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10-14 | 15 June 2014

Topics: EU Legislative Package Geographical Indications Lisbon System Plain Packaging

WELCOME TO ECTA’S 33RD ANNUAL CONFERENCE
CELEBRATING THE 20TH CTM ANNIVERSARY
18-21 June 2014, ALICANTE



Table of Contents

1 LAW
1.1 Trade Marks
  • Trade mark legislative package: outstanding issues
  • Plain packaging of tobacco products: Ireland
  • Nairobi Treaty on the Protection of the Olympic Symbol: Yugoslav Republic of Macedonia
1.2 Appellation of origin
  • Working group on the development of the Lisbon system
2 OFFICE PRACTICE
2.1 WIPO
  • Change in the amount of the individual fee: Philippines
2.2 OHIM
  • Change in OHIM’s practice on submission of additional evidence
  • Implementation of the black and white trade marks practice
  • Convergence Programmes CP3 and CP5: ECTA comments
3 CASE LAW

Summaries and case law provided by

T-495/12 Dracula (fig) vs. Dracula Bite (fig)
Lack of genuine use

T-486/12 METABOL-MG vs. METABOL
There is a likelihood of confusion

T-401/12 BORN vs. JUNGBORN
There is a likelihood of confusion

C-97/12P Louis Vuitton Malletier
Distinctiveness of a figurative trade mark consisting of the two-dimensional representation of a part of a product

C-360/12 Coty Germany GmbH vs First Note Perfumes
International jurisdiction relating to infringement

4 ECTA NEWS
  • 2014 ECTA Annual Conference
  • ECTA participation in the regional seminar organized by OHIM and INPI in Paris
  • ECTA participation in the International IP Enforcement summit organised by UKIPO, OHIM and EU Commission

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


1 Law

1 LAW
1.1 Trade Marks

1.1.1. Trade mark legislative package: outstanding issues

Discussions on the trade mark legislative package are still on-going, with focus on two outstanding issues: (i) the OHIM surplus, and (ii) the goods in transit provisions.

In this regard, the last working group meeting was held on 12 June 2014 in Brussels.

On 10 June 2014, ECTA submitted comments to the EU Council on the EU Presidency compromise proposals of 2 May 2014, regarding the above mentioned outstanding issues.

ECTA’s comments are available HERE


1.1.2. Plain packaging of tobacco products: Ireland

On 10 June 2014, the Irish government has decided to proceed with plain packaging legislation.

Ireland will be the first European country to introduce plain packaging legislation for tobacco products.

ECTA has expressed its concern in a press release issued on 11 June 2014, which is available HERE.

The Irish press release is available HERE.

The Irish Public Health (standardized packaging of tobacco) Bill 2014 is available HERE.


1.1.3 .Nairobi Treaty on the Protection of the Olympic Symbol: Yugoslav Republic of Macedonia

The Treaty on the Protection of the Olympic Symbol will enter in force in the former Yugoslav Republic of Macedonia on 27 June 2014.

Further information is available HERE.


1.2 Appellations of origin

1.2.1. Working group on the development of the Lisbon system

The working group on the development of the Lisbon system (appellations of origin) will be held from 23 to 27 June in Geneva.

Elio de Tullio will attend the event on behalf of ECTA.


2 Office Practice

2 OFFICE PRACTICE
2.1 WIPO

2.1.1. Change in the amount of the individual fee: Philippines

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

2.2.1. Change in OHIM’s practice on submission of additional evidence

OHIM’s practice to submit additional evidence will be modified according to the two judgments delivered by the Court of Justice that examine under which circumstances evidence of use filed after the date given by the Office should be accepted.

Further information on this new practice is available HERE.


2.2.2. Implementation of the black and white trade marks practice

On 2 June 2014, OHIM has implemented and included the agreed common practice on black and white trade marks in its Guidelines.

Further information on this practice is available HERE.


2.2.3 Convergence Programmes CP3 and CP5: ECTA comments

On 13 June 2014, ECTA submitted comments on Convergence Programmes CP3 (Absolute Grounds – figurative marks), and CP5 (relative grounds – likelihood of confusion).

ECTA’s comments on CP3 are available HERE.

ECTA’s comments on CP5 are available HERE

3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On relative grounds for refusal

Case T-495/12 to T-497/12 of 5 June 2014, European Drinks SA vs. OHIM – SC Alexandrion Grup Romania Srl (contested decision: R-680/2011-4 of 6 Sptember 2012)

Trade marks:



  img11856
  img11857
Earlier trade mark Trade marks applied for

Classes: 33, 35, 39

Decision:
The evidence, considered as a whole, does not provide sufficient indications of the place, time, extent and nature of use of the earlier mark (para. 45).

Thus, the documents which the applicant submitted to OHIM are not sufficient to demonstrate the genuine nature of the use of the earlier mark. Accordingly, the Board of Appeal was correct to find, following an overall assessment of the evidence, that genuine use of the earlier mark during the relevant period in Romania had not been established (para. 46)..

