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11-13 | 22 July 2013

Topics: Counterfeiting EU Legislative Package EUIPO Convergence Programme Plain Packaging

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Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • EU-US Transatlantic Trade and Investment Partnership - Latest developments
  • Customs Training Road-Show for enforcement of IPR Laws in India - Report
1.2 Trade Marks
  • Reform of the European CTM system - Mini-Hearing,EU Parliament, Legal Affairs Committee
  • Plain packaging - Latest developments
1.3 Trade Secrets
  • Public consultation on the protection of business and research know-how - Summary report
2 OFFICE PRACTICE
2.1 OHIM
  • 45th Administrative Board Meeting at OHIM - Report
  • IP Summer School at OHIM
  • Webinar on Taxonomy on 24 July 2013
  • Convergence Program : Preparatory meetings on Harmonisation of Classification
  • Website Users Working Group Meeting - 30/09/2013
2.2 National Offices
  • United Kingdom: New unit to tackle online piracy and counterfeit crime
  • Switzerland: Signature of free trade agreement with China
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-178/11 of 28 May 2013, Voss of Norway ASA vs. OHIM – Nordic Spirit AB
The trade mark is devoid of any distinctive character

T-396/11 of 30 May 2013, ultra air GmbH vs. OHIM – Donaldson Filtration Deutschland GmbH
Nullity action – Objective assessment of the distinctiveness

T-515/11 of 6 June 2013, Delphi Technologies, Inc vs. OHIM
The trade mark is devoid of any distinctive character

T-126/12 of 6 June 2013, Interroll Holding AG vs. OHIM
The trade mark is devoid of any distinctive character

T-172/12 of 30 May 2013, Brauerei Beck GmbH & Co. KG vs. OHIM – Aldi GmbH &Co. KG
The trade marks are different

4 ECTA NEWS
  • ECTA Autum Council Meeting 2014
  • FICPI-AIPLA-AIPPI Colloquium "Protection of confidentiality in Intellectual Property Advice"- Report
  • ECTA Special Gazette
  • ECTA Award - Publication of the articles

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

1 Law

1.1 Anti-counterfeiting

EU-US Transatlantic Trade and Investment Partnership - Latest developments

The first round of the trade and investment talks (TTIP) took place in Washington, D.C. between 8 and 12 July 2013. The negotiating groups have set out respective approaches and ambitions in as much as twenty various areas that the TTIP is set to cover. The negotiators also met with 350 stakeholders to listen to formal presentations and answer questions. The second round of negotiations will take place during the week of 7 October 2013, in Brussels.

More information may be found HERE

Customs Training Road-Show for enforcement of IPR Laws in India -Report

Shravan Kumar Bansal, member of ECTA Anti-counterfeiting Committee attended the meeting on behalf of ECTA.

His report is available HERE

For more information, check ECTA Flash 02-13

1.2 Trade Marks

Reform of the European CTM system - Mini-Hearing,EU Parliament, Legal Affairs Committee

The Mini-Hearing on the Reform of the CTM system organized by the Legal Affairs Committee took place on 8 July 2013 in Brussels. The meeting brought together the OHIM delegation, the representatives of the European Commission and the most important stakeholders.

The Agenda of the hearing may be found HERE

The users were represented by Ms Dawn Franklin (European Brands Association (AIM) - Char of the Trade Mark Committee) and Mr José Monteiro - Senior Legal Director at L’Oréal.

Ewa Grabiak, ECTA Legal Coordinator attended the meeting on behalf of ECTA.

Her report of the hearing is available for ECTA Members under section Law Committee - Papers.

On 11 July the European Economic and Social Committee published the report on the Proposal for a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks (Rapporteur-General: Bernardo Hernández Bataller).

The report may be found HERE

On 17 July the new version of the draft report of Rapporteur George Sabin - Cutas from the Opinion Giving Committee on International Trade was published and is available HERE

In addition ECTA 1st Vice President F. Peter Mueller and ECTA Secretary General Max Oker Blom met on 27 July Mrs Cecilia Wikström (Rapporteur, Legal Affairs Commitee) as well as the IP Attachés from the Permanent Representations of Sweden, Lithuania and France.

The report of the meetings is available for ECTA Members under section Law Committee - Papers.

