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06-13 | 18 April 2013

Topics: Domain Names EU Observatory Lisbon System Plain Packaging

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

 

"The Jury is still out"

 

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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 Enforcement of Intellectual Property Rights
  • Civil enforcement of intellectual property rights- Public consultation on the efficiency of proceedings and accessibility of measures
  • EU-US Transatlantic Trade and Investment Partnership- Meeting with the European Commission- DG Trade
1.2 Trade Marks
  • Plain packaging: Revision of the Tobacco Directive- Publication of the ENVI, IMCO and AGRI’s rapporteurs’reports
1.3 Domain names
  • ECTA becomes member of EURid
  • 7th Anniversary of the ".eu" domain name
2 OFFICE PRACTICE
2.1 OHIM
  • 9th Liaison Meeting on Trade Marks, 23-24 April 2013, Alicante
  • EU Observatory-Conference "Jointly Building Resilient EU Responses to Counterfeiting"- Dublin
  • 10 years of the Community Design, 8-9 April 2013, Alicante
2.2 WIPO
  • Working Group on the Development of the Lisbon System (Appellations of Origin)
  • India’s accession to the Madrid Protocol
  • Worldwide Symposium on Geographical Indications organized by WIPO and by the Department of Intellectual Property (“DIP”) of Thailand, Bangkok, 27- 29 March 2013 - Report
2.3 National Offices
  • Poland: New developments in the Harmonization Project
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-409/10 of 22 March 2013, Bottega Veneta International Sarl vs. OHIM
The trade mark is devoid of any distinctive character

T-410/10 of 22 March 2013, Bottega Veneta International Sarl vs. OHIM
The trade mark is devoid of any distinctive character

T-294/10 of 11 April 2013, CBp Carbon Industries, Inc vs. OHIM
The trade mark is descriptive

T-571/10 of 22 March 2013, Fabryka Lozysk Tocznych-Kranik S.A. vs. OHIM – Impexmetal S.A.
There is a likelihood of confusion

T-337/11 of 9 April 2013, Societa Italiana Calzature SpA vs. OHIM – Vicini SpA
There is no likelihood of confusion

T-336/11 of 9 April 2013, Societa Italiana Calzature SpA vs. OHIM – Vicini SpA
There is no likelihood of confusion

T-505/10 of 10 April 2010, Höganäs AB vs. OHIM – Haynes International, Inc
There is a likelihood of confusion


4 ECTA NEWS
  • Report of the ECTA Meetings with the European Commission
  • "From ACTA to standardised packaging: ECTA’s overview of 2012"- ECTA publication in WIPR e-Digest 2013
  • "The role of trade marks in cross-border trade" - ECTA publication in the European IPR Helpdesk Bulletin, April 2013

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

1 Law

1.1 Enforcement of Intellectual Property Rights

Civil enforcement of intellectual property rights- Public consultation on the efficiency of proceedings and accessibility of measures

As announced in Flash 19-12 on 30 November 2012 DG Markt launched a public consultation on the efficiency of proceedings and accessibility of measures.

The consultation was opened until 30 March 2013.

ECTA Anti-counterfeiting Committee under the lead of Marianne Decker , Secretary of the Committee prepared the ECTA submission, which may be found HERE

EU-US Transatlantic Trade and Investment Partnership- Meeting with the European Commission- DG Trade

As mentionned in the Flash 05-13 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.

In this respect DG Trade organized a meeting which will take place in Brussels on 17 April 2013.

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


1.2 Trade Marks

Plain packaging: Revision of the Tobacco Directive- Publication of the ENVI, IMCO and AGRI’s rapporteurs’reports

The different EU Parlimaent Committees rapporteurs involved in the revision of the Tobacco Directive namely ENVI, IMCO and AGRI’s rapporteurs have now published their draft reports on the proposed revised tobacco directive.

The rapporteur Mrs. Linda Mcavan from the ENVI Committee (lead committee) has proposed 56 amendments, amongst them full standardised packaging, following the Australian example.

The full ENVI draft report is available HERE

The IMCO draft opinion of rapporteur Malgorzata Handzlik may found HERE

The AGRI draft report may be found HERE

The ITRE report may be found HERE

JURI and INTA rapporteurs’ draft opinions remain to be published.

Moreover under Article 6 of the Protocol (No 2) on the application of the principles of subsidiarity and proportionality, any national parliament may, within 8 weeks from the date of transmission of a draft legislative act, send the Presidents of the European Parliament, the Council and the Commission a reasoned opinion stating why it considers that the draft in question does not comply with the principle of subsidiarity.

The reports of the Danish and Romanian Parliaments make expressesly reference to the protection of Intellectual Property Rights.

