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05-14 | 24 March 2014

Topics: Design View Domain Names EU Legislative Package Geographical Indications Plain Packaging

ECTA’s 33rd Annual Conference
Celebrating the 20th CTM Anniversary
18-21 June 2014, Alicante
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Table of Contents

1 LAW
1.1 Trade Marks
  • Trade mark legislative package
  • EU tobacco Directive adopted by the EU Council on 14 February 2014
1.2 Domain Names
  • Expansion of domain name space may shift trade mark protection strategies
  • eu. renewal rate of 80%
  • Ashwin Rangan – new chief innovation and information officer
2. OFFICE PRACTICE
2.1 OHIM
  • OHIM website progress
  • OHIM’s user area – working with sub profiles
  • Launch of survey on protection and enforcement of intellectual property rights outside the EU
  • Cooperation meetings at OHIM
  • Memorandum of understanding between OHIM and IPOM (Montenegro)
2.2 WIPO
  • Revised guide to the international registration of marks
  • Information and practical tips on how to use specific forms
  • WIPO conferences, meetings and seminars in April 2014
  • The latest issue of the bulletin “Appellations of Origin” is now available on-line (No.42 – January 2014)
  • Francis Gurry nominated for second term as Director General
2.3 National Offices
  • Malta: The Maltese IP national office has been integrated into the DesignView database
  • Slovak Republic: Web registers - notice
3. CASE LAW

Summaries and case law provided by

T-25/13 AQUA ADMIRABILIS vs. Aqua Mirabilis
There is a likelihood of confusion

T-229/12 VOGUE vs. VOGUE (fig)
Comparison of goods

T-520/11 GE vs. GE (fig)
There is a likelihood of confusion

T-416/12 ZEN vs. ZENSATIONS (fig)
There is a likelihood of confusion

C-337/12P Pi-Design AG, Bodum France SAS and Bodum Logistics A/S vs. OHIM – Yoshida Metal Industry Co. Ltd
Assessment of a shape of goods which is necessary to obtain a technical result

C-409/12 Backaldrin Osterreich The Kornspitz Company GmbH vs. Pfahnl Backmittel
Interpretation of Article 12(2)(a) of Directive 2008/95/EC

4. ECTA NEWS
  • ECTA meets representatives from the EU Commission and The German and Greek EU Representations
  • Workshop – trade marks, packaging and lifestyle regulation
  • ECTA GI Committee Position paper
  • ECTA Law Book X - Domain names

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


1 Law

1.1 Trade Marks

1.1.1. Trade mark legislative package

Further discussions on the trade mark legislative package will take place during the EU Council meetings on 11 April 2014, and 30 April 2014.

The calendar of the EU Council meetings is available HERE.


1.1.2. EU tobacco directive adopted by the EU Council on 14 March 2014

The revised tobacco directive was adopted by the EU Council on 14 March 2014, following the previous positive first reading reached at the EU Parliament.

The aim of the revision is to make tobacco products less attractive by influencing the rules of tobacco manufacturing but the provisions relating to the packaging raise some concerns from a trade mark law perspective.

Further information is available HERE.


1.2 Domain Names

1.2.1. Expansion of domain name space may shift trade mark protection strategies

The expansion of the domain name system (DNS) is likely to interfere with protection strategies for trade mark protection on the internet.

Further information is available HERE


1.2.2. eu. renewal rate of 80%

According to recent reports from EURid, a large number of eu. domain names, approximately 81%, were renewed in 2013.

Further information is available HERE


1.2.3. Ashwin Rangan – new Chief innovation and information Officer

Ashwin Rangan joined ICANN on 3 March 2014, as its first chief innovation and information officer.

Further information is available HERE


2 Office Practice

2.1 OHIM

2.1.1. OHIM website progress

OHIM continues its work on the website. Last OHIM’s updates on improvements and/or new technical issues are listed below by date:


2.1.2. OHIM’s user area – working with sub profiles

The OHIM has published practical guidance on how to work with subprofiles in OHIM’s website user area.

Further information is available HERE.


2.1.3. Launch of survey on protection and enforcement of intellectual property rights outside the EU

The Observatory on intellectual property right infringements has launched a new survey which focuses on protection and enforcement of intellectual property rights in third countries.