Plain packaging - Latest developments

Following the adoption of a General Approach by the Council on 21 June and the final reports of the five European Parliament Opinion Giving Committees JURI, IMCO, INTA, ITRE and AGRI (See ECTA Flash 10-13 ), the ENVI Committee voted on 10 July on amendments to the Tobacco Product Directive (TPD) proposal and a final report was adopted (final report has not yet been published).

On the key issues, the ENVI Committee did not follow the recommandations of the 5 Opinion Giving Committees.

Notwithstanding the overall result, the ENVI members rejected the following amendments:

  • Standardized/plain packaging (4 amendments were put to the vote, relating to Article 13 and recital 23)
  • Point of Sales Display Ban (currently implemented in Ireland, UK and Finland).

Amongst voted measures by the ENVI members we can find:

  • Health Warning Labels of 75 % size from top edge (Article 9)
  • The ban on slim cigarettes was maintained (Article 12)
  • Positive ingredients list, including a ban on menthol (Article 6)
  • E-Cigarettes are to be regulated under pharmaceuticals (Article 18)
  • The proposed ban on snus is maintained (Article 15)
  • Ban on cross-border sales (Article16) While plain packaging was rejected, the final report still includes extreme provisions, such as excessively large health warnings (75% size from top edge of the pack).

The ENVI Committee represents less than 10% of the members of the European Parliament. The 5 Opinion Giving committees in the Parliament, representing over 50% of all Members of the European Parliament, voted against many of the extreme provisions of the revised TPD. As mentioned in the joint statement of 3 July of the Sister Associations, ECTA fully supports the JURI Committee and the other Opinion Giving Committees which all voted against the amendments introducing plain packaging, excessively large health warning labels and arbitrary prohibition of trade marks and brands (as proposed in Article 12 of the revised TPD).

The final ENVI report will now be put to the vote in the plenary session of September (vote should take place the week of 9 September). Political groups and groups of at least 40 Members of the European Parliaments will be able to table amendments to the final report of the ENVI Committee (such as amendments reducing the size and position of health warning labels on the packs) until 4 September prior to noon.

The Committee of Regions as well as the European Economic and Social Committee adopted their final opinion in July.

The Commitee of Regions insists on the fact that education as the most effective tool to reduce smoking prevalence.

The full opinion may be found HERE

The European Economic and Social Committee adopted on 11 July their final opinion on the TPD:

"The EESC notes that the proposal on the inclusion of health warnings, covering 75% of both faces of the cigarette pack, together with the new text covering 50% of the sides, is not based on definitive scientific evidence. In addition, this change in packaging may threaten jobs in the packaging industry, which remains a sector of great economic importance in several European countries. It would also undermine the legitimate intellectual and industrial rights of manufacturers to use their registered trade marks".

The press release may be found HERE

The full opinion is available HERE

In UK, the Government responded on 12 July 2013 to its consultation on plain packaging for tobacco products and has decided not to move forward on the proposal.

ECTA participated in the consultation on standardised packaging of tobacco products and expressed its strong opposition to a possible implementation of such legislation in UK.

It can be read the following in the Ministerial statement:

“Many thousands of responses to the consultation were received, and the views expressed were highly polarised, with strong views put forward on both sides of the debate and a range of organisations generating campaigns and petitions.

Having carefully considered these differing views, the Government has decided to wait until the emerging impact of the decision in Australia can be measured before we make a final decision on this policy in England.

Currently, only Australia has introduced standardised packaging, although the Governments of New Zealand and the Republic of Ireland have committed to introduce similar policies. Standardised packaging, therefore, remains a policy under consideration…”

Complete information on the consultation can be found HERE

1.3 Trade Secrets

Public consultation on the protection of business and research know-how - Summary report

The European Commission has decided to analyse the current situation in the Union in more detail and to collect views with regard to the protection of business and research know-how in the Union on 11 November 2012 and launched the public consultation on the protection of business and research know-how (See ECTA Flash 04-13)

ECTA’s contibution may be found HERE

DG MARKT published the summary of replies, which provides a clear overview of the submissions.

The summary may be found HERE

It is important to mention the publication by DG MARKT of the study on trade secrets and confidential business information in the internal market.

This study incorporates a survey covering 537 companies, including 323 small and medium size companies (less than 250 employees) undertaken at the end of 2012. It also provides a detailed review of the legal frameworks governing trade secrets in the then 27 Member States, the United States of America, Japan and Switzerland.

