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10-13 | 4 July 2013

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Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • Customs Regulation - Latest developments
  • EU-US Transatlantic Trade and Investment Partnership - Latest developments
  • 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 - Report
1.2 Trade Marks
  • Reform of the European Trade Mark system - Latest developments
  • Plain packaging - Tobacco product directive proposal latest update on the European Parliament and Council levels
2 OFFICE PRACTICE
2.1 OHIM
  • Observatory: Conference on fake medicines, 26-28 June 2013, Alicante
  • TMview - Latest developments
  • Cooperation Fund: Harmonisation project for goods and services joined by the Industrial Property Office of the Czech Republic
2.2 WIPO
  • Ratification of the Singapore Treaty on the Law of Trademarks by Belgium
  • Fifty-First Series of Meetings of the Assemblies of the Member States of WIPO, Geneva, 23 September-2 October 2013: Web Posting of New Working Documents
  • Working Group on the Legal Development of the Hague System, 28-30 October 2013
2.3 National Offices
  • Germany: Publication of the Annual Report
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-598/11 of 12 June 2013, MPDV Mikrolab GmbH vs. OHIM
The trade mark is descriptive

T-502/11 of 17 May 2013, Sanofi Pasteur MSD SNC vs. OHIM – Mundipharma AG
There is no likelihood of confusion

T-115/12 of 30 May 2013, Buzil-Wark Wagner GmbH & Co. KG vs. OHIM – Roca Sanitario, SA
The goods are similar

T-514/11 of 4 June 2013, i-content Ltd Zweigniederlassung Deutschland vs. OHIM – Decathlon SA
There is a likelihood of confusion

T-580/11 of 6 June 2013, McNeil vs. OHIM – Alkalon ApS
There is a likelihood of confusion

T-636/11 of 13 June 2013, Hostel drap, SL vs. OHIM – Aznar Textil, SL
There is a likelihood of confusion

COURT OF JUSTICE

C-320/12 of 27 June 2013, Malaysia Dairy Industries Pte. Ltd vs. Ankenævnet for Patenter og Varemærker (Yakult)
Concept of ’bad faith’

4 ECTA NEWS
  • ECTA Workshops on IP Translator - SAVE THE DATES
  • ECTA Award 2013 - Results
  • ECTA - GRUR Joint Event Brussels Workshop "European Trade Mark System under review - A first analysis of the new proposed legal framework" - Report

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

1 Law

1.1 Anti-counterfeiting

Customs Regulation - Latest developments

The Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 has been published on 29 June 2013 in the Official Journal (OJ L181).

The text of the Regulation may be found HERE

This Regulation shall enter into force on 19 July 2013 and shall be applicable from 1 January 2014.

The OLAF competence related to IPR Investigation are confirmed and even reinforced under the following provisions of the new regulation:

  • Recital (22): In the interest of efficiency, the provisions of Council Regulation (EC) No 515/97 of 13 March 1997 on mutual assistance between the administrative authorities of the Member States and cooperation between the latter and the Commission to ensure the correct application of the law on customs or agricultural matters, should apply.
  • Article 31 §2: Without prejudice to point (g) of Article 24 of Regulation (EC) No 515/97, where the release of the goods is suspended or the goods are detained, the customs authorities shall transmit to the Commission any relevant information, except personal data, including information on the quantity and type of the goods, value, intellectual property rights, customs procedures, countries of provenance, origin and destination, and transport routes and means.
  • Article 36 (Mutual administrative assistance): The provisions of Regulation (EC) No 515/97 shall apply mutatis mutandis to this Regulation.

In practice, the provisions in Art.31 §2 shall also ensure the seizure/confiscation of counterfeit goods (including tobacco products) , which will be recorded on a mandatory basis by the MS in COPIS database maintained by DG TAXUD, will be automatically forwarded in AFIS/MAB database managed by OLAF with a view to avoid the duplication of efforts. The nominal data should be supplemented only in AFIS/MAB.
Please also note that the attached Council Resolution on the EU Customs Action Plan to combat IPR infringements for the years 2013 to 2017 published on 19 March 2013 in the Official Journal (OJ C80) also recommended that a partnership should also be developed with the European Observatory on infringements of IPRs and co-operation enhanced with the European Anti-Fraud Office (OLAF) and European enforcement bodies other than customs, in the framework of their respective competences, where appropriate.