All ECTA Membersare invited to participate in this survey.

Further information is available HERE.


2.1.4. Cooperation meetings at OHIM

A cooperation fund meeting, between points of contact from EU national and regional IP offices, was held on 12 March 2014.

Further information is available HERE


2.1.5. Memorandum of understanding between OHIM and IPOM (Montenegro)

A memorandum of understanding has been signed between OHIM and the Intellectual Property Office of Montenegro (IPOM). The memorandum covers several actions of cooperation, such as Montenegro’s commitment to join TMview, Designview, and TM class.

Further information is available HERE


2.2 WIPO

2.2.1. Revised guide to the international registration of marks

A revised version of the guide to the international registration of marks under the Madrid Agreement and the Madrid Protocol is now available in the Madrid system website

It focuses on users, and small and medium-sized enterprises, with little knowledge of the Madrid system.

Further information is available HERE.


2.2.2. Information and practical tips on how to use specific forms

A new publication intended to provide information and practical tips on the use of the Madrid system is available HERE.

This publication is divided into two main sections. The first part of the publication provides general information on the Madrid system, while the second part of the publication provides information on the most common forms used in the Madrid system.


2.2.3 WIPO conferences, meeting and seminars in April 2014

The following events will be held by WIPO in April 2014:


2.2.4. The latest issue of the bulletin “Appellations of Origin” is now available in-line (No.42 – January 2014)

The official publication of the Lisbon system, “Appellations of Origin”, is released by WIPO to inform on new registrations and other recordings in the international register, and information about changes in the legal framework of the Lisbon system.

The latest issue of the bulletin is available HERE.


2.2.5. Francis Gurry nominated for second term as Director General

WIPO’s coordination committee has nominated Mr. Francis Gurry for a second term as director general of WIPO. Subsequently, WIPO’s general assembly will meet on 8 – 9 May 2014, to confirm Mr. Francis Gurry’s nomination.

Further information is available HERE


2.3 National Offices

2.3.1. Malta: The Maltese IP national office has been integrated into the DesignView database

The Maltese IP national office has informed about its integration into DesignView. With this incorporation, The Maltese IP national office is now part of the fifteenth offices that have joined the DesignView database.

Further information is available HERE.


2.3.2. Slovak Republic: web registers – notice

The IP office of the Slovak Republic has launched a new information system to register and to administrate proceedings on industrial rights, and to centrally administrate registers of subject-matters applications.

Further information is available [HERE->http://www.indprop.gov.sk/?news&amp....


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On relative grounds for refusal

Case T-25/13 of 27 February 2014, Mäurer & Wirtz GmbH & Co. KG vs. OHIM – Sacra Srl (contested decision: R 1601/2011-2 of 13 November 2012)

Trade marks:

AQUA ADMIRABILIS Aqua Mirabilis
Earlier trade mark Trade mark applied for

Class: 3

Decision: The trade marks are visually (para. 25 to 28), aurally (para. 29 to 30) and conceptually (para. 31) similar. There is a likelihood of confusion (para. 39).

The Board of Appeal’s decision is upheld.


Case T-229/12 of 27 February 2014, Advance Magazine Publishers, Inc. vs. OHIM – Eduardo Lopez Cabré (contested decision: R 1170/2011-4 of 26 March 2012)

Trade marks:

VOGUE
Earlier trade mark Trade mark applied for

Class: 18

Decision:
1. There is a low degree of similarity between parasols and umbrellas in Class 18 (para. 32).
2. As regards the comparison of accessories and umbrellas in Class 18, the applicant did not state what was to be understood by the word accessories, for example by stating to which goods those accessories related. That is a vague category although it is necessary to identify the class to which those accessories belong, in this case Class 18 (para. 33).

Without having the information required as regards one of the goods at issue (accessories), the Board of Appeal could not, without erring in law and reasoning in the abstract consider that accessories and umbrellas were similar, given their common nature, common function, their complementarity, their common end-users and distribution channels (para. 38)

The Board of Appeal’s decision is partly upheld.


