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05-13 | 29 March 2013

Topics: Counterfeiting EU Legislative Package EUIPO Cooperation Fund Geographical Indications TM Class

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ECTA - GRUR WORKSHOP "European Trade Mark System under review - A first analysis of the new proposed legal framework", 3 June 2013, Brussels
Programme is available HERE

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Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • Reform of the European Trade Mark system-Goods in transit
  • EU-US Transatlantic Trade and Investment Partnership
1.2 Trade Marks
  • Reform of the European Trade Mark system - Publication of the EU Commission’s proposal
  • United Kingdom: Introduction of a ’fast track’ opposition procedure within the Trade Mark Tribunal, and a refundable appeal fee for inter partes appeals to the Appointed Person
1.3 Geographical Indications
  • Study on Geographical indication protection for non-agricultural products in the Internal market
2 OFFICE PRACTICE
2.1 OHIM
  • 8th Liaison meeting on Technical Cooperation - Report
  • User Satisfaction Survey 2012
  • Euroclass becomes TMClass
  • Cooperation Fund: Final working group meetings on enforcement projects
  • Signature of the Memorandum of Understanding with Norway
  • 10 years of the Community Design, 8-9 April 2013, Alicante
2.2 National Offices
  • Estonia: New developments in the Harmonization Project
  • Greece: New developments in the Harmonization Project
  • United Kingdom: New Tribunal Practice Notice (1/2013)
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-247/11 of 7 March 2013, FairWild Foundation vs. OHIM – Rudolf Wild GmbH & Co. KG
There is a likelihood of confusion

T-498/10 of 8 March 2013, David Mayer Naman vs. OHIM – Daniel e Mayer Srl
There is a likelihood of confusion

T-553/10 of 13 March 2013, Biodes, SL vs. OHIM – Manasul International, SL
There is a likelihood of confusion

T-624/11 of 19 March 2013, Yueqing Onesto Electric Co. Ltd vs. OHIM – Ensto Oy
There is a likelihood of confusion

T-277/12 of 20 March 2013, Bimbo, SA vs. OHIM – Café do Brasil SpA
The goods are different

T-571/11 of 20 March 2013, El Corte Ingles, SA vs. OHIM – Groupe Chez Gerard Restaurants Ltd
The goods cannot be compared

T-353/11 of 21 March 2013, Event Holding GmbH & Co. KG vs. OHIM – CBT Communicacion Multimedia, SL
There is no likelihood of confusion

EUROPEAN COURT OF JUSTICE

C 655/11 of 21 February 2013, Seven for all mankind LLC vs. OHIM – Seven SpA
The trade marks are similar

4 ECTA NEWS
  • ECTA-GRUR Joint Workshop "European Trade Mark System under review - A first analysis of the new proposed legal framework" - 3 June 2013, Brussels
  • ECTA Workshop "Enforcement challenges in Europe and China", 6 March 2013, Brussels-Report
  • Conference Aropiade 2013, 28 February - 1 March 2013, Nyon - Report
  • Opposition proceedings: Conflict with Spanish application AECTA

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

1 Law

1.1 Anti-counterfeiting

Reform of the European Trade Mark system - Goods in transit

On 27 March 2013 the European Commission has officially published its proposals to amend the Community Trade Mark Regulation 207/2009 and of the Trade Mark Directive 2008/95/CE.

These proposals were expected for over a year by the community of Intellectual Property in Europe. ECTA was actively involved in the consultations that led to these proposals. In coming months, ECTA will share its views and comments on these legislative proposals.

Given the fact that the matter of goods in transit was not included in the revision of the Customs Regulation (See ECTA Flash 02-13), ECTA was particularly active in this respect over the last weeks.

On 7 March 2013 ECTA together with INTA, AIM, BASCAP and MARQUES send a joint letter to Commisionner Michel Barnier to express our support to include the transit of counterfeit goods as an act of infringement.

The letter may be found HERE

Moreover, following ECTA meeting with the Commissioner’s Barnier cabinet, ECTA prepared an official letter in respect of the protection of well-known trade marks in the context of the upcoming revision of the Community Trade Mark Regulation (CTMR) and Trade Mark Directive (TMD).

In this letter ECTA urged the Commission to support a modification of the substantive trade
mark law of the European Union, which acknowledges the transit of fake goods using without authorisation a third party trade mark protected in the country of destination as a trade mark infringement in the European Union, a fortiori when the trade mark is a well-known trade mark in the sense of Article 6bis Paris Convention.

The letter may be found HERE

Currently, ECTA Anti-counterfeiting Committee is analyzing the Commission’s proposals in this respect.

