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11-12 | 15 June 2012

Topics: ACTA Counterfeiting Domain Names EU Observatory EUIPO Cooperation Fund Geographical Indications Lisbon System

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Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • ACTA-Update
  • EU Observatory - Stakeholders’ Consultation
1.2 Domain Names
  • ICANN - Publication of the New Top-Level Domain Name Applications
  • ".eu" 2011 annual report
  • "A clean and open Internet" - Public consultation on procedures for notifying and acting on illegal content hosted by online intermediaries launched by the European Commission
1.3 Geographical Indications
  • Publication of the Council Decision (2012/292/EU) of 31 May 2012 on the signing, on behalf of the Union, of the Agreement between the European Union and the Republic of Moldova on the protection of geographical indications of agricultural products and foodstuffs
  • Publication of applications and amendments to applications for products in the Official Journal of the European Union

2 OFFICE PRACTICE
2.1 OHIM
  • Note on the Budget Committee
  • OHIM/ Brazil - Memorandum of Understanding
  • Cooperation Fund Update
2.2 WIPO
  • Fifth Session of the Working Group on the Development of the Lisbon System, 11-15 June 2012, Geneva, Switzerland
  • ECTA comments on the Users Survey on Industrial Design Registration Procedure
2.2 National Office Practice
  • Portugal- Increase of the official fees

3 CASE LAW

Summaries and case law provided by

Case C-98/11, Chocoladefabriken Lindt & Sprüngli AG vs. OHIM
The trade mark is not distinctive

Case T-169/10, Grupo Osborne, SA vs. OHIM – Industria Licorera Quezalteca
The trade marks are different

Case T-233/10, Nike International Ltd vs. OHIM – Intermar Simanto Nahmias
There is a likelihood of confusion

Case T-492/09 et T-147/10, Meda Pharma GmbH & Co. KG vs. OHIM – Nycomed GmbH
There is no likelihood of confusion


4 ECTA NEWS
  • ‘Enforcement of Intellectual Property Rights through Border Measures – Law and Practice in the EU’, Oxford University Press - Contributions of ECTA Members

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

1 Law

1.1 Anti-counterfeiting

ACTA-Update

On 4 June, the European Parliament’s last advisory committee had its say on ACTA: the Development Committee joined the previous committees in recommending that the European Parliament should reject ACTA. The results were strict: 19-1, with 3 abstentions.

The next important date will be the vote at the International Trade Committee (INTA) on its recommendation on 21 June. Currently, the draft report by David Martin (UK, S&D) recommends ACTA’s rejection. However, the pro-ACTA conservatives (EPP, led by Swedish Christopher Fjellner), and some of their allies (British conservatives of the ECR led by Syed Kamall) will attempt to amend the recommendation.

More information may be found HERE

They are strongly supported by industry representatives and the European Commission, who wish to either turn the INTA report into a call for adopting ACTA, or at least delay the final vote until the desision of the ECJ.

In this context, ECTA together with other associations have again contacted the Members of the European Parliament to draw their attention on the necessity to adopt ACTA and to guarantee the protection of Intellectual Property Rights in accordance with the EU Acquis.

The letter for the Members of the European Parliament may be found HERE

Further a digital postcard containing names of the organisations supporting ACTA was also sent to the Members of the European Parliament.

The digital postcard is available HERE.

EU Observatory-Stakeholders’ Consultation

The announced stakeholders’ consultation (See Flash 10-12) has been officially launched by OHIM on 5 June 2012. On the same date the Regulation (EU) No. 386/2012 transferring the European Observatory on Infringements of Intellectual Property Rights officially entered into force.
The associations are invited to specify the priorities in four specific areas, which reflect the essence of the Regulation. These are:

  • Supporting policymaking by providing research-based knowledge,
  • Supporting enforcement bodies by providing intelligence and knowledge, as well as tools and techniques,
  • Supporting businesses and right holders to improve their strategies with knowledge and tools,
  • Raising awareness of all relevant actors.

