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15-13 | 11 October 2013

Topics: Counterfeiting Domain Names EU Legislative Package Hague System Plain Packaging

For the attention of Council and Committee members who will be attending the Malta Autumn Meeting
Given the importance of the Study “Intellectual Property Rights intensive industries: contribution to economic performance and employment in Europe” for the IP Community, ECTA is pleased to inform that Mr. Nathan WAJSMAN, OHIM Chief Economist will join us in Malta for our Autumn Council Meeting for a special presentation of the study on Friday 18 October (16.00-18.00). The presentation will be followed by a Q&A session.
Don’t miss this unique opportunity to learn more about the first European study “Intellectual Property Rights intensive industries: contribution to economic performance and employment in Europe”!
Please see the updated Malta Programme for information.

SAVE THE DATES AND REGISTER FOR ECTA WORKSHOPS ON IP TRANSLATOR!

 

- 24 October in Stockholm

 

- 6 November in Budapest

 

- 27 November in Lisbon

 

For more information see ECTA News Section!

Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • EU-China Dialogue on IPRs, 12th Working Group Meeting, Beijing, 26-30 August 2013
1.2 Trade Marks
  • Reform of the European CTM system - Latest developments
  • Plain packaging - Latest developments
1.3 Domain Names
  • .eu for EEA Residents
2 OFFICE PRACTICE
2.1 OHIM
  • Release of the 1st European Study on IP economic value
  • France implements Seniority Project and Spain implements Similarity tool
  • Romania implements CESTO
  • Website Users Working Group Meeting 30 September 2013
  • Observatory: Public Awareness Working Group Meeting 30 September 2013
2.2 WIPO
  • Working Group on the Legal Development of the Hague System for the International Registration of Industrial Designs, 28-30 October 3013, Geneva

3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-437/11 BALLON D’OR vs. GOLDEN BALLS
There is no likelihood of confusion

T-250/10 KNUD vs. KNUT – DER EISBAR
There is a likelihood of confusion

T-569/11 KITANA (fig) vs. GITANA (fig)
There is a likelihood of confusion

T-97/11 ROVIFARMA, ROVI (fig) vs. ROVI Pharmaceuticals
There is a likelihood of confusion

T-338/09 MBP vs. ip_law@mbp
There is a likelihood of confusion

T-285/12 BOOMERANG (fig) vs. BOOMERANG
The services are similar

EUROPEAN COURT OF JUSTICE

C-661/11 Martin Y Paz Diffusion SA vs David Depuydt and Fabriek van Maroquinerie Gauquie NV
Interpretation of Article 5 of Directive 89/104

C-610/11P CENTROTHERM
Proof of use

C-120/12P PROTI vs. PROTI SNACK
Late submission of evidence


4 ECTA NEWS
  • ECTA Workshops on IP Translator
  • Conference “Intellectual property protection in the EU: risks, challenges and prospects”, 8-9 October, Vilnius, Lithuania
  • Press Publication "Marques et PME: Succès de la formule européenne", Magazine Les Décideurs

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

1 Law

1.1 Anti-counterfeiting

EU- China Dialogue on IPRs, 12th Working Group Meeting, Beijing,26-30 August 2013

As mentionned in ECTA Flash 13-13, Michele Ferrante from ECTA Anti-Counterfeiting Commitee attended the 12th EU-China IP Working Group Meetings on 27-30 August in China.

His report of the meeting may be found HERE


1.2 Trade Marks

Reform of the European CTM system - Latest developments

In September ECTA focused on meetings with the IP Attachés and the European Commission. The report of the meetings is available for ECTA Members under Section Law Commitee - Papers.

At the EU Parliament, the dates for tabling amendments and the JURI vote have been delayed for 17 October . The vote is scheduled for end of November. That vote would normally include a mandate to start the Trilogue negotiations with the Council.
On Monday 14 October Internal Market and Consummer Protection Commitee will be considering the amendments to Mrs Bastos’ draft Opinion (with a vote scheduled for 5 November).

On the Council level, the Lithuanian Presidency is making a lot of efforts to fasten the process and scheduled additional Working Group meetings and namely on 4 October, 11 October –normally Member States will probably then start the reading of the Regulation, and 21 or 22 October. For the beginning of December, the Competitiveness Council is scheduled and the Directive and the Regulation will be on the agenda.

