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09-14 | 3 June 2014

Topics: Designs Domain Names EU Legislative Package Lisbon System Plain Packaging

ECTA’s 33rd Annual Conference
Celebrating the 20th CTM Anniversary
18-21 June 2014, Alicante
Registration
More than 700 registrations received to date



Table of Contents

1 LAW
1.1 Trade Marks
  • Plain packaging legislation - update
    • EU Tobacco Directive
    • Update on WTO challenges against Australian plain packaging law
    • New Zealand
1.2 Domain Names
  • Support of the domain name industry in under-served regions
  • Panel on global internet cooperation and governance mechanisms: new approach
1.3 Appellations of origin
  • Working group on the development of the Lisbon system
2 OFFICE PRACTICE
2.1 WIPO
  • Francis Gurry appointed for second term as WIPO Director General
  • WIPO launches an image-based search for trade marks
  • Madrid yearly review
  • Change in the amount of the individual fee: Turkey and Kenya
  • Hague agreement concerning the international registration of industrial designs: Republic of Korea
  • WIPO conferences, meetings and seminars in June 2014
2.2 OHIM
  • OHIM administrative board and budget committee meeting
  • New TM5 website
  • OHIM events
  • OHIM website
2.3 National Office
  • Finland: three out of four trade mark applications filed online
3 CASE LAW

Summaries and case law provided by

T-327/12 SIMCA
The trade mark has been registered in bad faith

T-473/11 MENODORON vs. MENOCHRON
There is a likelihood of confusion

T-647/11 ASSOS vs. ASOS
The trade marks are similar

T-170/12 BEYOND RETRO vs. BEYOND VINTAGE
Likelihood of confusion – Obligation to state reasons

T-38/13 Pedro del Hierro (fig) vs. PEDRO
Genuine use – Likelihood of confusion

C-591/12P DOGHNUTS vs. BIMBO DOUGHNUTS
Assessment of a composite trade mark overall impression

C-205/13 Registration of marks consisting of the shape of goods

4 ECTA NEWS
  • ECTA at INTA
  • ITMA spring conference
  • ASIPI-ABAPI/ABAPISUL seminar
  • Trade marks 2014 publications

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


1 Law

1 LAW
1.1 Trade Marks

1.1.1. Plain packaging legislation - update

1.1.1.1. EU Tobacco Directive

The EU Tobacco Directive, adopted in March 2014, entered into force on 19 May 2014.

The new Directive allows Member States, under specific requirements, to implement plain packaging legislation on tobacco products. In this regard, the UK and Ireland are currently considering the adoption of plain packaging legislations, which raise some concerns from a trade mark law perspective.

The EU Tobacco Directive is available HERE.


1.1.1.2. Plain Packaging- Update on WTO challenges against Australian plain packaging law

The five co-complainants (Ukraine, Honduras, Dominican Republic, Cuba, Indonesia ) in the WTO ongoing challenges against the Australian plain packaging law have now their panels established since 25 April 2014. The five panels will have harmonized timetables with the same set of 3 panelists who were appointed by the WTO Director General on 5 May 2014. The five panels will operate as one single panel, with one set of Working Procedures. There are 34 third parties (excluding the 5 complainants): these are WTO Members which have expressed an interest in the case, and which will have the right to attend the first oral hearing with the panel and make written and oral statements. Working Procedures should be established in the coming weeks.

ECTA has been closely following the WTO developments due to the importance of the case for the IP community and of the precedent which will emerge from the final decision of WTO which may be applicable to any kind of industries.

Information can be found at WTO’s website.


1.1.1.3. New Zealand

Following ECTA’s comments submitted to the New Zealand Parliament Health Committee (see ECTA Flash 06-14 of 10 April 2014), ECTA provided evidence at a hearing before the New Zealand Health Committee on 21 April 2014.

A report will be available to ECTA Members.


