Join us! Member Area

12-13 | 1 August 2013

Topics: Counterfeiting EU Legislative Package

Reminder to Council and Commitee Members:

 

Registrations open for the 66th Council Meeting St. Julian’s, Malta 17-19 October 2013

 

Register HERE

Enjoy pictures of the 32rd ECTA Conference HERE and Conference Report

Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • 1st EU Customs – right holders and stakeholders meeting in the framework of the EU Customs Action Plan to combat IPR infringements for the years 2013 - 2017- Report
  • EU-US Transatlantic Trade and Investment Partnership - Latest developments
1.2 Trade Marks
  • Reform of the European CTM system - Opinion of the European Economic and Social Committee
2 OFFICE PRACTICE
2.1 OHIM
  • Appointment of the new President of OHIM Boards of Appeal
  • OHIM User Satisfaction Survey results
  • 10th Liaison Meeting on Trade Marks, 7-8 October 2013, Alicante
2.2 WIPO
  • Accession by the Republic of Armenia to the Singapore Treaty on the Law of Trade Marks
2.3 National Offices
  • Slovakia: Electronic filing of trade mark applications
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-248/11 of 27 June 2013, International Engine Intellectual Property Company, LLC vs. OHIM
The trade mark is devoid of any distinctive character

T-236/12 of 3 July 2013, Airbus SAS vs. OHIM
The trade mark is descriptive

T-3/12 of 10 July 2013, Heinrich Kreyenberg vs. OHIM – European Commission
The trade mark is contrary to Article 7 (1) (i) of Regulation No 207/2009

T-208/12 of 11 July 2013, Think Schuhwerk GmbH vs. OHIM
The trade mark is devoid of any distinctive character

T-321/10 of 11 July 2013, SA.PAR. Srl vs. OHIM – Salini Costruttori SpA
The trade mark has been filed in bad faith

T-505/11 of 25 June 2013, Aldi GmbH & Co. KG vs. OHIM – Dialcos SpA
There is a likelihood of confusion

T-89/12 of 27 June 2013, Repsol YPF, SA vs. OHIM – Ajuntament de Roses
There is a likelihood of confusion

T-367/12 of 27 June 2013, MOL Magyar Olaj-és Gazipari Nyrt vs. OHIM – Banco Bilbao Vizcaya Argentaria, SA
There is a likelihood of confusion

T-205/12 of 3 July 2013, GRE Grand River Enterprises Deutschland GmbH vs. OHIM – Villiger Söhne GmbH
There is a likelihood of confusion

T-142/12 of 11 July 2013, Aventis Pharmaceuticals, Inc. vs. OHIM – Fasel Srl
There is a likelihood of confusion

T-197/12 of 11 July 2013, Metropolis Immobiliarias y Restauraciones, SL vs. OHIM – MIP Metro Group Intellectual Property GmbH & Co. KG
The services are different

COURT OF JUSTICE

C-252/12 of 18 July 2013, Specsavers International Healthcare Ltd e.o. vs Asda Stores Ltd
Genuine use - Assessment of the likelihood of confusion or unfair advantage

C-621/11P of 18 July 2013, New Yorker SHK Jeans GmbH & Co. KG vs. OHIM – Vallis K.-Vallis A. & Co. OE
Submission of proof of use after the expiry of the time limit set by OHIM

4 ECTA NEWS
  • 32rd ECTA Annual Conference in Bucharest 2013 - Conference Report

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

1 Law

1.1 Anti-counterfeiting

1st EU Customs – right holders and stakeholders meeting in the framework of the EU Customs Action Plan to combat IPR infringements for the years 2013 - 2017- Report

The meeting was dedicated to inform stakeholders about the upcoming changes that will be introduced by the Regulation that will replace Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights (See ECTA Flash 08-13).

Olivier Vrins, Member of ECTA Council and of ECTA Anti-counterfeiting Committee, attended the meeting on behalf of ECTA.

His report may be found HERE

EU-US Transatlantic Trade and Investment Partnership - Latest developments

On 24 July the European Commission revealed the composition of the negotiating team.

Negotiations are led by the Directorate General (DG) for Trade under the leadership of the Chief Negotiator, Ignacio Garcia Bercero, with the support of experts from other parts of the Commission. All in all, nine other Directorates General, as well as the Secretariat General, are involved in the negotiations. Those include: DG Internal Market, DG Agriculture and Rural Development, DG Enterprise and Industry, DG Taxation and Customs Union, DG Environment, DG Climate, DG Energy, DG Communications Networks, Content and Technology, and DG Competition.}

More information may be found HERE

1.2 Trade Marks

Reform of the European CTM system - Opinion of the European Economic and Social Committee

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


2 Office Practice

2.1 OHIM

Appointment of the new President of OHIM Boards of Appeal

On 22 July 2013 the Council of the European Union appointed Théophile Margellos as President of the Boards of Appeal of OHIM.