EU-US Transatlantic Trade and Investment Partnership

On 13 February 2013 – following a recommendation by the High Level Working Group on Growth and Jobs - the EU and US have agreed to initiate the internal procedures necessary to launch negotiations on a Transatlantic Trade and Investment Partnership (TTIP). In this framework, the European Commission (DG TRADE) intends to consult intellectual property rights stakeholders, in order to assess their matters of interest in this area and to define what may be the future scope of an IPR chapter.

More information may be found HERE


1.2 Trade Marks

Reform of the European Trade Mark system - Publication of the EU Commission’s proposal

As mentionned above, on 27 March 2013, the European Commission published officially the proposals in the context of the reform of the European Trade Mark system.

The Commission repeated that the proposals do not aim at the creation of a new system but at a well-targeted modernisation of existing provisions, with the following aims:

  • Streamlining and harmonising registration procedures, by introducing principal procedural rules into the Directive and taking the Union (CTM) system as a benchmark;
  • Modernising the existing provisions and increasing legal certainty, by amending outdated provisions, removing ambiguities, clarifying trade mark rights in terms of their scope and limitations and incorporating extensive case law of the Court of Justice;
  • Facilitating cooperation between the Member States’ offices and the EU Agency, by putting in place a legal framework for this cooperation, including a funding mechanism based on grants from OHIM budget;
  • Improving the means to fight against counterfeit goods, in particular when they are in transit through the Union territory;
  • Adapting the texts to the terminology and procedures of the Lisbon Treaty (e.g. renaming the Community trade mark which will be called the European trade mark in the future) and to the inter-institutional Common Approach on decentralised agencies of July 2012 (e.g. new rules on governance of the EU agency);
  • Making the fee structures more flexible to better meet the needs of users and adapting (reducing) accordingly the fees payable to the EU Agency (OHIM).

You may find the relevant publications below:

The legislative proposals will be transmitted to the European Parliament and the Council for adoption under the codecision procedure. Once the proposals have been adopted – hopefully by Spring 2014, EU countries will have to transpose the new rules of the Directive into national law within two years. As to the Regulation, most amendments will become effective with its entry into force, while the rest will only apply when the necessary delegated acts are enacted.

The proposed revision of the Fees Regulation will follow a different procedure. The new Regulation will be adopted by the Commission as an implementing act and therefore requires prior endorsement by the competent Committee on OHIM fees. The first meeting of the Committee will take place before the summer with the aim of adopting the amended Fees Regulation before the end of 2013.

United Kingdom: Introduction of a ’fast track’ opposition procedure within the Trade Mark Tribunal, and a refundable appeal fee for inter partes appeals to the Appointed Person

On 22 March 2013, the UK IPO launched a consultation in order to get stakeholders’ views on the appropriate procedural changes for the introduction of a fast track opposition procedure within the Trade Mark Tribunal. The consultation document outlines proposals for the fast track procedure.

The deadline to submit comments is 17 May 2013.

More information may be found HERE

The Consultation document is available HERE


1.3 Geographical Indications

Study on Geographical Indication protection for non-agricultural products in the Internal market

On 22 March 2013, the European Commission published the study on Geographical Indication protection for non-agricultural products in the Internal market. This study, conducted by Insight Consulting, with REDD and OriGIn, is a contribution to the European Commission’s evaluation of the feasibility of the protection of Geographical indications for non-agricultural products in the internal market.

The full text of the study may be found HERE

Annexes may be found HERE

In this context, the European Commission is organizing a public hearing on Geographical Indication protection for non-agricultural products in the Internal market , which is going to take place on 22 April 2013 in Brussels.

The Agenda of the hearing is available HERE

Ewa Grabiak, ECTA Legal Coordinator will attend the meeting on behalf of ECTA.


2 Office Practice

2.1 OHIM

8th Liaison meeting on Technical Cooperation - Report

The 8th Liaison meeting on Technical Cooperation took place on 7 and 8 March 2013 in Alicante.

More information may be found HERE

Cristina Bercial-Chaumier, Secretary of ECTA Law Committee attended the meeting on behalf of ECTA.

Her report of the meeting may be found HERE

User Satisfaction Survey 2012

On 19 March 2013 OHIM launched the User Satisfaction Survey, covering the Office’s activities over the year 2012.

The survey forms part of OHIM’s commitment to improving the quality of its services as perceived by users, and falls under Key Initiative 25 of the Strategic Plan.

More information may be found HERE

The official President Campinos’ letter is available HERE

Euroclass becomes TMClass

OHIM has announced that Euroclass has been rebranded to be called TMclass to external website on 18 March 2013. Subsequent to the successful integration of USPTO and JPO, EuroClass will soon include the Korean classification database, further solidifying its importance as a global IP resource. It is this global expansion that has led to the decision to rebrand.

