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07-13 | 1 May 2013

Topics: Counterfeiting Domain Names EU Legislative Package EU Observatory

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

 

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ECTA Membership Directory

 

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Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • EU Observatory - Private Sector Representatives Meeting 29 April 2013, Brussels
  • EU-US Transatlantic Trade and Investment Partnership- Meeting with the European Commission DG Trade
1.2 Trade Marks
  • Reform of the CTM system: JURI’s Rapporteur appointed
1.3 Domain names
  • ECTA’s membership in EURid-Official Press release
1.4 Geographical Indications
  • Public hearing on protection of geographical indications for non-agricultural products, 22 April 2013- Report
2 OFFICE PRACTICE
2.1 OHIM
  • 20th Users Group meeting, 22 April 2013, Alicante-Report
  • EU Observatory-Conference "Jointly Building Resilient EU Responses to Counterfeiting"- Dublin - Report
  • 9th Liaison Meeting on Trade Marks, 23-24 April 2013, Alicante
2.2 WIPO
  • Seventh Global Congress on Combating Counterfeiting and Piracy, 24- 26 April 2013, Istanbul
  • World Intellectual Property Day, 26 April 2013
  • Seminar on the Hague System for the International Registration of Industrial Designs, 31 May 2013
2.3 National Offices
  • Belgium: SPF Economie engagement in fight against counterfeiting - Results of 2012
  • United Kingdom : Launch of the consultation on groundless threats
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-383/10 of 17 April 2013, Continental Bulldog Club Deutschland ev vs. OHIM
The trade mark is distinctive

T-454/11 of 19 April 2010, Luna International Ltd vs. OHIM – Asteris Industrial and Commercial Company SA
Evidence of genuine use

T-347/10 of 19 April 2013, Adelholzener Alpenquellen GmbH vs. OHIM
The trade mark is devoid of any distinctive character.

T-145/12 of 25 April 2013, Bayerische Motoren Werke AG vs. OHIM
The trade mark is devoid of any distinctive character

T-506/11 of 18 April 2010, Peek & Cloppenburg KG vs. OHIM – Peek & Cloppenburg
Application of the Article 8, paragraph 4, b) of Regulation No 207/2009

T-537/11 of 19 April 2013, Hultafors Group vs. OHIM – Societa Italiana Calzature SpA
There is likelihood of confusion

T-109/11 of 23 April 2013, Apollo Tyres AG vs. OHIM – Endurance Technologies Pvt Ltd
There is a likelihood of confusion

T-284/11 of 25 April 2013, Metropolis Immobiliarias y Restauraciones, SL vs. OHIM – MIP Metro Group Intellectual Property GmbH & Co. KG
There is likelihood of confusion

EUROPEAN COURT OF JUSTICE

C-12/12 of 18 April 2013, Levi Strauss vs Colloseum Holding
Interpretation of Article 15 (1) of CTM Regulation

4 ECTA NEWS
  • Minutes of the ECTA- OHIM Annual Meeting, 22 February 2013, Alicante, Spain

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

1 Law

1.1 Anti-counterfeiting

EU Observatory - Private Sector Representatives Meeting, 29 April 2013, Brussels

The meeting took place on 29 April 2013 in Brussels. Annick Mottet Haugaard, ECTA Past President attended the meeting on behalf of ECTA. After the introductory remarks by Paul Maier, the report on Observatory Operations and Projects was presented to the audience by Andrea Di Carlo. Phil Lewis gave further details on the project of building knowledge and competences in IP Enforcement and in particular on the collaboration with EUROPOL.
Further the Advisory Board was introduced and its role was explained by José Luis Arenaut. Then Andrea Di Carlo presented the Observatory studies, namely on the impact of IP on economic performance and on IP Perception.

The second part of the meeting was dedicated to the Enforcement Databases. First was presented the Data Base developped within the Observatory. André Berends DG Taxation and Customs Union (TAXUD) presented further COPIS (Anti-Counterfeit and Anti-Piracy System), an information exchange system for all customs actions related to IPR enforcement at the EU external border. In this context DG Taxud also informed the participants that a meeting with the stakeholders is scheduled for 5 June 2013 in Brussels.

Andrea Di Carlo concluded the meeting by presenting a proposal for a Multi-Annual Strategic Plan.

The power point presentations are available for ECTA Members under section Anti-counterfeiting Committee-Working Documents.

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

As mentioned in the Flash 06-13, 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 respect DG Trade, in charge of the dossier organized an IPR meeting with stakeholders in order to determine the content of the future IPR Chapter.

Ewa Grabiak attended the meeting on behlaf of ECTA.

Her report may be found HERE

International Trade Committee MEPs declared in the resolution voted on 25 April 2013 that the EU Council of Ministers should authorize the start of Transatlantic Trade and Investment Partnership (TTIP) talks with the US in June 2013.

The text calls for strong protection in "clearly defined areas of intellectual property rights, including geographical indications" and a "high level of protection of personal data".

