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14-14 | 15 September 2014

Topics: Counterfeiting Domain Names EU Legislative Package TM Class

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Table of Contents

1.1 Trade Marks
  • Trade mark legislative reform: ECTA’s next steps
1.2 Anti-Counterfeiting
  • Google and LVMH fight against counterfeit advertising
  • EU Observatory: working group meeting
1.3 Domain Names
  • New expiry date for .eu domain names
2 OFFICE PRACTICE
2.1 OHIM
  • TMclass: Canada, Norway and Finland
  • Change of the EU registrations examination
  • Double electronic signature for joint requests in oppositions
3 CASE LAW

Summaries and case law provided by

T-5/12 Wash&Coffee The trade mark is devoid of any distinctive character
T-66/13 Franz Wilhelm Langguth GmbH & Co. KG vs. OHIM The trade mark is devoid of any distinctive character
T-520/12 gifflar The trade mark is descriptive
T-18/13 PROTECT vs. PROTEKT There is a likelihood of confusion
T-36/13 Erreà The trade marks are different
T-576/12 PROTECTA vs. PROTEKT There is a likelihood of confusion

4 ECTA NEWS
  • ECTA’s Round Table session: brand owners life before and after IP Translator
  • ECTA’s comments on OHIM Guidelines – WP1
  • ECTA’s Brussels meetings
  • EU-Korea IP Dialogue
  • ECTA’s financial report
  • GRUR’s Annual Meeting

Editorial team: Bárbara Díaz Alaminos, Jean-Jo Evrard and Annick Mottet Haugaard


1 Law

1.1 Trade Marks

1.1.1. Trade mark legislative reform: ECTA’s next steps

A council common position was agreed on 23 July 2014, by the Committee of Permanent Representatives.

ECTA’s Committees are currently preparing comments on the latest compromise proposal.

ECTA’s comments will be made available to ECTA’s members.


1.2. Anti-Counterfeiting

1.2.1. Google and LVMH fight against advertising for counterfeit

Google and LVMH put an end to their ten years legal dispute by agreeing to jointly fight against counterfeit advertising.

Further information is available HERE


1.2.2. EU Observatory: Working Group Meeting

The various working groups of the EU Observatory will meet the fourth week of September in Brussels. Annick Mottet, Olivier Vrins and Bàrbara Diaz Alaminos will attend these meetings on behalf of ECTA.


1.3. Domain Names

1.3.1. New expiry date for .eu domain names

EURid will launch a new registration platform on 15 September 2014. Consequently, new registers .eu domains will expire at the end of their registration instead of at the end of the month.

The following example is provided by EURid on their website:

  • Current situation (for existing domain names registered before 15 September 2014) Registration date = 15 January 2014 Expiry date = 31 January 2015 (= 15 January 2014 + forward to the end of month (31 January) + 1 year)
  • New situation after 15 September 2014 (for existing domain names registered before 15 September 2014) Registration date = 15 January 2014 If registrar has not made a choice (i.e. default current system applies) Expiry date = 31 January 2015 (= 15 January 2014 + forward to the end of month (31 January) + 1 year) If registrar has chosen the new expiry date option: Expiry date = 15 January 2015 (= 15 January 2014 + 1 year)
  • New situation after 15 September 2014 (for new domain names registered after 15 September 2014) Registration date = 15 January 2015 Expiry date = 15 January 2016 (= 15 January 2015 + 1 year)

Further information is available HERE


2 Office Practice

2.1 OHIM

2.1.1. TMclass: Canada, Norway and Finland

Canada, Norway and Finland have joined TMclass. With this addition, there is a total of 40 regional and national intellectual property Offices in the good and services classification tool.

Further information on Canada and Norway is available HERE

Further information on Finland is available HERE


2.2.2. Change of the EU registrations examination

The OHIM has informed that as from October 1, they will begin examining the classification of international registrations designated in the EU, for vague terms.

Further information is available HERE


2.2.3. Double electronic signature for joint requests in oppositions

From now on, two parties can submit a joint request to OHIM in order to ask for a change in the proceedings.

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-5/12 of 14 July 2014, BSH Bosch und Siemens Hausgeräte GmbH vs. OHIM (contested decision : R-992/2011-4 of 7 November 2011)

Trade mark:

Wash&Coffee
Trade mark applied for

Classes : 37,43

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

The word ’wash’ designates services included in class 37 and the word ’coffee’ designates services included in class 43. The trade mark applied for conveys the impression that the two services are offered together so that the services of a launderette or a laundry and dry cleaner’s are linked to the offer of a coffee (paragraph 34).

The Board of Appeal’s decision is upheld.


Case T-66/13 of 16 July 2014, Franz Wilhelm Langguth GmbH & Co. KG vs. OHIM (contested decision : R-129/2012-1 of 22 November 2012)

Trade mark:


Trade mark applied for

Class : 32

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

Although the shape of the bottle at issue differs in certain respects from the shapes of the bottles provided by the applicant to the Board of Appeal, it does not depart significantly from the norms and customs of the sector. In fact, the shapes of the trade mark applied for are relatively banal given the shape of conventional bottles for liqueur or alcoholic beverages (paragraph 41).

The Board of Appeal’s decision is upheld.


