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12-14 | 16 July 2014

Topics: Counterfeiting Domain Names EU Legislative Package Plain Packaging

Don’t forget to register for the ECTA Round Table session: brand owners 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: on-going discussions at the European Council
  • Plain packaging of tobacco products: France
1.2 Domain Names
  • New ICANN policy implementation
1.3 Anti-Counterfeiting
  • The European Commission reinforces the protection of intellectual property rights
  • 70 000 counterfeit goods seized in EU customs operation
  • EU customs action plan to combat intellectual property infringements: Second EU customs - right holders and stakeholders meeting
2 OFFICE PRACTICE
2.1 WIPO
  • New e-subsequent designation tool
2.2 OHIM
  • António Campinos’s term as President of OHIM extended
  • Chinese delegation: visit to OHIM
  • IP executive week
3 CASE LAW

Summaries and case law provided by

T-372/11 BASIC (fig) vs. basic (fig)
There is a likelihood of confusion

T-541/11 Fundaçao Calouste Gulbenkian vs GULBENKIAN
No evidence of the existence of a well-known trade mark or a company name

T-480/13 You View (fig) vs. YouView+
Facts and evidence submitted or produced late

T-239/12 CERCON vs. ZIECON (fig)
There is a likelihood of confusion

T-1/13 TUDOR GLAMOUR vs. GLAMOUR
There is a likelihood of confusion

T-345/13 Cpi (fig) vs. CPI (fig)
No genuine use – No use in the course of trade

4 ECTA NEWS
  • ECTA Press Publication: “Stopping fakes in their tracks: past, present and future of IP infringements and goods in transit”, Intellectual Property Magazine
  • 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: on-going discussions at the European Council

On 14 July 2014, the Working Party on intellectual property of the European Council discussed the latest EU Presidency compromise proposals for a trade mark legislative reform.

The new EU Presidency compromise proposal for a trade mark Regulation is available HERE

The new EU Presidency compromise proposal for a trade mark Directive is available HERE


1.1.2. Plain packaging of tobacco products: France

France is also considering, following Ireland and the UK, to introduce plain packaging legislation for tobacco products.

Further information is available HERE


1.2 Domain Names

1.2.1. New ICANN policy implementation

ICANN has announced the implementation of two new policy initiatives.
These applications, namely the additional WHOIS information policy and amendments to the Inter-Registrar Transfer Policy related to domain name unlocking, are applicable to ICANN accredited registrars and registry operations under contract with ICANN.

Further information is available HERE


1.3 Anti - Counterfeiting

1.3.1. The European Commission reinforces the protection of intellectual property rights

On 1 July 2014, the European Commission adopted two communications to address EU intellectual property infringements and a strategy for the protection and enforcement of intellectual property rights.

Further information is available HERE


1.3.2. 70 000 counterfeit goods seized in EU customs operation

Approximately 70 000 counterfeit goods have been seized during an EU joint customs operation named ERMIS.

The objective of the operation was to identify fake products within the postal and courier mail traffic.

The operation has been carried out by the Greek Customs Administration and the European Anti-Fraud Office.

Further information is available HERE


1.3.3. EU customs action plan to combat intellectual property 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 intellectual property rights 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. New e-subsequent designation tool

A new web based tool, “e-subsequent designation”, is available now to respond to the needs of users of the Madrid System.

A video tutorial is offered by WIPO presenting the “e-subsequent designation”. The video tutorial is available HERE.

The information notice is available HERE.


2.2 OHIM

2.2.1. António Campinos’s term as President of OHIM extended

President António Campinos’s term of office has been extended for five years by the Council of the European Union.

Further information is available HERE


2.2.2. Chinese delegation: visit to OHIM

A delegation from the Chinese Supreme People’s Procuratorate visited OHIM on 9 July 2014, in relation to a current study of criminal intellectual property enforcement.

Further information is available HERE.


2.2.3. IP executive week

The OHIM, in collaboration with the EPO, organized an “IP executive week” open to participants at a management level from EU and non-EU national offices.

Bárbara Díaz Alaminos, ECTA legal coordinator, attended the event on behalf of ECTA.

Further information is available HERE

A report will be available for ECTA members.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On relative grounds for refusal

Case T-372/11 of 26 June 2014, Basic AG Lebensmittelhandel vs. OHIM – Trepsol YPF, SA (contested decision: R-1440/2010-1 of 31 March 2011)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 35,39

Decision:
Retail and wholesale services in Class 35 are similar to distribution services in Class 39 (para. 37 to 57).

