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13-12 | 27 July 2012

Topics: ACTA Counterfeiting EU - Dialogue with Third Countries EU Observatory Hague System Plain Packaging

SAVE THE DATE FOR IP SUMMIT ON TRADE MARKS, 10-12 DECEMBER 2012, ALICANTE

The programme and other important information may be found HERE

As ECTA Member benefit from the special rate of 999 euros until December!


SAVE THE DATE FOR ECTA ROUNDTABLE DURING ECTA AUTUMN MEETING ON 12 OCTOBER 2012, AMSTERDAM - "How does congestion and suggested measures against congestion affect your rights and your daily practice?

The programme will be available soon


Table of Contents

1. LAW
1.1 Anti-counterfeiting
  • ACTA
  • EU-China IP Dialogue Preparatory Meeting
1.2 Trade Marks
  • Plain Packaging - Extention of public consultation’s deadline in UK
1.3 Designs
  • Public consultation in UK on the designs legal framework
1.4 Geographical Indications
  • Public Consultation on Geographical Indications from Central American countries
  • Publication of applications pursuant to Article 6(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs
2 OFFICE PRACTICE
2.1 OHIM
  • EU Observatory - Update
  • Croatia - New Member of EuroClass version 2
  • Maintenance of OHIM Servers
  • New amendments in the Manual of proceedings before the OHIM
  • Minutes of the 19th OAMI Users’ Group Meeting
  • OHIM 8th Liaison Meeting on Trade Marks – 10 & 11 October 2012, Alicante
  • OHIM 11th Liaison Meeting on Designs, 19 & 20 November 2012, Alicante
2.2 WIPO
  • 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
  • Information and Clarifications Concerning WIPO’s Technical Assistance Programs
2.3 National Offices
  • France, Germany - Official Notices regarding the consequences of the earthquake in Italy
  • Hungary - Memorandum of Understanding with the Intellectual Property Office of Montenegro
  • United Kingdom - Changes to Trade Mark Services

3. CASE LAW

Summaries and case law provided by

T-209/10 Deutscher Ring Sachversicherungs-AG
The trade mark is not descriptive.

T-559/10 (fig)
The trade mark is descriptive.

T-344/09 COSMO,COSMOPOLITAN, COSMOTEST, COSMOPOLITAN TELEVISION v. COSMOBELLEZA
The trade marks are different.

T-523/10 (fig.) v. (fig.)
The applicant has failed to prove the existence, the validity or the scope
of the protection of the earlier trade marks.

T-133/09 BASILE v. (fig.)
There is a likelihood of confusion.

T-60/10 RSC-ROYAL SHAKESPEARE COMPANY v. ROYAL SHAKESPEARE
The contested trade mark would take unfair advantage of the repute of the earlier trade mark.

T-135/11 CLOROX v. CLORALEX
There is likelihood of confusion.

T-517/10 (fig.) v. HYPOCHOL
There is no likelihood of confusion.

C-306/11P (fig.) v. (fig.)
The General Court did not err in law when assessing the similarity between the trademarks and the existence of a likelihood of confusion.


4 ECTA NEWS
  • ECTA Annual Conference in Palermo, 20 - 22 June - Report
  • European IPR Helpdesk - Steakholders Meeting, 25 July 2012, Brussels
  • Intellectual Property and Innovation Summit, 10 September 2012, Brussels
  • 26th MARQUES Annual Conference, 18-21 September, Athens
  • 2nd HEC Paris Workshop on Regulation: Regulating Lifestyle Risks in Europe - The Case of Alcohol, Tobacco, Unhealthy Diets & Gambling, 20-21 September 2012, Paris
  • GRUR Annual Meeting, 26-29 September 2012, Frankfurt
  • IP Summit, 10-11 December 2012, Alicante

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

1 Law

1.1 Anti-counterfeiting

ACTA

Despite the rejection of ACTA by the European Parliament on 4 July (See Flash 12-12), Mexico’s ambassador in Japan, Claude Heller, signed ACTA on 11 July 2012.

As he stated “Mexico wants to send the message that we need to protect the copyrights of intellectual and artistic property, brands and inventions”.

The agreement still has to be ratified by the Mexican Senate.

On 21 July, the executive summary of the Opinion of the European Data Protection Supervisor (EDPS) on the proposal for a Council decision on the conclusion of the ACTA between the European Union and its Member States, Australia, Canada, Japan, the Republic of Korea, the United Mexican States, the Kingdom of Morocco, New Zealand, the Republic of Singapore, the Swiss Confederation and the United States of America of 24 April 2012, was published in the Official Journal of European Union.

