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12-12 | 5 July 2012

Topics: ACTA Counterfeiting Domain Names EUIPO Convergence Programme Geographical Indications Plain Packaging TM View

ECTA’s 31st ANNUAL CONFERENCE, PALERMO, SICILY, 20-23 JUNE 2012

 

Farewell speech from outgoing ECTA President and Welcome speech from incoming new ECTA President are available HERE

 

Thank you again to all participants!

 

Please, share your views of the Conference by completing the ECTA Survey HERE!

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Table of Contents

1. LAW
1.1 Anti-counterfeiting
  • ACTA
  • Review of the EU Regulation on Customs Enforcement of Intellectual Property Rights
1.2 Trade Marks
  • Plain Packaging
1.3 Domain Names
  • ICANN-New gTLD Program: Technical Resources for Trade mark Clearinghouse Available to Prospective New gTLD Registry Operators
  • ".eu" dispute proceedings- Fee Reduction
1.4 Geographical Indications
  • Publication of the notice concerning the entry into force of the Agreement between the European Union and Georgia on protection of geographical indications of agricultural products and foodstuffs
  • Publication of the Commission Implementing Regulation (EU) No 579/2012 of 29 June 2012 amending Regulation (EC) No 607/2009 laying down certain detailed rules for the implementation of Council Regulation (EC) No 479/2008 as regards protected designations of origin and geographical indications, traditional terms, labelling and presentation of certain wine sector products
  • Publication of applications for products in the Official Journal of the European Union
2 OFFICE PRACTICE
2.1 OHIM
  • Class Headings - OHIM Communication
  • Class Headings - Convergence Programme
  • New Recordal form
  • Earthquakes in Italy - Impact on time limits
  • Progress in Cooperation Fund - Official communication of Lord Mogg
  • Mediation Service - ECTA position paper
2.2 WIPO
  • Fourth Session of the Working Group on the Development of the Lisbon System, Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Geneva, 12-16 December 2011
  • Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications,Twenty-Seventh Session, Geneva, 18-21 September 2012
  • Working Group on the Legal Development of the Hague System, Geneva, 5-7 November, 2012
2.3 National Offices
  • Hungary joins TMView

3. CASE LAW

Summaries and case law provided by

T-165/11 COLLEGE
The trade mark is not descriptive

T-293/10 (fig)
The representation of the mark applied for does not satisfy the requirements set out in Article 4 of Regulation No 207/2009

T-519/10 SEIKO vs. SEIKOH GIKEN (fig)
There is a likelihood of confusion

T-534/10 HALLOUMI vs. HELLIM
There is no likelihood of confusion

T-342/10 MEDINETTE vs. MESILETTE
The trade marks are similar

T-557/10 SILVIAN HEACH (fig) vs. H.EICH
The trade marks are different

T-357/10 KARUNA vs. CORONA (fig)
There is no likelihood of confusion

C-307/10 Chartered Institute of Patent Attorneys vs. Registrar of Trade Marks ("IP Translator" case)
Use of class headings of the Nice Classification for the purposes of the registration of trade marks


4 ECTA NEWS
  • NEW! Join ECTA Group on LinkedIn
  • EU-China IP Dialogue Preparatory Meeting, 5 July 2012, Brussels

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


1 Law

1.1 Anti-counterfeiting

ACTA

On 20 June, one day before the last vote at the International Trade Committee of the European Parliament, EU Trade Commissioner, Karel De Gucht, has expressed his strong support to ACTA.
He reminded that "ACTA is not an attack on our liberties, it is a defence of our livelihoods. This is because we do not have to modify any part of our internal legislation, the socalled acquis communautaire. What is legal today in the European Union, will remain legal tomorrow once ACTA is ratified. And what is illegal today will remain illegal
tomorrow".

The full speech of EU Trade Commissioner Karel De Gucht is available HERE

ECTA together with EUROCHAMBERS, ACT-Association of Commercial Televisions, SAA - Society of Audiovisual Authors, INTA, EPC, GESAC, IMPALA, MPA, IVF, AIM, Alliance, EURATEX, ICMP, IFPI, has contacted once again the Members of the European Parliament to draw their attention on the necessity to not reject ACTA before the CJCEU’s decision.

