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07-14 | 18 April 2014

Topics: Design View Domain Names EU - Dialogue with Third Countries EU Observatory Madrid System Plain Packaging

ECTA’s 33rd Annual Conference
Celebrating the 20th CTM Anniversary
18-21 June 2014, Alicante
Registration
In order to secure hotel accommodation, it is recommended that you register asap as accommodation cannot be guaranteed after 25 April



Table of Contents

1 LAW
1.1 Trade Marks
  • Plain packaging for cigarettes:
    • Ireland
    • UK
1.2 Domain Names
  • EU Commission’s reaction to ICANN’s decision on wine domain names
  • EURid confirmed as the .eu registry manager
2 OFFICE PRACTICE
2.1 OHIM
  • Common communication on the common practice of the scope of protection of black & white marks
  • 11th Liaison meeting on trade marks
  • OHIM webinar – decisions of trimester
  • EU Observatory - private sector meeting in Brussels
  • OHIM events
  • OHIM website
2.2 WIPO
  • The Republic of Korea joins the Hague System
  • Madrid protocol: change in the amounts of the individual fee of Japan
  • WIPO events
2.3 National Offices
  • Italy joins DesignView
3 CASE LAW

Summaries and case law provided by

T-536/12 SO…?, SO…?ONE, SO…?CHIC vs. SÔ:UNIC
No likelihood of confusion with a family of marks

T-568/12 FOCUS vs. FOCUS (fig)
There is a likelihood of confusion

T-288/12 ZYTEL vs. ZYTEL (fig)
The goods and services are different. No link between the marks at issue

T-249/13 (fig) vs. (fig)
The trade marks are different

T-501/12 PENTASA vs. OCTASA
There is a likelihood of confusion

4 ECTA NEWS
  • ECTA’s contribution to EU – CHINA IP discussions
  • ECTA’s proposals regarding the use of the OHIM surplus

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


1 Law

1.1 Trade Marks

1.1.1. Plain packaging for cigarettes

1.1.1.1. Ireland

After several weeks of hearings, Ireland’s Health & Children Committee published its report on plain packaging, on 3 April 2014.

The report recommends that plain packaging be introduced and also made 26 other recommendations concerning a broad range of areas.

The Committee’s report is not a government policy and, therefore, it is not binding, but rather, it merely seeks greater involvement by the parliament in policy making in Ireland.

The next stages in the legislative procedure are the completion of the drafting of the current bill by the Attorney General’s Office, and then the approval by the Cabinet, before it can be introduced to the Irish Parliament.

Further information is available HERE

The full report is available HERE


1.1.1.2. UK

The UK Public Health Minister responded to Sir Cyril Chantler’s review, which was made public on 3 April 2014.

The Minister for Health has accepted the findings of the review, according to which “standardised packaging of tobacco is likely to contribute to a modest but important reduction in smoking, including reducing the rate of children taking up smoking”, and has confirmed that she is “currently minded to proceed with regulations to introduce plain packaging”.

Before reaching a final decision, and to ensure that the decision is properly and fully informed, the Minister will publish draft regulations alongside a further consultation.

The report is available HERE

The Ministerial statement is available HERE


1.2 Domain Names

1.2.1. EU Commission’s reaction to ICANN’s decision on wine domain names

The EU Commission welcomed ICANN’s decision to postpone a final decision on the top level domain names “.vin” and “.wine” for two months. Through this postponement, ICANN has encouraged applicants to negotiate.

Background:

As mentioned in Flash 06-14, following the launch of new commercial domain names by ICANN last year, the European Union and the United States disagreed on the use of internet domain names .vin and .wine.

The EU’s view is that US 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.

Further information is available HERE


1.2.2. EURid confirmed as the .eu registry manager

The EU Commission has designated EURid as the manager of the “.eu” top level domain for a period of five years, starting on 11 April 2014.

Further information is available HERE

2 Office Practice

2.1 OHIM

2.1.1. Common communication on the common practice of the scope of protection of black & white marks

A Common publication by intellectual property offices putting into practice the common practice of the scope of black & white marks has been issued on 15 April 2014.

The common practice consists of three different parts: (i) is a trade mark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?; (ii) is an earlier trade mark in B&W and/or greyscale identical to the same mark in colour?; and (iii) is the use of a colour version of a trade mark registered in B&W/greyscale (or vice-versa) acceptable for the purpose of establishing genuine use?.

