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08-13 | 24 May 2013

Topics: Counterfeiting Designs EU Observatory Plain Packaging TM Class

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

 

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Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • 1st EU Customs – right holders and stakeholders meeting in the framework of the EU Customs Action Plan to combat IPR infringements for the years 2013 - 2017
  • Public Hearing "Impact of organised crime, corruption and money laundering on the EU’s internal market", Special Committee on Organised Crime, Corruption and Money Laundering (CRIM), European Parliament, 27 May 2013, Brussels
  • EU-US Transatlantic Trade and Investment Partnership-Publication of the Initial appraisal of a European Commission Impact Assessment by the EU Parliament Committee on International Trade (INTA)
1.2 Trade Marks & Designs
  • Reform of the CTM system: Shadow Rapporteurs appointed
  • United Kingdom: Reform of Intellectual Property legislation
  • Plain packaging: Latest developments
2 OFFICE PRACTICE
2.1 OHIM
  • KIPO joins TMclass
  • Common Communication on the Implementation of IP Translator
  • EU Observatory - Publication of the call of interest - Selection of IP experts
  • Administrative Board, Joint and Budget Committee meetings, 21-23 May 2013
  • 9th Liaison Meeting on Trade Marks, 23-24 April 2013 -Report
2.2 WIPO
  • Accession by the Republic of Kiribati to the WIPO Convention
  • Seminar on the Hague System for the International Registration of Industrial Designs, 31 May 2013
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-80/10 of 25 April 2013, Bell & Ross BV vs. OHIM – KIN AB
Models produce the same overall impression

T-640/11of 30 April 2013, Boehringer Ingelheim International GmbH vs. OHIM
The trade mark is devoid of any distinctive character

T-61/12of 30 April 2013, ABC-One Produktions- und Vertriebs GmbH vs. OHIM
The trade mark is descriptive

T-55/12 of 25 April 2013, Su-Shan Chen vs. OHIM – AM Denmark A/S
There is a likelihood of confusion between the earlier mark and the contested model

T-579/10of 7 May 2013, macros consult GmbH – unternehmensberatung für Wirtschafts- und Finanztechnologie vs. OHIM – MIP Metro Group Intellectual Property GmbH & Co. KG
No existence of an earlier right

4 ECTA NEWS
  • 15th NGO Coordination Meeting, 7 May 2013, Dallas - Report
  • 10 years of the Community Design, 8-9 April 2013, Alicante - ECTA’s Presentations

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

1 Law

1.1 Anti-counterfeiting

1st EU Customs – right holders and stakeholders meeting in the framework of the EU Customs Action Plan to combat IPR infringements for the years 2013 - 2017

As mentionned in the ECTA Flash 07-13, the 1st EU Customs – right holders and stakeholders meeting in the framework of action 1.3.2 of the EU Customs Action Plan to combat IPR infringements for the years 2013 to 2017 will be held on 9 July 2013, in Brussels.

This event will be dedicated to inform stakeholders about the upcoming changes that will be introduced by the Regulation that will replace Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights. It will also allow to exchange views on issues related to IPR enforcement at the border and to engage right holders and stakeholders in the implementation of the EU Regulation and the EU Action Plan 2013-2017.

Olivier Vrins, Member of ECTA Council and of ECTA Anti-counterfeiting Committee, will attend the meeting on behalf of ECTA.

Public Hearing "Impact of organised crime, corruption and money laundering on the EU’s internal market", Special Committee on Organised Crime, Corruption and Money Laundering (CRIM), European Parliament, 27 May 2013, Brussels

The hearing is organized by the Special Committee on Organised Crime, Corruption and Money Laundering (CRIM) of the European Parliament.

The Commissionner for Internal Market and Services, Michel Barnier will be amongst the speakers.

ECTA will be represented by Marius Schneider, Chair of ECTA Anti-counterfeiting Committee, who will make a presentation entitled "The counterfeiting and product piracy as a threat to internal market integrity".

The Agenda of the hearing is available HERE

EU-US Transatlantic Trade and Investment Partnership-Publication of the Initial appraisal of a European Commission Impact Assessment by the EU Parliament Committee on International Trade (INTA)

As mentionned in ECTA 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.

The matter is currently analyzed by the Committees of the EU Parliament.

The initial appraisal of a European Commission Impact Assessment was published in late April and may be found HERE

1.2 Trade Marks & Designs

Reform of the CTM system: Shadow Rapporteurs appointed

As mentionned in the ECTA Flash 07-13 Cecilia WIKSTRÖM was appointed as rapporteur in the legislative package dossier.

Later in the month Christian ENGSTRÖM, Sajjad KARIM, GALLO Marielle, RAPKAY Bernhard, MAŠTÁLKA Jiří, SPERONI Francesco Enrico and STOYANOV Dimitar were appointed as shadow rapporteurs.