There is a likelihood of confusion (para. 59 to 60).

The Board of Appeal’s decision is upheld.


Case T-541/11 of 26 June 2014, Fundaçao Calouste Gulbenkian vs. OHIM – Micael Gulbenkian (contested decision: R-1436/2010-2 of 15 July 2011)

Trade marks:

Fundaçao Calouste Gulbenkian GULBENKIAN
Earlier trade mark Trade mark applied for

Classes: 4,33,35,36,37,41,42,44

Decision:
The applicant has not, as it was required to do, in view of the way in which it defined the earlier rights on which it based its opposition, put forward any argument or any evidence already submitted in the course of the proceedings before OHIM that makes it possible to prove the existence of the well-known mark or the use of the company name in respect of technical and management services related to the oil industry (para, 43).

The Board of Appeal’s decision is upheld.


Case T-480/13 of 1 July 2014, You-View.tv vs. OHIM – YouView TV Ltd (contested decision: R-2112/2012-4 of 18 June 2013)

Trade marks:


YouView+
Earlier trade mark Trade mark applied for

Classes: 9,16,38,41,42

Decision:
It follows from the wording of Article 76(2) of Regulation No 207/2009, that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late (para. 24).

Rule 20(1) of Regulation No 2868/95 does not preclude the Board of Appeal from using its discretion under Article 76(2) of Regulation No 207/2009 in order to take account of facts and evidence submitted or produced late (para. 25)

The Board of Appeal’s decision is annulled.


Case T-239/12 of 1 July 2014, Jyoti Ceramic Industries PVT. Ltd vs. OHIM – DeguDent GmbH (contested decision: R-2546/2010-1 of 2 March 2012)

Trade marks:

CERCON
Earlier trade mark Trade mark applied for

Classes: 5,10,40

Decision:
The trade marks are visually (para. 38 to 50), aurally (para. 51 to 62) and conceptually (para, 63 to 68) similar.

There is a likelihood of confusion (para. 68 to 80).

The Board of Appeal’s decision is upheld.


Case T-1/13 of 4 July 2014, Advance Magazine Publishers, Inc. vs. OHIM – Montres Tudor SA (contested decision: R-213/2012-2 of 10 October 2012)

Trade marks:

TUDOR GLAMOUR GLAMOUR
Earlier trade mark Trade mark applied for

Class: 14

Decision:
The trade marks are visually and aurally (para, 30 to 31) similar.

The part of the relevant public with a command of English and an in-depth knowledge of English history will perceive the marks at issue as conceptually different (para. 32).

The word tudor has no specific meaning for the non-negligible part of the relevant public that has only some knowledge of English, but no knowledge of English history. By contrast, the word glamour has a meaning for that part of the relevant public since it is an English word that is widely used. Consequently, with regard to that part of the relevant public, the word ‘glamour’, which is common to the signs at issue, may be held to confer some degree of conceptual similarity on those signs (para. 33).
Lastly, neither the word tudor nor the word glamour will have any meaning for the non-negligible part of the relevant public that has no knowledge of English or English history. Consequently, no conceptual comparison of the signs at issue is possible in respect of that part of the relevant public (para, 34).
Overall, the marks are similar to a significant degree (para. 37).

There is a likelihood of confusion (para. 39 to 49).

The Board of Appeal’s decision is upheld.


Case T-345/13 of 4 July 2014, Construccion, Promociones e Instalaciones, SA vs. OHIM – Copisa Projectos y Mantenimientes Industriales, SA (contested decision: R-1935/2012-2 of 10 April 2013)

Trade marks:



Earlier trade mark Trade mark applied for

Construccion, Promociones e Instalaciones, SA

Earlier company name

Class: 37

Decision:

The opponent has failed to demonstrate that its trade mark has been genuinely used (para. 28 to 36). He has also failed to demonstrate that its company name has been used in the course of trade within the meaning of Article 8 (4) of Regulation 207/2009 (para. 48 to 51).

The Board of Appeal’s decision is upheld.


4 ECTA News

4.1. ECTA Press Publication: “Stopping fakes in their tracks: past, present and future of IP infringements and goods in transit”, Intellectual Property Magazine

The article “Stopping fakes in their tracks: past, present and future of IP infringements and goods in transit”, co-authored by Max Oker-Blom (ECTA Secretary General) and Bárbara Díaz Alaminos (ECTA Legal Coordinator), was published in the May issue of the Intellectual Property Magazine.

The article is available HERE


4.2. 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


France N/A Trade Mark Trade Mark