The common communication is available HERE

Further information is available HERE


2.1.2. 11th Liaison meeting on trade marks

The 11th Liaison meeting on trade marks was held by OHIM on 8 and 9 April 2014. ECTA, represented by Dr. Tobias Dolde, Member of the ECTA Harmonization Committee, was amongst the 5 User Groups attending the meeting, together with 32 international industry property offices that also registered for this meeting.

The agenda of the meeting included, amongst others, discussions on: (i) the harmonization of TM classification practice (CP1); (ii) figurative Marks (CP3); (iii) likelihood of Confusion (CP5); and (iv) the convergence projects on designs (CP6&CP7).

A report will be made available to ECTA members.

Further information is available HERE


2.1.3. OHIM webinar - decisions of trimester

On 9 April 2014,OHIM presented a webinar on decisions of the trimester. The programme focused on two different types of decisions: (i) important decisions of the Boards of Appeal; and (ii) cases before the Court of Justice of the European Union.

A report will be made available to ECTA’s members.

Further information on the OHIM Academy programme is available HERE


2.1.4. EU Observatory - private sector meeting in Brussels

ECTA, represented by Carina Gommers, member of the Anti-Counterfeiting Committee, attended the private sector meeting held by the EU Observatory in Brussels on 11 April 2014.

The meeting focused on the activities of the EU Observatory and aimed to obtain opinions from private stakeholders and participants in the meeting regarding these activities.

A report will be made available to ECTA members.

Further information is available HERE


2.1.5. OHIM events

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

  • ABBC meeting, 20-22 May 2014, Alicante: ECTA will be represented at this meeting by Andreas Renck, Chair of the ECTA OHIM Link Committee and Bárbara Díaz Alaminos, ECTA Legal Co-ordinator.
  • High Level ASEAN – OHIM Consultation, 26-27 May 2014, Alicante.
  • 8th German day, 28 May 2014, Alicante.
  • OHIM Conference on IP Mediation, 29-30 May 2014, ECTA will be represented at this meeting by Fabio Angelini, Chair of ECTA Law Committee.

A list of OHIM events is available HERE


2.1.6. OHIM website

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


2.2 WIPO

2.2.1. The Republic of Korea joins the Hague system

On 1 April 2014, the Republic of Korea joined the Hague system. With this incorporation, the system has now a total of 62 members.

Further information is available HERE


2.2.2. Madrid protocol: change in the amounts of the individual fee of Japan

The Director General of WIPO has established new amounts of the individual fee to be paid when Japan is designated: (i) in an international application; (ii) in a designation subsequent to an international registration; or (iii) in respect of the renewal of an international registration.

Further information is available HERE


2.2.3. WIPO events

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

  • Nice Union – Committee of Experts: Twenty-Fourth Session, 28 April to 2 May 2014, Geneva.
  • Standing Committee on copyright and related rights: twenty-seventh session, 28 April to 2 May 2014, Geneva.
  • Committee on development and intellectual property: thirteenth session, 19-23 May 2014, Geneva.
  • WIPO Seminar series on the economics of intellectual property, 20 May 2014, Geneva.
  • WIPO workshop for mediators in intellectual property disputes, 22-23 May 2014, Geneva.
  • WIPO – Croatia Summer School on Intellectual Property, 26 May to 6 June 2014, Dubrovnik.

Further information is available HERE


2.3 National Offices

2.3.1. Italy joins DesignView

The Italian office became part of DesignView on 11 April 2014. Seventeen offices are now part of DesignView: Portugal, Benelux, Estonia, Spain, Greece-OBI, Bulgaria, Slovakia, Latvia, Slovenia, Sweden, Lithuania, Czech Republic, France, Malta, Italy, Romania and OHIM.

This tool, which is a centralized access point to access information on designs from any of the participating national offices, has more than 2.3 million designs.

Further information is available HERE

3 Case Law

Summaries and case law provided by Darts IP

On relative grounds for refusal

Case T-536/12 of 3 April 2014, Debonair Trading International Lda vs. OHIM – Ibercosmetica, SA de CV (contested decision: R 1033/2011-4 of 4 June 2011)

Trade marks:

SO…? SÔ:UNIC
SO…?ONE  
SO…?CHIC  
Earlier trade marks Trade mark applied for

Class: 3

Decision:
The likelihood of confusion with regard to a family of marks results from the possibility that the relevant public may believe that the mark applied for is part of the same family as that formed by the earlier marks. For that likelihood of confusion to exist, it is therefore necessary that the mark applied for should have characteristics which might suggest that it belongs to the family of marks at issue (para. 24).