The stakeholders are also invited to provide reflexions on more general level, for instance:

  • What are the major issues/challenges that IP will face over the coming years on a global level and in particular for your sector? And how do you think they should be addressed?
  • What should the Observatory’s main goals be and what objectives need to be set in order to achieve them?

The observations are expected before 6 July 2012.

The official OHIM communication is available HERE

ECTA Anti-Counterfeiting Committee under the lead of its Chairman, Marius Schneider, is working on ECTA’s response.

Please, do not hesitate to send your comments or suggestions to Marius Schneider


1.2 Domain Names and Internet

ICANN - Publication of the New Top-Level Domain Name Applications

On 13 June 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) revealed the applications for generic Top-Level Domain (gTLD) names in what is expected to become the largest expansion in the history of the Internet’s Domain Name System.

A total of 1,930 new gTLD applications were received during the application period of the new generic Top-Level Domain program.

Therefore, A 60-day comment period began on 13 June, allowing anyone in the world to submit comments on any application, and the evaluation panels will consider them.

The statistics show that of the 1,930 applications received:

  • 66 are geographic name applications,
  • 116 applications are for Internationalized Domain Names, or IDNs, for strings in scripts such as Arabic, Chinese, and Cyrillic.

Applications were received from 60 countries and territories, as follows:

  • 911 from North America,
  • 675 from Europe,
  • 303 are from Asia-Pacific,
  • 24 from Latin America and the Caribbean,
  • 17 from Africa.

".eu" 2011 Annual report

On 5 July 2012 , EURid’s ".eu" annual report was published. It outlines key achievements from 2011, showcases some inspirational .eu websites and presents the General Manager’s comments on the road ahead.
The report is available HERE

"A clean and open Internet" - Public consultation on procedures for notifying and acting on illegal content hosted by online intermediaries launched by the European Commission

On 1 June 2012 the European Commission launched a consultation on Notice and Take-Down (Notice and Action) procedures . The consultation is entitled: "A clean and open Internet: public consultation on procedures for notifying and acting on illegal content hosted by online intermediaries".

The consultation is limited exclusively to Article 14 of Directive 2000/31/EC on e-commerce.

The consultation will be available until 5 September 2012.

The questionnaire is available HERE

More information may be found on the DG Internal Market website

ECTA Anti-Counterfeiting Committee together with the Internet and Law Committees have been invited to prepare ECTA’s reply.


1.3 Geographical Indications

Publication of the Council Decision (2012/292/EU) of 31 May 2012 on the signing, on behalf of the Union, of the Agreement between the European Union and the Republic of Moldova on the protection of geographical indications of agricultural products and foodstuffs

The publication in the Official Journal of the European Union took place on 7 June 2012.

The complete text of the decision may be found HERE

Publication of applications and amendments to applications for products in the Official Journal of the European Union

The applications for following products were published in the Official Journal of the European Union on 8 June 2012:

Statements of objection must reach the Commission within six months of the date of this publication.


2 Office Practice

2.1 OHIM

Note on the Budget Committee

The official note from OHIM’s President, Mr António Campinos, with regard to the measures taken by the Office due to the recent downgrading of some of its banks is available HERE

OHIM/Brazil - Memorandum of Understanding

On 13 June 2012, OHIM President António Campinos and Jorge Ávila, President of the Brazilian IP Office, have signed a Memorandum of Understanding.

The agreement contains a number of initiatives for cooperation between INPI Brazil and OHIM over the coming years, including annual bilateral experts meetings on trade marks and designs, the exchange of trade mark and design data and IP training programmes for the staff of both offices and the general public.

Cooperation Fund-Update

On 1 June 2012, the meeting on Co-operation Fund Project 1.2.5: Quality Standards took place at OHIM. ECTA was represented by Cristina Bercial, Secretary of ECTA Law Committee.