The summary may be found HERE

The full text of the Opinion is available in English, French and German, at the EDPS’s website.

In that difficult context, the European Commission (DG Trade) has launched the public consultation on the future of EU-US trade and economic relations.
This public consultation is intended to enable the gathering of detailed views relating to the future trade and economic relationship between the European Union and the United States.

Question 8.1 relates to the problems of protection and enforcement of Intellectual Property Rights and Question 8.3 to those relating to Geographical Indications and trade marks.

More information may be found HERE

The Questionnaire may be found HERE

The deadline to submit the answers is 27 September 2012


EU-China IP Dialogue Preparatory Meeting, 5 July 2012

On 5 July, the EU-China IP Dialogue Preparatory Meeting took place in Brussels, in order to allow the representatives of European stakeholders to compose the Agenda of Meetings with Chinese authorities in September. Ewa Grabiak, ECTA Legal Coordinator, attended the meeting on behalf of ECTA.

Benoit LORY from the European Commission explained the global context of the meeting. The meeting in the frame of EU-China IP Dialogue takes place on an annual basis and concerns the legislative and statutory framework. In addition, the workshops are organised between 11 and 14 September in order to allow treating more substantive matters. The topics will concern mainly likelihood of confusion and problem of interpretation of infringement in the context of the TRIPS agreement.

This year, the EU-China Dialogue Meeting is scheduled on 18 September in Brussels.

This meeting will take place on the official level, between European and Chinese authorities.

On 19 September the representatives of European and Chinese industry will have the opportunity to meet and enhance their cooperation.

The associations are invited to participate in the meeting and make presentations in the field of trade marks, designs, copyright and patents.

ECTA will be represented by Marius Schneider, Chairman of ECTA Anti-Counterfeiting Committee, and Olivier Vrins and Michele Ferrante, Members of this Committee.


1.2 Trade Marks

Plain Packaging - Extention of public consultation’s deadline in UK

On 5 July the British Public Health Minister Anne Milton confirmed that the deadline to submit the responses to the public consultation is extended untill 10 August 2012.

The official statement is available HERE

ECTA Law Committee has already submitted ECTA Position Paper to the UK Department of Health.

The document may be found HERE


1.3 Designs

Public consultation in UK on the designs legal framework

On 24 July, the UK Government launched the consultation in order to enhance the UK designs legal framework and to make the system more accessible for businesses.

The Government is focused on the following proposals:

  • improving the enforcement regime to promote better understanding of rights held by others and to help avoid disputes;
  • resolving uncertainties around the scope of protection;
  • simplifying the laws relating to the ownership of and qualification for design right;
  • improving the provision of information about designs;
  • enabling UK designs owners to be more selective about which countries they seek international registration for.

Contributions should be submitted before 2 October.

Official press release from UK IPO may be found HERE

Consultation document is available HERE


1.4 Geographical Indications

Public Consultation on Geographical Indications from Central American countries

On 20 July, the information notice concerning the public consultation, launched by the European Commission, on Geographical Indications from Central American countries, was published in the Official Journal of European Union.

The Commission invites any Member State or third country or any natural or legal persons having a legitimate interest, resident or established in a Member State or in a third country, to submit objections to such protection by lodging a duly substantiated statement.

Statements of objection must reach the Commission within two months of the date of this publication at the following e-mail adress: AGRI-B1 ec.europa.eu

The complete information notice may be found HERE


Publication of applications pursuant to Article 6(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs

Statements of objection must reach the Commission within six months of the date of the publication in the Official Journal of European Union.


2 Office Practice

2.1 OHIM

EU Observatory - Update

ECTA has been invited to participate in the public consultation launched by OHIM on 5 June on the EU Observatory (See Flash 10-12).

On 6 July, ECTA, with the help of the Anti-Countefeiting Committee working group on this subject, under the lead of its Member Nuno Cruz, submitted the answers concerning the EU Observatory.

The document may be found HERE

On 9 July, in the framework of the activities of the EU Observatory, OHIM invited experts from Europol, involving anti-counterfeiting and piracy field agents from a number of EU police forces and experts from various industry sectors.

Discussions highlighted the need for close cooperation between enforcement authorities and public bodies such as OHIM, with emphasis on the methods and resources needed to combat increasing infringements of IP rights.

The official video is available HERE


Croatia - New Member of EuroClass version 2

On 6 July, OHIM officially announced the incorporation of SIPO (the Croatian IP Office) into EuroClass version 2.