The opinion of the Danish Parliament (available only in French) may be found HERE

The opinion of the Romanian Parliament is available HERE


1.3 Domain names

ECTA becomes member of EURid

On 1 April 2013 ECTA became a first member association of EURid. At this occasion Massimo Cimoli, Vice Chair of ECTA Internet Committee was interviewed in Brussels.
The ECTA’s history, function and members were the main subject, as well the CTM system and how ECTA members may help its Client’s strategic decisions from trade mark searches to filing from oppositions to Court actions. Further one of the ECTA President’s main themes namely "internet jurisdiction" was discussed and how it would be important for businesses to have unified forum for on line trade mark violations and infringements. A three minutes spot will be shown on the Eurid General Assembly in Ljubljana on 18 April.

ECTA will be represented by ECTA President Domenico de Simone and the Vice-Chair of ECTA Internet Comittee, Massimo Cimoli.

7th Anniversary of the ".eu" domain name

For 7 years over 1.84 million EU residents have registered at least one .eu domain name, with 25% of those having registered more than one.

It has been confirmed that the majority of .eu users are in business, ambitious and aiming for expansion, which is where the .eu TLD is important in projecting a continent-wide image.

More information may be found HERE


2 Office Practice

2.1 OHIM

9th Liaison Meeting on Trade Marks, 23-24 April 2013, Alicante

On 23 and 24 April 2013 the 9th Liaison Meeting on Trade Marks will take place in Alicante.

ECTA will be represented by Cristina Bercial-Chamier, Secretary of ECTA Law Committee.

The working documents are available for ECTA members under section OHIM Link Committee - Working Documents.

EU Observatory-Conference "Jointly Building Resilient EU Responses to Counterfeiting"- Dublin

The Conference will take place on 22 April 2013 in Dublin and will bring together the representatives from the EU Observatory and the European Commission.

Marianne Decker, Secretary of the ECTA Anti-counterfeiting Committee will attend the meeting on behalf of ECTA.

Programme of the conference is available HERE

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

On 8 and 9 April 2013 the conference dedicated to the 10th anniversary of the Community Designs took place in Alicante. It was a good occasion to sum up the achievements of the Community Designs and also to speak about the future developments.

ECTA speakers were present in 3 sessions:

  • "Gastronomic Design: plates, cutlery, table design" - Benjamin Fontaine, Chair of ECTA Geographical Indications Committee,
  • "Spare parts-where now?" - Antonio Andrade, Chair of ECTA Design Committee,
  • "Fashion Design" - Fabio Angelini, chair of ECTA Law Committee.

Ewa Grabiak, ECTA Legal Coordinator also attended the meeting

The report of the event will be published in the next Flash.


2.2 WIPO

Working Group on the Development of the Lisbon System (Appellations of Origin)

From 29 April until 3 May 2013 the Working Group on the Development of the Lisbon System (Appellations of Origin) will take place in Geneva.

Draft Agenda may be found HERE

Draft Revised Lisbon Agreement on Appellations of Origin and Geographical Indications is available HERE

More information and other documents may be found HERE

Michele Elio De Tullio, Member of ECTA Geographical Indications Committee will the attend the meeting on behalf of ECTA.

India’s accession to the Madrid Protocol

On 8 April 2013the Minister for Commerce and Industry Anand Sharma deposited his country’s instrument of accession to the Madrid Protocol for the International Registration of Marks at WIPO, bringing the total number of members of the international trade mark system to 90. The treaty will enter into force with respect to India on 8 July 2013

India is the 14th of the G-20 economies to accede to the Madrid Protocol. As Mr. Gurry, WIPO Director General said “India’s accession to the international trademark system, as with the recent accessions by Colombia, Mexico, New Zealand and Philippines, signals an era of significant geographical expansion of the Madrid system, which offers greater benefit to right holders worldwide.”

More information may be found HERE

Worldwide Symposium on Geographical Indications organized by WIPO and by the Department of Intellectual Property (“DIP”) of Thailand, Bangkok, 27- 29 March 2013 - Report

The Worldwide Symposium on Geographical Indications organized by WIPO and by the Department of Intellectual Property (“DIP”) of Thailand, Bangkok took place on 27- 29 March 2013.

Benjamin Fontaine, Chair of ECTA Geographical Indications Committee was amongst the speakers.

His report may be found HERE


2.3 National Offices

Poland: New developments in the Harmonization Project

On 2 April the Polish IP office announced that the completed Polish translations of the Common Harmonised Database on the Classification of Goods and Services are now available.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-409/10 of 22 March 2013, Bottega Veneta International Sarl vs. OHIM (contested decision: R 1247/2009-1 of 16 June 2010

Trade mark applied for:


Class:18

Decision: The brand is in the form of a handbag, is devoid of distinctive character.
The position of the handle relative to the rest of the bag appears as a simple variant of the positioning of the handles of a bag or a handbag (para. 63).

The rectangular shape with rounded corners, does not differ significantly from the norms or customs of the sector (para. 64).