The report of the meeting may be found HERE

An update on the Cooperation Fund Projects – CF 129 Common Tool on similarity of goods and services may be found HERE

2.2 WIPO

Fifth Session of the Working Group on the Development of the Lisbon System, 11-15 June 2012, Geneva

The Chairman of the Geographical Indications Committe, Florent Gevers, and Michele Elio De Tullio, member of the same Committee, attended the meeting. Their reports will follow.

The working documents are available HERE

ECTA comments on the Users Survey on Industrial Design Registration Procedure

In the beginning of May, the members of ECTA Design Committee have analysed the User Survey on Industrial Design Registration Procedure, prepared by WIPO (See Flash 08-12).

Following this survey, the Design Committee under the lead of its Vice-Chair, Elena Sonn, and with active contribution of Keith Hodkinson and Lena Ericsson, has prepared ECTA position paper.

The document may be found HERE

2.3 National Office Practice

Portugal- Increase of the official fees

An update of the official fees of the Portuguese Patent and Trademark Office has been published in the Official Gazette, to be implemented as of 10 June 2012.

This update of the official fees does not involve significant changes, as it only increases the fees for the application and for the renewal of trade marks and the fees for the maintenance (annuities) of patents.


3 Case Law

Summaries and case law provided by Darts IP

COURT OF JUSTICE OF THE EUROPEAN UNION

On absolute grounds for refusal

Case C-98/11 of 24 May 2012, Chocoladefabriken Lindt & Sprüngli AG vs. OHIM (contested decision : T-336/08 of 17 December 2010)

Trade mark:


Class: 30

Decision: The General Court did not err in law by holding :

  • that the trade mark is devoid of any distinctive character (para. 43 to 51);
  • that the appellant has not sufficiently proved the acquisition, by the mark for which registration is sought, of distinctive character through use throughout the European Union (para.59 to 63).

The General Court’s decision is upheld.


GENERAL COURT

On relative grounds for refusal

Case T-169/10 of 24 May 2012, Grupo Osborne, SA vs. OHIM – Industria Licorera Quezalteca, SA (contested decision : R 223/2009-2 of 22 January 2010)

Trade marks:

TORO XL
Earlier trade mark Trade mark applied for

Classe: 33

Decision: The trade marks are visually (para. 44 to 47), aurally (para. 48) and conceptually (para. 49 to 53) different.

The Board of Appeal’s decision is annuled.

Case T-233/10 of 25 May 2012, Nike International Ltd vs. OHIM – Intermar Simanto Nahmias (contested decision : R 738/2009-1 of 11 March 2010)

Trade marks:

JUMP JUMPMAN
Earlier trade mark Trade mark applied for

Classe: 25

Decision: The trade marks are visually (para. 32 to 36) and aurally (para.3 37 to 39) similar.

There is a likelihood of confusion (para. 50 to 55).

The Board of Appeal’s decision is upheld.

Case T-492/09 et T-147/10 of 7 June 2012, Meda Pharma GmbH & Co. KG vs. OHIM – Nycomed GmbH (contested decisions : R 1386/2007-4 and R 697/2007-4 of 29 September 2009)

Trade marks:

ALLERGODIL ALLERNIL
Earlier trade mark Trade mark applied for

Classe: 5

Decision: The trade marks are visually (para. 37 to 40) and aurally (para. 40 to 43) slightly similar.

The similarity is not sufficient to create a likelihood of confusion even if the goods are identical ( para. 52)

The Board of Appeal’s decision is upheld.


4 ECTA News

‘Enforcement of Intellectual Property Rights through Border Measures – Law and Practice in the EU’, Oxford University Press - Contributions of ECTA Members

Many ECTA Members, under the lead of Marius Schneider and Olivier Vrins, have participated in the publication of the second edition of the ’Enforcement of Intellectual Property Rights through Border Measures – Law and Practice in the EU’, by Oxford University Press.

To promote the work of ECTA members, Oxford University Press has agreed to grant a 20% discount to all ECTA members ordering the book through the attached flyer.

The official presentation of the book is available HERE

The 20% reduction flyer is available HERE


Portugal Anti-counterfeiting, Domain Name, Geographical Indications National Office Practice