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04-14 | 5 March 2014

Topics: Domain Names EU Legislative Package EU Observatory Plain Packaging TM View

ECTA Workshop - Trade Marks, Packaging and Lifestyle regulation
12 March 2014 12.00-16.30, Brussels
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ECTA’s 33rd Annual Conference
Celebrating the 20th CTM Anniversary
18-21 June 2014, Alicante
EARLY BIRD CLOSES ON 10 MARCH 2014

 

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Table of Contents

1 LAW
1.1 Trade Marks
  • EU trade mark legislative package voted on 25 February 2014
  • IP Translator decision - third common communication released
  • Trips Agreement Implementation
  • EU tobacco directive - adoption by the EU Parliament
1.2 Domain Names
  • Future global negotiations on internet governance – Globalisation of ICANN
  • .WINE and .VIN
  • Domain names to be released for registration on 11 March 2014
2. OFFICE PRACTICE
2.1 OHIM
  • OHIM website progress
  • Technical cooperation liaison meeting at OHIM
  • EU Observatory
  • The Republic of Korea joins TMview
  • Upcoming OHIM events
2.2 WIPO
  • Release of the Russian IP PANORAMA
2.3 National Offices
  • Finland: number of business in trade register on the rise – new business registrations down from 2012
  • France: new partnership agreement between INPI and Bpifrance
3. CASE LAW

Summaries and case law provided by

T-570/11 La qualité est la meilleure des recettes
The trade mark is devoid of any distinctive character

T-127/12 FREE / FREEMOBILE / free (fig) vs. FREEVOLUTION (fig)
The trade marks are different

T-339/12 (fig) vs. (fig)
The designs are different

T-380/12 DEMON vs. DEMON (fig)
Assessment of likelihood of confusion

C-479/12 H. Gautzsch Grosshandel GmbH &Co. KG vs Münchener Boulevard Möbel Joseph Duna GmbH
Interpretation of Regulation N° 6/2002 on Community designs

4. ECTA NEWS
  • ECTA – OHIM Link Committee meeting
  • ECTA Round Table session on designs
  • OAMI User Group meeting

Editorial team: Bárbara Díaz Alaminos, Jean-Jo Evrard and Annick Mottet Haugaard


1 Law

1.1 Trade Marks

1.1.1. EU trade mark package voted on Tuesday 25 February 2014, during the EU Parliament’s plenary session

The European Parliament voted and adopted the Community Trade Mark legislative package at its plenary session, on 25 February 2014.

MEP Marielle Gallo’s amendments on counterfeit of goods in transit, supported by ECTA, have been adopted. The amendments are available HERE .

The economic and monetary affairs parliamentary committee interviewed Cecilia Wikström in relation to the update of the trade mark rules. Cecilia Wikström’s opinion is that the trade mark reform “is not a revolution, but rather a modernisation”.

Further information is available HERE.

A provisional edition of the Trade Mark Regulation is available HERE.

A provisional edition of the Trade Marks Directive is available HERE.


1.1.2 IP Translator decision - third common communication released

EU intellectual property national offices published, on 20 February 2014, a third common communication of their final comments and agreements on the IP Translator decision. The communication reflects, amongst others, the interpretation of protection as understood by each intellectual property office before and after the IP Translator decision.

The common communication is available HERE.


1.1.3. Trips Agreement Implementation

The WTO Council for trade-related aspects of intellectual property rights, in charge of the monitoring of the implementation of the agreement on trade-related aspects of intellectual property rights (the TRIPS agreement) met on 25 February.

Further information is available HERE


1.1.4. EU Tobacco Directive

The revised Tobacco Directive was approved by the EU Parliament on 26 February 2014. The goals of the new rules are to improve the rules on the manufacturing, production and presentation of tobacco products, and to ensure a higher level of public health protection.

The Directive allows Member States to introduce plain packaging only when justified on grounds of public health that are proportionate and do not cause barriers to trade between Member States.

Further information is available HERE


1.2 Domain Names

1.2.1. Future global negotiations on internet governance – Globalisation of ICANN

The European Commission has launched a proposal to reform the management and functioning of the internet. The proposal includes specific focus on the establishment of a timeframe for ICANN’s globalisation.

Further information is available HERE.


1.2.2. .WINE and .VIN

Discussions on the use of internet domains .wine and .vin remain open. ICANN has informed that a third party expert will analyse this ambiguous and politically sensitive matter in order to decide on next steps.

Further information is available HERE


1.2.3. Domain names to be released for registration on 11 March 2014

As a consequence of the end of a court case that caused the expiration and rejection of several domain names, thirty domain names will be available for registration on 11 March 2014.