More information may be found HERE


Maintenance of OHIM Servers

OHIM announced that its servers will undergo essential maintenance work from Saturday 28 July - 8 AM until Sunday 29 July - 8 AM.

Please, note that none of the Office’s e-business services will be available during this period.


New amendments in the Manual of proceedings before the OHIM

From this year on, the Manuals will be revised on a regular yearly basis. The revision of the manuals regarding the procedural aspects of Opposition, Cancellation and Absolute Grounds formalities is the responsibility of the Knowledge Circle Proceedings (KC Proceedings).

The KC Proceedings has adopted a new Manual on the examination of Formalities that will enter into force on 1 August 2012.

More details concerning the amedments may be found HERE


Minutes of the 19th OAMI Users’ Group Meeting

The updated minutes of the 19th OAMI Users’ Group Meeting of 17 April 2012 may be found HERE


OHIM 8th Liaison Meeting on Trade Marks – 10 & 11 October 2012, Alicante

Gilles CORBALLY, Member of ECTA Harmonization Committee, will attend the meeting on behalf of ECTA.


OHIM 11th Liaison Meeting on Designs, 19 & 20 November 2012, Alicante

Keith HODKINSON, Member of ECTA Design Committee and newly elected Council Member, will attend the meeting on behalf of ECTA.


2.2 WIPO

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 notably by António 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.


Information and Clarifications Concerning WIPO’s Technical Assistance Programs

On 19 July, WIPO Director General Francis Gurry provided the information and clarifications concerning the actions that have been undertaken, or are being undertaken, by the Organization in relation to the provision of technical assistance to countries that are the subject of United Nations (UN) sanctions.

The Director General reiterated that the Secretariat is treating concerns relating to the Organization’s technical assistance programs to countries that are the subject of UN sanctions with the utmost seriousness.

The action undertaken by WIPO consist in:

  • Adoption of new internal procedures on 1 May2012. Under these procedures, all managers must refer any activity proposed in a country subject to UN sanctions to WIPO’s Legal Counsel for guidance and clearance. The Legal Counsel will, wherever necessary, consult the appropriate UN Sanctions Committee. Additionally, any work plan for a country subject to UN sanctions will be submitted at the commencement of each calendar year for guidance by the appropriate Sanctions Committee;
  • Provision of standard IT equipment to the IP offices of the Democratic People’s Republic of Korea (DPRK) and the Islamic Republic of Iran that occurred in the preceding years, within the context of the Organization’s business modernization program for IP Offices in developing countries, is being referred to the relevant UN Sanctions Committees for their information and guidance;
  • External and independent review of the technical assistance provided to countries subject to UN sanctions;
  • New internal instruction has been issued ending any provision of IT hardware in any of WIPO’s technical assistance programs.

The official press release may be found HERE


2.3 National Offices

France, Germany - Official Notices regarding the consequences of the earthquake in Italy

Following the eartquakes in Italy in May, the French and German national offices have decided to take special measures.

The French Trade Mark Office announced that the earthquake may be considered as lawful excuse and invites every concerned person to submit the « restitutio in integrum » request.

The official press release of the French Trade Mark Office (INPI) may be found HERE.

The German Patent and Trade Mark Office (DPMA) announced that it is impossible to extend time limits specified by law.
However, the German Patent and Trade Mark Office recommends the option of reinstatement. Any person who, owing to the current situation in Italy, has not observed a time limit imposed by law without any fault on his part can subsequently be reinstated upon request. They will then be in the same position as if they had observed the time limit. The unit in charge will check in the individual cases whether the conditions of reinstatement are satisfied.

The official press release may be found HERE


Hungary - Memorandum of Understanding with the Intellectual Property Office of Montenegro

The Memorandum of Understanding on Cooperation between the Intellectual Property Office of Montenegro and the Hungarian Intellectual Property Office was signed by Director Novak Adžić and President Dr. Miklós Bendzsel in Podgorica on 18 July 2012.

More information may be found HERE


United Kingdom - Changes to Trade Mark Services

UK IPO will implement a new IT system for processing trade marks. It will see the introduction of electronic case handling and workflow which, following the bedding-in period, will result in processing efficiencies.

UK IPO will proceed in two steps:

  • Phase 1: The new layout is promised for the notice of threatened opposition (form TM7A) and the notice of opposition and statement of grounds (form TM7). There will also be a new-style examination report for international trade marks which designate the UK and a restyled journal in which it will integrate international UK designation and UK applications. The feedback from customers will be taken into account.
  • Phase 2: The adoption of the alert system — "eAlerts"; existing customers will automatically have their registration details transferred to the new system.

