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13-14 | 30 July 2014

Topics: EU Legislative Package Geographical Indications Hague System Plain Packaging TM Class

There is still time to register for the ECTA Round Table session: brand owners before and after IP Translator
15 September 2014, Denmark
Programme
Registration form

Table of Contents

1.1 Trade Marks
  • Trade mark legislative package: agreement on Council common position
  • Standardized packaging: ECTA comments on the Irish legislative proposal
1.2 Anti-Counterfeiting
  • Second EU Customs – right holders and stakeholders meeting to combat IPR infringements
1.3 Geographical Indications
  • Protection of geographical indications for non-agricultural products
2 OFFICE PRACTICE
2.1 WIPO
  • Hague Agreement: international registration of industrial designs
2.2 OHIM
  • Forecasting tool
  • TMclass now available in Arabic
3 CASE LAW

Summaries and case law provided by

T-404/13 SUBSCRIBE
The trade mark is devoid of any distinctive character

T-184/12 HEATSTRIP vs. HEATSTRIP
The trade mark has been filed in bad faith

T-324/13 femibion (fig) vs. FEMIVIA
There is a likelihood of confusion

C-126/13P ecoDoor
Trade mark descriptive of a component incorporated in a product

C-420/13 Netto Marken-Discount AG & Co. KG vs Deutsches Patent- und Markenamt
Identification of goods or services for which the protection of a trade mark is sought - Requirements of clarity and precision

C-421/13 Apple Inc. vs Deutsches Patent- und Markenamt
Representation, by design, of the layout of a flagship store

4 ECTA NEWS
  • Transatlantic working group on intellectual property rights
  • 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

1.1 Trade Marks

1.1.1. Trade mark legislative package: agreement on Council common position

On 23 July 2014, the Committee of Permanent Representatives agreed on a Council common position regarding the reform of the trade mark legislative package.

The reform includes changes regarding, amongst others, the cooperation between the European Commission and the OHIM, and counterfeit goods.

Further information is available HERE.

The trade mark Regulation and Directive proposals will be available HERE.


1.1.2. Standardized packaging: ECTA comments on the Irish legislative proposal

On 24 July 2014, ECTA submitted comments to the European Commission regarding the proposed legislation by the Irish Government to introduce requirements for ‘standardised packaging’ for tobacco products.

ECTA’s submission is available HERE


1.2 Geographical Indications

1.2.1. Protection of geographical indications for non-agricultural products

On 15 July 2014, the European Commission launched a public consultation on geographical indications for non-agricultural products. The goal of the consultation is to analyze a possible extension of geographical indication protection to non-agricultural products.

Further information is available HERE.


1.3 Anti-Counterfeiting

1.3.1. Second EU Customs – right holders and stakeholders meeting to combat IPR infringements

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 was held on 17 July 2014.

The meeting focused on the implementation of EU customs reforms in each EU Member State and the support that the user representatives can offer for their improvement.

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


2 Office Practice

2.1 WIPO

2.1.1. Hague Agreement: international registration of industrial designs

The National Center for Patents and Information of Tajikistan has made the following declarations, regarding the Hague Agreements on international registration of industrial designs, which will enter into force on 22 July 2014:

  • the declaration referred to in Article 13(1) of the 1999 Act concerning unity of design, whereby, in accordance with the law of Tajikistan, the application shall re-late to one industrial design and may include variants of that industrial design; and
  • the declaration for the application of level three of the standard designation fee, under Rule 12(1)(c)(i) of the Common Regulations.

The information notice is available HERE.


2.2 OHIM

2.2.1. TMclass now available in Arabic

From 21 July 2014, TMclass, the OHIM tool developed to assist in the search and classification of goods and services, is available in Arabic.

Further information is available HERE.


2.2.2. Forecasting tool

The forecasting tool is an advanced prediction system that enables IP Offices to produce accurate forecasts of trade mark and designs filings.

This tool was launched by the OHIM on 15 July 2014.

