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16-13 | 31 October 2013

Topics: EU Legislative Package EUIPO Convergence Programme Lisbon System

IP SUMMIT 2013, 9-11 DECEMBER, PARIS
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Table of Contents

1 LAW
1.1 Trade Marks
  • Reform of the European CTM system - Latest developments

2 OFFICE PRACTICE
2.1 OHIM
  • Release of the 1st European Study on IP economic value - Presentation at the ECTA Autumn Meeting in Malta
  • Observatory Plenary Meeting in Alicante
  • Convergence Programme Meetings in OHIM
  • Hungary and Slovenia implement Common User Satisfaction Survey
2.2 WIPO
  • Working Group on the Development of the Lisbon System (Appellations of Origin)
  • Tunisia joins the International Trade Mark System
  • 52nd Series of Meetings of the Assemblies of the Member States of WIPO, 10-12 December 2013

3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-581/11 of 23 October 2013, Dimian AG vs. OHIM – Bayer Design Fritz Bayer GmbH & Co. KG
No proof of use of an unregistered trade mark of more than mere local significance

T-416/11 of 25 October 2013, Biotronik SE & Co. KG vs. OHIM – Cardios Sistemas Comercial e Industrial Ltda
No proof of genuine use

T-379/12 of 15 October 2013, Electric Bike World Ltd vs. OHIM – Brunswick Corp
The goods are similar

T-328/12 of 16 October 2013, Mundipharma GmbH vs. OHIM – AFT Pharmaceuticals Ltd
The trade marks are different

T-114/12 of 23 October 2013, Bode Chemie GmbH vs. OHIM – Laros Srl
There is no likelihood of confusion

C-597/12P of 17 October 2013, Isdin SA vs. OHIM – Bial-Portela & Ca SA
Failure to state reasons


4 ECTA NEWS
  • ECTA Workshops on IP Translator
  • Conference “Intellectual property protection in the EU: risks, challenges and prospects”- Report
  • ECTA Press Publication "All roads lead to Brussels", IPPro The Internet, The Annual 2013-2014

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

1 Law

1.1 Trade Marks

Reform of the European CTM system - Latest developments

At the EU Commission’s level, the Work Plan 2014 was adopted on 22 October and may be found HERE

At the European Parliament, the Meetings of Legal Affairs and Internal Market and consumers Protection took place on 14 October.
At the Legal Affairs Committee Meeting, Mrs Wikstrom informed the audience that the Committee decided to postpone the date to table the amendments until 24 October. Mrs Wikstrom also said that the vote on mandate is expected before Christmas.

At the IMCO Committee Meeting, Mrs Bastos informed the audience that she submitted 27 Amendments in her report, which deal with comparative advertising, freedom of speech, origin of products or goods in transit. As she pointed out, the system does not need revolutionary changes, but adjustments to be efficient and cheaper. She focused on her amendments to the Articles 9.4 TMR and 10.4 TMD. The Commission’s text authorizes the ban on imported goods for commercial purposes. Her amendments aim to involve national authorities and right holders at different stages of the process. All different actors should be involved in order to make sure that the human health is not endangered and the legislator does not create any obstacles to innovation. Further Mrs Bastos asked the Commission whether the exporters should be allowed to report the counterfeits as well.

Mr Eichenberg from the Commission expressed 2 concerns regarding the amendments. He referred himself to Amendment 26 TMD and 31 TMR and pointed out that these amendments lead to the international exhaustion regime. As he pointed out, creation of such regime is not part of the Commission’s proposal. In addition, in is not in the EU’s interest to move towards such regime. Regarding Mrs Bastos’s questions, which concern art. 10.4 TMD and art. 9.4 TMR (Consignments) to the question whether these provisions should be completed by reference to other intermediaries, Commission considers that the notion “consignor” is already broad as such. The commission therefore does not see any need to make express reference to exporter, but it is ready to discuss if more clarity on that point is needed.

Following ECTA Autumn Council Meeting in Malta last week, ECTA is pleased to inform you that a final revised version of the Executive Summary commenting on the Rapporteur Cecilia Wikstrom’s Report, is now available HERE

The detailed analysis of ECTA of the amendments proposed by the Rapporteur of the Legal Affairs Committee available under request at ECTA Secretariat.

Please note that only the Executive Summary of 22 October contains the final position of ECTA.


2 Office Practice

2.1 OHIM

Release of the 1st European Study on IP economic value - Presentation at the ECTA Autumn Meeting in Malta

Mr Nathan Wajsman, OHIM Chief Economist, presented the main points the study to ECTA council and Commitees Members.

As he explained, there was a political influence motivated by political will to prepare such study. It is interesting to have these figures because the Observatory was transfered to OHIM in 2012 and the study fits perfectly to the philosophy "Know before act". The release of the results of the second study on the perception of Intellectual Property is expected in November.