The Procedure file for the Regulation may be found HERE

The Procedure file for the Directive may be found HERE

United Kingdom: Reform of Intellectual Property legislation

On 10 May 2013 a new Intellectual Property Bill was published by Intellectual Property (IP) Minister Lord Younger.

The Bill proposes changes that would help businesses to better understand what is protected under the law, reduce the need for costly litigation, and provide greater certainty for investors in new designs and technologies.

Key elements of the Bill include:

  • New powers to enable the UK to implement the Unitary Patent Court Agreement. The Court is a central part in introducing a single patent across almost all EU countries. It is estimated that this would lead to direct benefits to business of up to £40 million per year. It is also anticipated that the London Court, which will adjudicate on pharmaceutical and life sciences patent disputes, will benefit the economy an estimated £200 million per annum.
  • The introduction of criminal penalties for copying UK registered designs and the strengthening of design protection. This is already the case for copyright and trademark disputes and brings parity to this area of IP law.
  • Proposals for a designs opinion service and an expanded patents opinions service. This would allow design or patent rights holders, or anyone else to ask the Intellectual Property Office (IPO) to provide an expert opinion on whether a UK design or patent is valid or being infringed. This will help businesses assess the strength of their case before embarking on more formal and costly legal proceedings, and may help avoid litigation altogether.

Further, in the framework of this text, UK will be authorized to join the Hague system; the international designs registration system which allows applicants to designate the countries in which they wish their design to be registered. Currently, registration for six countries, taking account of the cost of translation, notary and other fees could add up to £7,500. Through the Hague system this would cost £500 for a business.

More information may be found HERE

The Bill is available HERE

Plain packaging: Latest developments

At the European Parliament’s level, following the publication of the ENVI’s draft report, IMCO, AGRI, ITRE’ draft opinions (See ECTA Flash 06-13) in connection with the EU Commission proposed revised tobacco directive, JURI rapporteur Klaus-Heiner Lehne published his draft opinion on 29 April with 61 proposed amendments.

The full JURI draft opinion is available HERE

Amongst the proposed amendments, Mr. Lehne has proposed 50% size for health warning labelling on the front of the pack and the change of position of this labelling (not from top edge of the pack). He has also deleted the optionality for member states to adopt plain packaging and all appearance and content of unit packets requirements which would standardise the packs. Mr. Lehne has referred in his justifications to the breach of IPRs and the EU ‘s international obligations.

The INTA (International Trade Committee) rapporteur Metin Kazak (BG) published his draft report on 17 May 2013.

The report may be found HERE

The opinion giving committee AGRI will vote at the end of May and the other opinion giving committees IMCO, JURI, ITRE, INTA after mid June.

The vote in ENVI committee should take place on 10 -11 July 2013.

On the side of Members States, the Ministries of Agriculture from Poland, Slovakia, Czech Republic, Hungary, Bulgaria and Romania signed a joint statement on 17 May in Cracow in connection with this proposal of Tobacco Directive. This is a strong statement against excessive health warning labelling, bans of slims and menthol cigarettes and delegated acts.

The statement may be found HERE

The press release is available HERE

At the international level, Cuba notified the WTO Secretariat, on 3 May 2013, a request for consultations with Australia on the Australian Tobacco Plain Packaging Act of 2011 that regulates the appearance and form of retail packaging used in connection with sales of cigars, cigarettes and other tobacco products. Cuba has now joined Ukraine, Honduras and Dominican Republic in challenging the Australian law which entered into force on 1 December 2012.

More information may be found HERE


2 Office Practice

2.1 OHIM

KIPO - New Member of TMclass

On 16 May 2013 the Korean Intellectual Property Office (KIPO) has become the latest office to join TMclass.
TMclass is an online tool based on the Nice Classification system, that helps users correctly classify goods and services when filing a trade mark. As well as KIPO´s database, it also offers access to the databases of EU national IP offices and other major IP offices, including the United States Patent and Trade mark Office (USPTO), the Japan Patent Office (JPO) and the Swiss Federal Institute of Intellectual Property (IPI).

More information may be found HERE

Common Communication on the Implementation of IP Translator

Following the publication of the IP Translator judgment in June 2012, OHIM and the National IP offices of the EU have been discussing the interpretation of the Nice class headings in various meetings.

As a first result of those discussions, the National Offices and OHIM have published on 2 May 2013 a Common Communication on the interpretation of the IP Translator judgment.

The Communication is available HERE

EU Observatory - Publication of the call of interest - Selection of IP experts

On 8 May 2013 the Observatory published the call of expression of interest made in order to define a list of experts that can be used to assist the Observatory projects.

On the basis of the responses received a first pool will be created to last up to 31 December 2015.