Théophile Margellos is currently serving as Chairperson of the First Board (Trade Marks) and Third Board (Designs) and is the coordinator of the OHIM Mediation team.

Mr Margellos will take up his post in October 2013.

Press Release is available HERE

OHIM User Satisfaction Survey results

The results of OHIM’s sixth User Satisfaction Survey were published on the Office’s website on 25 July 2013.

The survey aims to measure the perceived level of quality of the services that OHIM offers its users and takes into account over 1.200 responses received.

The perception of the various core business areas all showed an increase compared to last year, with some very high scores in some areas, such as register management and the Boards of Appeal.

More information may be found HERE

10th Liaison Meeting on Trade Marks, 7-8 October 2013, Alicante

The meeting will take place on 7 and 8 October in Alicante.

Tobias Dolde, Member of ECTA Harmonization Commitee, will attend the meeting on behalf of ECTA.

Draft agenda is available under section Law Commitee - Working Documents.

2.2 WIPO

Accession by the Republic of Armenia to the Singapore Treaty on the Law of Trade Marks

On 17 June 2013 the Government of the Republic of Armenia notified the deposit of its instrument of accession to the Singapore Treaty on the Law of Trade Marks, adopted at Singapore on 27 March 2006. In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Republic of Armenia, on 17 September 2013.

The Notification may be found HERE

2.3 National Offices

Slovakia: Electronic filing of trade mark applications

From 1 July 2013 the Industrial Property Office of the Slovak Republic provides its clients a new service - electronic filing of trade mark applications.

More information may be found HERE

The service is available HERE by clicking on TM eFiling.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-248/11 of 27 June 2013, International Engine Intellectual Property Company, LLC vs. OHIM (contested decision : R 2310/2010-2 of 15 February 2011)

Trade mark applied for:

PURE POWER

Class: 12

Decision: The trade mark is devoid of any distinctive character.
Considered as a whole, the word sign PURE POWER may immediately be perceived by the relevant public as capable of meaning ‘sheer’ energy for motion’ or ‘energy that is free from pollutants’. The expression ‘pure power’ may even convey those two meanings simultaneously, in so far as engines or engine parts may produce an energy that is free from pollutants while enabling the vehicle nevertheless to travel at high speeds (para. 23).

The Board of Appeal’s decision is upheld.


Case T-236/12 of 3 July 2013, Airbus SAS vs. OHIM (contested decision : R 1387/2011-1 of 23 February 2012)

Trade mark applied for:

NEO

Classes: 7,12

Decision: The trade mark is descriptive.

The relevant consumer will deduce from the term itself, without undertaking any complex thought processes, that it refers to something new, modern or in line with the latest technological developments. The sign is simply laudatory and intended to highlight the positive qualities of the goods covered by the application for registration (para. 37).

The Board of Appeal’s decision is upheld.


Case T-3/12 of 10 July 2013, Heinrich Kreyenberg vs. OHIM – European Commission (contested decision : R 1804/2010-2 of 5 October 2011)

Trade marks:



Earlier signs Contested Trade mark

Classes: 9,16,35,36,39,41,42,44,45

Decision: The trade mark is contrary to Article 7 (1) (i) of Regulation No 207/2009.
It is clear from the overall review of the mark in question as it suggests in the public mind, a link between the holder and the European Union (para. 108).

The Board of Appeal’s decision is upheld.


Case T-208/12 of 11 July 2013, Think Schuhwerk GmbH vs. OHIM (contested decision : R 1552/2011-1 of 23 February 2012)

Trade mark applied for:


Class: 25

Decision: The trade mark is devoid of any distinctive character.

The use of red ends on another color shoelaces affects only a small proportion of the public to these shoes. The consumer sees a variant of the design of the shoe (para. 40).


