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11-14 | 30 June 2014

Topics: Counterfeiting Domain Names EU Legislative Package Plain Packaging TM View

Thank you for participating in ECTA’s very successful 33rd Annual Conference
Celebrating the 20th Anniversary of the CTM
18-21 June 2014, Alicante
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ECTA Round Table session: Brand owners life before and after IP Translator
15 September 2014, Denmark
Programme
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Table of Contents

1 LAW
1.1 Trade Marks
  • Trade mark legislative package
    • New EU Council Presidency and future IP meetings
  • Plain packaging of tobacco products: Ireland and the UK the first EU countries in favour of plain packaging
    • Ireland: IP Associations’ joint paper against plain packaging legislation
    • UK: Consultation on standardized packaging of tobacco products
1.2 Domain Names
  • Memorandum of understanding (MOU) between ICANN and the China Academy of Telecommunication Research (CATR)
1.3 Anti-Counterfeiting
  • EU customs action plan to combat IPR infringements: second EU customs right holders and stakeholders meeting
2 OFFICE PRACTICE
2.1 WIPO
  • Change in the amount of the individual fee: Republic of Korea
2.2 OHIM
  • President Campinos signs the OHIM Guidelines decision
  • TMview now in Arabic
  • OHIM webinar: eSearch plus
3 CASE LAW

Summaries and case law provided by

T-207/13 THE SPIRIT OF CUBA vs.
The trade mark is descriptive

T-382/12 NOBEL vs. Nobel (fig)
There is a likelihood of confusion

T-330/12 LA HUTTE vs. THE HUT
There is a likelihood of confusion

T-523/12 HANI / RANI (fig) vs. SANI (fig)
There is no likelihood of confusion

C-217/13 and C-218/13 Oberbank AG, Banco Santander SA and Santander Consumer Bank AG vs Deutscher Sparkassen-and Giroverband eV
Distinctive character acquired through use

C-345/13 Karen Millen Fashions Ltd vs Dunnes Stores and Dunnes Stores
Individual character of a registered design - Validity of an unregistered design

4 ECTA NEWS
  • ECTA round table session: brand owners life before and after IP Translator

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

1.1.1.1. New EU Council Presidency and future IP meetings

Italy will hold the EU Council Presidency from 1 July 2014 to 31 December 2014.

Several meetings have been scheduled in July, under the Italian EU Council Presidency, to discuss, amongst others, the outstanding issues of the trade mark legislative package.


1.1.2. Plain packaging of tobacco products: Ireland and the UK the first EU countries in favour of plain packaging

1.1.2.1.1. Ireland: IP Associations’ joint paper against plain packaging legislation

On 25 June 2014, APRAM, BMM, the Czech Association for Branded Products, ICC BASCAP, Marques, Unifab and Union joined ECTA in a joint statement regarding IP Associations’ strong concerns with the Irish Government’s decision to proceed with plain packaging legislation.

The joint statement is available HERE.


1.1.2.1.2. UK: Consultation on standardized packaging of tobacco products

On 26 June 2014, the department of health of the UK government launched a consultation on the introduction of regulations for standardized packaging of tobacco.

The goal of the consultation is for the government, after the previous consultation of April 2014, to be fully informed before reaching a decision on whether to introduce standardized packaging of tobacco products.

The consultation and other related documents are available HERE.


1.2 Domain Names

1.2.1. Memorandum of understanding (MOU) between ICANN and the China Academy of Telecommunication Research (CATR)

On 24 June 2014, ICANN and CATR signed a MOU to work together with regard to academic and public IP research, and to improve the communication with Chinese communities.

Further information is available HERE.


1.3 Anti-Counterfeiting

1.3.1. EU customs action plan to combat IPR infringements: second EU customs right holders and stakeholders meeting

The second EU Customs – right holders and stakeholders meeting in the framework of action 1.3.2 of the EU Customs Action Plan to combat IPR infringements (2013-2017) will be held in Brussels, on 17 July 2014.

Bárbara Díaz Alaminos, ECTA Legal Coordinator, will attend the meeting on behalf of ECTA.


2 Office Practice

2 OFFICE PRACTICE
2.1 WIPO

2.1.1. Change in the amount of the individual fee: Republic of Korea

The Director General of WIPO has established new amounts of the individual fee to be paid when the Republic of Korea 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. President Campinos signs the OHIM Guidelines decision

The OHIM Guidelines decision has been signed by President Campinos. The new Guidelines include recent practice established by the case law of the European Court of Justice, of OHIM’s Boards of Appeal. The new Guidelines also include the outcome of the Convergence Programmes.

The new Guidelines and the decision are available HERE.


2.2.2. TMview now in Arabic

TMview is now available in Arabic.

Further information is available HERE.


2.2.3. OHIM webinar: eSearch plus

On 1 July 2014, the OHIM Academy will host a webinar on their search engine eSearch plus.

The webinar will be held in English and will take place, approximately, between 15:30 h and 16:00 h (CEST).

Further information on how to access the webinar is available HERE.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-207/13 of 24 June 2014, 1872 Holdings vof vs. OHIM – Havana Club International SA (contested decision: R- 684/2012-1 of 31 January 2013)

Contested trade mark:

THE SPIRIT OF CUBA

Classes: 33,35,42

Decision:
The trade mark is descriptive.

The expression the spirit of Cuba would be understood, by the relevant public, as a reference to the alcoholic spirit of Cuba or to the alcoholic beverage of Cuba.

