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Topics: Counterfeiting Design View Geographical Indications Nice classification

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Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • Counterfeit and piracy: new manual for right-holders for completing the new application for action forms now available
  • EU-Turkey Dialogue on IPR, Working Group - Joint preparatory meeting with industry - 28 January 2014
1.2 Geographical Indications
  • Publication of ECTA Position Paper on comparable goods
2 OFFICE PRACTICE
2.1 OHIM
  • New OHIM Website - Latest developments
  • OHIM Guidelines - Update
  • Sweden joins Designview
2.2 WIPO
  • New version of the Nice Classification entered into force
2.3 National Office
  • Benelux: International trade mark applications to be submitted through an online application as from 6 January 2014
  • Switzerland: Change in practice concerning the division of applications for registration in accordance with Article 17a of the Trade Mark Act
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-467/11 of 10 December 2013, Colgate-Palmolive Company vs. OHIM – dm-drogerie markt GmbH & Co. KG
There is a likelihood of confusion

T-487/12 of 11 December 2013, Eckes-Granini Group GmbH vs. OHIM – Panini SpA
There is no likelihood of confusion

T-591/11 11 December 2013, Przedsibiors Handlowe Medox Lepiarz Jarosaw Lepiarz Alicja sp.j. vs. OHIM – Henkel Corp.
There is a likelihood of confusion

4 ECTA NEWS

Registration for ECTA Annual Conference in Alicante, 18-21 June 2014


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

1 Law

1.1 Anti-counterfeiting

Counterfeit and piracy: new manual for right-holders for completing the new application for action forms now available

DG TAXUD informed on 8 January 2014 that the new manual for right-holders for completing the new application for action forms is now available.

More information may be found HERE

The Manual is available HERE

EU-Turkey Dialogue on IPR, Working Group - Joint preparatory meeting with industry - 28 January 2014

The next meeting of the EU-Turkey IPR Working Group is tentatively scheduled for 18 February 2014 in Brussels.

The preparatory meeting on Tuesday will take place on 28 January 2014.

1.2 Geographical Indications

Publication of ECTA Position Paper on comparable goods

ECTA is pleased to inform its members that the Geographical Indications Committee finalized the position paper on comparable goods in the practice of the OHIM.

The position paper will be discussed during ECTA OHIM Annual Meeting in February 2014.


2 Office Practice

New OHIM Website - Latest developments

Following the launch of the new OHIM Website, ECTA adressed an official letter to OHIM, which is available HERE

OHIM informed Users regarding all developments in this respect and presented the list of updates, which may be found HERE


OHIM Guidelines - Update

On 4 December 2013 the President of the Office adopted Work Package 1 of the Guidelines after the internal and external feedback process and consultation of the Administrative Board. Work Package 1 will come into force on 1 February 2014 (See ECTA Flash 19-13).

In the context of completing the transformation of the Manual into Guidelines, the Office is herewith pleased to inform you that the draft Guidelines of Work Package 2 are now available online through the following link: Draft Guidelines Work Package 2.

The draft Guidelines are now open for consultation until 7 March 2014.

Following this consultation process, the updated Guidelines will be submitted to the next meeting of OHIM’s Administrative Board (in May 2014) so that the President can adopt them in mid 2014.

Once adopted, the Guidelines will enter into force on 1 August 2014.

ECTA OHIM Link Committee is currently preparing comments, which will be discussed at the next OHIM - ECTA Annual Meeting in February 2014.


Sweden joins Designview

On 20 December 2013 the Swedish Patent and Registration Office (PRV) integrated into the Designview database, becoming the thirteenth National Office to do so.

More information may be found HERE

2.2 WIPO

New version of the Nice Classification entered into force

Since 1 January 2014 the current version is the 2014 version of the 10th edition of the Nice Classification (NCL).
Changes to the NCL are made annually. Changes consist in adding new goods and services to, and deleting goods and services from the alphabetical list, and modifying the wording of the indications of goods and services, the class headings and the explanatory notes.

Modifications by classes are available HERE

2.3 National Office

Benelux: International trade mark applications to be submitted through an online application as from 6 January 2014

On 6 January 2014 in collaboration with the WIPO (World Intellectual Property Organization), the BOIP launched a new tool for submitting international trade mark applications online.

More information may be found HERE

Switzerland: Change in practice concerning the division of applications for registration in accordance with Article 17a of the Trade Mark Act

Since 17 December 2013, the Swiss Office charges a filing fee for divisional applications when a division of an application for registration is requested. This change in practice entered into force immediately and will be applied to all new divisional applications submitted.

More information may be found HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On relative grounds for refusal

Case T-467/11 of 10 December 2013, Colgate-Palmolive Company vs. OHIM – dm-drogerie markt GmbH & Co. KG (contested decision : R 1094/2010-2 of 25 May 2011)

Trade marks:

SONIC POWER 360°SONIC ENERGY
Earlier trade mark Trade mark applied for

Class: 21

Decision: The trade marks are visually (para. 60 to 61), aurally (para. 62) and conceptually (para. 63 to 66) similar.

There is a likelihood of confusion (para. 69 to 75).

The Board of Appeal’s decision is upheld.


Case T-487/12 of 11 December 2013, Eckes-Granini Group GmbH vs. OHIM – Panini SpA (contested decision : R 2393/2011-2 of 6 September 2012

Trade marks:

GRANINI
Earlier trade mark Trade mark applied for

Class: 32

Decision: The trade marks are visually (para. 32 to 46) different. They have a low degree of phonetic similarity (para. 47 to 53). From a conceptual point of view, they are dissimilar or no comparison is possible between them (para. 54 to 58). In the global assessment of the perception of the signs by the average consumer, the phonetic similarity between the signs must be considered as being of less importance than the visual differences existing between them (para. 67).

There is no likelihood of confusion (para. 68 to 70).

The Board of Appeal’s decision is upheld.


Case T-591/11 of 11 December 2013, Przedsibiors Handlowe Medox Lepiarz Jarosaw Lepiarz Alicja sp.j. vs. OHIM – Henkel Corp. (contested decision : R 1147/2010-4 of 12 September 2011)

Trade marks:

SUPERGLUE
Earlier trade mark Trade mark applied for

Classes: 1, 16

Decision: The trade marks are visually (para. 49 to 53), aurally (para. 54 to 57) and conceptually (para. 58 to 60) similar.

There is a likelihood of confusion notwithstanding the weak distinctive character of the earlier trade mark (para. 62).

The Board of Appeal’s decision is upheld.


4 ECTA News

Registration for ECTA Annual Conference in Alicante, 18-21 June 2014

ECTA is pleased to inform its members that registration for ECTA Annual Conference in Alicante 2014 is now open.

You can register HERE

Program of the Conference is available HERE


Benelux Anti-counterfeiting, Enforcement, Geographical Indications National Office Practice, OHIM, WIPO