Moreover, on 3 July 2013 the EU Parliament gave its go-ahead to the reform of the rules governing the operation of the European Anti-Fraud Office (OLAF). The House supported the compromise reached with Council on the content of the new OLAF regulation.

More information may be found HERE


EU-US Transatlantic Trade and Investment Partnership - Latest developments

On 14 June 2013 the European Council adopted the decision on negotiating directives (“mandate”), which gives the green light to the European Commission to enter into formal bilateral trade negotiations with the United States of America.

Both the EU and the United States are committed to maintaining and promoting a high level of intellectual property protection. Given the efficiency of their respective systems, the intention is not to strive towards harmonisation, but to identify a number of specific issues where divergences will be addressed. For the EU side, Geographical Indications (GIs) are of particular importance in that context. During the negotiations, we therefore intend to present specific ideas for ensuring adequate protection of GIs.

On 17 June the negotiations were officially launched. The road will be paved with obstacles though, as proved by the recent clash to protect movies and culture, a movement led by France.

Paris insisted that the audiovisual sector be excluded from the negotiations. After 13 hours, a compromise was finally reached agreeing to the French demand but which also stated that the Commission could revisit the question if necessary.

The 1st round of negotiations is scheduled for 8 July.

On 14 June ECTA addressed a letter to Mr. Anders Jessen (Head of Unit, Intellectual Property and Public Procurement), which is available HERE

The official press release may be found HERE and 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- Report

On 27 May 2013 Marius Schneider represented ECTA at the 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) at the European Parliament t(See Flash 07-13).

The official report of the hearing may be found HERE.

In addition the European Parliament adopted the resolution on 11 June 2013 on organised crime, corruption, and money laundering: recommendations on action and initiatives to be taken (interim report), which may be found HERE.


1.2 Trade Marks

Reform of the European Trade Mark system Latest developments

The second meeting at JURI Committee of the European Parliament (EP) took place on 19 June 2013. During the meeting the rapporteur Ms. Cecilia Wikström (ALDE, SE) gave a long and detailed presentation of the dossier and pointed out her priorities focusing on the package approach including the fees regulation.

Only two shadow rapporteurs, Marielle Gallo (EPP, FR) and Christian Engström (Greens, SE) briefly took the floor. The JURI chair Lehne (EPP, DE) gave a few comments at the end.

The main difficulty raised by the rapporteur is the package approach: the European Parliament intends to use its co-legislator prerogatives on the three proposed texts, including on the Regulation fees. She expressed certain regret regarding the fact an EP observer was not allowed to attend the last meeting Comitology working group of the European Commission on 17 June. The Council and the EP should work on the fees regulation as part of the legislative package. She pointed out that the order of adopting decisions in regard of fees changed. It should not be first decided on the fees and then only after on what to do with them (purpose of the two other draft texts). Shadow rapporteurs Gallo and Engström were on the same line.

The following points were then raised:

  • Importance of maintaining a dual level system for trade marks in Europe (national registration and CTM).
  • Trade mark has one characteristic that sets it apart from other IPRs, which is the fact that a trade mark can be renewed indefinitely. The protection period is not limited and there is a need to ensure that trade mark will not encroach on other types of IPRs.
  • The codified cooperation between OHIM and national offices is welcomed, though this cooperation has been working very well so far. National offices should get access to OHIM funds on the basic of actual funds. The trade mark system is not aimed to finance national trade mark systems or Member States general budgets. OHIM is an EU agency, not a Council or a Member State agency.
  • The change of OHM’s name should better reflect what it deals with. The name "European Intellectual Property Agency" was suggested, instead of the EU Trade Mark and Designs Agency.
  • Fighting against counterfeiting is a very important and complicated issue, in particular as regards goods in transit.
  • The global objective is to set a flexible system for trade marks tailored and adapted for the different needs of the 20 million EU companies. The system works well but needs to be improved and modernized.