The Board of Appeal’s decision is upheld.


Case T-486/12 of 11 June 2014, Sofia Golam vs. OHIM – Pentafarma -Sociedade Tecnico-Medicinal, SA (contested decision: R-1901/2011-1 of 19 July 2012)

Trade marks:

METABOL-MG METABOL
Earlier trade mark Trade mark applied for

Class: 5

Decision:
1. Plasters, materials for dressings; material for stopping teeth, dental wax, dietetic substances adapted for medical use in Class 5 are similar to pharmaceutical preparations in Class 5 (para. 39 to 40).
2. The trade marks are visually and aurally (para. 46) similar.

There is a likelihood of confusion.

The Board of Appeal’s decision is upheld.


Case T-401/12 of 11 June 2014, Robert Klingel OHG vs. OHIM – Develey Holding GmbH & Co. Beteiligungs KG (contested decision: R-936/2011-4 of 9 July 2012)

Trade marks:

BORN JUNGBORN
Earlier trade mark Trade mark applied for

Classes: 29, 30, 32

Decision:
The trade marks are visually (para. 29 to 31) and aurally (para.32) similar.

There is a likelihood of confusion (para. 36).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-97/12P of 15 May 2014, Louis Vuitton Malletier vs. OHIM – Friis group International ApS (contested decision: T-237/10 of 24 February 2010)

Contested Trade mark:


Classes: 9,14,18,25

Decision:
The line of authority that evolved in relation to three-dimensional trade marks consisting of the appearance of the product itself also applies where the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such cases, the mark likewise does not consist of a sign independent of the appearance of the products it designates (para. 53).

It follows from that latter finding that the case-law relating to three-dimensional marks must be applicable also where only part of the product designated is represented by a mark. Such a mark no more consists of a sign independent of the appearance of the product it designates than a figurative mark representing the entire product (para. 54).

Even if the application of the case-law relating to three-dimensional and figurative marks constituted, respectively, by the shape of the product concerned or by a representation of that shape presupposes the existence of a link between the mark and that product which will be recognised by the relevant public, such a mark need not be perceived as an essential part of the product concerned. Accordingly, a figurative mark constituted by part of the shape of the product which it designates is not independent of the appearance of the product it designates in so far as the relevant public perceives it, immediately and without particular thought, as a representation of a particularly interesting or attractive detail of the product in question rather than as an indication of its commercial origin (para. 55)..

Consequently, the General Court did not err in law in referring to the case-law applicable to three-dimensional marks (para. 56).

The General Court’s decision is upheld.


Case C-360/12 of 5 June 2014, Coty Germany GmbH vs First Note Perfumes

The Court replies to questions referred by the German Supreme Court relating to the the interpretation of Article 93(5) of Council Regulation (EC) No 40/94 and Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.

The Court’s replies are as follows:

1. The concept of ‘the Member State in which the act of infringement has been committed’ in Article 93(5) of Council Regulation (EC) No 40/94 must be interpreted as meaning that, in the event of a sale and delivery of a counterfeit product in one Member State, followed by a resale by the purchaser in another Member State, that provision does not allow jurisdiction to be established to hear an infringement action against the original seller who did not himself act in the Member State where the court seized is situated.

2. Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that, in the event of an allegation of unlawful comparative advertising or unfair imitation of a sign protected by a Community trade mark, prohibited by the law against unfair competition (Gesetz gegen den unlauteren Wettbewerb) of the Member State in which the court seized is situated, that provision does not allow jurisdiction to be established, on the basis of the place where the event giving rise to the damage resulting from the infringement of that law occurred, for a court in that Member State where the presumed perpetrator who is sued there did not himself act there. By contrast, in such a case, that provision does allow jurisdiction to be established, on the basis of the place of occurrence of damage, to hear an action for damages based on that national law brought against a person established in another Member State and who is alleged to have committed, in that State, an act which caused or may cause damage within the jurisdiction of that court.


4 ECTA News

4.1. 2014 ECTA Annual Conference

ECTA 33rd Annual Conference will be held this week in Alicante. We thank you all for your participation and look forward to welcoming you.


4.2. ECTA participation in the regional seminar organized by OHIM and INPI in Paris

Bárbara Díaz Alaminos, ECTA’s legal coordinator, attended the IP regional seminar organized by OHIM and INPI focused, amongst others, on absolute grounds for refusal.

A report of the event will be available for ECTA members.


ECTA participation in the International IP Enforcement summit organised by UKIPO, OHIM and EU Commission

Marius Schneider, Chair of the ECTA Anti-Counterfeiting Committee, attended the International IP Enforcement Summit organised by OHIM, UKIPO and the European Commission.

A report of the event will be available to ECTA members.

Press release and conclusions are available HERE.


Appellations of origin, Trade Mark