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15-14 | 13 October 2014

Topics: Counterfeiting Designs Domain Names E-filing EU Legislative Package Plain Packaging

ECTA Round Table session: Perfection or imperfection in trade mark practice in Russia
24 October 2014, Tallinn, Estonia
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Table of Contents

1 LAW
1.1 Trade Marks
  • Trade mark legislative reform: ECTA’s comments
  • Plain packaging: nine EU countries object to Ireland’s plain tobacco packaging proposal
  • Publication of a list of Community trade marks courts
1.2 Anti-Counterfeiting
  • Communication adopted by the European Commission entitled “Towards a renewed consensus on the enforcement of intellectual Property Rights: An EU Action Plan”: ECTA’s contribution
  • Operation REPLICA: 1.2 million counterfeit goods and 130 million cigarettes seized in EU-led operation
  • IP Key: ECTA’s involvement
1.3 Domain Names
  • Continued growth for .eu in Q2
2 OFFICE PRACTICE
2.1 WIPO
  • Change in the amount of the individual fee: Iceland
  • Third issue of Madrid Highlights 2014 now available
2.2 OHIM
  • Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (impact of non-distinctive/weak components)
  • Trade mark liaison meeting, 7-8 October
  • Communications of the President
  • OHIM IP Seminar on Designs
2.3 National Offices
  • Lithuania: The State Patent Bureau of the Republic of Lithuania (SPB) has introduced a new trademarks and designs e-filing system
3 CASE LAW

Summaries and case law provided by

C-205/13 auck GmbH & Co. KG vs Stokke A/S, Stokke Nederland BV, Peter Opsvik and Peter Opsvik A/S
Interpretation of Article 3(1)(e) of Directive 2008/95/EC

T-90/13 Herdade de S. Tiago II – Sociedade Agricola (fig) vs. The Polo Lauren Company (fig)
There is a likelihood of confusion

T-267/13 BASS3TRES (fig) vs. BAUSS
The trade marks are different

T-341/13 SO... ? vs. SO’BIO (fig)
The trade marks are different

T-493/12 DELPRAL vs. GEPRAL
There is a likelihood of confusion

T-490/12 GRAZIA (fig) vs. GRAZIA
The goods and services are different – No link between the trade marks

4 ECTA NEWS
  • ECTA’s Round Table session: brand owners life before and after IP Translator
  • ECTA’s Brussels Meeting with the EU Commission
  • EU-Korea IP dialogue

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 comments

On 3 October 2014, ECTA submitted comments to the EU Commission and the EU Parliament regarding the EU Presidency Compromise Proposals on the Trade Mark Directive and Regulation of 18 July 2014.

ECTA’s comments are available HERE.


1.1.2. Plain packaging: nine EU countries object to Ireland’s plain tobacco packaging proposal

Nine European Member States have filed objections to the Irish proposal for plain packaging of tobacco products, namely Italy, Bulgaria, the Czech Republic, Greece, Poland, Portugal, Romania, Slovakia and Spain.

Further information is available HERE.


1.1.3. Publication of a list of Community trade marks courts

A list of Community trade marks courts have been published in accordance with article 95(4) the Communities trade mark Regulation and Article 80(4) of the Community designs Regulation.

The list is available HERE.


1.2 Anti-Counterfeiting

1.2.1. Communication adopted by the European Commission entitled “Towards a renewed consensus on the enforcement of intellectual Property Rights: An EU Action Plan”: ECTA’s contribution

On 3 October 2014, ECTA submitted comments to the Communication adopted by the European Commission entitled “Towards a renewed consensus on the enforcement of intellectual Property Rights: An EU Action Plan”.

ECTA’s comments are available HERE.


1.2.2. Operation REPLICA: 1.2 million counterfeit goods and 130 million cigarettes seized in EU-led operation

The European Anti-Fraud Office (OLAF) has seized over 1.2 million counterfeit goods and 130 million cigarettes during an international joint customs operation. The Operation (REPLICA), targeted the maritime import of counterfeit goods.

Further information is available HERE


1.2.3. IP Key: ECTA’s involvement

On 23 September 2014, Bárbara Díaz attended the IP Key meeting at the EU Commission’s premises.

ECTA has submitted comments to IP Key regarding their future plan for 2015. ECTA’s collaboration with regard to IP Key will continue through the submission of further comments as suggested by some of its members.