ECTA finalized the comments on the JURI Draft Report and the document is available HERE


Plain packaging - Latest developments

The plenary vote at the European Parliament on restrictive IP measures in the context of Tobacco Directive took place on 8 October.

The most important points are :

  • No plain packaging amendment adopted
  • 65% sized health warning labels on the front and back of the packs positioned from top edge adopted
  • No bans of slim cigarettes amendment adopted
  • No point of sales display ban amendment adopted
  • Standardisation of the pack amendment adopted (no lipstick pack authorized)
  • Ban of menthol cigarettes amendment adopted with a 5 years transition.

The rapporteur of the Health Committee, Mrs MacAvan got the mandate from the Parliament to start the negotiations with the Council and Commission. A final directive should be adopted in the beginning of 2014.

In this context the major IP Sister Associations released new Joint Statement against restrictive IPR measures.

The Join Statement is available HERE

ECTA also commented on the vote and the statement is available HERE

At the international level, Indonesia initiated World Trade Organization (WTO) dispute proceedings to challenge Australia’s plain packaging requirements for tobacco products, joining four other countries (Ukraine, Honduras, Dominican Republic, Cuba) that have already launched WTO proceedings against the measures.

Indonesia requested WTO consultations with Australia to address its claims that the Australian requirements violate various WTO agreements, including WTO rules on the protection of intellectual property rights.

If the two sides are unable to settle their differences within 60 days, Indonesia will be free to request the establishment of a WTO dispute panel to rule on its claims.

By doing so Indonesia became the fifth country to take legal action against Australia’s plain packaging law, using the dispute settlement mechanism that allows WTO members to defend their rights against measures that are inconsistent with international trade rules.


1.3 Domain Names

.eu for EEA Residents

EURid is waiting on an official communication from the European Commission regarding the eligibility of residents, companies and organisations based in the European Economic Area (EEA) countries of Iceland, Lichtenstein and Norway to register .eu domain names.

More information may be found HERE


2 Office Practice

2.1 OHIM

Release of the 1st European Study on IP economic value

On 30 September 2013 OHIM President António Campinos joined Commissioner Barnier and EPO President Batistelli at a press conference in Brussels to welcome the release of the first evidence-based study into the impact of Intellectual Property on the EU economy.

The study “Intellectual Property Rights intensive industries: contribution to economic performance and employment in Europe”(September 2013) was carried out jointly by the European Patent Office (EPO) and the Office for Harmonization in the Internal Market (OHIM). It measures the importance of Intellectual Property (IP) rights in the EU economy. Key findings of the study are that about 39% of total economic activity in the EU (worth some €4.7 trillion annually) is generated by IPR-intensive industries, and approximately 26% of all employment in the EU (56 million jobs) is provided directly by these industries, while a further 9% of jobs in the EU stems indirectly from IPR-intensive industries.

The study may be downloaded HERE

Press Release is available HERE


France implements Seniority Project and Spain implements Similarity Tool

The French Intellectual Property Office has successfully implemented the Seniority Project on 25 September. The project enables the harmonisation of seniority information among national IP offices in the EU. This implementation brings the total number of offices participating in the project to 17.

On 1 October the Spanish Office has implemented the Similarity tool.

This latest implementation brings the total number of offices using Similarity to eight, including OHIM.

More information may be found HEREand HERE


Romania implements CESTO

The Romanian Office has implemented the Common Examiner Support Tool (CESTO). This brings to four the total number of tool implementations.

More information may be found HERE

Website Users Working Group Meeting - 30 September 2013

Cristina Bercial Chaumier, Secretary of ECTA Law Commitee, attended the meeting on behalf of ECTA.

Her report is available HERE

Presentation may be found under section OHIM Link Commitee - Working Documents.


Observatory: Public Awareness Working Group Meeting 30 September 2013

The Public Awareness Working Group of the Observatory held its third meeting on 30 September.
Carina Gommers from ECTA Anti-counterfeiting Commitee attended the meeting on behalf of ECTA.

The meeting started with the official presentation of the Study " Intellectual property rights intensive industries: Contribution to economic performance and employement in European Union " by Commissioner Barnier, OHIM President António Campinos and EPO President Batistelli. The study provides from a macro-economic perspective the relationship between intellectual property rights (patents, trademarks, copyrights, design and geographical indications) and the EU economy. The study shows that around 39% of economic activity in the EU is generated by IP rich industries and that around 26% of all EU employment comes from the same industries. After the official press conference the study was presented in more detail during the working group meeting.

