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14-11 | 9 August 2011

Topics: EUIPO Convergence Programme

ECTA 2011 AUTUMN GAZETTE

The Publications Committee has started working on the Autumn 2011 Gazette the main theme of which will be "Study on the Overall Functioning of the European Trade Mark system" issues. Should you be interested in contributing in respect of any subject falling within this theme, please contact the Publications Committee as soon as possible by sending an e-mail to sandrine.peters garrigues.com. The deadline for submission of articles is 10 September 2011.


ECTA 2011/2012 MEMBERSHIP DIRECTORY

In preparation for the re-print of the Membership Directory, we kindly ask members to update their contact details by logging onto the "Members area" of the ECTA website using the user name and password allocated to them. Select “Member” and under "my information" select “modify” where you can check and amend (if necessary) the contact details we hold on file for you.


ECTA - WIPO - GRUR - DPMA WORKSHOP ON INTERNATIONAL REGISTRATION OF DESIGNS HAMBURG, GERMANY, 26 SEPTEMBER 2011

After successful events in London in February, Rome in March and Paris in July 2011, ECTA is pleased to invite you to attend a further workshop on international registrations of designs in order to promote the Hague System and to prove its great advantages. This workshop, held in collaboration with our Sister Association GRUR, WIPO and DPMA, will take place in Hamburg on 26 September 2011. The language of the event will be English. ECTA and GRUR are kindly offering a free walking lunch prior to the event.

For further information see the Programme. To register kindly complete and return the Registration form.


Table of Contents

1 LAW
1.1 Trade Marks
  • UK IPO study on trade mark incentives
1.2 Enforcement
  • Publication of the European Directive against falsified medicines
2 OFFICE PRACTICE
2.1 OHIM
  • Convergence Programme launched
2.2 WIPO
  • 3rd session of WIPO Working Group on the Digital Access Service for Priority Documents from 12 to 15 July 2011 in Geneva
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

Case T-235/10 3D trade mark
The trade mark is devoid of any distinctive character

Case T-258/09 BETWIN
The trade mark is descriptive for the services of betting or gambling but distinctive for the other covered services

Case T-208/10 TRUEWHITE
The trade mark is descriptive

Case T-499/09 coloured rectangle
The trade mark is devoid of any distinctive character

Case T-221/09 URGO vs. ERGO Group
There is a likelihood of confusion

Case T-220/09 URGO vs. ERGO
There is a likelihood of confusion

Case T-374/08 krafft (fig) vs. TOP CRAFT (fig)
The trade marks are visually, aurally and conceptually different

COURT OF JUSTICE

Cases C-4/10 and 27/10 Bureau national interprofessionnel du Cognac vs. Gust. Ranin Oy
Registrability of a trade mark incorporating a geographical indication of spirits drinks


Editorial Board: Anne-Laure Covin, Max Oker-Blom, Jean-Jo Evrard, and Cathy van Vuuren


The ECTA Flash is sponsored by

TRADE MARK SERVICES


1 Law

1.1 Trade Marks

UK IPO study on trade mark incentives

The UK Intellectual Property Office commissioned a study on “Trade Mark Incentives” in 2010, and the results were published in July 2011. The study looked at company data for 2000-2006 drawn from the UK Office for National Statistics and covered all large firms and a sample of smaller firms, with added data on both UK and Community Trade Marks (CTMs) and patents drawn from official records. It showed that companies with trade marks are more productive, innovative and show higher employment and turnover than those without. Of the 6500 trade marking companies in the sample, 57% have only UK trade marks, while 16% have only CTMs and 27% have both. Large firms are much more likely to have trade marks (12.9%) than smaller firms. Only 1,7% of small and 5,2% of medium-sized firms trade marked their products and services.

1.2 Enforcement

Publication of the European Directive against falsified medicines

On 1 July 2011 the European Directive 2011/62/EU regarding the prevention of the entry into the legal supply chain of medicinal products which are falsified in relation to their identity, history or source was published in the official journal (L174/74 - 01-07-2011). This Directive, so called “Directive against falsified medicines”, amends the European Directive 2001/83/EC on the Community code relating to medicinal products for human use. READ AUDREY HAGEGE’S ARTICLE

2 Office Practice

2.1 OHIM

Convergence Programme launched

OHIM has launched a Convergence Programme to try and reach common ground on a series of issues where IP offices in the EU have different practices. The initiative is connected with the work on IT tools through the Cooperation Fund and the Commission’s work to harmonise trade mark laws and procedures to form the foundations for the European Trade Marks and Designs Network envisaged in OHIM’s strategic plan.

Work on the first project belonging to the Convergence Programme, the harmonisation of classification of goods and service, is already under way, and a kick-off meeting on a second project, to try and reach consensus on the treatment of class headings in trade marks was attended by representatives from 21 offices and the World Intellectual Property Organisation on 1 July 2011 in Alicante. OHIM has proposed that a total of five projects should be targeted within a coherent programme. For a project to be chosen it should not require legislative change, should offer significant improvements for users and take a maximum of two years to deliver results. In his letter of 21 July 2011 to the Users Associations, António Campinos, OHIM President, provided an update and referred to the Users’s proposals re the Convergence Programme Projects (ref to ECTA’s letter of 15 July 2011, Flash 13-11). He has mentioned that the Office is currently evaluating the different options and shall not fail to revert to the Users Associations in order to agree on the participation of the User Group members in all of the different projects.
See Alicante news for additional details HERE

2.2 WIPO

3rd session of WIPO Working Group on the Digital Access Service for Priority Documents from 12 to 15 July 2011 in Geneva

ECTA, represented by Joao Jorge, Member of the ECTA Design Committee, attended the 3rd session of WIPO Working Group on the Digital Access Service for Priority Documents which took place from 12 to 15 July 2011 in Geneva. The official working documents can be found HERE. READ JOAO JORGE’S REPORT.

