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08-14 | 5 May 2014

Topics: Designs Domain Names EU Legislative Package Nice classification

ECTA’s 33rd Annual Conference
Celebrating the 20th CTM Anniversary
18-21 June 2014, Alicante
Registration
More than 600 registrations received to date



Table of Contents

1 LAW
1.1 Trade Marks
  • EU trade mark legislative package: ECTA’s comments to the EU Presidency Compromise Proposals
1.2 Domain Names
  • ICANN transition to new website
1.3 Geographical Indications and labelling
  • MEPs push for mandatory “made-in” labelling to tighten up product safety rules
2 OFFICE PRACTICE
2.1 OHIM
  • OHIM’s IP Mediation Conference
  • OHIM website
2.2 WIPO
  • Change in the amounts of the individual fee: Norway
  • International Bureau of WIPO’s practice - new edition of the Nice Classification
3 CASE LAW

Summaries and case law provided by

T-209/13 (fig)
The trade mark is devoid of any distinctive character

T-144/12 COMSA vs. COMSA
Conflict between a trade mark and an earlier company name

T-386/12 elite vs. elite by MONDARIZ (fig)
There is a likelihood of confusion

T-623/11 (fig) vs. (fig)
The trade marks are different

4 ECTA NEWS
  • ECTA round table session on designs - Alicante
  • Customs training workshops 4 and 9 April 2014 - Mumbai

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


1 Law

1 LAW
1.1 Trade Marks

1.1.1. EU trade mark legislative package - ECTA’s comments to the EU Presidency Compromise Proposals

On 24 April 2014, ECTA submitted comments to the EU Presidency Compromise Proposals on the Trade Mark Directive and Regulation.

The texts of the EU Presidency Compromise Proposals for a Regulation and for a Directive were extensively reviewed by various ECTA’s Committees, particularly the Law, Anti-counterfeiting, GI and Harmonization Committees, together more than 150 trademark law practitioners from private practice, industry and academic environment.

ECTA’s comments have been sent to representatives from the EU Council, DG MARKT, and from the EU National IP Offices.


1.2 Domain Names

1.2.1. ICANN transition to new website

ICANN, the Internet Corporation for Assigned Names and Numbers, has announced the transition to a new website. The aim of this change is, amongst others, to improve ICANN’s transparency by making information easily accessible and to allow new users to discover ICANN.

Further information on ICANN’s new website is available HERE.


1.3 Geographical Indications and labelling

1.3.1. MEPs push for mandatory “made-in” labelling to tighten up product safety rules

Further to the adoption by the EU Commission of a proposal for a regulation on the indication of the country of origin of certain products (See Flash 06-14), the EU Parliament states that, in order to protect EU consumers and to improve market transparency, “made-in” labelling indicating the country of origin should be mandatory for non-food products entering the EU market.

Further information is available HERE.


2 Office Practice

2.1 OHIM

2.1.1. OHIM’s IP Mediation Conference

Registration for OHIM’s first IP Mediation conference, which will be held in Alicante on 29 and 30 May 2014, is now open.

ECTA will participate in the conference, bringing in input as a key user association. Fabio Angelini (Chair of ECTA’s Law Committee) will chair one of the sessions of the Conference.

Further information about the conference is available HERE.


2.1.2. OHIM website

The following updates regarding OHIM website are now available online:


2.2 WIPO

2.2.1. Change in the amounts of the individual fee: Norway

The Director General of WIPO has established new amounts of the individual fee to be paid when Norway 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.

The information notice is available HERE.


2.2.2. International Bureau of WIPO’s practice - new edition of the Nice Classification

WIPO has published an information notice about the practice of the International Bureau of WIPO with regards to the new version of the Nice Classification entered into force on 1 January 2014, according to which:

  • The International Bureau applies the latest version of the Nice Classification, and
  • Does not reclassify the list of goods and services of international registrations with a date prior to 1 January 2014.