More information may be found HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-209/10 of 5 July 2012, Deutscher Ring Sachversicherungs-AG vs. OHIM (contested decision: R 1290/2009-1 of 11 March 2010)

Trade mark applied for:

Deutscher Ring Sachversicherungs-AG

Classes: 36

Decision: The trade mark is not descriptive.

The German consumer will not, immediately and without further reflection, understand the sign applied for, as a whole, as being descriptive of the services in question or of one of their characteristics. The interpretation that the Board of Appeal gave to the sign Deutscher Ring Sachversicherungs-AG (German association of shareholders which have come together to offer non-life insurance services and to manage non-life insurance) is not an interpretation which would come naturally to the German consumer when exposed to the sign applied for. The consumer could, at most, arrive at this interpretation after a good deal of thought (para 24).

The Board of Appeal’s decision is annulled.


Case T-559/10 of 11 July 2012, Laboratoire Garnier et Cie vs. OHIM (contested decision : R 971/2010-1 of 23 September 2010)

Trade mark applied for:

Class: 3

Decision: The public concerned would perceive the expression ‘natural beauty’ as a meaningful expression, capable of describing the fact that the goods covered help the consumer to preserve his or her natural beauty, and conveying, therefore, obvious and direct information on the quality of the goods (para. 23).

In view of the sobriety of the graphical means used, those banal graphical elements cannot divert the attention of the relevant public from the descriptive message resulting from the expression ‘natural beauty’(para. 27).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-344/09 of 27 June 2012, Hearst Communications, Inc. vs. OHIM – Vida Estética, SL

Trade marks:

COSMO  
COSMOPOLITAN  
COSMOTEST  
COSMOPOLITAN TELEVISION  

COSMOBELLEZA
Earlier trade mark Trade mark applied for

Classes: 35,41

Decision: The trade marks are visually, aurally and conceptually different (para. 47 to 82).

The Board of Appeal’s decision is upheld.


Case T-523/10 of 27 June 2012, Interkobo sp. z o.o. vs. OHIM – XXXLutz GmbH (contested decision : R 88/2009-4 of 8 September 2010)

Trade marks:



Earlier trade mark Trade mark applied for

Classes:12,20,24,28

Decision: The applicant has failed to prove the existence, the validity or the scope
of the protection of the earlier trade marks. In those circumstances, the opposition must be rejected, pursuant to Rule 20(1) of Commission Regulation (EC) No 2868/95 of 13 December.

The Board of Appeal’s decision is upheld.


Case T-133/09 of 28 June 2012, I Marchi Italiani Srl and Antonio Basile vs. OHIM – Osra SA (contested decision : R 502/2008-2 of 9 January 2009)

Trade marks:

BASILE
Earlier trade mark Trade mark applied for

Class: 25

Decision:
1. The relevant date from which the period of limitation in consequence of acquiescence starts running is when the proprietor becomes aware of the use of that mark (para. 33).
2. The trade marks are visually ( para. 56 to 57), aurally (58 to 59) and conceptually (para. 60) similar.

There is a likelihood of confusion (para. 64).

The Board of Appeal’s decision is upheld.


Case T-60/10 of 6 July 2012, Jackson International Trading Co. Kurt D. Brühl GmbH & Co. KG vs. OHIM – The Royal Skakespeare Company (contested decision : R 317/2009-1 of 19 November 2009)

Trade marks:

RSC-ROYAL SHAKESPEARE COMPANY ROYAL SHAKESPEARE
Earlier trade mark Contested trade mark

Classes: 32,33,41,43

Decision: The earlier trade mark enjoys a reputation in relation to “theatre productions” amongst this relevant public in the territory of the United Kingdom’ (para. 43). The reputation of the earlier trade mark in the United Kingdom is sufficient to establish a reputation at European Union level, since the United Kingdom constitutes a substantial part of the European Union (para. 44).

As the contested trade mark is exclusively made up of the central and distinctive element of the earlier trade mark, namely the expression ‘royal shakespeare’, the signs at issue are visually, phonetically and conceptually similar. Therefore, the average consumer will establish a link between those signs (para. 29).

The applicant would benefit from the power of attraction, the reputation
and the prestige of the earlier trade mark for its own goods, such as beer and other beverages, and for its services. That equates to an unfair advantage taken by the applicant of the repute of the earlier trade mark within the meaning of
Article 8(5) of Regulation No 207/2009 (para. 61).