1.2 Domain Names

1.2.1. Support of the domain name industry in under-served regions

The ICANN has released a report on the support of the domain name industry in underserved regions. The report gathers and seeks to receive input by ICANN, in order to create an action plan to address challenges in these regions.

The report is available HERE.


1.2.2. Panel on global internet cooperation and governance mechanisms: new approach

A report, including recommendations on how to develop the internet governance ecosystem to incorporate global needs for interconnectivity, collaboration and internet growth, has been made available by the panel on global internet cooperation and governance mechanisms. The panel consists of stakeholders from different organizations and governments.

Further information on the report is available HERE.


1.3 Appellations of origin

1.3.1. Working group on the development of the Lisbon system (appellations of origin)

A revised draft report of the eight session of the working group on the development of the Lisbon system is now available online.

2 Office Practice

2.1 WIPO

2.1.1. Francis Gurry appointed for second term as WIPO Director General

Following his nomination on 6 March 2014, Francis Gurry has been appointed for second term as WIPO Director General.

Further information is available HERE.


2.1.2. WIPO launches an image-based search for trade marks

WIPO has launched an image-based search function for its global brand database. Through this new function, users will be able to upload an image to search for visually similar trade marks and other brand-information records.

Further information on the image-based search function is available HERE.


2.1.3. Madrid yearly review

The Madrid yearly review is now available online.


2.1.4. Change in the amount of the individual fee: Turkey and Kenya

The Director General of WIPO has established new amounts of the individual fee to be paid when Turkey and Kenya are 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.

Information notice for Turkey is available HERE

Information notice for Kenya is available HERE.


2.1.5. Hague agreement concerning the international registration of industrial designs: Republic of Korea

The Geneva Act, adopted on 2 July 1999 and concerning the international registration of industrial designs, will enter into force in the Republic of Korea on 1 July 2014, by request of its government.

Further information is available HERE.


2.1.6. WIPO conferences, meetings and seminars in June 2014

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


2.2 OHIM

2.2.1. OHIM administrative board and budget committee meeting

OHIM’s administrative board and budget committee, consisting of representatives from the European Commission and Member States, met in Alicante from 20 to 22 May 2014.

Observers representing different intellectual property organizations, such as WIPO, and users, such as ECTA (represented by Bárbara Díaz Alaminos, ECTA Legal Coordinator), also attended the meeting.

Further information on the administrative board meeting is available HERE.

Further information on the joint meeting is available HERE.

Further information on the budget committee meeting is available HERE.

A report will be available to ECTA Members.


2.2.2. New TM5 website

The TM5 Website, a cooperative project initiated by the Japan Patent Office (JPO), OHIM and the United States Patent and Trade Mark Office (USPTO), was launched on 2 May 2014.

Through this website, the five largest intellectual property offices (the JPO, OHIM, the USPTO, the Korean Intellectual Property Office, and the State Administration of Industry and Commerce of the People’s Republic of China) share information, amongst others, on projects, practices, resources and statistics with the goal to harmonize and to improve different trade mark procedures.

Further information on the TM5 website is available HERE


2.2.3. OHIM events

The following events were / will be held by OHIM in May and June:

  • OHIM Conference on IP Mediation, 29-30 May 2014, ECTA will be represented at this meeting by Fabio Angelini, Chair of ECTA Law Committee. Fabio Angelini’s presentation is available HERE.
  • International IP Enforcement Summit, 11-12 June 2014, London, UK. ECTA will be represented at this meeting by Marius Schneider, Chair of the ECTA Anti-Counterfeiting Committee.

More OHIM events can be found HERE.


2.2.4. OHIM Website

The following updates of OHIM’s website are now available:

A list of website improvements is available HERE.

Information on OHIM website reported errors is available HERE.


2.3 National Office:

2.3.1. Finland: three out of four trade mark applications filed online

55% trade mark applications in Finland were filed online in 2013. From 2014, filing a trade mark online is cheaper than filing a trade mark on paper. While the fee for an online application is 215 euros, the fee for a paper application is 250 euros.