The information notice is available HERE.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-209/13 of 11 April 2014, Olive Line International, SL vs. OHIM (contested decision: R 1447/2012-1 of 31 January 2013))

Trade mark applied for:


Class: 29

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

The verbal element and the purely decorative elements, taken as a whole, are not able to influence sufficiently the overall impression produced by the sign on the average consumer of edible olive oil. The impression produced by the sign taken as a whole does not differ significantly from that produced by other bottles of edible olive oil on the market. The sign in question is a mere variation of the usual shapes of a bottle containing edible olive oil (para. 41 to 54).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-144/12 of 9 April 2014, Comsa, SA vs. OHIM – Constructora de obras municipales, SA (COMSA) (contested decisions: R 518/2011-2 and R-795/2011-2 of 10 January 2012)

Trade mark and company name:

COMSA COMSA
Earlier company name Trade mark applied for

Classes: 19,35,36,37,39,42

Decision:
The use of the earlier company name was established in Spain for the following services: execution of all types of public or private works and construction, maintenance and repair of all types of constructions (paragraph 33).

There is no similarity between these and the following services:

  • Advertising; business management; business administration; office functions in class 35 (para. 35 to 40);
  • Insurance, financial affairs, monetary affairs, real estate affairs, in particular real estate agencies, real estate appraisal and real estate management in class 36 (para. 41 to 51);
  • Distribution, transport and storage for construction purposes in class 39 (para. 52 to 61).

However, the services covered by the earlier company name are similar to scientific and technological services, and research and design relating thereto, industrial analysis and research services, design and development of computer hardware and software, in particular, architectural consultation, architecture, graphic arts designing, construction drafting, interior decor, technical project studies, geological surveys, material testing, urban planning, land surveys in class 42 (para. 62 to 67). There is a likelihood of confusion with respect to the services in class 42 (para. 68).

The Board of Appeal’s decision is partly annulled.


Case T-386/12 of 9 April 2014, Elite Licensing Company SA vs. OHIM – Aguas de Mondariz Fuente del Val, SL (contested decision: R 9/2011-5 of 6 June 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 32,38,39

Decision:
The trade marks are visually (para. 75 to 83), aurally (para. 83 to 87) and conceptually (para. 88 to 99) similar.

There is a likelihood of confusion (para. 114)

The Board of Appeal’s decision is upheld.


Case T-623/11 of 9 April 2014, Pico Food GmbH vs. OHIM – Bogumin Sobi raj (contested decision: R 553/2010-1 of 8 September 2011)

Trade marks:


 


Earlier trade marks Trade mark applied for

Class: 30

Decision:
The trade marks are visually (para. 37 to 46), aurally (para. 47) and conceptually (para. 48) different.

The Board of Appeal’s decision is upheld.


4 ECTA News

4.1. ECTA round table session on designs – Alicante

A report on ECTA’s round table on designs, held on 20 February 2014 in Alicante, is now available HERE

Background

The ECTA round table session on designs was held in Alicante on 20 February 2014. The Round Table started with an introduction by Andreas Renck, Chair of ECTA - OHIM Link Committee meeting, and was followed by presentations on the concept of “informed user” and the interrelation between designs and trade marks.

The Round Table was very interactive and ECTA received very positive comments from the OHIM, especially from the Board Members.


4.2. Customs training workshops 4 and 9 April 2014 – Mumbai

Shavran Kumar Bansal (Member of the ECTA Anti-Counterfeiting Committee) has participated in the customs training road-shows across different customs ports, held on 4 and 9 May 2014 in India.

The workshops were held at the ports of Ahmedabad and Nhava Sheva (Mumbai) on the 4th and 9th of April, 2014 respectively. Training at the Port of Ahmedabad was headed by the Commissioner of Customs, Captain Sanjay Gehlot; while at the Port of Nhava Sheva, it was headed by the Additional Commissioner of Customs, Mr. Rajiv Kapoor. The workshops received participation from a consortium of popular brands like L’Oreal, Lacoste, Calvin Klein, LVMH, Christian Dior, Polo Ralph Lauren, RayBan, Superdry, Crocs, and Tommy Hilfiger.

A report of the workshop is available HERE.

Domain Name, Geographical Indications, Trade Mark OHIM, WIPO