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06-14 | 10 April 2014

Topics: Counterfeiting Domain Names Geographical Indications Plain Packaging TM Class

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
  • Twentieth anniversary of the Community trade marks system
  • Plain packaging for cigarettes - New Zealand
  • Plain packaging for cigarettes - Ireland & UK
1.2 Anti-Counterfeiting
  • EU-Turkey dialogue on intellectual property rights
  • New companies join the fight against illegal online sale of counterfeit goods
1.3 Domain Names
  • The “.wine” and “.vine” dispute
  • 175 top-level domains have been delegated
1.4 Indications of Origin
  • Mandatory origin marking for consumer goods
2 OFFICE PRACTICE
2.1 OHIM
  • OHIM website
  • Design experts from the State Intellectual Property Office of China (SIPO) and OHIM meet at OHIM
  • The trade mark office of China joins TMclass
  • Upcoming OHIM events
2.2 National Offices
  • France and Romania join DesignView
3 CASE LAW

Summaries and case law provided by

3.1 General Court

T-381/12 PALMA MULATA
Valid use of a verbal trade mark in a different form

T-291/12 Passion to Perform
The trade mark is devoid of any distinctive character

T-102/11, T-369/12, T-370/12 and T-371/12 IP ZONE, EUROPEAN IP ZONE, IP ZONE EUROPE, EUROPE IP ZONE
The trade marks are descriptive

T-430/12 (fig) vs. European Network Rapid Manufacturing (fig)
Imitation of the European Emblem

T-47/12 EQUINET vs. EQUITER (fig)
Failure to state reasons

T-554 JAVA vs. AAVA MOBILE
The trade marks are different

3.2 European Court of Justice

C 530/12P National Lottery Commission (fig)
Application of national law – Right to be heard

3.3 National Court

Belgian Court invalidates Louboutin red sole trade mark


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


1 Law

1.1 Trade Marks

1.1.1. Twentieth anniversary of the Community trade marks system

It has been twenty years since the Community trade mark Regulation entered into force on 15 March 1994.

ECTA is pleased to have, over more than three decades, supported the Community trade mark system, not only prior to the existence of the Trade Mark Regulation, but also during its implementation and development.


1.1.2. Plain packaging for cigarettes - New Zealand

The government of New Zealand has proposed an amendment bill to introduce a plain packaging regime for tobacco products. Accordingly, the government launched a public consultation and subsequent hearings will be taking place.

Further information is available HERE.

As a reminder, on 26 February 2014, ECTA submitted comments to the New Zealand Parliament bill for plain packaging on tobacco cigarettes.

ECTA’s comments concern in particular the impact that any law imposing plain packaging may have on established and valuable intellectual property rights. Plain packaging laws amount to a deprivation of property rights such as registered trade marks.

ECTA accepts that smoking is harmful, and indeed dangerous to health. However it is in any event for governments to justify, by cogent evidence, any claim that the measures proposed would have any meaningful effect in preventing people from taking up smoking, or continuing to smoke, over and above any effects achieved by existing bans on advertising and display in retail premises, and by increasingly prominent health warnings.


1.1.3. Plain packaging for cigarettes - Ireland & UK

A joint statement on the adoption of plain packaging legislations was sent to the Irish and the UK governments on 28 March 2014 by APRAM, BASCAP, BMM, MARQUES, UNIFAB, UNION, and ECTA.

The joint statement opposes the adoption of plain packaging by any EU Member State and expresses concern about any legislation which will restrict the normal use of trademarks and undermine the value of Intellectual Property Rights, such as plain packaging.


1.2 Domain Names

1.2.1. The “.wine” and “.vine” dispute

The European Union and the United States discussions on the use of internet domain names .vin and .wine. are coming to an end.

The ICANN Governmental Advisory Committee’s (GAC) and Professor Jerome Passa’s opinion have declined the EU’s objections, against the new “.wine” and “.vin” gTLDs, that companies acquiring such domains are not involved in the wine industry and, therefore, their only intention may be to sell second-level domain names, acting in breach of EU rules.