The domain names list is available HERE.


2 Office Practice

2.1 OHIM

2.1.1. OHIM website progress

OHIM work to solve the outstanding technical issues of its website continues. During the past two weeks, the OHIM has released updates on the website. The latest improvements include the installation of solutions for functional errors of the website and e-business systems. Also, errors affecting the information display in the account online function have been solved.

Further information is available HERE.


2.1.2. Technical cooperation liaison meeting at OHIM

The technical cooperation liaison meeting was held in Alicante on 20 - 21 February 2014. Representatives of intellectual property national and international offices attended the meeting, in the context of which they discussed topics in relation to the Convergence Programme, the development of the Cooperation Fund, and OHIM’s international Cooperation Programme.

Further information is available HERE.


2.1.3. EU Observatory

ECTA attended the enforcement, public awareness, and the legal and international working group meetings held in Brussels on 25 and 26 February 2014. The agenda of the meetings included, among others, an update on the observatory and working group activities, a presentation on the proposal of directive on trade secrets, and a presentation of DG MARKT project related to the sale of counterfeit goods on the internet.

The agenda of the legal and international working group meeting is available HERE

The agenda of the enforcement working group meeting is available HERE

The agenda of the public awareness working group meeting is available HERE.


2.1.5. Upcoming OHIM events

The following events will be held by OHIM in March 2014:

  • Observatory Advisory Board Meeting, Brussels, 5 March 2014
  • Cooperation Fund Management Board Meeting, Alicante, 10 March 2014
  • Cooperation Fund Working Group Meeting, Alicante, 13-14 March 2014
  • Joint Europol-OHIM Seminar on Counterfeit Sport Goods, Alicante, 26-28 March 2014

Further information is available HERE


2.2 WIPO

2.2.1. Release of the Russian IP PANORAMA

The Russian IP PANORAMA programme, designed to help SMEs’ use and management of intellectual property rights, has been launched on 21 February 2014. The programme includes information on the relevance of IP rights for SMEs and it has 13 modules covering information on different intellectual property rights and issues.

Further information is available HERE.


2.3 National Offices

2.3.1. Finland: number of businesses in trade register on the rise – new business registrations down from 2012

The Finnish patent and registration office has informed that while the number of businesses in the trade register has increased over 16,000 at the end of the year 2013, the start-up notifications of new businesses have diminished by 6%.

Further information is available HERE.


2.3.2. France: new partnership agreement between INPI and Bpifrance

The INPI and Bpifrance, a public financing and investment banking group for French companies, have signed a new partnership agreement for the support of SMEs in the intellectual property strategy. The goal of the agreement is to undertake joint and effective actions in order to establish and expand the intellectual property strategies of French SMEs.

Further information is available HERE.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-570/11 of 12 February 2014, Dr. August Oetker Nahrungsmittel KG vs. OHIM (contested decision: R 1798/2010-3 of 8 July 2011)

Trade mark applied for:

La qualité est la meilleure des recettes

Classes: 29, 30

Decision: The trade mark is devoid of any distinctive character.
Consumers will associate the message conveyed by the phrase in question, directly and without further thought, with the quality of the food and drink covered by the trade mark for which registration is sought. The sign in question, assessed as a whole, will therefore merely be perceived as a promotional message inciting people to buy the applicant’s goods (para. 35).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-127/12 of 4 February 2014, Free SAS vs. OHIM – Noble Gaming Ltd (contested decision: R 2326/2010-2 of 13 December 2011)

Trade marks:

FREE  
FREEMOBILE  


Earlier trade marks Trade mark applied for

Classes: 9,41,42

Decision: The trade marks are visually (para. 44 to 45) and aurally (para. 46 to 47) remotely similar. Conceptually (para. 48 to 53), they are different. Overall (para. 54), they are different.

The Board of Appeal’s decision is upheld.


Case T-339/12 of 4 February 2014, Gandia Blasco, SA vs. OHIM – Sachi Premium-Outdoor Furniture Lda (contested decision: R 970/2011-3 of 25 May 2012)

Designs:



Earlier design Contested design

Decision: The designs at issue produce different overall impressions on the informed user and the overall impression produced by the earlier design was not such as to deprive the contested design of its individual character within the meaning of Article 6 of Regulation No 6/2002 (para. 37).

The Board of Appeal’s decision is upheld.