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-382/12 of 19 June 2014, Kampol sp. Z o. o. vs. OHIM – Colmol-Colchoes, SA (contested decision: R- 2286/2011-4 of 21 June 2012)

Trade marks:

NOBEL
Earlier trade mark Trade mark applied for

Classes: 10,20,24

Decision:
1. Mattresses in Class 20 are similar to cushions for medical purposes, blankets and quilts for medical purposes in Class 10 and Woollen blankets, quilts, bed covers, pillowcases and mattress covers, duvets in Class 24 ( para. 41 to 64).
2. The trade marks are visually (para. 70 to 78) and aurally (para. 79) similar.

There is a likelihood of confusion (para. 94 to 111).

The Board of Appeal’s decision is upheld.


Case T-330/12 of 24 June 2014, The HUT.com Ltd vs. OHIM – Intersport France (contested decision: Case R 814/2011-2 of 27 April 2012)

Trade marks:

LA HUTTE THE HUT
Earlier trade mark Trade mark applied for

Classes: 3,25,28,35

Decision:
1. The retail and advice and consultancy services or the services of provision of the aforementioned services by a customer care unit in Class 35 relate to goods which are identical to those covered by the earlier mark, namely perfumes, essential oils, cosmetics (Class 3), clothing, footwear, headgear (Class 25) and games and playthings (Class 28). The services and goods covered by the signs at issue are consequently complementary (para. 26).
2. The trade marks are visually (para. 32 to 36), aurally (para. 37 to 41)and conceptually (para. 42 to 47 ) similar.

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

The Board of Appeal’s decision is upheld.


Case T-523/12 of 24 June 2014, Rani Refreshments FZCO vs. OHIM – Global-Invest Bartosz Turek (contested decision: R- 236/2012-4 of 27 September 2012)

Trade marks:




 
Earlier trade marks Trade mark applied for

Classes: 29,30,32

Decision:
The signs are not visually or conceptually similar (para. 25).

There is a certain degree of aural similarity as a result of the shared letter combination ‘ani’. The similarity is weak because of the difference between the beginning of the mark applied for and the beginning of the earlier trade marks (para. 33).

The fact that the signs at issue are not visually or conceptually similar and, what is more, have only a weak degree of aural similarity makes it possible to rule out any likelihood of confusion (para. 40).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Cases C-217/13 and C-218/13 of 19 June 2014, Oberbank AG, Banco Santander SA and Santander Consumer Bank AG vs Deutscher Sparkassen-and Giroverband eV

The Court replies to questions referred by the German Supreme Court relating to the interpretation of Article 3(1) and (3) of Directive 2008/95/EC

The Court’s replies are as follows :

1. Article 3(1) and (3) of Directive 2008/95/EC must be interpreted as precluding an interpretation of national law according to which, in the context of proceedings raising the question whether a contourless colour mark has acquired a distinctive character through use, it is necessary in every case that a consumer survey indicate a degree of recognition of at least 70%.

2. Where a Member State has not exercised the power laid down in the second sentence of Article 3(3) of Directive 2008/95, the first sentence of Article 3(3) of that directive must be interpreted as meaning that, in the context of invalidity proceedings in respect of a mark which is intrinsically devoid of distinctive character, in order to assess whether that mark has acquired a distinctive character through use, it is necessary to examine whether such character was acquired before the date of filing of the application for registration of that mark. It is irrelevant in that regard that the proprietor of the mark at issue maintains that the mark has, in any event, acquired a distinctive character through use after the date of filing of the application for registration, but before the date of registration of that mark.

3. Where a Member State does not exercise the power laid down in the second sentence of Article 3(3) of Directive 2008/95, the first sentence of Article 3(3) of that directive must be interpreted to the effect that it does not preclude, in the context of invalidity proceedings, the mark at issue from being declared invalid where it is intrinsically devoid of distinctive character and the proprietor of that mark has failed to show that it has acquired a distinctive character following the use which has been made of it before the date of filing of the application for registration


Case C-345/13 of 19 June 2014, Karen Millen Fashions Ltd vs Dunnes Stores and Dunnes Stores (Limerick) Ltd

The Court replies to questions referred by the Irish Supreme Court relating to the interpretation of Articles 6 and 85(2) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.

The Court’s replies are as follows:

1. Article 6 of Council Regulation (EC) No 6/2002 o is to be interpreted as meaning that, in order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually.

2. Article 85(2) of Regulation No 6/2002 must be interpreted as meaning that, in order for a Community design court to treat an unregistered Community design as valid, the right holder of that design is not required to prove that it has individual character within the meaning of Article 6 of that regulation, but need only indicate what constitutes the individual character of that design, that is to say, indicates what, in his view, are the element or elements of the design concerned which give it its individual character


4 ECTA News

4.1. ECTA round table session: brand owners life before and after IP Translator

On 15 September 2014, ECTA will hold a round table on “brand owners life before and after IP Translator”.

The round table will be formed by IP experts from ECTA, such as Anette Rasmussen (Vice-Chair of the ECTA-OHIM Link Committee and ECTA Council Member) and Max Oker-Blom (ECTA Secretary General); representatives from the industry, such as Tom Friis-Mikkelsen (Head of trade marks, designs and domain names, Leo Pharma A/S); and IP Officials from the Danish patent and trade mark office, such as Anne Rejhold Jørgensen (Director legal and international affairs, Danish patent and trade mark office).

Registration is open until 8 September 2014.

The programme of the round table is available HERE.

The registration form is available HERE.


Anti-counterfeiting, Domain Name, Trade Mark OHIM