Case T-520/11 of 28 February 2014, Genebre SA vs. OHIM – General Electric Company (contested decision: R 20/2009-4 of 26 July 2011)

Trade marks:

GE
Earlier trade mark Trade mark applied for

Classes: 6,7,9,11,17

Decision:
The trade marks are visually (para. 29 to 43) and aurally (para. 44 to 47) similar. There is a likelihood of confusion (para. 60).

The Board of Appeal’s decision is upheld.


Case T-416/12 of 5 March 2014, HP Health Clubs Iberia, SA vs. OHIM – Shiseido Company Ltd (contested decision: R 2212/2010-1 of 6 June 2012)

Trade marks:

ZEN
Earlier trade mark Trade mark applied for

Classes: 3,35,44

Decision:
The trade marks are visually (para. 49 to 65), aurally (para. 66 to 70) and conceptually (para. 71 to 78). There is a likelihood of confusion (para. 83).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-337/12P to C-340/12P of 6 March 2014, Pi-Design AG, Bodum France SAS and Bodum Logistics A/S vs. OHIM – Yoshida Metal Industry Co. Ltd (contested decision: T-331/10 and T-416/10 of 8 May 2012). See Flash 09-12 of 18 May 2012.

Trade marks:


Contested trade marks

Classes: 8,21

Decision:
In order to decide whether a sign falls within the scope of Article 7(1)(e)(ii) CTMR relating to the shape of goods which is necessary to obtain a technical result, the competent authority may carry out a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of the application for registration (para. 54).

Material which, although subsequent to the date of filing the application, enables conclusions to be drawn with regard to the situation as it was on that date can, without error of law, be taken into consideration (para. 60).

The General Court’s decision is annulled.


Case C-409/12 of 6 March 2014, Backaldrin Osterreich The Kornspitz Company GmbH vs Pfahnl Backmittel

The Court replies to questions referred by the the Oberster Patent- und Markensenat (Austria), relating to the interpretation of Article 12(2)(a) of Directive 2008/95/EC.

The Court’s replies are as follows :

1. Article 12(2)(a) of Directive 2008/95/EC must be interpreted as meaning that, in a case such as that at issue in the main proceedings, a trade mark is liable to revocation in respect of a product for which it is registered if, in consequence of acts or inactivity of the proprietor, that trade mark has become the common name for that product from the point of view solely of end users of the product.

2. Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that it may be classified as ‘inactivity’ within the meaning of that provision if the proprietor of a trade mark does not encourage sellers to make more use of that mark in marketing a product in respect of which the mark is registered.

3. Article 12(2)(a) of Directive 2008/95 must be interpreted as meaning that the revocation of a trade mark does not presuppose that it must be ascertained whether there are other names for a product for which that trade mark has become the common name in the trade.


4 ECTA News

4.1. ECTA meets EU representatives

ECTA met on 13 March 2014 representatives from the EU Commission, the Permanent Representation of Germany, and the Permanent Representation of Greece, which hold the EU Presidency until 30 June 2014. The main items of discussion were the status of the trade mark legislative package and the Directive on trade secrets.

The dialogue between ECTA and the EU Commission, and Permanent Representations of Germany and Greece, was extremely fruitful and productive.


4.2. ECTA Workshop on trade marks, packaging and lifestyle regulation

ECTA workshop on trade marks, packaging and lifestyle regulation took place in Brussels on 12 March 2014.

The workshop counted with presentations on the beverage industry (Dr Ignacio Sanchez Recarte from SpiritsEurope), the tobacco industry (Jan Vidjeskog from Philip Morris International), and the food industry (Sebastián Romero Melchor from K&L Gates GP).

The presentations are available on ECTA’s website under the section Past Events.

A report of the workshop will be available to ECTA members.


4.3. ECTA Geographical Indications Committee Position paper

ECTA’s comments on the draft amendments of OHIM’s Guidelines – Work Package 2, on Geographical Indications, were submitted by the Geographical Indications Committee on 21 February 2014.

The position paper is available HERE


4.4. ECTA – Law Book X – Domain Names

The ECTA Law Book X - Domain Names is now available (in electronic format only) to ECTA members.

This book was produced by the Internet Committee under the leadership of its Chair Marie-Emmanuelle Haas. A special thank you is extended to Tobias Malte Mueller for his invaluable contribution.


Slovakia Malta Domain Name, Trade Mark National Office Practice, OHIM, WIPO