ECTA’s comments are available HERE


1.3 Domain Names

1.3.1. Continued growth for .eu in Q2

A growth of 4.2% has been achieved by the .eu top-level domain during the second quarter of the calendar year.

Further information is available HERE.


2 Office Practice

2.1 WIPO

2.1.1. Change in the amount of the individual fee: Iceland

The Director General of WIPO has established new amounts of the individual fee to be paid when Iceland is designated: (i) in an international application; (ii) in a designation subsequent to an international registration; or (iii) in respect of the renewal of an international registration.
The information notice is available HERE.


2.1.2. Third issue of Madrid Highlights 2014 now available

The third issue of Madrid Highlights 2014 is now available HERE.

“Madrid Highlights is a quarterly publication of the World Intellectual Property Organization (WIPO) for the users of the Madrid System for the International Registration of Marks (Madrid System).”


2.2 OHIM

2.2.1. Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (impact of non-distinctive/weak components)

On 2 October 2014, the Common Communication on the Common Practice of Relative Grounds of Refusal has been implemented. IP national offices implementing this common practice will publish it on their website.

The common practice consists, mainly, of four objectives: 1)Define what marks are subject to assessment of distinctiveness: the earlier mark (and/or parts thereof) and/or the later mark (and/or parts thereof); 2)Determine the criteria to assess the distinctiveness of the mark (and/or parts thereof); 3)Determine the impact on likelihood of confusion (“LOC”) when the common components have a low degree of distinctiveness; 4)Determine the impact on likelihood of confusion (“LOC”) when the common components have no distinctiveness.

Further information is available HERE.


2.2.2. Trade mark liaison meeting, 7 - 8 October

The 12th Liaison meeting on trade marks between the OHIM and experts from national and regional IP offices took place on 7 and 8 October 2014 in Alicante. Andreas Renck (Chair of the ECTA – OHIM Link Committee) will attend the meeting on behalf of ECTA.

Further information is available HERE.


2.2.3. Communications of the OHIM’s President

On 19 September 2014, three communications were signed by the President of the OHIM:

  • Communication 1/14 concerning the registration of Community trade marks for retail services. It repeals Communication 7/05.
  • Communication 2/14 on the competent authority referred to in Article 86 (2) (CTMR) and in Article 71 (2) ( CDR) in the Czech Republic.
  • Communication 3/14 concerning the 10th edition of the Locarno Classification. This classification entered into force on 1 January 2014.

Further information is available HERE.


2.2.4. OHIM IP Seminar on designs

The OHIM Academy organized an IP Seminar on trade marks and designs in Alicante from 29 September to 3 October 2014. Bárbara Díaz Alaminos (ECTA legal coordinator) attended the first part of the seminar, focused on designs, on behalf of ECTA.

A report of a series of OHIM Academy events will be made available to ECTA members.


2.3 National Offices

2.3.1. Lithuania: The State Patent Bureau of the Republic of Lithuania (SPB) has introduced a new trademarks and designs e-filing system

As of 30 September 2014, users will be able to file designs and trade marks application, as well as other related documents, through a new amendment electronic system of the State Patent Bureau of the Republic of Lithuania (SPB).

Further information is available HERE.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On relative grounds for refusal

Case T-90/13 of 18 September 2014, Herdade de S. Tiago II – Sociedade Agricola, SA vs. OHIM – The Polo Lauren Company , LP (contested decision: R-2240/2011-2 of 28 November 2012)

Trade marks:



Earlier trade marks Trade mark applied for

Classes: 18, 25

Decision:
The trade marks are visually (para. 34 to 36) and conceptually (para. 38) similar.
There is a likelihood of confusion (para. 43).

The Board of Appeal’s decision is upheld.


Case T-267/13 of 18 September 2014, El Corte Inglés, SA vs. OHIM – Gaffashion-Comércio de Acessorios de Moda, Lda (contested decision: R-2295/2011-2 of 21 February 2013)


BAUSS
Earlier trade mark Trade mark applied for

Classes: 18, 25, 35

Decision:
The trade marks are visually (para. 37 to 46), aurally (para. 47 to 53) and conceptually (para. 54) different.

The Board of Appeal’s decision is upheld.


Case T-341/13 of 23 September 2014, Groupe Léa Nature SA vs. OHIM – Debonair Trading International Lda (contested decision: R-203/2011-1 of 26 March 2013)

Trade marks:

SO... ?
Earlier trade mark Trade mark applied for

Classes: 3, 25

Decision:
The element ‘so’ of the earlier trade mark does not dominate the overall impression, prevailing over the punctuation marks (para. 74).