Case T-380/12 of 13 February 2014, Demon International vs. OHIM – Big Line Sas di Graziani Lorenzo (contested decision: R 1845/2011-4 of 20 June 2012)

Trade marks:

DEMON
Earlier trade mark Trade mark applied for

Classes: 9,28

Decision:
1. The trade marks are visually (para. 52) similar. Aurally and conceptually (para. 59), they are identical.
2. Ski masks and snowboard goggles in Class 9 have an average degree of similarity with snowboards in Class 28 (para. 38 to 43). With respect to these goods, there is a likelihood of confusion (para. 44).
3. Sports glasses, safety goggles, protective masks for sporting activities,except those adapted for a specific sport in Class 9 are remotely similar to snowboards in Class 28 (para. 44). With respect to those goods, there is no likelihood of confusion (para. 67).

The Board of Appeal’s decision is partly annulled.


EUROPEAN COURT OF JUSTICE

Case C-479/12 of 13 February 2014, H. Gautzsch Grosshandel GmbH & Co. KG vs Münchener Boulevard Möbel Joseph Duna GmbH

The Court replies to questions referred by the German Supreme Court relating to the the interpretation of several articles of Regulation N° 6/2002 of 12 December 2001 on Community designs
The Court’s replies are as follows:

1. On a proper construction of Article 11(2) of Council Regulation (EC) No 6/2002, it is possible that an unregistered design may reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, if images of the design were distributed to traders operating in that sector, which it is for the Community design court to assess, having regard to the circumstances of the case before it.

2. On a proper construction of the first sentence of Article 7(1) of Regulation No 6/2002, it is possible that an unregistered design may not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, even though it was disclosed to third parties without any explicit or implicit conditions of confidentiality, if it has been made available to only one undertaking in that sector or has been presented only in the showrooms of an undertaking outside the European Union, which it is for the Community design court to assess, having regard to the circumstances of the case before it.

3. On a proper construction of the first sub-paragraph of Article 19(2) of Regulation No 6/2002, the holder of the protected design must bear the burden of proving that the contested use results from copying that design. However, if a Community design court finds that the fact of requiring that holder to prove that the contested use results from copying that design is likely to make it impossible or excessively difficult for such evidence to be produced, that court is required, in order to ensure observance of the principle of effectiveness, to use all procedures available to it under national law to counter that difficulty, including, where appropriate, rules of national law which provide for the burden of proof to be adjusted or lightened.

4. The defences of the extinction of rights over time and of an action being time-barred that may be raised against an action brought on the basis of Articles 19(2) and 89(1)(a) of Regulation No 6/2002 are governed by national law, which must be applied in a manner that observes the principles of equivalence and effectiveness.

5. On a proper construction of Article 89(1)(d) of Regulation No 6/2002, claims for the destruction of infringing products are governed by the law of the Member State in which the acts of infringement or threatened infringement have been committed, including its private international law. Claims for compensation for damage resulting from the activities of the person responsible for the acts of infringement or threatened infringement and for disclosure, in order to determine the extent of that damage, of information relating to those activities, are governed, pursuant to Article 88(2) of that regulation, by the national law of the Community design court hearing the proceedings, including its private international law.

4 ECTA News

4.1.ECTA - OHIM Link Committee meeting

The ECTA – OHIM Link Committee meeting was held in Alicante on 21 February 2014 at the OHIM offices. The meeting was attended by representatives from ECTA and the OHIM, among others, the president of the OHIM Antonio Campinos.

The meeting was a good opportunity to discuss matters of mutual concern and to further cooperate between ECTA and the OHIM.

The minutes of the meeting will be available to ECTA members under the OHIM Link Committee - Papers section.


4.2. ECTA Round Table session on designs

The ECTA Round Table session on designs was held in Alicante on 20 February 2014. The Round Table started with an introduction by Andreas Renck, Chair of ECTA - OHIM Link Committee meeting, and was followed by presentations on the concept of “informed user” and the interrelation between designs and trade marks.

Presentations on the concept of the “informed user” were delivered by Elisabeth Fink (Member of the Board of Appeal of the OHIM), David Musker (R.G.C. Jenkins & Co, UK), and João Jorge (Raul César Ferreira (Herd.), Portugal).

The presentations on the second part of the Round Table, “designs v. trademarks”, were delivered by Théophile Margellos (President of the Boards of Appeal of the OHIM), and Arnaud Folliard (Lawyer, Litigation Service of the OHIM).

The Round Table was very interactive and ECTA received very positive comments from the OHIM, especially from the Board Members.


4.3. OAMI User Group meeting

Benjamin Fontaine, Chair of the ECTA Geographical Indications Committee, will attend the OAMI User Group meeting that will be held in Alicante on 30 April 2014.


Domain Name, Trade Mark OHIM, WIPO