On 27 June the draft report of shadow rapporteur Mr. George Sabin Cutas from International Trade Committee was published.

The draft report may be found HERE


Plain packaging - Tobacco product directive proposal latest update on the European Parliament and Council levels

The European Parliament opinion giving committees JURI (Legal Affairs), IMCO (Internal Market and Consumer Protection), INTA (International Trade), ITRE (Industry and Research) and AGRI (Agriculture) voted on 18-20 June in Brussels on the tobacco product directive proposal.

The overview of the votes is as follows:

  • All 5 opinion giving committees have voted: against complete plain packaging, against point of sales display ban and against ingredients ban.
  • All committees except IMCO have voted for health warning labeling at 50% size placed at the bottom of the pack (IMCO voted for 70% size health warning labeling placed at the bottom).
  • All committees have voted a deletion of the slim cigarettes ban and menthol ban.

The final opinion of INTA (Rapporteur M.Kazak) is available HERE

The final opinion of IMCO (Rapporteur Malgorzata Handzlik) is available HERE

The final opinion of AGRI Committee (Rapporteur Csaba Sándor Tabajdi) may be found HERE

The final opinion of ITRE Committee (Rapporteur Robert Goebbels) is available HERE

The final opinion from JURI committee (Rapporteur Klaus-Heiner Lehne) may be found HERE

The vote at the lead committee, ENVI (health and environment) is scheduled for 10 July 2013.

Meanwhile, the Council adopted on 21 June a General Approach (informal political compromise).

The official press release may be HERE and HERE

The 1st part of the Council broadcasted deliberations can be found HERE

The 2nd part of the Council broadcasted deliberations (after the break) can be found HERE

The consolidated text of the General Approach can be found HERE

Amongst the agreed elements:

  • Mandatory combined (picture and text) health warnings covering 65% front and back of all cigarette and roll-your-own tobacco packs;
  • Minimum packet dimensions and ban of ‘lipstick’ style packs (slim cigarettes themselves not banned );
  • Ban on tobacco products with ‘characterising flavour’ other than tobacco, like fruit or menthol;
  • Ban of any misleading labelling (such as "natural" or "organic");
  • Member States may introduce more stringent rules on additives or on packaging of tobacco products (such as plain-packaging), subject to certain conditions (such as notification to the Commission).

Following the adoption of the Council’s General Approach, the European Parliament is now aware of the Council’s mandate for the upcoming discussions. It also enables the incoming Lithuanian Presidency to engage discussions with the European Parliament on this file.

In the context of the vote at the ENVI Committee ECTA together with APRAM, BMM, MARQUES and UNION issued a new Joint Statement to encourage the members of the ENVI Committee and, subsequently, the Members of the European Parliament, to vote against the introduction of plain packaging and extreme measures restricting normal use of trade marks such as 75% size health warning labels and arbitrary prohibition of trade marks and brands.

The full Joint Statement may be found HERE


2 Office Practice

2.1 OHIM

Observatory: Conference on fake medicines, 26-28 June 2013, Alicante

The 2 day conference was organized by the European Observatory on the Infringements of Intellectual Property Rights in cooperation with EUROPOL and with support of by the Pharmaceutical Security Institute (PSI).

At the conference, experts from the public and private sectors explored the growth of trade in counterfeit medicines - ‘Pharmacrime’ - and will exchange knowledge and competences in enforcement. ‘Pharmacrime’ is a global term covering a wide range of infractions and offences related to public health and this programme has been developed to bring a particular emphasis on pharmaceutical products and doping substances.

EU police, customs, health and medicines regulatory agencies and private partner experts are willing to collaborate on encouraging exchanges of expertise and developing more efficient ways of tackling the associated problems.