More information may be found HERE

The official letter adressed to Users’ associations is available HERE

Cooperation Fund: Final working group meetings on enforcement projects

Final working group meetings on the two Cooperation Fund enforcement projects are underway this week in OHIM. The two enforcement tools, namelya database supporting enforcement of IPRs and a counterfeiting Intelligence support tool, are being developed by the Cooperation Fund, in conjunction with experts from the EU national offices, the World Customs Organisation and key user associations. The groups will focus on the final testing of the tools which have been developed prior to the June go-live.

Marius Schneider, Chair of ECTA Anti-counterfeiting Committee attended the meeting on behalf of ECTA.

Signature of the Memorandum of Understanding with Norway

On 21 March 2013 OHIM President António Campinos and the Director General of Norwegian Intellectual Property Office, Mr Per A. Foss, signed a Memorandum of Understanding which will enhance the cooperation between both organisations in areas such as exchange of trade mark and design data, enforcement, and harmonisation of trade mark and design practice.

The signature of the Memorandum will facilitate the execution of one of the key initiatives of the Strategic Plan of the OHIM, namely Key Initiative 33 “Engage in cooperation activities outside the EU”.

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 National Offices

Estonia: New developments in the Harmonization Project

On 19 March 2013 the Estonian Patent Office announced that the next step in the Harmonization project by using the completely validated Estonian translations of the English Harmonized database as the accepted list of Goods and Services has been reached.

More information may be found HERE

Greece: New developments in the Harmonization Project

The Greek IP Office announced that the completely validated Greek translations of the English Harmonized database as the accepted list of Goods and Services can be used as from 15 March 2013.

For more information, please check HERE

United Kingdom: New Tribunal Practice Notice (1/2013)

On 31 March 2013 The Trade Marks and Registered Designs (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment ) Order 2013 come into force and this notice provides guidance on the main legislative changes.

The purpose of the new instruments is therefore to restore the position to what it was prior to the change made in 2008. This will be achieved by introducing the wording ’beginning immediately after’ to prescribe time periods other than for rules 5(5), 14(5) and 63(2) of the Trade Marks Rules 2008 where it is intended to retain the ’beginning on/with’ formulation.

More information may be found HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On relative grounds for refusal

Case T-247/11 of 7 March 2013, FairWild Foundation vs. OHIM – Rudolf Wild GmbH & Co. KG (contested decision : R 1014/2010-1 of 3 March 2011)

Trade marks:

WILD FAIRWILD
Earlier Trade mark Trade mark applied for

Classes: 3,5,29,30

Decision: The trade marks are visually and aurally (para. 44) similar. There is a likelihood of confusion (para. 41).

The Board of Appeal’s decision is upheld.


Case T-498/10 of 8 March 2013, David Mayer Naman vs. OHIM – Daniel e Mayer Srl (contested decision : R 413/2009-1 of 26 July 2010)

Trade marks:

DANIEL & MAYER MADE IN ITALY
Earlier Trade mark Contested Trade mark

Classes:18, 25

Decision: 1. Leather and imitations of leather not included in other classes in Class 18 are similar to « headgear, footwear and clothing » in Class 25 (para. 66 to 71).

2.The trade marks are visually (para. 81 to 86), aurally (para. 88 to 91) and conceptually (para. 93 to 99) similar.
There is a likelihood of confusion (para. 103).

The Board of Appeal’s decision is upheld.


Case T-553/10 of 13 March 2013, Biodes, SL vs. OHIM – Manasul International, SL (contested decision : R 1034/2009-1 of 3 September 2010)

Trade marks:



Earlier Trade mark Trade mark applied for

Classes: 5, 30, 31

Decision:

The trade marks are visually (para. 41 to 50) and aurally (para. 51 to 54) similar.

There is a likelihood of confusion (para. 87).

The Board of Appeal’s decision is upheld.


Case T-624/11 of 19 March 2013, Yueqing Onesto Electric Co. Ltd vs. OHIM – Ensto Oy (contested decision : R 2535/2010-2 of 20 September 2011)

Trade marks:



Earlier Trade mark Trade mark applied for

Class:9

Decision:

The trade marks are visually (para. 30 to 32) and aurally (para. 33 to 36) similar.

There is a likelihood of confusion (para. 41).

The Board of Appeal’s decision is upheld.


Case T-277/12 of 20 March 2013, Bimbo, SA vs. OHIM – Café do Brasil SpA (contested decision : R 1017/2011-4 of 15 May 2012)

Trade marks:

BIMBO
Earlier Trade mark Trade mark applied for

Class: 30

Decision:« flour, confectionery, ices, yeast and baking-powder » in Class 30 are not similar to « packaged sliced bread » in Class 30 (para. 58).