This section was followed by a presentation by PAU on what can be done to increase the visibility and public awareness of the Observatory. The aim is to position the Observatory as the European IP knowledge center and to bring IP closer to the European citizens. The strategies relate to among others developing an informative website, training for journalists, newsletters and organizing events.

2.2 WIPO

Working Group on the Legal Development of the Hague System for the International Registration of Industrial Designs, 28- 30 October 3013, Geneva

All necessary documents are available HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On relative grounds for refusal

Case T-437/11 of 16 September 2013, Golden Balls Ltd vs. OHIM – Intra-Presse (contested decision: R 1310/2010-1 of 26 May 2011)

Trade marks:

BALLON D’OR GOLDEN BALLS
Earlier trade mark Trade mark applied for

Classes: 16, 21, 24

Decision: The trade marks are visually (para. 38) and aurally (para. 39) different. Conceptually, they are not extremely similar. They have, at most, a weak – or even very weak – degree of conceptual similarity for the reasonably informed and observant relevant public, in particular the francophone public (para. 50).

The very weak conceptual similarity, requiring prior translation, cannot, in the circumstances of the case, be sufficient to create, in itself,a likelihood of confusion on the part of the target public (para. 59).

The Board of Appeal’s decision is annuled.


Case T-250/10 of 16 September 2013, Knut IP Management Ltd vs. OHIM – Zoologischer Garten Berlin AG (contested decision: R 650/2009-1 of 17 March 2010)

Trade marks:

KNUD KNUT – DER EISBAR
Earlier trade mark Trade mark applied for

Classes: 16, 25, 28, 41

Decision:
1. Paper and cardboard in Class 16 are similar to printed matter, in particuar books in Class 16 (para. 28 to 40).
Gymnastic and sporting articles in Class 28 are similar to dolls (toys), games, toys, stuffed animals in Class 28 (para. 41 to 52).
Clothing, headgear and footwear in Class 25 are similar to dolls (toys), games, toys, stuffed animals in Class 28 (para. 53 à 66).
Sports in Class 41 are similar to games, toys in Class 28 (para. 68 to 75)
2. The trade marks are visually (para. 84 to 92), aurally (para. 93 to 97) and conceptually (para.98 to 105).

There is a likelihood of confusion (para. 114). The Board of Appeal’s decision is upheld.


Case T-569/11 of 16 September 2013, Gitana SA vs. OHIM – Teddy SpA
(contested decision: R 1825/2007-1 of 4 August 2011)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 18,25

Decision:
1. Goods made of leather and imitations of leather such as a handbags, coin purses or wallets in Class 18 are slightly similar to clothing, headgear and footwear in Class 25 (para. 38 to 46).
2. The trade marks are visually (para. 54 to 59) and aurally (para. 60 to 64) similar.

There is a likelihood of confusion (para. 69). The Board of Appeal’s decision is upheld.


Case T-97/11 of 16 September 2013, Rovi Pharmaceuticals GmbH vs. OHIM – Laboratorios Farmaceuticos Rovi, SA (contested decision: R 500/2010-2 of 7 December 2010)

Trade marks:

ROVIFARMA ROVI Pharmaceuticals

 
Earlier trade marks Trade mark applied for

Class: 3,5,44

Decision:
1. Veterinary preparations in Class 5 are similar to pharmaceutical preparations in Class 5 (para. 56 to 60).
2. The trade marks are visually, aurally and conceptually similar (para. 68 to 99).

There is a likelihood of confusion (para. 108). The Board of Appeal’s decision is upheld.


Case T-338/09 of 16 September 2013, Müller-Boré & Partner Patentanwälte.Rechtsanwälte vs. OHIM – Eugen Popp, Wolf E. Sajda, Johannes Bohnenberger, Volkmar Kruspig (contested decision: R 1176/2007-4 of 23 June 2009)

Trade marks:

MBP ip_law@mbp
Earlier trade mark Trade mark applied for

Class: 45

Decision: The trade marks are visually and aurally similar (para.56 to 61).
There is a likelihood of confusion (para. 84).

The Board of Appeal’s decision is upheld.