The Agenda may be found HERE

The Press Release may be found HERE


TMview -Latest developments

From 12 June and until 5 July 2013, Mr. Sadrettin Kaçar from the national IP office of Turkey was at OHIM’s Alicante headquarters as part of the implementation of Turkish trade mark data into TMview.

He worked closely with his IT counterparts from OHIM, participating in technical meetings and working groups, as Turkey move closer to full integration of TMview in this year.

More information may be found HERE

From 17 June to 21 June, it was the turn of the Korean IT experts to visist OHIM.

The delegation from the Korean Intellectual Property Office (KIPO) joined OHIM experts as they prepare to integrate the trade mark data from Korea into TMview.

The provisional go live is expected before the end of 2013.


Cooperation Fund: Harmonisation project for goods and services joined by the Industrial Property Office of the Czech Republic

From 17 June 2013 the Industrial Property Office of the Czech Republic joined the Common Harmonised Database on Classification of Goods and Services, as a result the complete Czech translations of the Common Harmonised Database is now available to all the users through the TMclass application.

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

More information may be found HERE


2.2 WIPO

Ratification of the Singapore Treaty on the Law of Trademarks by Belgium

On 7 June 2013 the Minister for Foreign Affairs and notified the deposit by the Government of the Kingdom of Belgium of its instrument of ratification of the Singapore Treaty on the Law of Trademarks.

More information may be found HERE


Fifty-First Series of Meetings of the Assemblies of the Member States of WIPO, Geneva, 23 September-2 October 2013: Web Posting of New Working Documents

The circular C. N 3443 related to the posting of new working documents of the Fifty-First Series of Meetings of the Assemblies of the Member States may be found HERE

More information may be found HERE


Working Group on the Legal Development of the Hague System, 28-30 October 2013

Additional information is available HERE


2.3 National Offices

Germany: Publication of the Annual Report

The German Patent and Trademark Office (DPMA) published its annual report for 2012, which is currently only available in a German.

The report includes various statistics and information on German trade marks, designs and patents.

Regarding German national trade marks, it is confirmed that most applications were filed by German applicants, with the majority of foreign applicants being from Switzerland, the US, Bulgaria and China.

The annual report (German version) for 2012 can be accessed via the DPMA’s website HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-598/11 of 12 June 2013, MPDV Mikrolab GmbH vs. OHIM (contested decision : R 131/2011-1 of 15 September 2011)

Trade mark applied for:

Lean Performance Index

Class: 35

Decision:

The combination of three English words that make up the word sign "Lean Performance Index" will be clearly understood by the relevant public, composed of familiar with the concepts of business management, such as "lean production" and evidence of professional performance, as referring to the "index method thin work" as a concept from the field of business management (para. 28).


On relative grounds for refusal

Case T-502/11 of 17 May 2013, Sanofi Pasteur MSD SNC vs. OHIM – Mundipharma AG(contested decision : R 1904/2010-4 of 22 July 2011)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 5

Decision: The signs are visually similar to a marginal degree level (para. 51).

There is no likelihood of confusion (para. 62).

The Board of Appeal’s decision is upheld.


Case T-115/12 of 30 May 2013, Buzil-Wark Wagner GmbH & Co. KG vs. OHIM – Roca Sanitario, SA contested decision : R 1907/2010-4 of 9 January 2012)

Trade marks:


Roca
Earlier trade mark Trade mark applied for

Classes: 3,21

Decision: The "cleaning" in Class 3 are similar to "brushes and sponges" in Class 21 (para. 49-66).

There is a likelihood of confusion (para. 68).

The Board of Appeal’s decision is upheld.


Case T-514/11 of 4 June 2013, i-content Ltd Zweigniederlassung Deutschland vs. OHIM – Decathlon SA (contested decision : R 1816/2010-1 of 30 June 2011)

Trade marks:


BETWIN
Earlier trade mark Trade mark applied for

Classes: 25,28

Decision:

1. The trade marks are visually (para. 47 to 50), aurally (para. 51 to 57) and conceptually (para. 58 to 66).

2. Toys, games and playthings in Class 28 are not similar to gymnastic and sporting articles (other than clothing, footwear and mats) in class 28 (para. 30 to 39)

3. There is a likelihood of confusion with respect to the goods that are deemed identical (para. 75).

The Board of Appeal’s decision is upheld.