Case T-321/10 of 11 July 2013, SA.PAR. Srl vs. OHIM – Salini Costruttori SpA (contested decision : R 219/2009-1 of 21 April 2010)

Contested Trade mark:

GRUPPO SALINI

Classes: 36,37,42

Decision: The trade mark was filed in bad faith, in violation of the principles of loyalty and honesty, in the circumstances of this case, it was for the applicant to meet these requirements with regard to the intervener (para. 44).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-505/11 of 25 June 2013, Aldi GmbH & Co. KG vs. OHIM – Dialcos SpA (contested decision : R 1097/2010-2 of 5 July 2011)

Trade marks:

ALDI
Earlier trade mark Trade mark applied for

Classes: 29,30

Decision: The trade marks are visually (para. 69 to 74) and aurally (para. 75 to 77) similar.

There is a likelihood of confusion (para. 90).

The Board of Appeal’s decision is annuled


Case T-89/12 of 27 June 2013, Repsol YPF, SA vs. OHIM – Ajuntament de Roses (contested decision : R 1815/2010-2 of 5 December 2011)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 25,35

Decision: The trade marks are visually similar (para. 30 to 39) and aurally identical (para. 40 to 41).

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

The Board of Appeal’s decision is upheld.


Case T-367/12 of 27 June 2013, MOL Magyar Olaj-és Gazipari Nyrt vs. OHIM – Banco Bilbao Vizcaya Argentaria, SA (contested decision : R 2532/2011-2 of 30 May 2012)

Trade marks:

BLUE, BLUE BBVA, TARJETA BLUEBBVA MOL Blue Card
Earlier trade mark Trade mark applied for

Classes: 35,36

Decision: The trade marks are visually and aurally (para. 44 to 59) similar.

There is a likelihood of confusion (para. 62).

The Board of Appeal’s decision is upheld.


Case T-205/12 of 3 July 2013, GRE Grand River Enterprises Deutschland GmbH vs. OHIM – Villiger Söhne GmbH (contested decision : R 387/2011-1 of 1 March 2013)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 34

Decision: The trade marks are visually (para. 38 to 40), aurally (para. 41 to 45) and conceptually (para. 46 to 52) similar.

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

The Board of Appeal’s decision is upheld.


Case T-142/12 of 11 July 2013, Aventis Pharmaceuticals, Inc. vs. OHIM – Fasel Srl (contested decision : R 2478/2010-1 of 26 January 2012)

Trade marks:

SCULPTRA
Earlier trade mark Trade mark applied for

Class: 10

Decision: The trade marks are visually (para. 32 to 38), aurally (para. 39 to 45) and conceptually (para. 46 to 49) similar.

There is a likelihood of confusion (para. 56).

The Board of Appeal’s decision is annuled.


Case T-197/12 of 11 July 2013, Metropolis Immobiliarias y Restauraciones, SL vs. OHIM – MIP Metro Group Intellectual Property GmbH & Co. KG (contested decision : R 2440/2010-1 of 1 March 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 36

Decision: Financial services are not similar to real estate services.

Even if financial services are essential or important for the use of real estate, said financial services are not to the point that consumers ascribe responsibility for the financial services and real estate services to the same company (para. 50).


COURT OF JUSTICE

Case C-252/12 of 18 July 2013, Specsavers International Healthcare Ltd e.o. vs Asda Stores Ltd

The Court replies to questions referred by the Court of Appeal (England and Wales) relating to the notion of genuine use and the assessment of the likelihood of confusion or unfair advantage.

The Court’s replies are as follows :

1. Article 15(1) and Article 51(1)(a) of Council Regulation (EC) No 207/2009 must be interpreted as meaning that the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.

2. Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.

3. Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that the fact that the third party making use of a sign which allegedly infringes the registered trade mark is itself associated, in the mind of a significant portion of the public, with the colour or particular combination of colours which it uses for the representation of that sign is relevant to the global assessment of the likelihood of confusion and unfair advantage for the
purposes of that provision.


Case C-621/11P of 18 July 2013, New Yorker SHK Jeans GmbH & Co. KG vs. OHIM – Vallis K.-Vallis A. & Co. OE (contested decision : T-415/09 of 29 September 2011)

Decision: Where evidence considered relevant for the purposes of establishing use of the mark was produced within the time limit set by OHIM under Rule 22(2) of Regulation No 2868/95, the submission of additional proof of such use remains possible after the expiry of that time limit. In such a case, OHIM is in
no way prohibited from taking account of evidence submitted out of time through use of the discretion conferred on it by Article 76(2) of Regulation No 207/2009 (para. 30).

The General Court’s decision is upheld.


4 ECTA News

32rd ECTA Annual Conference in Bucharest 2013 - Conference Report

The Conference Report prepared by ECTA Legal Coordinator Ewa Grabiak is available HERE


Slovakia Anti-counterfeiting, Trade Mark National Office Practice, OHIM, WIPO