The Board of Appeal’s decision is upheld.


Case T-571/11 of 20 March 2013, El Corte Ingles, SA vs. OHIM – Groupe Chez Gerard Restaurants Ltd (contested decision : R 1946/2010-1 of 28 July 2011)

Trade marks:


CLUB GOURMET
Earlier Trade mark Trade mark applied for

Classes: 16,21,29,30,32,35

Decision: The earlier Spanish figurative mark is registered for the following services in Class 35: « An advertising sentence. It will be applied to the products covered by the trade marks Nos 1013156 (Class 29), 1013157 (Class 30) and 1815538 (Class 31), 1815539 (Class 32), 1013158 (Class 33), 1815547 (Class 42).

The description of the services designated by the earlier mark does not allow them to be compared with the goods designated by the mark applied for (para. 54).

The Board of Appeal’s decision is upheld.


Case T-353/11 of 21 March 2013, Event Holding GmbH & Co. KG vs. OHIM – CBT Communicacion Multimedia, SL (contested decision : R 939/2010-2 of 29 March 2011)

Trade marks:

Event
Earlier Trade mark Trade mark applied for

Classes: 35, 41, 43

Decision:

1. « business management; business administration» in Class 35 are similar to « development of hotels » in Class 43 ( para.44).

«office functions, advertising; organisation and conducting of exhibitions and events for commercial or advertising purposes; publication of publicity texts», in Class 35 are not similar to « operation of hotels » in Class 43 (para. 45 to 52).

«education; providing of training; entertainment; sporting and cultural activities; arranging and conducting of congresses, seminars,symposia and conferences; arranging and conducting of exhibitions and events for cultural or educational purposes; organisation and conducting of exhibitions and amusement and sports events» in Class 41 are not similar to « restaurant and accommodation » services in Class 43 (para. 53 to 56).

2.The trade marks are visually (para. 62 to 67), aurally ( para. 68 to 74) and conceptually (para. 75 to 80) similar.

3.Since the relevant public for similar services is made up of professionals, who have a high degree of attentiveness, the similarities between the signs are insufficient for it to be held that there is a likelihood of confusion (para. 92).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-655/11 of 21 February 2013, Seven for all mankind LLC vs. OHIM – Seven SpA (contested decision : T-176/10 of 6 October 2011)

Trade marks:


SEVEN FOR ALL MANKIND
Earlier Trade mark Trade mark applied for

Classes: 14,18

Decision: The General Court did not err in law by holding that the trade marks are similar overall. The General Court assessed the signs at issue as a whole, taking into account all relevant factors (para. 91).

The General Court’s decision is upheld.


4 ECTA News

ECTA-GRUR Joint Workshop "European Trade Mark System under review - A first analysis of the new proposed legal framework" - 3 June 2013, Brussels

The new legislative package proposed by the European Commission will be the topic of the forthcoming GRUR/ECTA Joint Brussels Workshop entitled “European Trademark System under review – A first analysis of the new proposed legal framework” taking place on 3 June 2013 in Brussels.

For more details on the programme and access to online registration please visit GRUR website

ECTA Workshop "Enforcement challenges in Europe and China", 6 March 2013, Brussels-Report

ECTA Workshop "Enforcement challenges in Europe and China" took place on 6 March 2013 in Brussels and brought together the representatives of the European Commission, the Official Mission of China to the EU and China IPR SME Helpdesk (See ECTA Flash 03-13)

The report of the event is available HERE

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

On 28 February and 1 March the Conference Aropiade took place (See ECTA Flash 03-13)

The event was dedicated to the Intellectual Property in the field of sport.

Lorenz Ehler, ECTA Member attended the Conference on behalf of ECTA.

His report may be found HERE

Opposition proceedings: Conflict with Spanish application AECTA

ECTA would like to inform its members that at the end of last year, a Spanish application for "ESCUELA DE CONSULTORIA AECTA" by the Asociacion de Empresas de Consultoria Terciario Avanzado Comunidad Valenciana was detected and reffered to ECTA Management Committee.
The above mentionned application designated all class heading of class 41. Following ECTA’s intervention (represented by Duran Corretjer) the applicant accepted to limit the application to “education; coaching; training services; sporting and cultural activities, expressly excluding services related to the fields of industrial and intellectual property". ECTA which thanks Duran Corretjer for the excellent work on behalf of ECTA, remarks how a proper implementation by the Spanish TM Office of the IP Translator’s principles might have perhaps avoided such an intervention and hopes that the next legislative package will once for all eliminate the need for having to deal with similar situation.


Estonia Anti-counterfeiting, Geographical Indications, Trade Mark National Office Practice