Case T-520/12 of 9 July 2014, Pagen Trademark AB vs. OHIM (contested decision : R-46/2012-2 of 18 September 2012)

Trade mark:


Trade mark applied for

Classes : 37,43

Decision :
The trade mark is descriptive.

The dominant element of the trade mark applied for is the Swedish word ’gifflar’ which designates a wheat bread formed in a crescent-shape (paragraphs 19-30).

As regards the distinctive character acquired through use, the applicant has not furnished proof that he had used this word as a trade mark (paragraphs 44-46).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-18/13 of 16 July 2014, Erreà Sport SpA vs. OHIM – Antonio Facchinelli (contested decision : R-1561/2011-1 of 24 October 2012)

Trade marks:

PROTECT
Earlier trade marks Trade mark applied for

Classes : 6,9

Decision :
1. Single pieces of ironmongery (except wires and wire goods), in particular: hooks, catches, sliders, buckles, tent pegs, stirrups, crampons, climbers, climbing irons, anchor bars, cantilevers, anchors, catching devices, catching girders, rope grips, saddles,steps and ladders, stretching devices and staining pulleys, non-electric cables of common metal, holding railings, stands, chains, tool chests, belts and lifting slings; ladders of metal; all the above goods only for life saving equipment, safety equipment and protection equipment in Class 6 are similar to metal building materials: handrail and scaffolding of metal » in Class 6 ( para. 34 to 37).
Protection devices for personal use against accidents and life saving apparatus and equipment for persons working at heights, in particular safety straps and harnesses; belts and ropes for supported work; fall energy absorbers for persons working at heights; safety ropes and belts; auxiliary ropes and belts; horizontal safety ropes; sliders; taps; hooks; lifting slings; insulating tubing for suspending working cables on high structures; crampons climbing irons; safety stands; belts for transferring heavy objects; fixed or flexible slideable self-locking apparatus; pull up blocks; emergency evacuation apparatus; apparatus for emergency evacuation from heights; nets for protection against accidents; lifenets; gas detectors; oxygen meters; clothing and footwear for protection against accidents; gloves for protection against accidents in Class 9 are similar to Head protective helmets and earplugs, protective masks, respiratory masks (other than for artificial respiration), filters for respiratory masks, workers face shields, protective goggles and sun visors « in Class 9 ( para. 38 to 40).

2. The trade marks are visually (para. 45 to 46), aurally (para. 47) and conceptually (para. 48) similar.

There is a likelihood of confusion (para. 50 to 68).

The Board of Appeal’s decision is upheld.


Case T-36/13 of 16 July 2014, Erreà Sport SpA vs. OHIM – Antonio Facchinelli (contested decision : R-1561/2011-1 of 24 October 2012)

Trade marks:




 
Earlier trade marks Trade mark applied for

Classes : 3,14,18,25

Decision :
The trade marks are visually ( para. 42 to 52 and para. 63 to 66) and aurally (para. 52 and para. 67) different.

The Board of Appeal’s decision is upheld.


Case T-576/12 of 15 July 2014, Grzegorz Aszkiewicz vs. OHIM – Capital Safety Group EMEA SAS (contested decision : R-700/2011-4 of 24 October 2012)

Trade marks:

PROTECTA
Earlier trade marks Trade mark applied for

Classes : 6,7,9,22,25

Decision :
The trade marks are visually (para. 40 to 41), aurally (para. 42 to 43) and conceptually (para. 44) similar.

There is a likelihood of confusion (para. 46 to 69).

The Board of Appeal’s decision is upheld.


4 ECTA News

4.1. ECTA’s Round Table session: brand owners life before and after IP Translator

ECTA’s Round Table on the IP Translator decision will be held on 15 September 2014, in Denmark.
Further information is available HERE

4.2. ECTA’s comments on OHIM Guidelines - WP1

On 5 September 2014, ECTA sent comments to the OHIM with regard to the current revision cycle of the Guidelines (Work Package 1-2015).
The following ECTA’s Committees have participated in the comments: the Professional Affairs Committee (Luis de Larramendi); the Harmonization Committee (Claire Lazenby); the Geographic Indications Committee (Benjamin Fontaine); the Law Committee (Fabio Angelini; Luis-Alfonso Durán); the OHIM Link Committee (Andreas Renck); the Design Committee (João Jorge); the Anti-Counterfeiting Committee (Raluca Vasilescu).

4.3. ECTA’s Brussels meetings

On 18 September 2014, ECTA will meet with representatives from the European Commission in Brussels.
Followed by these meetings, ECTA will hold, on 19 September 2014, its Management Committee meeting in Brussels.

4.4. EU –Korea IP Dialogue

On 5 September 2014, ECTA sent comments to the EU Commission regarding the EU-Korea IP Dialogue.
ECTA’s comments will be available in its next flash.

4.5. ECTA’s financial report

ECTA’s Treasurer, László Bérczes, reported ECTA’s positive financial situation. A special flash that included specific details and information about ECTA’s positive financial situation was sent to ECTA’s members on 22 August 2014.

4.6. GRUR Annual Meeting 2014


The GRUR Annual Meeting will take place in Düsseldorf, Germany from 24 to 27 September 2014.

Further information is available HERE


Anti-counterfeiting, Domain Name, Trade Mark