The resolution is to be debated and put to vote by Parliament as a whole in May. EU member states are expected to authorize Commission to start the talks in June.

The official press release may be found HERE


1.2 Trade Marks

Reform of the CTM system: JURI’s Rapporteur appointed

On 24 April 2013 Cecilia WIKSTRÖM was appointed as rapporteuer in the legislative package dossier.

Industry, Research and Energy Committee (ITRE) decided to not give any opinion.

The Procedure file for the Regulation may be found HERE

The Procedure file for the Directive may be found HERE

On 26 April Ewa Grabiak, ECTA Legal Coordinator met the representatives of Mrs Wikstrom’s office in order to exchange the first impressions on the legislative package.


1.3 Domain names

ECTA’s membership in EURid-Official Press release

On 18 April the General Assembly of EURid took place. ECTA President Domenico de Simone and Vice-Chair of ECTA Internet Committee Massimo Cimoli attended the meeting on behalf of ECTA (See Flash 06-13).

Since 1 April ECTA became officially member of EURid.

The official Presse Release may be found HERE

The video interview with Massimo Cimoli, Vice Chair of ECTA Internet Committee, is available HERE


1.4 Geographical Indications

Public hearing on protection of geographical indications for non-agricultural products, 22 April 2013- Report

Following the release of the official study on the protection geographical indications for non-agricultural products, DG Internal Market organized a public hearing, gathering all the most active stakeholders.

Ewa Grabiak, ECTA Legal Coordinator attended the meeting on behal of ECTA.

Her report of the hearing may be found HERE


2 Office Practice

2.1 OHIM

20th Users Group meeting, 22 April 2013, Alicante - Report

ECTA was represented by Tobias Dolde.

His report of the meeting is available HERE

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

The Conference took place on 22 April 2013 in Dublin and brought together the representatives from the EU Observatory and the European Commission.

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

Programme of the conference is available HERE

Her report of the meeting may be found HERE

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

As metionned in the Flash 06-16 on 23 and 24 April 2013 the 9th Liaison Meeting on Trade Marks took place in Alicante.

At the meeting the decision to create a new Convergence Programme in respect to the genuine use as discussed in the ONEL case, was taken. Currently the project is under the preparation.

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

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

Her report will be available in the next Flash.


2.2 WIPO

Seventh Global Congress on Combating Counterfeiting and Piracy, 24- 26 April 2013, Istanbul

Senior decision-makers from governments, law enforcement, Customs and the private sector gather in Istanbul, Turkey, for the Seventh Global Congress on Combating Counterfeiting and Piracy, to seek innovative responses to the illicit trade in counterfeit and pirated goods.

Over 850 delegates from more than 100 countries are attending the three-day meeting from 24 to 26 April that is being chaired by the World Customs Organization (WCO) and hosted by Turkish Customs with the support of the Union of Chambers and Commodity Exchanges of Turkey.

The official press release may be found HERE

World Intellectual Property Day, 26 April 2013

This year the theme of the World Intellectual Property Day was "Creativity- the next generation".

It honored the talented and ingenious creators and innovators who are imagining how the world will look tomorrow.

More information can be found HERE

Seminar on the Hague System for the International Registration of Industrial Designs, 31 May 2013

The World Intellectual Property Organization (WIPO) is organizing a Seminar on the Hague System for the International Registration of Industrial Designs, which will take place at WIPO headquarters, in Geneva, on 31 May 2013.

As those organised in collaboration with ECTA throughout Europe since 2 years, the aim of the Seminar is to increase awareness and practical knowledge of the Hague system among actual and potential users, whether in industry or in private practice, and to focus on the needs of independent and in-house industrial property agents (paralegals as well as attorneys) who file applications for international industrial design registrations and who administer such registrations. The Seminar will cover all aspects of the Hague system including legal and practical matters (main features and advantages of the system, different procedures, etc.), as well as the latest trends in the field of international industrial design registration, in particular, the new electronic tools, which are expected to render the use of the international registration system more efficient.

To register online and get more information, please check HERE


2.3 National Offices

Belgium: SPF Economie engagement in fight against counterfeiting-Results of 2012

On 23 April 2013 the Belgian SPF Economie announed the final figures of anti-counterfeiting proceedings in 2012. The taskforce ’infringement’ of SPF Economie controlled 2,782 shops and seized 412,397 counterfeit items with a total value of over 12 million euro. The majority of these items was sent to a recycling center for disposal.

The official press release (only in French) may be found HERE

United Kingdom : Launch of the consultation on groundless threats

On 17 April 2013 the Law Commission has launched a consultation exercise in relation to the unjustified threats provisions in relation to patents, trade marks and designs in United Kingdom law. The work that the Law Commission is undertaking has been commissioned by the Intellectual Property Office.

The consultation will close on 17 July 2013.

More information may be found HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-383/10 of 17 April 2013, Continental Bulldog Club Deutschland ev vs. OHIM (contested decision : R 300/2010-1 of 23 June 2010)

Trade mark applied for:

CONTINENTAL

Classes: 31, 44

Decision: The word « Continental » is directly understood by the relevant public as a description of a breed of bulldogs or, in relation to the services targeted, as a specification in so far as it concerns dogs of that same breed (para. 53).