The letter may be found HERE

On 21 June the International Trade Committee voted down amendment seeking suspension of the final vote until the ruling of the Court of Justice, while amendments to grant consent were withdrawn. The David Martin’s report was adopted by 19 votes against 12.

ECTA together with other associations has immediately published a press release.

The press release is available HERE

More information may be found at www.actafacts.com

On 4 July the European Parliament officially rejected ACTA. The vote was staggeringly one-sided, with 478 votes against, 165 abstentions, and 39 in favour. The ’no’ vote essentially ends any chance of ACTA coming into effect in either the EU or its individual Member States. Yesterday’s vote was the first time that the European Parliament has exercised its Lisbon Treaty power to reject an international trade agreement.

Please, find HERE the official press release drafted by ECTA together with other associations.

Statement by EU Trade Commissioner Karel De Gucht on European Plenary Vote on ACTA can be found HERE


Review of the EU Regulation on Customs Enforcement of Intellectual Property Rights

ECTA Anti-Counterfeiting Committee, under the lead of its Chairman Marius Schneider, has prepared two position papers:

The posistion papers were sent to the European Commission (DG MARKT, DG TAXUD), OLAF and Members of the European Parliament.

The Anti-Counterfeiting Committee has received many positive comments from the European Officials.

On Monday 2 July 2012 the European Parliament discussed the report drafted by German Liberal Jürgen Creutzmann on the Commission’s proposal to strengthen customs enforcement of intellectual property rights.

It is worth to be reminded that in his report Creutzmann says:"Large parts of the economic growth and jobs in the EU depend on the effective enforcement of intellectual property rights (...) customs authorities are in a comparatively good position to enforce".

The new rules contained in the draft Regulation on customs enforcement of intellectual property are due to replace Regulation 1383/2003 which lays down procedures enabling customs authorities to stop suspected goods. The Commission proposal extends the scope of the rules to include illegal parallel trade (trade in goods not approved by the rights holder through unapproved channels) and lookalike trade marks. It also proposes that people receiving small postal consignments of counterfeit goods would be given the option of agreeing to their destruction without having to pay the costs of storage and destruction.

The Creutzmann report suggests small consignments to be defined as less than 3 items, weighing less than 2 kilos and contained in one package. It also wants the customer to have a say before the goods are destroyed. The EP report also expresses concern that the measures could hamper the legitimate trade in generic drugs between non-EU countries and stresses that intellectual property legislation applies only to goods being delivered in the EU and not to goods transiting through Europe. It also calls for a Commission analysis of the effectiveness of current customs measures aimed at combating trade in falsified medicines.

The group of the Progressive Alliance of Socialists & Democrats in the European Parliament has tabled an amendment to exclude patents and supplementary protection certificates from the scope of customs enforcement of intellectual property rights

On Tuesday, 3 July 2012 the European Parliament voted in plenary session and the report was adopted with 397 votes in favour, 259 against and 26 abstentions.

The text will now be discussed with the Council.


1.2 Trade Marks

Plain Packaging

The UK Health Department launched a public consultation on 16 April 2012 on the matter of plain packaging in tobacco industry (See Flash 07-12).

ECTA Law Committee, under the lead of its Chair, Fabio Angelini, has prepared ECTA’s answers to the questionnaire in order to defend the basic rights of trade marks use.

The answers sent to UK Health Department can be found HERE

In the context of such public consultation, ECTA together with ITMA and INTA organised a joint seminar on "The Role of Get-Up, Trade Dress and Packaging in the Protection and Enforcement of Brands”. The seminar took place on 29 June 2012 in London and was attended by more than 100 participants.

The report and pictures of this seminar can be found HERE

All PowerPoint presentations and speeches are available on the ECTA website for ECTA Members under the section PAST EVENTS.