Professor Jerome Passa’s opinion is available HERE.

GAC’s advice is available HERE.


1.2.2. 175 top-level domains have been delegated

ICANN has announced that the number of delegated top-level domains amounts to 175.

Further information is available HERE


1.3 Anti-Counterfeiting

1.3.1. EU –Turkey dialogue on intellectual property rights

The next EU-Turkey working group on intellectual property rights is scheduled for 14 April 2014 in Brussels. Turkey will provide an update on the seizure of counterfeit goods under its practice.


1.3.2. New companies join the fight against illegal online sale of counterfeit goods

On 1 April 2014, the European Association of Pharmaceutical Industries and Associations (EFPIA), PierreRiu and Videdressing have signed the Memorandum of Understanding on the sale of counterfeit goods.

Through this platform, major internet platforms and right holders fight together against counterfeit goods.

Further information is available HERE.


1.4 Indication of Origin

1.4.1. Mandatory origin marking for consumer goods

The EU Commission’s proposal for a regulation on the indication of the country of origin of certain products imported from third countries, has received strong support from industry associations and organizations, in particular with regard to the provision on mandatory origin marking on consumer products manufactured or imported into the EU.

Further information is available HERE


2 Office Practice

2.1 OHIM

2.1.1. OHIM website

The following updates on OHIM’s work on their website are available online:


2.1.2. Design experts from the State Intellectual Property Office of China (SIPO) and OHIM meet at OHIM

On 20 March 2014, OHIM’s and SIPO’s IT experts met in Alicante following studies on the integration of SIPO database on designs into DesignView.

The study aims to promote general IP tools and practices in non-EU Member States.

Further information is available HERE.


2.1.3. The trade mark office of China joins TMclass

The trade mark office of The State Administration for Industry and Commerce of the People’s Republic of China joined TMclass on 17 March 2014.

From now on, it will be possible to search and translate to and from Chinese.

Further information is available HERE.


2.1.4. Upcoming OHIM events

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

  • Observatory public sector representatives meeting and IP conference, Athens 2-4 April 2014
  • Swiss Office-OHIM Head Meeting, Bern, 3-4 April 2014
  • 11th Liaison meeting on trade marks, Alicante, 8-9 April 2014
  • Observatory private sector representatives meeting, Alicante, 11 April 2014
  • International Conference 150th anniversary of the first design law of the Russian Federation, Moscow, 24 April 2014
  • NIPO–OHIM bilateral meeting, Alicante, 28 April 2014
  • OALI User Group Meeting, Alicante, 30 April 2014

Further information is available HERE


2.2 National Offices

2.2.1. France and Romania join DesignView

The French National Institute of Intellectual Property (INPI) and the Romanian Intellectual property Office have joined DesignView.

Further information regarding France is available HERE.

Further information regarding Romania is available HERE.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-381/12 of 12 March 2014, Ana Borrajo Canelo, Carlos Borrajo Canelo and Luis Borrajo Canelo vs. OHIM – Tecnoazucar (contested decision: R 2265/2010-2 of 21 May 2012)

Contested trade mark:

PALMA MULATA

Classes: 32,33,39

Decision: The use of the verbal trade mark PALMA MULATA in the following forms:


does not alter the distinctive character of the trade mark (para. 31 to 40).

The Board of Appeal’s decision is upheld.


Case T-291/12 of 25 March 2014, Deutsche Bank AG vs. OHIM(contested decision: R 2233/2011-4 of 24 April 2012)

Trade mark applied for:

Passion to Perform

Classes: 35,36,38,41,42

Decision: The trade mark is devoid of any distinctive character.

The mark is composed of a grammatically correct combination of three English words to mean that Deutsche Bank promises its clients that it will perform with passion (para. 46). It constitutes a promotional slogan (para. 47) which will be perceived by the relevant public merely as a laudatory statement that is incapable of fulfilling its function of distinguishing the claimed services as to their commercial origin (para. 47).

The Board of Appeal’s decision is upheld.