Case T-285/12 of 2 October 2013, The Cartoon Network, Inc vs. OHIM – Boomerang TV (contested decision: R 699/2011-2 of 2 April 2002)

Trade marks:


BOOMERANG
Earlier trade mark Trade mark applied for

Classes: 38, 41

Decision:
Cable and television broadcasting services; broadcasting programmes directed to children and young adults via a global computer network in Class 38 and Entertainment services, namely a series of television and cable television programmes targeted primarily to children and young adults in Class 41 are similar to production of films in Class 41 ( para. 27 to 39).
There is a likelihood of confusion (para. 45).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-661/11 of 19 September 2013, Martin Y Paz Diffusion SA vs David Depuydt and Fabriek van Maroquinerie Gauquie NV

The Court replies to a question referred by the Belgian Supreme Court relating to the interpretation of Article 5 of Directive 89/104 of 21 December 1988

The Court’s reply is as follows:

Article 5 of First Council Directive 89/104/EEC of 21 December 1988,, precludes a proprietor of trade marks which, in a situation where there has been use shared with a third party, had consented to the use by that third party of signs which are identical to its marks in respect of certain goods in classes for which those marks are registered and which no longer consents to that use, from being deprived of any possibility of asserting the exclusive right conferred upon it by those marks against that third party and of itself exercising that exclusive right in respect of goods which are identical to those of that third party.


Case C-610/11P of 26 September 2013, Centrotherm Systemtechnik vs. OHIM – centrotherm Clean Solutions GmbH & Co. KG (contested decision: T-434/09 of 15 September 2011)

Contested trade mark:

CENTROTHERM

Classes: 11,17,19,42

Decision:
1. In order to assess a sworn statement’s probative value, it is necessary to check the probability and the veracity of the account it contains, by taking account of, inter alia, the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (para. 38).
2. In proceedings for revocation of a mark, it is for the proprietor of the
mark, and not OHIM of its own motion, to establish genuine use of that mark (para. 62).
3. It remains possible to submit evidence of use of the mark in addition to the evidence adduced within the time period set by OHIM after expiry of that time limit and that OHIM is in no way prohibited from taking account of additional evidence which is submitted after that time (para. 87). It is for the Board of Appeal to assess, inter alia in keeping with the guidance provided in
this judgment and in taking due account of all relevant circumstances and providing reasons for that aspect of its decision, whether or not account must be taken of the additional evidence submitted to it (para. 118).

The General Court’s decision is annuled.


Case C-120/12P of 3 October 2013, Bernard Rintisch vs. OHIM – Bariatrix Europe Inc. SAS (contested decision: T-62/09 of 16 December 2011)

Trade marks:

PROTI PROTI SNACK
Earlier trade mark Trade mark applied for

Classes: 5,29,32

Decision: Under the third subparagraph of Rule 50(1) of the Implementing Regulation, where the appeal is directed against a decision of an Opposition Division, the Board of Appeal must limit its examination of the appeal to facts and evidence presented within the time-limits set in or specified by the Opposition Division, unless the Board considers that additional or supplementary facts and evidence must be taken into account pursuant to Article 74(2) of Regulation No 40/9 (para. 31).

Where OHIM is called upon to give judgment in the context of opposition proceedings, taking into account facts or evidence produced late is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (para. 38).

It is apparent from the contested decision that the circumstances surrounding the late submission of the evidence of the existence, validity and scope of protection of the marks at issue are not capable of justifying the appellant’s delay in the submission of proof required of him (para. 41)

The General Court’s decision is upheld.


4 ECTA News

ECTA Workshops on IP Translator: 24 October, Stockholm

Registrations for the workshop in Stockholm on 24 October are open.

Program of the workshop may be found HERE

Register HERE


Conference “Intellectual property protection in the EU: risks, challenges and prospects”, 8- 9 October, Lithuania

On the occasion of the Lithuanian Presidency of the EU Council, the State Patent Bureau of the Republic of Lithuania organized conference “Intellectual property protection in the EU: risks, challenges and prospects" on 8-9 October 2013.

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

Her report will be published in the next Flash.


ECTA Press Publication "Marques et PME: Succès de la formule européenne", Magazine Les Décideurs

Dr Max Oker-Blom, ECTA General Secretary and Ewa Grabiak, ECTA Legal Coordinator wrote article regarding the use of trade marks by SMES in the context of the current CTM system.

The article (in French) was published in the Les Décideurs Magazine in September 2013.

The article may be found HERE


Anti-counterfeiting, Domain Name, Trade Mark OHIM, WIPO