The study is available HERE


2 Office Practice

2.1 OHIM

45th Administrative Board Meeting at OHIM - Report

Ewa Grabiak, ECTA Legal Coordinator attended the meetings on 20 and 21 May on behalf of ECTA.

Her report may be found under section Law Commitee - Papers.

IP Summer School at OHIM

The 1st IP Summer School for national offices (both EU and non-EU), users, stakeholders and OHIM staff has taken place between 1 and 5 July in Alicante.

The Summer School was organised by the OHIM Academy, in collaboration with the European Patent Office (EPO) and the World Intellectual Property Organisation (WIPO), in the context of the Memorandum of Understanding signed by the three organisations.

The focus of the sessions was on trade marks and designs, with a special module on patents, the Madrid and the Lisbon systems.

More information may be found HERE

Ewa Grabiak, ECTA Legal Coordinator attended the IP Summer School on behalf of ECTA.

Webinar on Taxonomy on 24 July 2013

A live webinar organised by OHIM’s Academy on the Taxonomy tool will take place on 24 July at 11:00am CET.

The webinar will be open to all interested users HERE, and anyone wishing to take part can send questions to the webinar team in advance, via ConvergenceProgramme oami.europa.eu

Selected questions will be answered online during the webinar, and all other questions will be answered after the event via email. The webinar will be presented by OHIM classification expert Thom Clark.

Taxonomy is a new hierarchical structure that allows for easier and faster classification of goods and services through the Nice Classification framework. It has been developed by the EU national and regional IP offices and OHIM, in collaboration with WIPO. Taxonomy is available through TMclass

More information on Taxonomy is available HERE

Convergence Program : Preparatory meetings on Harmonisation of Classification

On 15 July OHIM hosted the first of 2 meetings of a preparatory working group established within the framework of the Harmonisation of Classification Project (CP1).

The Harmonisation of Classification Project is one of the most advanced projects within the Convergence Programme.

This preparatory group will advance the work further during the summer period and bring their results to the whole CP1 working group for approval shortly after summer (12 September).

One of the main focuses of this session will be the elaboration of a Common Communication on the latest achievements in this project that is planned to be published by the end of this year, as well as to continue the work on the establishment of common criteria in the field of classification of good and services.

Website Users Working Group Meeting - 30 September 2013

OHIM confirmed that the work on the new website has advanced very well in the last few months and the restricted go-live for September will take place as planned. The parallel website will continue until November when the new website will go-live.

In that context the Website Users Working Group Meeting will take place on 30 September.

Cristina Bercial-Chaumier, Secretary of ECTA Law Committee, will attend the meeting on behalf of ECTA.

2.2 National Offices

United Kingdom: New unit to tackle online piracy and counterfeit crime

On 28 June 2013 the Intellectual Property Minister, Lord Younger and City of London Police Commissioner, Adrian Leppard announced the new police unit aimed at targeting intellectual property crime.

The unit will be dedicated to tackling online piracy and other forms of intellectual property crime such as counterfeit goods. It will be one of the first units of its kind in the world, ensuring that the UK stays at the forefront of intellectual property enforcement.

Press release is available HERE

Switzerland: Signature of free trade agreement with China

On 6 July 2013 Federal Councillor Johann N. Schneider-Ammann and the Chinese Minister of Commerce GAO Hucheng signed the bilateral free trade agreement between Switzerland and China in Beijing. The agreement will be discussed in parliament in autumn 2013 and spring 2014 and (subject to ratification) is expected to enter into effect some time in 2014.

The agreement also contains substantial provisions on the protection of intellectual property rights. The Parties commit to apply high level international standards. The Parties undertake to deepen their cooperation within the framework of the institutionalized bilateral dialogue on intellectual property which was initiated in 2007.

More information may be found HERE

The texts of the agreement are available HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-178/11 of 28 May 2013, Voss of Norway ASA vs. OHIM – Nordic Spirit AB (contested decision : R 785/2010-1 of 12 January 2011)

Contested Trade mark:


Classes: 32,33

Decision: The contested trade mark is characterised by the combination of a three-dimensionally-shaped transparent cylindrical bottle and a non-transparent cap having the same diameter as the bottle itself (para. 58). As perceived by the relevant public, it is devoid of any distinctive character (para. 62).