Case T-580/11 of 6 June 2013, McNeil vs. OHIM – Alkalon ApS (contested decision : R 1582/2010-2 of 3 August 2011)

Trade marks:

NICORETTE NICORONO
Earlier trade mark Contested Trade mark

Classes: 5,10,30

Decision:

The trade marks are visually (para. 67), aurally (para. 68) and conceptually (para. 69) similar.

There is a likelihood of confusion (para. 77).

The Board of Appeal’s decision is upheld.


Case T-636/11 of 13 June 2013, Hostel drap, SL vs. OHIM – Aznar Textil, SL
(contested decision : R 2127/2010-2 of 26 September 2011)

Trade marks:



Earlier trade mark Contested Trade mark

Class: 24

Decision:

The trade marks are visually (para. 30 to 33), aurally (para. 34 to 36) and conceptually (para. 37 to 41) similar.

There is a likelihood of confusion (para. 47).

The Board of Appeal’s decision is upheld.


COURT OF JUSTICE

C-320/12 of 27 June 2013, Malaysia Dairy Industries Pte. Ltd vs. Ankenævnet for Patenter og Varemærker (Yakult)

Preliminary ruling

In the abovementioned case, the reference for a preliminary ruling from the Danish Court concerns the interpretation of the concept of ’bad faith’ within the meaning of Article 4(4)(g) of Trade mark Directive 2008/95/29.

The Court (fifth Chamber) replies as follows:

1. Article 4(4)(g) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the concept of ‘bad faith’, within the meaning of that provision, is an autonomous concept of European Union law which must be given a uniform interpretation in the European Union.

2. Article 4(4)(g) of Directive 2008/95 must be interpreted as meaning that, in order to permit the conclusion that the person making the application for registration of a trade mark is acting in bad faith within the meaning of that provision, it is necessary to take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration. The fact that the person making that application knows or should know that a third party is using a mark abroad at the time of filing his application which is liable to be confused with the mark whose registration has been applied for is not sufficient, in itself, to permit the conclusion that the person making that application is acting in bad faith within the meaning of that provision.

3. Article 4(4)(g) of Directive 2008/95 must be interpreted as meaning that it does not allow Member States to introduce a system of specific protection of foreign marks which differs from the system established by that provision and which is based on the fact that the person making the application for registration of a mark knew or should have known of a foreign mark.

4 ECTA News

ECTA Workshops on IP Translator - SAVE THE DATES

Following the success of the ECTA workshop of 21 February in Alicante "BRAND OWNERS LIFE BEFORE AND AFTER IP TRANSLATOR", ECTA is pleased to inform that the workshops will be organized in Europe in the second half of the year and namely:

  • 24 September in Lisbon
  • 24 October in Stockholm
  • 4 November in Helsinki
  • 6 November in Budapest

More details in the next Flash.


ECTA Award 2013 - Results

The winners of the 1st ECTA Award 2013 are:

Professional Category:

  • 1st Prize: “An Analysis of Plain Packaging of Tobacco Products under EU IP Law”- Alberto Alemanno (HEC Paris) and Enrico Bonadio (The City Law School)
  • 2nd Prize: “Issues surrounding registration of colour trade marks” - Jelena Kudrjavceva

Student Category:

  • 1st prize: “Registrability of smells, colors and sounds: How to overcome the challenges dressed by the requirements of graphical representation and distinctiveness within European Union law?” - Garry Trillet (University of Strasbourg)
  • 2nd prize: “Infringement of the Community Trade mark and its implications in the European Union” - Yasmine El-Nazeer (Queen Mary Univerisity of London MSc Management of Intellectual Property)

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

The report of the ECTA GRUR Workshop of 3 June is available HERE


Germany Anti-counterfeiting, Trade Mark National Office Practice