The graphic and semantic differences between the mark applied for and the family of marks relied on are sufficient to preclude the mark applied for from being regarded as belonging to that family of marks, irrespective of the goods covered (para. 31).

The Board of Appeal’s decision is upheld.


Case T-568/12 of 4 April 2013, Sofia Golam vs. OHIM – Derby Circle Werke GmbH (contested decision: R 2327/2011-4 of 16 October 2012)

Trade marks:

FOCUS
Earlier trade mark Trade mark applied for

Class: 25

Decision:
The trade marks are visually (para. 33 to 38) aurally (para. 39 to 40) and conceptually (para. 41) similar. There is a likelihood of confusion (para. 51).

The Board of Appeal’s decision is upheld.


Case T-288/12 of 9 April 2014, EI du Pont de Nemours vs. OHIM – Enrique Zueco Ruiz (contested decision: R 464/2011-2 of 29 March 2012)

Trade marks:

ZYTEL
Earlier trade mark Trade mark applied for

Classes: 1,9,12,17,37

Decision:
1. Apparatus and instruments for producing, conducting, switching, transforming, accumulating, regulating or controlling electricity, used for renewable energies, and parts and fittings included therein in Class 9, Vehicles and apparatus for locomotion, electric vehicles and apparatus for locomotion, parts and fittings in Class 12, Installation, assembly and maintenance of motor vehicles and electric vehicles, and apparatus and instruments for producing, conducting and switching electricity in motor vehicles in Class 37 are different from synthetic resin plastics in the form of powders and granules in Class 1and Plastics in extruded form for use in the manufacture of artificial and synthetic resins, nylon resins and glass fibre reinforced nylon resin in Class 17 (para. 31 to 47).

2. It is unlikely not only that the public targeted by each of the two marks will be confronted with the other mark, but also that a link can be established between the goods and services covered by the mark applied for and the goods covered by the earlier mark. Therefore, it is difficult to accept that a link is established between the signs at issue and that the mark applied for may take unfair advantage of any reputation of the earlier mark (para. 75).

The Board of Appeal’s decision is upheld.


Case T-249/13 of 9 April 2014, MHCS vs. OHIM – Ambra S.A. (contested decision: R 1877/2011-2 of 19 February 2013)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 33

Decision:
In the alcoholic beverages sector, the use of labels consisting of two bands intersecting at an angle with a circular element where the bands cross is not uncommon (para. 57).

The word element ‘dorato’ constitutes the dominant element of the trade mark applied for (para. 66).

The trade marks are visually (para. 69 to 73) and conceptually (para. 76 to 82) different.

The Board of Appeal’s decision is upheld.


Case T-501/12 of 9 April 2014, Farmaceutisk Laboratorium Ferring A/S vs. OHIM – Tillotts Pharma AG (contested decision: R 1214/2011-4 of 6 September 2012)

Trade marks:

PENTASA OCTASA
Earlier trade mark Trade mark applied for

Class: 5

Decision:
It cannot be established from the evidence which the Board of Appeal relied on in the contested decision that the suffix ‘asa’ is descriptive from the perspective of the end-users of ‘preparations and substances for preventing and treating diseases and disorders of the gastro-intestinal tract’ in general (para. 55).

The trade marks are aurally and visually (para. 56 to 60) similar. For the end-users that will recognise that the beginnings of the signs at issue refer to Greek numbers, there is a weak conceptual similarity (para. 61 to 67).
There is a likelihood of confusion (para. 69).

The Board of Appeal’s decision is upheld.


4 ECTA News

4.1. ECTA’s contribution to EU – CHINA IP discussions

On 4 April 2014, ECTA submitted to the EU Commission a list of items for discussion, suggested by ECTA’s Committees, with regard to the cooperation on IP matters between the EU and China.


4.2. ECTA’s proposals regarding the use of the OHIM surplus

On 1 April 2014, ECTA submitted a memorandum to the EU Commission, against the proposal in the CTM package to send the surplus to the EU budget, and containing suggestions on how to use the OHIM surplus for IP matters.


Italy Domain Name, Trade Mark OHIM, WIPO