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09-13 | 13 June 2013

Topics: Counterfeiting E-filing Plain Packaging

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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

 

ECTA and GRUR would like to thank the participants!

Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • Customs Regulation - Latest develoments
  • 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
  • New Anti-counterfeiting Provisions in Greece
1.2 Trade Marks
  • Plain packaging in Ireland confirmed
  • Amendments to Greek Trademarks Law 4072/2012
2 OFFICE PRACTICE
2.1 OHIM
  • Signature of Cooperation and Bilateral Agreements with the Croatian office
  • The Croatian version of the Common Harmonised Database on Classification of Goods and Services available in TM class application
2.2 National Offices
  • Portugal: Publication of the Guidelines on the application of the Portuguese Industrial Property Code
  • Turkey: Opposition proceedings available online
  • Finland: E-filing goes live in Finland
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-244/12 of 14 May 2013, Unister GmbH vs. OHIM
The trade mark is descriptive

T-353/12 of 16 May 2013, Aleris Holding AB vs. OHIM – Carefusion 303, Inc
Genuine use - Identification of sub-categories of goods

T-356/11 of 16 May 2013, Christian Restoin vs. OHIM
The trade mark is devoid of any distinctive character

T-393/11 80/11 of 14 May 2013, Masottina SpA vs. OHIM – Bodegas Cooperativas de Alicante, Coop. V.
There is a likelihood of confusion

T-19/12 of 14 May 2013, Fabryka oysk Tocznych-Kranik SA vs. OHIM – Impexmetal SA
There is a likelihood of confusion

T-249/11 of 14 May 2013, Sanco, SA vs. OHIM – Marsalman, SL
The goods and services are similar

T-508/10 of 16 May 2013, Seba Di Tcaret ve Naklyat A vs. OHIM – Joh. Wilh. Von Eicken GmbH
There is a likelihood of confusion

T-80/11 of 16 May 2013, Dwarka Nath Kalsi et Ajit Nath Kalsi vs. OHIM – American Clothing Associates
There is a likelihood of confusion with respect to identical goods

T-231/12 of 17 May 2013, Rocket Dog Brands LLC vs. OHIM – Julius-K9 bt
There is no likelihood of confusion

4 ECTA NEWS
  • New ECTA Website
  • ECTA - GRUR Joint Event Brussels Workshop "European Trade Mark System under review - A first analysis of the new proposed legal framework" - 3 June 2013, Brussels

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

1 Law

1.1 Anti-counterfeiting

Customs Regulation - Latest develoments

The draft recommendation for 2nd reading on the Council position at first reading with a view to the adoption of a regulation of the European Parliament and of the Council concerning customs
enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 was published on 24 May 2013.

The full text may be found HERE

The debate at the EU Parliament took place on 10 June 2013.

The Customs Regulation was adopted by vote on 11 June 2013.

Commissioner Šemeta welcomed EP vote on Intellectual Property Rights Regulation.

"Customs’ unique position at the border plays a crucial role in stopping pirated goods from reaching the EU market. The enforcement of intellectual property rights by customs is therefore a top priority for the Commission. Today’s vote sets the gold standard at international level in IPR protection by customs and safeguards the competitiveness of EU businesses for years to come. With the new rules, we are extending the scope of IPR that
can be legitimately controlled and protected at the borders."

The full press release may be found HERE

The procedure file may be found HERE

More information may be found HERE

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

On 27 May 2013 ECTA was invited to participate in the Public Hearing "Impact of organised crime, corruption and money laundering on the EU’s internal market" at the European Parliament.

Marius Schneider, Chair of ECTA Anti-counterfeiting Committee attended the hearing and made a presentation on the "Counterfeiting and product piracy as a threat to internal market integrity".

  • ECTA’s presentation may be found HERE
  • Program of the hearing is available HERE
  • Minutes of the hearing are available HERE
  • Commissioner’s Barnier introductory speech (in French) may be found HERE
  • Contribution of Dr. Rüdiger Stihl, Member of the Advisory Board of STIHL HOLDING AG & Co. KG in Waiblingen and Member of the Supervisory Board of STIHL AG, Chairman of the Executive Board of the German Anti-Counterfeiting Association (APM) may be found HERE
  • Contribution of Mr. Rolf Schlotterer, Center for Prevention and Countering Corruption and Organised Crime, Bulgaria is available HERE

The video of the hearing is available HERE

New Anti-counterfeiting Provisions in Greece

The Hellenic Parliament voted in May a new law amending Trademarks Law 4072/2012 which is pending publication. At the same occasion the Parliament adopted set of new provisions improving the legal instruments of anti-counterfeiting policy.

ECTA Council Member Dr Nikolaos Lyberis provided a short overview of the new measures, which may be found HERE

1.2 Trade Marks

Plain packaging in Ireland confirmed

On 28 May the Irish Minister of Health, James Reilly, announced the introduction of plain packaging in Ireland.
Irish legislation is expected to be in place by early 2014.

