

The outcome of these meetings will be relayed in the report available to ECTA members.

The report from the office of MEP Mrs Malgorzata Handzlik may be found HERE

ECTA Round Table session "Brand owners life before and after IP Translator" - Report

The event took place on 21 February at the occasion of the Annual ECTA-OHIM meeting and was attended by 85 participants.

ECTA received very positive comments and was congratulated for the excellent preparation of the workshop.

Ewa Grabiak attended the meeting.

Her report may be found HERE

The PowerPoint presentations are available for ECTA Members under section Events/Past events/Round Table sessions.

ECTA Internet Committee - Election of the new Committee Chair

ECTA is pleased to announce that the ECTA Internet Committee has elected a new Chair: Ms. Marie-Emmanuelle Haas from France.

We wish her all the best in her new function and thank the past Chair, Andrew Mills, for his collaboration and support.


Anti-counterfeiting, Domain Name, Geographical Indications, Trade Mark OHIM, WIPO