3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-235/10 of 6 July 2011, Timehouse GmbH vs. OHIM (contested decision: R 942/2009-1 of 11 March 2010)

Trade mark applied for (3D):


Class: 14

Decision: The trade mark is devoid of any distinctive character. The trade mark consists of a combination of features typical of the products concerned and hence does not differ significantly, as a whole, from the standards or norms of the jewellery and watch sector (para. 35).

The Board of Appeal’s decision is upheld.


Case T-258/09 of 6 July 2011, i-content Ltd Zweigniederlassung Deutschland vs. OHIM (contested decision: R 1528/2008-4 of 4 May 2009)

Trade mark applied for:

BETWIN

Classes: 35,38,41

Decision: The combination of the two words "bet" and "win" evokes the possibility of betting and winning. This combination will be directly understood by the relevant public. The trade mark is therefore descriptive for the services of betting or gambling (para. 40). However, the trade mark is distinctive for the other services (para. 62).

The Board of Appeal’s decision is upheld.


Case T-208/10 of 7 July 2011, Cree, Inc. vs. OHIM (contested decision: R 985/2009-2 of 27 January 2010)

Trade mark applied for:

TRUEWHITE

Classes: 9,11

Decision: The trade mark is descriptive. The term "truewhite" refers to a real whiteness. When used in connection with LEDs, the trade mark in question merely describes an essential characteristic of the goods, namely their ability to produce a light which is so white that it is comparable with natural light (para. 23).

The Board of Appeal’s decision is upheld.


Case T-499/09 of 13 July 2011, Evonik Industries AG vs. OHIM (contested decision: R 491/2009-4 of 2 October 2009)

Trade mark applied for:


Classes: 1 to 45

Decision: The trade mark is devoid of any distinctive character. Given the simplicity of the rectangular shape, it will not convey a precise message to the relevant public, who will understand it to be a label associated with goods or services, a decoration or an ornament for aesthetic purposes (para. 28).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-221/09 of 15 July 2011, Ergo Versicherungsgruppe AG vs. OHIM – Société de développement et de recherché industrielle (contested decision: R 515/2008-4 of 20 March 2009)

Trade marks:

URGO ERGO Group
Earlier trade mark Community trade mark applied for

Classes: 3,5

Decision: The trade marks are visually (para. 30 to 41) and aurally (para. 42 to 50) similar. There is a likelihood of confusion (para.59)

The Board of Appeal’s decision is upheld.


Case T-220/09 of 15 July 2011, Ergo Versicherungsgruppe AG vs. OHIM – Société de développement et de recherché industrielle (contested decision: R 515/2008-4 of 20 March 2009)

Trade marks:

URGO ERGO
Earlier trade mark Community trade mark applied for

Classes: 3,5

Decision: The trade marks are visually (para. 28 to 31) and aurally (para. 32 to 34) similar.
There is a likelihood of confusion (para.42).

The Board of Appeal’s decision is upheld.


Case T-374/08 of 12 July 2011, Aldi Einkauf GmbH & Co. OHG vs. OHIM – Illinois Tools Works,Inc. (contested decision: R 952/2007-2 of 25 June 2008)

Trade marks:



Earlier trade mark Community trade mark applied for

Classes: 1,5

Decision: The trade marks are visually (para. 49 to 51), aurally (para. 56 to 58) and conceptually (para.59 to 61) different.

The Board of Appeal’s decision is annulled.


COURT OF JUSTICE

Preliminary ruling

Cases C-4/10 and C-27/10 of 14 July 2011, Bureau national interprofessionnel du Cognac vs. Gust. Ranin Oy

The Court replies to questions referred by the Finnish Supreme Administrative Court relating to the registrability of a trade mark incorporating a geographical indication of spirit drinks protected by Regulation N° 110/2008.

The Court’s answers are as follows:

1. Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89 is applicable to the assessment of the validity of the registration of a trade mark containing a geographical indication protected by that regulation, where registration took place before the regulation entered into force.

2. Articles 23 and 16 of Regulation No 110/2008 must be interpreted as meaning that:
- the competent national authorities must, on the basis of Article 23(1) of Regulation No 110/2008, refuse or invalidate the registration of a mark which contains a protected geographical indication and which is not covered by the temporary derogation provided for in Article 23(2) of that regulation, where the use of that mark would lead to one of the situations referred to in Article 16 thereof;

- a situation such as that referred to in the second question referred for a preliminary ruling – that is to say, the registration of a mark containing a geographical indication, or a term corresponding to that indication and its translation, in respect of spirit drinks which do not meet the specifications set for that indication – falls within the situations referred to in Article 16(a) and (b) of Regulation No 110/2008, without prejudice to the possible application of other rules laid down in Article 16.


None

Enforcement, Trade Mark OHIM, WIPO