Further information is available HERE.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-327/12 of 8 May 2014, Simca Europe vs. OHIM – GIE PSA Europel (contested decision: R-271/2011-4 of 26 November 2012)

Contested trade mark

SIMCA

Class: 12

Decision:
The Board of Appeal was entitled to infer from the particular circumstances of the present case that the real purpose of the former proprietor’s application for registration of a Community trade mark was to ‘free-ride’ on the reputation of the intervener’s registered marks and to take advantage of that reputation (para. 56).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-473/11 of 28 April 2014, Longevity Health Products, Inc. vs. OHIM – Weleda Trademark AG (contested decision: R 2345/2010-4 of 6 July 2010)

Trade marks:

MENODORON MENOCHRON
Earlier trade mark Trade mark applied for

Classes: 3,5

Decision:
The trade marks are visually (para. 41) and aurally (para. 41) similar. There is a likelihood of confusion (para. 49).

The Board of Appeal’s decision is upheld.


Case T-647/11 of 29 April 2014, Asos plc vs. OHIM – Roger Maier
(contested decision: R 2215/2010-4 of 17 October 2011)

Trade marks:

ASSOS ASOS
Earlier trade mark Trade mark applied for

Classes: 3,18,25,35

Decision:
1. As regards the mark applied for, admittedly, one portion of the English-speaking public will perceive it as the acronym for ‘as seen on screen’. For that portion of the public, the marks at issue are therefore conceptually different. However, the other portion of the English-speaking public will not perceive the trade mark applied for, ASOS, as the acronym for ‘as seen on screen’. Furthermore, given that it is common ground that the relevant public is the public throughout the European Union, the relevant public does not consist solely of an English-speaking public. The word element ‘asos’ is not a known acronym and the expression ‘as seen on screen’ is not a basic English expression, likely to be understood by the non-anglophone public (para. 27). Overall, the trade marks are similar.
2. Bumbags, sports bags, casual bags, briefcases, attaché cases, satchels, beauty cases, credit card cases and holders, wallets, purses in Class 18 are different from clothing, footwear, headgear in Class 25 (para. 46 to 52).

The Board of Appeal’s decision is upheld.


Case T-170/12 of 30 April 2014, Beyond Retro Ltd vs. OHIM – S&K Garments, Inc (contested decisions: R 493/2011-4 and R-548/2011-4 of 30 January 2012)

Trade marks:

BEYOND RETRO BEYOND VINTAGE
Earlier trade mark Trade mark applied for

Classes: 14,18,25

Decision:
1. Jewellery, precious stones and watches in Class 14 are different from clothing, headgear and footwear in Class 25 (para. 36 to 44).
2. The trade marks are visually and aurally (para. 54 to 60) similar. There is a conceptual similarity as regards the non-English-speaking public (para. 61 to 70) and the English-speaking public also (para. 71 to 75).
3. The contested decision, in so far as it concerns the goods in Classes 18 and 25 that are deemed identical or similar, is unlawful on account both of the infringement of Article 8(1)(b) of Regulation No 207/2009, as regards the existence of a likelihood of confusion with regard to the non-English-speaking public, and of the infringement of the obligation to state reasons, as regards the global assessment of the likelihood of confusion with regard to the English-speaking public (para. 94).

The Board of Appeal’s decision is annuled.


Case T-38/13 of 8 May 2014, Pedro Group vs. OHIM – Cortefiel (contested decision: R-271/2011-4 of 26 November 2012)

Trade marks:

Pedro del Hierro (fig) PEDRO
Earlier trade mark Trade mark applied for

Class: 25

Decision:
1. The Board of Appeal took into consideration the context within which and the market on which the goods covered by the earlier Community trade mark ( upper segment of the fashion industry) were marketed in order, having regard to the evidence provided by the intervener, to conclude that the the earlier Community trade mark has been genuinely used (para. 53).