The Board of Appeal’s decision is upheld.


Case T-454/11 of 19 April 2010, Luna International Ltd vs. OHIM – Asteris Industrial and Commercial Company SA (contested decision : R 1358/2008-2 of 20 May 2011)

Trade marks:



Earlier Trade mark Trade mark applied for

Classes: 29,30,31,32

Decision: The evidence submitted by the opponent was sufficient for the purpose of demonstrating genuine use of the earlier mark (para. 68).

The Board of Appeal’s decision is upheld.


Case T-347/10 of 19 April 2013, Adelholzener Alpenquellen GmbH vs. OHIM (contested decision : R 1546/2009-1 of 9 June 2010)

Trade mark applied for:


Class: 32

Decision: The trade mark is devoid of any distinctive character. The mark applied is characterized, in essence, by the combination of a basic form of bottle, in its upper portion, a grooved surface and an embossed pattern made ​​up of zigzag lines intended to represent a mountain or a peak mountain. It will be perceived as a whole, as the combination of a normal form of bottle with various decorative elements (para. 33).

The Board of Appeal’s decision is upheld.


Case T-145/12 of 25 April 2013, Bayerische Motoren Werke AG vs. OHIM (contested decision : R 1418/2001-4 of 18 January 2012)

Trade mark applied for:

ECO PRO

Classes: 9,12

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

The combined meaning of the elements «eco» and «pro» should be understood as «ecological professional» or « ecological supporting » (para. 30).
The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-506/11 of 18 April 2010, Peek & Cloppenburg KG vs. OHIM – Peek & Cloppenburg (contested decision : R 53/2005-1 of 28 February 2011)

Company name and Trade marks:

Peek and Cloppenburg Peek and Cloppenburg
Earlier company name Trade mark applied for

Class: 25

Decision: The worker has the right to prohibit the use of the later mark requested Peek & Cloppenburg, on the basis of Article 8, paragraph 4, b) of Regulation No 207/2009 in conjunction with Article 15 of the German trademark Act (Markengestez) (para. 38)


Case T-537/11 of 19 April 2013, Hultafors Group vs. OHIM – Societa Italiana Calzature SpA (contested decision : R 2519/2010-4 of 9 August 2011)

Trade marks:

KICKERS
Earlier Trade mark Trade mark applied for

Class: 25

Decision: The trade marks are visually (para. 34 to 43) and aurally (para. 44 to 47) similar.

There is a likelihood of confusion (para.54).

The Board of Appeal’s decision is upheld.


Case T-109/11 of 23 April 2013, Apollo Tyres AG vs. OHIM – Endurance Technologies Pvt Ltd (contested decision : R 625/2010-1 of 25 November 2010)

Trade marks:


ENDURACE
Earlier Trade mark Trade mark applied for

Classes: 12, 35, 37

Decision:

1. The figurative element of the earlier mark is liable to be perceived by consumers as a decorative element and not as an element indicating the commercial origin of the goods (para. 72).

The trade marks are visually (para. 74 to 75) and aurally (para. 76 to 77) similar.

2. « Parts, fittings and accessories for land vehicles » in Class 12 are similar to « retail services connected with tyres, tubes and flaps for automobiles » in Class 35 (para. 43), « fitting services for tyres », « repair and replacement of tyres and « repair / installation services » in Class 37 (para. 44 to 45).

3. There is a likelihood of confusion. (para. 78).

The Board of Appeal’s decision is upheld.


Case T-284/11 of 25 April 2013, Metropolis Immobiliarias y Restauraciones, SL vs. OHIM – MIP Metro Group Intellectual Property GmbH & Co. KG (contested decision : R 954/2010-1 of 17 March 2011)

Trade marks:


METROINVEST
Earlier Trade mark Trade mark applied for

Class: 36

Decision: The trade marks are visually (para. 40 to 41), aurally (para. 42) and conceptually (para.43 to 48) similar.

There is a likelihood of confusion (para.54).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-12/12 of 18 April 2013, Levi Strauss vs Colloseum Holding

Decision: The Court replies to a question referred by the German Supreme Court relating to the interpretation of Article 15(1) of CTM Regulation

The Court’s reply is as follows :

« The condition of genuine use of a trade mark, within the meaning of Article 15(1) of CTM Regulation, may be satisfied where a registered trade mark, which has become distinctive as a result of the use of another composite mark of which it constitutes one of the elements, is used only through that other composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trademark ».


4 ECTA News

Minutes of the ECTA- OHIM Annual Meeting 22 February 2013, Alicante, Spain

The Annual ECTA OHIM bilateral meeting took place on 22 February 2013 in Alicante.

ECTA was represented by the Members of the ECTA OHIM Link Committee.

Minutes of the meeting are available for ECTA Members under Section OHIM Link Committee- Papers.


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