The element ‘so’ does not constitute the dominant element of the trade mark applied for since the element ‘bio’ which appears below the element ‘so’, in the centre of the rectangle, is written in a typeface of the same size (para. 77).

The trade marks are visually (para. 70 to 80) and conceptually (para. 85 to 89) different. Aurally (para. 81 to 84), they are similar to a low degree.

Overall (para. 90 to 91), the trade marks are different.

The Board of Appeal’s decision is annulled.


Case T-493/12 of 24 September 2014, Sanofi SA vs. OHIM – GP Pharm SA (contested decision: R-201/2012-2 of 5 September 2012)

Trade marks:

DELPRAL GEPRAL
Earlier trade mark Trade mark applied for

Class: 5

Decision:
1. Since medicines are a very wide category comprising goods that are very diverse in nature and use, and given the high degree of attentiveness of the relevant public as to their purpose and intended use, as expressed in their therapeutic indication, as well as their potential side-effects on human health, the fact, on its own, that medicines belong to the same general category of goods supports the finding of only a low degree of similarity between the medicines in question (para. 22).

Pharmaceutical preparations for the treatment of the disorders of the central
nervous system and oncological preparations and preparations for cardiovascular treatments are similar only to a low degree (para. 23 to 25).

2. The trade marks are visually (para. 29 to 31) and aurally (para. 32 to 33) similar.
There is a likelihood of confusion (para. 40).

The Board of Appeal’s decision is annulled.


Case T-490/12 of 26 September 2014, Arnoldo Mondadori ditore SpA vs. OHIM – Grazia Equity GmbH (contested decision : R-1958/2010-4 of 6 September 2012)

Trade marks:


GRAZIA
Earlier trade mark Trade mark applied for

Classes: 3,9,16,18,25,35,36,38

Decision:
1, The services covered by the mark applied for, that is, in essence, business consultancy services and financial and brokerage services, are different from the goods in Classes 9 and 16 and services in Class 38 covered by the earlier mark (para. 27).

In view of the very widespread use of computers by companies, the fact that they are used by the applicant and the intervener to market their goods and services is insufficient in itself to establish that those goods and services are similar or complementary. Similarly, the fact that the intervener, which offers business consultancy services and financial and brokerage services, may have recourse to publishing information or official statements, either in electronic form or on paper, does not establish that it offers services similar to those provided by the applicant (para. 28).

2. The earlier figurative mark is well known in Italy to a significant part of the relevant public concerned by the goods and services covered by that mark (para. 64).

Even though the signs at issue are identical and the sections of the public to which the goods and services covered by those signs are directed overlap in part, there is no likelihood of a connection being made between them, as those goods and services are different in all respects; in particular, the images which they evoke bear no relation to each other, the earlier figurative mark does not have a particularly strong reputation, that mark has weak inherent distinctive character and the relevant public is unlikely to confuse the signs with each other (para. 78).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-205/13 of 18 September 2014, Hauck GmbH & Co. KG vs Stokke A/S, Stokke Nederland BV, Peter Opsvik and Peter Opsvik A/S

The Court replies to questions referred by the Dutch Supreme Court relating to the the interpretation of Article 3(1)(e) of Directive 2008/95/EC

The Court’s replies are as follows :

1. The first indent of Article 3(1)(e) must be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors.

2. The third indent of Article 3(1)(e) must be interpreted as meaning
that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value. The target public’s perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable.

3. Article 3(1)(e) must be interpreted as meaning that the grounds for refusal of registration set out in the first and third indents of that provision may not be applied in combination.


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 was successfully held on 15 September 2014, in Copenhagen. The round table was attended by approximately 29 attendees.

The presentations delivered during the Round Table are accessible HERE.


4.2 ECTA’s Brussels Meeting with the EU Commission

On 18 September 2014, ECTA’s delegation met with representatives from the EU Commission, especially from DG Markt. Following these meetings, ECTA submitted comments on the trade mark compromise proposals of 18 July 2014.


4.3 EU – Korea IP Dialogue

ECTA’s comments submitted to the EU Commission regarding the EU – Korea IP Dialogue are available HERE.


Anti-counterfeiting, Domain Name, Trade Mark