2. There is a low degree of visual (para. 65 to 68) and aural (para.69 to 70) similarity.
Having regard to the highly distinctive character of the earlier mark in Spain, there is a likelihood of confusion between the marks at issue, in spite of the low degree of similarity between them (para. 89 to 91).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-591/12P of 8 May 2014, Bimbo SA vs. OHIM – Panrico (contested decision: T-569/10 of 10 October 2012) See Flash 17-12

Trade marks:

DOGHNUTS BIMBO DOUGHNUTS
Earlier trade mark Trade mark applied for

Class: 30

Decision:
The overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components. However, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (para. 23).

It is possible that an earlier mark used by a third party in a composite sign that includes the name of the company of the third party retains an independent distinctive role in the composite sign. Accordingly, in order to establish the likelihood of confusion, it suffices that, on account of the earlier mark still having an independent distinctive role, the public attributes the origin of the goods or services covered by the composite sign to the owner of that mark (para. 24).

None the less, a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately (para. 25).

The determination of which components of a composite sign contribute to the overall impression made on the target public by that sign is to be undertaken before the global assessment of the likelihood of confusion of the signs at issue. Such an assessment must be based on the overall impression produced by the trade marks at issue, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Therefore, this does not involve an exception, that must be duly substantiated, to that general rule (para. 35).

The General Court stated that, since the ‘doughnuts’ element is wholly meaningless for the relevant public, that element did not form, together with the other element of the sign, a unit having a different meaning as compared with the meaning of those elements taken separately. It accordingly found that the ‘doughnuts’ element still had an independent distinctive role in the trade mark for which registration was sought and had therefore to be taken into account in the global assessment of the likelihood of confusion (par. 27).

The assessment carried out by the General Court is not vitiated by any error of law (para. 38).

The General Court’s decision is upheld.


C-205/13 - Registration of marks consisting of the shape of goods

Advocate General’s opinion in Case C-205/13 is that EU law precludes registration as trade marks of shapes which result from the functionality of the goods and shapes whose aesthetic characteristics determine the attractiveness of the goods concerned.

A summary of the Advocate General’s opinion is available HERE.

4 ECTA News

4.1. ECTA at INTA

Representatives from ECTA, Max Oker-Blom (ECTA Secretary General) and Bárbara Díaz Alaminos (ECTA Legal Coordinator), attended INTA’s 2014 Annual meeting in Hong Kong.

They attended, amongst others, meetings with other NGOs and trade mark offices, where recent trade mark matters were discussed.


4.2 ITMA spring conference

ITMA Spring Conference was held from 19 to 21 March 2014, in London. The conference was attended by Keith Havelock, past ECTA Secretary General.

A report is available HERE


4.3. ASIPI-ABAPI/ABAPISUL seminar

Lorenzo Litta (lawyer at De Simone & Partners) attended, on behalf of ECTA, the ASIPI-ABAPI/ABAPISUL Seminar, held from 15 to 18 March in Porto Alegre.

A report is available HERE


4.4. ECTA Workshop on trade marks, packaging and lifestyle regulation

A report of ECTA Workshop on trade marks, packaging and lifestyle regulation, held on 12 March 2014 in Brussels, is HERE.

Background:

ECTA workshop on trade marks, packaging and lifestyle regulation took place in Brussels on 12 March 2014.

The workshop counted with presentations on the beverage industry (Dr Ignacio Sanchez Recarte from SpiritsEurope), the tobacco industry (Jan Vidjeskog from Philip Morris International), and the food industry (Sebastián Romero Melchor from K&L Gates GP).

The presentations are available for ECTA members on ECTA’s website under the section Past Events.


4.5 Trade marks 2014 publications

The international comparative legal guide to: trade marks 2014, 3rd edition, is now available online.


Domain Name, Trade Mark OHIM, WIPO