Ireland will become the second country in the world, after Australia, to remove branding from tobacco product packaging.

The official press release is available HERE

Amendments to Greek Trademarks Law 4072/2012

In May 2013 the Hellenic Parliament voted a new law amending Trademarks Law 4072/2012.

ECTA Council Member Dr Nikolaos Lyberis provided a short summary of the most important modifications.

His contribution is available HERE

1.3 Designs

Preparation of the treaty to harmonize the formalities for Designs, a Design Law Treaty

On 31 May the Standing Committee Meeting on Trade Marks and Designs took place.

The Committee, which in the past drafted the Trade Mark Law Treaty and the Singapore Treaty, to name some of its most recent achievements, is now drafting a treaty to harmonize the formalities for Designs, a Design Law Treaty.

The Committee also discussed issues in the Trade Mark field, this time, for example, on the protection of country names, and related issues, such as the trade mark-related aspects of the expansion of the domain system.

1.4 Geographical indications

Information notice — Public consultation — Geographical indications from Georgia

On 22 May 2013 the Information Notice regarding the Public Consultation on Geographical indications from Georgia was published in the Official Journal of the European Union.

The Agreement between the EU and Georgia on protection of geographical indications of agricultural products and foodstuffs entered into force on 1 April 2012 (See Flash 12-12)

Article 3(1) of the abovementioned agreement foresees the possibility for the parties to add new geographical indications (GIs) to be protected in Annexes III and IV in accordance with the procedure set out in Article 11(3). In this context, the protection in the European Union, as geographical indications, of the additional Georgian names is under consideration.

The Commission invites any Member State or third country or any natural or legal person having a legitimate interest, resident or established in a Member State or in a third country, to submit oppositions to such protection by lodging a duly substantiated statement.

Statements of opposition must reach the Commission within two months of the date of the publication in the Official Journal of the European Union.

The Information Notice is available HERE


2 Office Practice

2.1 OHIM

Signature of Cooperation and Bilateral Agreements with the Croatian office

On 21 May the President of OHIM and the Director General of the State Intellectual Property Office of the Republic of Croatia (SIPO), Ms Ljiljana Kuterovac signed relevant agreements which provide the basis for their full involvement in the financial and technical framework of the Cooperation Fund, Convergence Programme and CTM and RCD dissemination activities.

The Cooperation Agreement and the Bilateral Agreement on promotion and information services on CTM and RCD will come into force on 1 July. It is expected that the Croatian trade mark data will be available in TMview from the same date.

More information may be found HERE and HERE

The Croatian version of the Common Harmonised Database on Classification of Goods and Services available in TM class application

Since 7 June 2013 the Croatian version of the Common Harmonised Database on Classification of Goods and Services is available to all users through the TM class application.

This is the latest expansion in the Harmonisation Project for Goods and Services, which has been expanding continuously since it was set up.

More information may be found HERE

2.2 National Offices

Portugal: Publication of the Guidelines on the application of the Portuguese Industrial Property Code

On 27 May 2013, INPI published new guidelines on the application of the Portuguese Industrial Property Code.

This document is submitted for public consultation phase until 27 June 2013.

The full version of the document (only in Portugees) is available HERE

Turkey: Opposition proceedings available online

Since 24 May 2013, it is possible to file an opposition online before the Turkish Patent Institute (TPI).
The Turkish language still continues to be the sole accepted language and direct foreign filings are not accepted.

More information may be found HERE

Finland:E-filing goes live in Finland

On 5 June it was onfirmed that after an extended period of testing the new Trade Mark e-filing went live in the pilot office, PRV Finland.

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-244/12 of 14 May 2013, Unister GmbH vs. OHIM (contested decision : R 2149/2011-1 of 14 March 2012)

Trade mark applied for:

Fluege.de

Classes: 35, 39, 43

Decision: The trade mark is descriptive.
It consists of the joined elements ‘fluege’ and ‘.de’, the first of those elements being a variant, written in lower case and with the group of letters ‘ue’ in place of the letter ‘ü’, of the German word ‘Flüge’ (flights) and the second of those elements being a top-level domain associated with Germany (para. 21). The trade mark might be perceived spontaneously by the relevant public as a domain name referring to the address of an internet page in the aviation and air-travel field (para. 31).

The Board of Appeal’s decision is upheld.


Case T-353/12 of 16 May 2013, Aleris Holding AB vs. OHIM – Carefusion 303, Inc (contested decision : R 334/2011-5 of 11 May 2012)

Contested Trade mark:

ALARIS

Classes: 10, 37

Decision: If a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (para. 18).

The Board of Appeal erred, in its analysis of the question of the genuine use of the products in question (Cl. 10), by not identifying, within the category of ‘instruments and medical equipment’, various sub-categories capable of being viewed indepedently (para. 45).

The Board of Appeal’s decision is partially upheld.