Case T-410/10 of 22 March 2013, Bottega Veneta International Sarl vs. OHIM (contested decision: R 1539/2009-1 of June 2010)

Trade mark applied for:


Class:18

Decision: The brand is in the form of a handbag, is devoid of distinctive character.
The shape of the handbag as it would remind one of a bag of groceries, and the lack of closure are not characteristics that individualize bags and handbags covered by the mark applied for and report on their own, a commercial source (para. 64).

The applicant has failed to prove that the trade mark has become distinctive through use (para. 80 to 102).
The Board of Appeal’s decision is upheld.


Case T-294/10 of 11 April 2010, CBp Carbon Industries, Inc vs. OHIM (contested decision: R 1361/2009-1 of 21 April 2010)

Trade mark applied for:

CARBON GREEN

Class:17

Decision: The trade mark is descriptive.

The word « carbon » must be considered, from the point of view of the relevant public, as descriptive of a characteristic of the goods concerned (para. 21).

The word « green » denotes ecological benefits. It is apparent from the actual description of the goods concerned, which refers to « reclaimed » and « recycled» goods, that a feature of the goods is that they contribute to maintaining ecological balance. In that context, the word « green » has a direct and specific relationship with the goods concerned (para 25).

The Board of Appeal’s decision is upheld


On relative grounds for refusal

Case T-571/10 of 22 March 2013, Fabryka Lozysk Tocznych-Kranik S.A. vs. OHIM – Impexmetal S.A. (contested decision: R 1387/2009-1 of 6 October 2010)

Trade marks:



Earlier Trade mark Trade mark applied for

Class: 7

Decision: The trade marks are visually (para. 29 to 37) and aurally (para. 28) similar. There is a likelihood of confusion (para. 41).

The Board of Appeal’s decision is upheld.


Case T-337/11 of 9 April 2013, Societa Italiana Calzature SpA vs. OHIM – Vicini SpA (contested decision: R 918/2010-2 of 8 April 2011)

Trade marks:

ZANOTTI
Earlier Trade mark Trade mark applied for

Class: 25

Decision: The trade marks are visually (para. 28 to 33) different. There is a slight aural (para. 34 to 37) and conceptual (para. 38 to 39) similarity.

Given that the overall impression of the mark applied for is dominated by the figurative element representing a handwritten signature, there is no risk of confusion (para. 42).

The Board of Appeal’s decision is upheld.


Case T-336/11 of 9 April 2013, Societa Italiana Calzature SpA vs. OHIM – Vicini SpA (contested decision: R 634/2010-2 of 8 April 2011)

Trade marks:

ZANOTTI
Earlier Trade mark Trade mark applied for

Classes: 18, 25

Decision: The trade marks are visually (para. 33 to 37) different. There is a slight aural (para. 38 to 40) and conceptual (para. 41 to 42) similarity.

Given that the overall impression of the mark applied for is dominated by the figurative element representing a handwritten signature, regardless of whether the consumer is able to decrypt it or not, there is no risk of confusion (para. 42).

The Board of Appeal’s decision is upheld.


Case T-505/10 of 10 April 2013, Höganäs AB vs. OHIM – Haynes International, Inc (contested decision: R 1530/2009-4 of 18 August 2010)

Trade marks:

HASTELLOY ASTALOY
Earlier Trade mark Trade mark applied for

Class: 6

Decision: The trade marks are visually (para.29 to 34) and aurally (para. 31 to 37) similar.

There is a likelihood of confusion (para. 68).

The Board of Appeal’s decision is upheld.


4 ECTA News

Report of the ECTA Meetings with the European Commission

The report of the meetings with the European Commission of 7 March 2013 is available for ECTA Members under sections Law Committe, Anti-Counterfeiting Committee and Harmonization Committee - Papers.

"From ACTA to standardised packaging: ECTA’s overview of 2012" - ECTA publication in WIPR e-Digest 2013

ECTA was asked to provide an overview of 2012 and major developments in the field of Intellectual Property.

The article prepared by Ewa Grabiak, ECTA’s Legal Coordinator, was published in the World Intellectual Property Review e-Digest 2013.

The article is available HERE

"The role of trade marks in cross-border trade" - ECTA publication in the European IPR Helpdesk Bulletin, April 2013

In the framework of the collaboration with the European IPR Helpdesk, ECTA is given the opportunity to publish articles regarding various questions of the Intellectual Property.

On 18 April, the article written by Ewa Grabiak, ECTA Legal Coordinator was published in the European IPR Helpdesk Bulletin.

The main aim of the article was to encourage the European SMEs to create new trade marks and highlight its importance in cross-border trade. The importance of the professional legal advice was stronly pointed out.

The article may be found HERE


Poland Domain Name, Enforcement, Trade Mark National Office Practice, OHIM, WIPO