The Board of Appeal’s decision is upheld


Case T-135/11 of 10 July 2012, The Clorox Company vs. OHIM – Industrias Alen SA de CV (contested decision : R 521/2009-4 of 16 December 2010)

Trade marks:

CLOROX CLORALEX
Earlier trade mark Trade mark applied for

Classes: 3,5

Decision: The trade marks are visually (para. 39), aurally (para. 40) and conceptually (para.41) similar.

There is a likelihood of confusion (para. 46).

The Board of Appeal’s decision is annuled.


Case T-517/10 of 12 July 2012, Pharmazeutische Fabrik EversGmbH & Co. KG vs. OHIM – Ozonz Laboratories Pharma SA (contested decision : R 1332/2009-4 of 1 September 2010)

Trade marks:


HYPOCHOL
Earlier trade mark Trade mark applied for

Class: 5

Decision: There is a low degree of visual (para. 28 to 33) and aural (para. 34 to 37) similarity. Conceptually, the trade marks are different (para. 38 to 44).

Taking into account the high degree of attention of the patients at the
time of purchase, there is no likelihood of confusion (para. 53 to 54).

The Board of Appeal’s decision is upheld.


COURT OF JUSTICE

Case C-306/11P of 28 June 2012, XXXLutz Marken GmbH vs. OHIM – Natura Selection, SL (contested decision : T-54/09 of 24 March 2011)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 8,14,16,20,21,24,25,27

Decision: The General Court did not err in law when holding that the trade marks in suit are visually, aurally and conceptually similar and consequently, that there is a likelihood of confusion (para. 33 to 99).

The General Court’s decision is upheld.


4 ECTA News

ECTA Annual Conference in Palermo, 20 - 22 June - Report

The report of the Conference may be found HERE.


European IPR Helpdesk- Stakeholder Meeting, 25 July 2012, Brussels

IPR Helpdesk is an initiative funded by the European Commission, under the Competitiveness and Innovation Framework Programme and managed by the Executive Agency for the Competitiveness and Innovation (EACI). The IPR Helpdesk is the official IP service initiative of the European Commission to encourage European SMEs to release their innovative potential.

More information may be found HERE

On 25 July, EACI organised an informative meeting concerning the development of IPR Helpdesk. Ewa Grabiak, ECTA Legal Coordinator attended the meeting.

ECTA is currently studying the project in details.


Intellectual Property and Innovation Summit, 10 September 2012, Brussels

The 2012 Intellectual Property and Innovation Summit will bring leading experts and creative-industry practitioners together for a contemporary perspective on innovation and intellectual property in the 21st century.

Neelie Kroes, vice-president of the European Commission in charge of the digital agenda, will be amongst the speakers.

The debate will be informed by a new Lisbon Council publication, entitled "Intellectual Property and Innovation: A Framework for 21st Century Growth and Jobs”.

More information may be found HERE

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


26th MARQUES Annual Conference, 18-21 September, Athens

More information may be found HERE

Jaroslaw Kulikowski, ECTA Treasurer, will attend the meeting on behalf of ECTA.


2nd HEC Paris Workshop on Regulation: Regulating Lifestyle Risks in Europe - The Case of Alcohol, Tobacco, Unhealthy Diets & Gambling, 20-21 September 2012, Paris

The workshop will offer an opportunity for researchers (PhD students, post-docs, researchers and established academics), policy makers, NGOs, industry representatives and other stakeholders to reflect on the role which the European Union should play in promoting healthier lifestyles, in light of the moral, philosophical, legal and political challenges associated with the regulation of individual choices. A special focus will be devoted to the ongoing efforts aimed at integrating behavioral insights into policy making.

More information may be found HERE

Max Oker-Blom, ECTA Secretary General and Ewa Grabiak, ECTA Legal Coordinator, will attend the Workshop.


GRUR Annual Meeting, 26-29 September 2012, Frankfurt

More information concerning the GRUR Meeting may be found HERE

Jan Wrede, Vice Chair of ECTA Geographical Indications Committee will attend on behalf of ECTA.


IP Summit, 10-11 December 2012, Alicante

With its usual mix of Keynote speeches, Plenary sessions and workshops, the IP Summit Trademarks aims at regenerating your vision and practice of trade marks and, hopefully, helping to regenerate the trade mark system itself.

ECTA Members may benefit from the special rate of 999 euros until December.

More information may be found HERE

Max Oker-Blom, ECTA Secretary General and Ewa Grabiak, ECTA Legal Coordinator, will attend the IP Summit on behalf of ECTA.


France, Germany, Hungary, United Kingdom Anti-counterfeiting, Design, Geographical Indications, Trade Mark