1.3 Domain Names-Internet

ICANN-New gTLD Program: Technical Resources for Trade mark Clearinghouse Available to Prospective New gTLD Registry Operators

ICANN is currently establishing an open mailing list to further refine and complete the technical specification of the interface between the new gTLD Registries and the Trade mark Clearinghouse.

The Trade mark Clearinghouse is being designed to increase protections and reduce costs for trade mark holders and start-up registries alike. Given that new gTLD registry operators will need to establish systems to support the required Sunrise and Trademark Claims services, ICANN is inviting participation on a technically-focused mailing list.

The mailing list is open to any interested participants.
According to the established project plan, the model specification will need to be in place by 15 August 2012.

For more information, please check ICANN website


".eu" dispute proceedings- Fee Reduction

On 27 June 2012 the Czech Arbitration Court (CAC) and .eu registry (EURid) announced a special fee reduction to make the .eu Alternative Dispute Resolution (ADR) process even more accessible to the European public.

The cost of a basic proceeding is cut by 50% and the new fee is valid for six months from 1 July 2012.

"The Czech Arbitration Court is the out-of-court institution appointed to rule on .eu domain name proceedings. We hope that the new fee structure will help even more people resolve their disputes with respect to contested .eu domain name registrations," said Board Member of the Czech Arbitration Court, Petr Hostas.

EURid intends to involve the European Company Lawyers Association (ECLA) to help raise awareness about using .eu proceedings as a quick alternative to formal court hearings or litigation.

In the same spirit, the CAC plans to enhance the .eu ADR online platform and procedural routines.


1.4 Geographical Indications

Publication of the notice concerning the entry into force of the Agreement between the European Union and Georgia on protection of geographical indications of agricultural products and foodstuffs - Official Journal of the European Union, 23 June 2012

The Agreement between the European Union and Georgia on protection of geographical indications of agricultural products and foodstuffs, signed in Brussels on 14 July 2011, has entered into force on 1 April 2012.

The Notice may be found HERE

Publication of the Commission Implementing Regulation (EU) No 579/2012 of 29 June 2012 amending Regulation (EC) No 607/2009 laying down certain detailed rules for the implementation of Council Regulation (EC) No 479/2008 as regards protected designations of origin and geographical indications, traditional terms, labelling and presentation of certain wine sector products - Official Journal of the European Union, 30 June 2012

The full text is available HERE

Publication of applications for following products in the Official Journal of the European Union:

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


2 Office Practice

2.1 OHIM

Class Headings-OHIM Communication

Following the publication of the judgment of the European Court of Justice of 19 June 2012 in case C-307/10 – (“IP Translator”), OHIM has immediately repealed Communication Nº 4/03 and replaced it with Communication Nº 2/12 which entered into force on 21 June 2012.

The Office has also posted a press release with a detailed rundown of the main points of the Court’s findings and explanation of the steps OHIM will be taking to comply with the judgement.

The Communication N°2/12 may be found HERE

The press release is available HERE

After lively discussions on the interpretation of the judgment of the ECJ during its Annual Conference in Palermo, ECTA is considering carefully the matter before taking any position, as this will undoubtedly have significant consequences on Trade Mark owners and practitioners.


Class Headings - Convergence Programme

On 27 June 2012 experts from national IP offices, user associations and OHIM have reached an agreement on the principles of a new common practice on the treatment of Class Headings. The group was taking part in a planned series of meetings on Class Headings practice and the Harmonisation of Goods and Services in which they also considered the implications of the “IP Translator” judgment. Speaking prior to said agreement, Dimitris Botis, from OHIM’s legal affairs service, said delegates regarding the judgment as an opportunity to press ahead with the convergence that they had been working towards for over a year.

The convergence meeting on Class Headings set out the principles of a new common practice whereby a structure of “class scopes” will be used which, ideally, represent the content of a given class at a given time. The class scopes are derived from the Taxonomy of the harmonised database on goods and services and all terms used in the class scopes will be classifiable. The principles of the new common practice will be proposed to OHIM’s Administrative Board and Budget Committee in November 2012.