The Board of Appeal’s decision is upheld.


Case T-396/11 of 30 May 2013, ultra air GmbH vs. OHIM – Donaldson Filtration Deutschland GmbH (contested decision : R 314/2010-4 of 18 May 2011)

Contested Trade mark:

Ultrafilter international

Classes: 7,11,37,41,42

Decision: The purpose of the nullity action laid down in Article 56(1)(a) of Regulation No 207/2009, in conjunction with Article 52(1)(a) of that regulation, is, inter alia, to enable OHIM to review the validity of the registration of a mark and to adopt, where necessary, a position which it should have adopted of its own motion under Article 37(1) of Regulation No 207/2009 (para. 20).

In that regard, OHIM is required to assess whether the mark under examination is descriptive and/or devoid of distinctive character, without the motives and earlier conduct of the applicant for a declaration of invalidity being able to affect the scope of the task entrusted to OHIM (para. 21).

The fact that the manager of the applicant for a declaration of invalidity was the manager of the proprietor of the mark at the time when the application for registration of the mark was lodged in no way affects the rights of that applicant to bring a nullity action before OHIM (para. 24).

The Board of Appeal’s decision is annuled.


Case T-515/11 of 6 June 2013, Delphi Technologies, Inc vs. OHIM (contested decision : R 1967/2010-2 of 23 June 2011)

Trade mark applied for:

INNOVATION FOR THE REAL WORLD

Classes: 7,9,10,12

Decision: The trade mark is devoid of any distinctive character.
In respect of the goods at issue, the relevant public would perceive the sign INNOVATION FOR THE REAL WORLD, directly and without further consideration, as an allusion to innovative goods and not as an indication of the commercial origin of those goods (para. 32).

The Board of Appeal’s decision is upheld.


Case T-126/12 of 6 June 2013, Interroll Holding AG vs. OHIM (contested decision : R 1280/2011-1 of 12 January 2012)

Trade mark applied for:

Inspired by efficiency

Classes: 6,7,9,20,35,39,42

Decision: The trade mark is devoid of any distinctive character.
The relevant public, faced with the goods and services concerned perceives immediately the word mark Inspired by efficiency as a whole, without further reflection, as a complimentary or promotional reference to the effectiveness of the products and services concerned, and not as an indication of the commercial origin of these (para. 41).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-172/12 of 30 May 2013, Brauerei Beck GmbH & Co. KG vs. OHIM – Aldi GmbH &Co. KG (contested decision : R 2258/2010-1 of 19 January 2012)

Trade marks:

BECK’s
Earlier trade mark Trade mark applied for

Class: 32

Decision: The trade marks are visually (para. 24 to 34), aurally (para. 35) and conceptually (para. 36) different.

The Board of Appeal’s decision is upheld.


4 ECTA News

ECTA Autum Council Meeting 2014

Following the Council Meeting in Bucharest, ECTA would like to inform its members that the ECTA Council Meeting 2014 will take place in Tallin, Estonia.

The exact dates will be confirmed in coming weeks.

FICPI-AIPLA-AIPPI Colloquium "Protection of confidentiality in Intellectual Property Advice"- Report

The colloquium organized by FICPI, AIPLA and AIPII was fully dedicated to the question of protection of confidentiality in IP advice.

The colloquium took place on 27 and 28 June 2013 in Paris.

Ewa Grabiak, ECTA Legal Coordinator attended the meeting on behalf of ECTA.

Her report is available HERE

ECTA Special Gazette

ECTA Publications Committee prepared the new edition of the Special Gazette, which has been sent to ECTA Members few days ago.

ECTA Special contains the following articles:

  • "Trade mark dispute settlement practice in Latvia" by Valters Gencs, ECTA Member, Patent and Trademark Attorney, Gencs Valters Law Firm, LV
  • "What’s that sound? Roaring lions and the protection of non-traditional marks in Canada" by Justine Wiebe, ECTA Member, Partner, Borden Ladner Gervais LLP, CA
  • "McCambridge Limited v. Joseph Brennan Bakeries" by Colette Brady, Guest author, DFMG Solicitors, IE

ECTA Award - Publication of the articles

Professional Category:

Student Category:


United Kingdom Anti-counterfeiting, Trade Mark, Trade Secrets National Office Practice