The complete documentation can be found HERE

45th Administrative Board, Joint and 43rd Budget Committee meetings, 21-23 May 2013

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

During the meeting she made a presentation regarding the best practice within an European IP Association.

Her presentation may be found HERE

The Agendas and related documents are available online for ECTA Members under section OHIM Link Committee-Working documents.

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

Cristina Bercial-Chaumier, Secretary of ECTA Law Committee attended the meeting on behalf of ECTA.

Her report may be found HERE


2.2 WIPO

Accession by the Republic of Kiribati to the WIPO Convention

On 19 April the Government of the Republic of Kiriba submitted the instrument of accession to the Convention Establishing the World Intellectual Property Organization (WIPO Convention), signed at Stockholm on July 14, 1967, and as amended on September 28, 1979.

The said Convention will enter into force, with respect to the Republic of Kiribati, on 19 July 2013.

More information may 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


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-80/10 of 25 April 2013, Bell & Ross BV vs. OHIM – KIN AB (contested decision : R 1285/2008-3 of 9 December 2009)

Trade marks:



Earlier model Contested model

Decision: With the exception of the presence of certain elements necessary for a watch can fulfill its function of telling the time, the designer has complete freedom in the development of a model shows (para. 125).
The similarities between the models in conflict outweigh the differences so that they produce the same overall impression on the informed user (para. 159).

The Board of Appeal’s decision is upheld.


Case T-640/11 of 30 April 2013, Boehringer Ingelheim International GmbH vs. OHIM (contested decision : R 756/2011-4 of 30 September 2011)

Trade mark applied for:

RELY-ABLE

Classes: 38, 41, 42

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

The sign RELY-ABLE will despite the misspelling, be immediately perceived and understood by the relevant public – even specialised – as meaning « reliable », without the need for any interpretation (para. 21). The meaning of the word « reliable » is clearly laudatory or promotional in relation to the services concerned, in particular clinical trials (para. 22).

The Board of Appeal’s decision is upheld.


Case T-61/12 of 30 April 2013, ABC-One Produktions- und Vertriebs GmbH vs. OHIM (contested decision : R 1077/2011-1 of 17 November 2011)

Trade mark applied for:

SLIM BELLY

Classes: 28,41,44

Decision: The trade mark is descriptive.

The relevant public will perceive between the significance of the sign and products and services at issue, a link consisting of a reference to a weight reduction or improvement of the figure, especially the belly, and he will understand immediately and without further reflection, that the sign can describe the destination of these products and services (paragraph 41).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-55/12 of 25 April 2013, Su-Shan Chen vs. OHIM – AM Denmark A/S (contested decision : R 2179/2010-3 of 26 October 2011)

Company name and Trade marks:



Earlier trade mark Contested model

Classes: 3,21

Decision: The features of the earlier mark, namely those of a cleaning device in the shape of a compact rectangular body rounded at the edges and housing a spray device on one side and a cylindrical sponge on the other, are discernible in the contested model within the meaning of Article 25(1)(e) of Regulation No 6/2002 (para. 28).

Taking into account the similarity of the contested model and the earlier mark and the identity of the goods covered by the earlier mark and the goods in which the model is intended to be incorporated, there is a likelihood of confusion even taking into account the weak distinctive character of the earlier mark (para. 64).

The Board of Appeal’s decision is upheld.


Case T-579/10 of 7 May 2013, macros consult GmbH – unternehmensberatung für Wirtschafts- und Finanztechnologie vs. OHIM – MIP Metro Group Intellectual Property GmbH & Co. KG (contested decision : R 339/2009-4 of 18 October 2010)

Trade marks:

macros consult GmbH
Earlier company name Contested Trade mark

Classes: 9,35,36,41

Decision: The applicant has not established the existence of an earlier right used in the course of trade of more than mere local significance (para.87).

The Board of Appeal’s decision is upheld.


4 ECTA News

15th NGO Coordination Meeting, 7 May 2013, Dallas- Report

The 15th NGO Coordination Meeting took place on 7 May 2013 in Dallas and was attended by the representatives of the IP associations.

ECTA was represented by Dr Max Oker-Blom, ECTA General Secretary and Ewa Grabiak, ECTA Legal Coordinator.

The report of the meeting is available online for ECTA Members under section Law Committee- Papers.

10 years of the Community Design, 8-9 April 2013, Alicante - ECTA’s Presentations

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 was represented by Fabio Angelini, Chair of ECTA Law Committee, Benjamin Fontain, Chair of ECTA Geographical Indications Committee and Antonio Andrade, Chair of ECTA Designs Committee.

Their presentations may be found below:


United Kingdom Anti-counterfeiting, Design, EU Issues, Trade Mark OHIM, WIPO