Further information is available HERE.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-404/13 of 14 July 2014, NIIT Insurance Technologies Ltd vs. OHIM (contested decision: R-1308/2012-5 of 4 June 2013)

Trade mark applied for:

SUBSCRIBE

Classes: 9,16,42

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

In combination with the relevant goods and services, the word ‘SUBSCRIBE’ would not be perceived by the relevant public as a trade mark, but rather as an invitation to use a particular manner of obtaining the goods and services regularly and over a period of time (para, 30).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Trade marks:

Case T-184/12 of 9 July 2014, Moonich Produktkonzepte & Realisierung GmbH vs. OHIM – Thermofilm Australia Pty Ltd (contested decision: R-1956/2010-1 of 26 January 2012)

Trade marks:

HEATSTRIP HEATSTRIP
Earlier trade mark Trade mark applied for

Classes: 9,11,35

Decision:
The email correspondence denotes the existence of an agreement of commercial cooperation between the parties that gives rise to a fiduciary relationship by imposing on the trade mark applicant – whether expressly or implicitly – a general duty of trust and loyalty as regards the interests of the trade mark proprietor. The trade mark has been filed in bad faith within the meaning of Article 8(3) of Regulation 207/2009 (para. 67 to 68).

The Board of Appeal’s decision is upheld.


Case T-324/13 of 16 July 2014, Endoceutics, Inc. vs. OHIM – Merck KG aA (contested decision: R- 1021/2012-4 of 15 April 2013)

Trade marks:


FEMIVIA
Earlier trade mark Trade mark applied for

Class: 5

Decision:
The prefix ‘fem’ has a weak distinctive character for the goods covered by the marks at issue on account of its character as descriptive of the intended purpose of those goods. However, that fact does not mean that the prefix ‘fem’ cannot be taken into account when comparing the signs at issue (para. 35).

The trade marks are visually (para. 38 to 39), aurally (para. 40 to 41) and conceptually (para. 42 to 43) similar.

There is a likelihood of confusion (para. 44 to 49).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-126/13P of 10 July 2014, BSH Bosch und Siemens Hausgeräte GmbH vs. OHIM (contested decision: T-625/11 of 15 January 2013)

Trade mark applied for:

ecoDoor

Classes: 7,9,11

Decision :
A sign that is descriptive of a characteristic of a component incorporated in a product can also be descriptive of the product itself. That is the case where, from the perception of the relevant public, the characteristic of the component described by the sign could have a significant impact on the essential characteristics of the product itself (para. 26).

The General Court’s decision is upheld.


Case C-420/13 of 10 July 2014, Netto Marken-Discount AG & Co. KG vs Deutsches Patent- und Markenamt

The Court replies to questions referred by the Bundespatentgericht (Germany) relating to the interpretation of Article 2 of Directive 2008/95/EC

The Court’s replies are as follows :

1. Services rendered by an economic operator which consist in bringing together services so that the consumer can conveniently compare and purchase them may come within the concept of ‘services’ referred to in Article 2 of Directive 2008/95/EC.

2. Directive 2008/95 must be interpreted as imposing a requirement that an application for registration of a trade mark with respect to a service which consists in bringing together services must be formulated with sufficient clarity and precision so as to allow the competent authorities and other economic operators to know which services the applicant intends to bring together.


Case C-421/13 of 10 July 2014, Apple Inc. vs Deutsches Patent- und Markenamt

The Court replies to questions referred by the Bundespatentgericht (Germany) relating to the interpretation of Articles 2 and 3 of Directive 2008/95/EC

The Court’s reply is as follows :

Articles 2 and 3 of Directive 2008/95/EC must be interpreted as meaning that the representation, by a design alone, without indicating the size or the proportions, of the layout of a retail store, may be registered as a trade mark for services consisting in services relating to those goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings; and, that registration is not precluded by any of the grounds for refusal set out in that directive.


4 ECTA News

4.1. Transatlantic working group on intellectual property rights

The transatlantic working group on intellectual property was held on 17 and 18 July 2014, in Brussels.

The aim of the working group was to discuss cooperation in the IPR field relevant for IP rights holders and users. The group was composed of officials representing lead agencies and services from both Europe and the U.S. and was established in 2005.

Bárbara Díaz Alaminos, ECTA Legal Coordinator, attended the working group on behalf of ECTA.

The meeting was hosted by the Representation of the Free State of Bavaria to the EU. The meeting focused on presentations that were delivered regarding the following topics:

  • Securing the IP Environment in Key Markets
  • IPR in Multilateral Organisations
  • Customs & Investigative Cooperation
  • Public-Private Cooperation
  • Stakeholder issues

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


Anti-counterfeiting, Geographical Indications, Trade Mark OHIM, WIPO