Case T-356/11 of 16 May 2013, Christian Restoin vs. OHIM (contested decision : R 1430/2010-4 of 14 April 2011)

Trade mark applied for:

EQUIPMENT

Classes: 3,9,14,18,25,35

Decision: Regardless of the particular purpose of each product or service covered by the mark applied for, the word "equipment" is, by its meaning, immediately perceived by the relevant public as can mean all the elements used for the exercise of activity. the content semantics of the word "equipment" thus gives the consumer a general information on the nature of products and services covered by the mark applied for, so that any company can use as a brand to promote its products and services (para. 45).


On relative grounds for refusal

Case T-393/11 of 14 May 2013, Masottina SpA vs. OHIM – Bodegas Cooperativas de Alicante, Coop. V. (contested decision : R 518/2010-1 of 4 May 2011)

Trade marks:

MARINA ALTA CA’MARINA
Earlier trade mark Trade mark applied for

Class: 33

Decision: The trade marks are visually (para. 28 to 33), aurally (34 to 36) and conceptually (para. 37 to 46) similar.

There is a likelihood of confusion (para. 50).

The Board of Appeal’s decision is upheld.


Case T-19/12 of 14 May 2013, Fabryka oysk Tocznych-Kranik SA vs. OHIM – Impexmetal SA (contested decision : R 2475/2010-1 of 27 October 2011)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 7

Decision:

1.The trade marks are visually (para. 41 to 44) and aurally (para.45 to 50 similar).

2.“Machines” and “machines-tools” in Class 7 are similar to “bearings” in Class 7 (para. 35).

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

The Board of Appeal’s decision is upheld


Case T-249/11 of 14 May 2013, Sanco, SA vs. OHIM – Marsalman, SL (contested decision : R 1073/2010-2 of 17 February 2011)

Trade mark applied for:



Earlier trade mark Trade mark applied for

Classes: 29,31,35,39

Decision: Notwithstanding the difference between, on the one hand, chicken meat in Class 29 and live chickens in Class 31 and, on the other, the transport, storage and distribution of chickens in Class 39 as regards their nature, their intended purpose, their method of use and whether they are in competition with each
other, the Board of Appeal should have deemed them to have some degree of complementarity.

The Board of Appeal’s decision is annulled.


Case T-508/10 of 16 May 2013, Seba Di Tcaret ve Naklyat A vs. OHIM – Joh. Wilh. Von Eicken GmbH (contested decision : R 559/2009-4 of 18 August 2010)

Trade marks:



Earlier trade mark Contested Trade mark

Class: 34

Decision: The word ”tradition” is the dominant element of the trade marks (para. 32 to 33).

The trade marks are visually (para. 28 to 36), aurally (para.37 to 42) and conceptually (para. 43 to 47) similar.

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

The Board of Appeal’s decision is upheld.


Case T-80/11 of 16 May 2013, Dwarka Nath Kalsi et Ajit Nath Kalsi vs. OHIM – American Clothing Associates (contested decision : R 599/2010-1 of 19 November 2010)

Trade marks:



Earlier trade mark Contested Trade mark

Classes: 18,24,25,40

Decision:
1.The trade marks are visually (para. 37 to 45), aurally (para.46 to 51) and conceptually (para. 52 to 56) similar.

2.«Textiles and textile goods, not included in other classes; bed and table covers » in Class 24 are different from « processing and finishing of skins, leather, furs and textiles » in Class 40 (para. 28 to 32).

3.There is a likelihood of confusion with respect to the goods that are deemed identical (para. 64).

The Board of Appeal’s decision is partly upheld.


Case T-231/12 of 17 May 2013, Rocket Dog Brands LLC vs. OHIM – Julius-K9 bt (contested decision : R 1124/2011-4 of 21 March 2012)

Trade marks:


Julius K9
Earlier trade mark Trade mark applied for

Classes: 18,25

Decision: The trade marks are visually (para. 33 to 36) and conceptually (para. 38 to 41) different. They are aurally similar to a below average degree (para. 36 to 37).

There is no likelihood of confusion (para.47)

The Board of Appeal’s decision is upheld.


4 ECTA News

New ECTA Website

ECTA is happy to inform its members that a new redesigned version of ECTA website is available. The website offers the possibility to register online, to follow ECTA on Social Media (Twitter, LinkedIN) and it offers a new section ’Useful for IP Professionals’ containing various links useful for ECTA’s members daily work.

ECTA - GRUR Joint Event Brussels Workshop "European Trade Mark System under review - A first analysis of the new proposed legal framework" - 3 June 2013, Brussels

Attended by over 140 participant, this workshop offered a first fruitful exchange of views on the new legislative package between all stakeholders involved in the legislative procedure and namely the representatives of the EU Commission, OHIM, National Offices, EU Parliament, the industries and private practitionners.

The pictures of the event may be found under section Past Events - Round Tables/ Workshops 2013.

The report of the event will be published in the next Flash.


Finland Portugal, Turkey Anti-counterfeiting, Design, Enforcement, Trade Mark National Office Practice