Cases T-102/11, T-369/12, T-370/12 and T-371/12 12 March 2014, American Express Marketing & Development Corp. vs. OHIM (contested decision: R 1125/2010-2 of 1 December 2010)

Trade marks applied for:

P ZONE
EUROPEAN IP ZONE
IP ZONE EUROPE
EUROPE IP ZONE

Class: 42

Decision: The trade marks are descriptive.

Taken as a whole, they will be understood by the relevant public as meaning a place dedicated to intellectual property with respect to the mark IP ZONE, and an area devoted to intellectual property in Europe with respect to the marks EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE. They are descriptive of the services hosting an on-line portal for disclosing, selling, buying, licensing and general transactions for intellectual property (para. 19 to 36).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-430/12of 13 March 2014, Heinrich Beteiligungs GmbH vs. OHIM – European Commission (contested decision: R 793/2011-1 of 5 July 2012)

Trade marks:



Earlier emblem Trade mark applied for

Classes: 6,7,12,17,42

Decision: The contested trade mark is an imitation from a heraldic point of view of the European emblem (para. 23 to 52).

The relevant public is likely to believe that the contested CTM contains all the heraldic elements of the European Emblem with the aim of informing them that there is a connection between the proprietor and the European Union acting in the areas of the goods and services for which the contested CTM is registered. The use of the CTM in respect of the goods and services claimed is likely to suggest to the public that there is a connection between the CTM proprietor and the European Union and its institutions (para. 53 to 70).

The Board of Appeal’s decision is upheld.


Case T-47/12 of 27 March 2014, Intesa Sanpaolo SpA vs. OHIM – equinet Bank AG (contested decision: R 2101/2010-1 of 6 October 2011)

Trade marks:

EQUINET
Earlier trade mark Trade mark applied for

Classes: 9,16,35,38,41,42

Decision: The contested decision is vitiated by a failure to state reasons in so far as, first, it is not possible to identify from it the services, among those in respect of which the earlier mark is registered and which are cited as justification for the opposition, in connection with which that mark was put to genuine use and, second, it does not state the grounds on which the Board of Appeal held that genuine use of the earlier mark had been demonstrated in connection with business consultancy and advisory services, falling within Class 35 (para.38)

The Board of Appeal’s decision is annulled.


Case T-554/12 of 27 March 2014, Oracle America, Inc vs. OHIM – Aava Mobile Oy (contested decision: R 1205/2011-2 of 9 October 2012)

Trade marks:

JAVA AAVA MOBILE
Earlier trade mark Trade mark applied for

Classes: 9,38,42

Decision: The trade marks are visually (para.43 to 49), aurally (para.50 to 55) and conceptually different. (para. 56 to 62).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-530/12P of 27 March 2014, OHIM vs National Lottery Commission (contested decision: T-404/10 of 13 September 2012) See Flash 16-12 of 19 October 2012

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 9,16,25,28,41

Decision:
1. Since the application of national law can lead to a finding that there is a
ground for invalidation of a duly registered Community trade mark, it seems necessary for OHIM and the General Court to be able, before granting the application for a declaration of invalidity of such a mark, to ascertain the relevance of the evidence produced by the applicant with regard to the taking of evidence, which is incumbent upon it, concerning the content of that national law (para. 41). The General Court must therefore be able to confirm, beyond the documents submitted, the content, the conditions of application and the scope of the rules of law relied upon by the applicant for a declaration of invalidity (para. 44).
2. By referring of its own motion at the end of the written procedure to a national decision that had not been mentioned either during the proceedings before OHIM or in the written pleadings, the General Court has infringed the principle that the parties should be heard, stemming from the requirements relating to the right to a fair trial ( para. 55 to 59).

The General Court’s decision is annulled.


NATIONAL COURT

Belgian Court invalidates Louboutin red sole trade mark

The Louboutin red sole trade mark has been invalidated in the Benelux by the Brussels District Court in infringement proceedings between a retail store in the Netherlands and Christian Louboutin.

Further information is available HERE.

None

France Anti-counterfeiting, Domain Name, Geographical Indications, Trade Mark National Office Practice, OHIM