New Recordal form

On 21 June 2012 OHIM has revised the Recordal Application Form and its accompanying notes in order to clarify instructions and make the use easier.

The separation of change of owner or representative data, clarification of representation details in cases of transfers and the insertion of division as a separate item were revised.

More information may be found HERE


Earthquakes in Italy - Impact on time limits

Italy has been hit by several earthquakes in May 2012.

As a consequence of these earthquakes considerable human and material loss has been suffered in the regions that were affected.

In this context the President of the Office, in decision EX-12-2 of 29 June 2012 has extended the time limits for Italian natural persons, companies and professional representatives before the Office in order to be able to comply with them.

This means that all time limits before the Office expiring between 20 and 31 May 2012 will be extended until the 30 June.


Progress in Cooperation Fund - Official communication of Lord MOGG

The full communication may be found HERE


Mediation Service - ECTA Position Paper

During ECTA Annual Conference in Palermo, the new mediation service offered by OHIM (See Flash 19-11 was discussed.

Following the discussions, ECTA OHIM Link Committee has finalised ECTA’s Position Paper on the subject.

Although it welcomes the initiative, in order to improve the system, ECTA tried to identify the reasons why this service has not yet been used (timing, costs, confidentiality, independence and services).

The document may be found HERE


2.2 WIPO

Fourth Session of the Working Group on the Development of the Lisbon System (Appellations of Origin), Geneva, 12-16 December 2011

The Report may be found HERE


Standing Committee on the Law of Trademarks, Industrial Designs
and Geographical Indications, Twenty-Seventh Session, Geneva, 18-21 September 2012

Working Documents may be found HERE

ECTA will be represented by Antonio Andrade, Chairman of ECTA Design Committee.


Working Group on the Legal Development of the Hague System, Geneva, 5-7 November, 2012

Working Documents may be found HERE

ECTA will be represented by Keith Hodkinson, Member of the ECTA Design Committee.


2.3 National Offices

Hungary joins TMView

On 29 June 2012, the trade marks from the Hungarian Intellectual Property Office have now been added to the TMview search tool which provides free access to trade mark applications and registrations from a number of leading trade mark offices.

For more information please see HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-165/11 of 12 June 2012, Stichting Regionaal Opleidingencentrum van Amsterdam vs. OHIM (contested decision: R 508/2010-4 of 12 January 2011)

Contested Trade mark:
COLLEGE

Classes: 39, 43

Decision: The trade mark is not descriptive. The applicant has failed to identify either the specific image that the relevant public would be likely to retain of the contested trade mark or the link between that image and the relevant services (para. 20 to 37).

The Board of Appeal’s decision is upheld.


Case T-293/10 of 14 June 2012, Seven Towns Ltd vs. OHIM (contested decision: R 1475/2009-1 of 29 April 2010)

Trade mark applied for:


Class: 28

Decision: The mark in respect of which registration was applied for is, according to the information provided by the applicant, a "colour mark per se"’. The applicant also provided the following description:
"Six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs characterised by: (i) any two adjacent surfaces having different colours and (ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments" (para. 12).

The sign as so defined is not a colour mark per se but a three-dimensional mark, or figurative mark, which corresponds to the external appearance of a particular object with a specific form, that is to say a cube covered in squares with a particular arrangement of colours. Even if the description had been clear and easily intelligible – which it was not in the present case – it would in any event have contained an inherent contradiction so far as concerns the true nature of the sign at issue (para. 66).

The representation of the mark applied for does not satisfy the requirements set out in Article 4 of Regulation No 207/2009 (para. 67).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-519/10 of 13 June 2012, Kabushiki Kaisha Seikoh Giken vs. OHIM – Seiko Holdings Kabushiki Kaisha (contested decision: R 1553/2009-1 of 12 August 2010)

Trade marks:

SEIKO
Earlier trade mark Contested trade mark

Classes: 3,7,9

Decision: The trade marks are visually (para. 27 to 29) and aurally (para. 30 to 32) remotely similar. Since the goods are identical, there is a likelihood of confusion (para. 40).

The Board of Appeal’s decision is upheld.


Case T-534/10 of 13 June 2012, Organismos Kypriakis Galaktomikis Viomichanias vs. OHIM – Garmo AG (contested decision: R 1497/2009-4 of 20 September 2010)

Trade marks:

HALLOUMI HELLIM
Earlier trade mark Trade mark applied for

Class: 29

Decision: The trade marks are visually (para. 23 to 24) and aurally (para. 25 to 35) different.

The Turkish translation of the Greek word "halloumi" is "hellim". From that perspective, the average consumer in Cyprus, where both Greek and Turkish are official languages, will understand that the words "halloumi" or "hellim" both refer to the same specialty cheese from Cyprus. Consequently, there is some conceptual similarity (para. 36 to 42).

There cannot be any likelihood of confusion since the existence of a conceptual similarity between the signs at issue is not, in the case of an earlier descriptive mark, sufficient to give rise to a presumption of such a likelihood of confusion (para. 54).

The Board of Appeal’s decision is upheld.


Case T-342/10 of 13 June 2012, Paul Hartmann AG vs. OHIM – Mölnlycke Health Care AB (contested decision: R 1222/2009-2 of 20 May 2010)

Trade marks:

MEDINETTE MESILETTE
Earlier trade mark Trade mark applied for

Classes: 5, 25

Decision: The trade marks are visually and aurally similar (para. 28 to 31). They are conceptually different, but the difference is not sufficient to counteract the visual and aural similarities (para. 32 to 37). Overall, they have an average degree of similarity (para. 38).

The Board of Appeal’s decision is annulled.


Case T-557/10 of 19 June 2012, H. Eich Srl vs. OHIM – Arav Holdings Srl (contested decision: R 1411/2009-1 of 9 September 2010)

Trade marks:


H.EICH
Earlier trade mark Trade mark applied for

Classes: 18, 25

Decision: The trade marks are visually different (para. 41 to 54). There is a slight aural similarity (para. 55 to 60) and conceptually, there is no similarity (para. 61 to 69). Overall, the trade marks are different (para.70).

The Board of Appeal’s decision is upheld.


Case T-357/10 of 20 June 2012, Kraft Foods Schweiz Holding GmbH vs. OHIM – Compania Nacional de Chocolates, SA (contested decision: R 696/2009-4 of 29 June 2010)

Trade marks:

KARUNA
Earlier trade mark Trade mark applied for

Class: 30

Decision: The trade marks are visually different (para. 30 to 31). There is a slight aural similarity (para. 32) and they are conceptually different (para. 33 to 39). The differences between the trade marks are sufficient to exclude any likelihood of confusion (para.41).

The Board of Appeal’s decision is upheld.


COURT OF JUSTICE

Case C-307/10 of 19 June 2012, Chartered Institute of Patent Attorneys vs. Registrar of Trade Marks ("IP Translator case")

The Court replies to questions referred by Person Appointed by the Lord
Chancellor under Section 76 of The Trade Marks Act relating to the use of class headings of the Nice Classification for the purposes of the registration of trade marks.

The Court’s replies are as follows:

1. 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 it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.

2. Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Classification referred to in Article 1 of the Nice Agreement to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise.

3. An applicant for a national trade mark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.


4 ECTA News

NEW! Join ECTA Group on LinkedIn

Please, join ECTA Group on LinkedIn HERE, managed from now on by Ewa Grabiak, ECTA Legal Coordinator.

ECTA thanks Alfred Strahlberg, Member of the ECTA Publications Committee for having launched and administred this group for several years.


EU-China IP Dialogue Preparatory Meeting, 5 July 2012, Brussels

The next meeting of the EU-China IP Dialogue is scheduled on 18 September 2012 in Brussels. In order to prepare this event ECTA has been invited to a preparatory meeting on Thursday 5 July 2012.

ECTA Legal Coordinator, Ewa Grabiak, attended the meeting.


Anti-counterfeiting, Domain Name, Enforcement, EU-China IP Dialogue, Geographical Indications, Trade Mark National Office Practice, OHIM, WIPO