Five IPRs were taken into consideration and namely patent, designs, trade mark, copyright and geographical indications.

The second step was the determined which are "IPR-intensive industries", which means that they have a high number of IPRs per employee.

Regarding the employement, the contribution of IPR intensive industries to employement is of 35%, in particular trade marks (20, 8%).

Over 56 million of direct jobs are created thanks to IPRs intensive industries and 20 in addition through indirect jobs.

Regarding the contribution of IPR Intensive industries to GDP – 39% are from all IPR intensive industries and the trade mark industries represents 33, 9%.

Regarding the contribution of IPR-intensive industries to renumeration. IPR intensive industries pay significantly more than other industries, with a wage premium of over 40%.

The powerpoint presentation may be found HERE

The full version of the study may be found HERE

The Executive Summary of the study is available HERE

Observatory Plenary Meeting in Alicante

The 2nd Observatory Plenary Session took place on 28 and 29 October in Alicante.

The draft Observatory Multiannual Plan 2014-2018 has been presented during the Plenary Session.

Cristina Bercial-Chaumier, Secretary of ECTA Law Commitee attended the meeting on behalf of ECTA and her report will be published in the next Flash.

Convergence Programme Meetings in OHIM

Members of the Absolute Grounds and Relative Grounds Working Package 1 of the Convergence Programme met in OHIM on 21 and 22 October 2013. Both projects aim to establish a common practice among EU IP Offices in those areas.

The Absolute Grounds project (CP3) focuses on the different interpretations of the examination of absolute grounds for refusal regarding figurative trade marks with purely descriptive words or expressions. On the other hand, the objective of the Relative Grounds project (CP5) is to converge the interpretations on how to deal with non-distinctive or weak components of trade marks in the context of the examination of relative grounds for refusal (likelihood of confusion).

The Press Release is available HERE

Hungary and Slovenia implement Common User Satisfaction Survey

The Common User Satisfaction Survey is a Cooperation Fund project, which allows for a common approach to carrying out surveys across participating offices. It also allows for the cross-linkage of other projects such as Quality Standards.

On 25 October 2013 Hungary and Slovenia implemented the project, taking the number of integrated EU IP offices to 19.

More information may be found HERE

2.2 WIPO

Working Group on the Development of the Lisbon System (Appellations of Origin), 2-6 December 2013

Revised Draft Report of the Seventh Session of the Working Group on the Development of the Lisbon System is now available HERE

Comments on this track-changes version of the Revised Draft Report should be submitted by 8 November 2013, close of business, so that the final version of the Report can be prepared ahead of the Eighth Session of the Working Group which will take place in Geneva from 2-6 December 2013.

More information may be found HERE

Tunisia joins the International Trade Mark System

On 21 October, Tunisia’s Minister of Industry Mehdi Jomâa and WIPO Director General Francis Gurry hailed the entry into force of the Madrid Protocol in Tunisia, while reviewing bilateral cooperation and discussing WIPO’s future technical assistance to Tunisia.

Tunisia deposited its instrument of accession to the Madrid Protocol for the International Registration of Marks on 16 July 2013 and the treaty entered into force for Tunisia on 16 October 2013. The Madrid System for the International Registration of Marks (Madrid system), now with 92 members, offers trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally.

More information may be found HERE

52nd Series of Meetings of the Assemblies of the Member States of WIPO, 10-12 December 2013

Draft Agenda may be found HERE

More information may be found HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-581/11 of 23 October 2013, Dimian AG vs. OHIM – Bayer Design Fritz Bayer GmbH & Co. KG (contested decision : R 1822/2010-2 of 3 August 2011

Trade marks:

Bambolina <
Earlier unregistered trade mark Trade mark applied for

Class: 28

Decision: In relation to all the relevant territories, the applicant has not proved use in the course of trade of a sign of more than mere local significance up to the date of filing of an application for a declaration of invalidity (para. 31 to 73).

The Board of Appeal’s decision is upheld.


Case T-416/11 of 25 October 2013, Biotronik SE & Co. KG vs. OHIM – Cardios Sistemas Comercial e Industrial Ltda (contested decision : R 1156/2010-2 of 27 May 2011)

Trade marks:

CardioMessenger CARDIO MANAGER
Earlier trade mark Trade mark applied for

Classes: 5, 10

Decision: The evidence adduced by the applicant, whether assessed on an individual basis or as a whole, cannot be regarded as solid and reliable proof of use of the earlier trade mark (para. 35 to 42).
The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-379/12 of 15 October 2013, Electric Bike World Ltd vs. OHIM – Brunswick Corp. (contested decision : R 2308/2011-1 of 16 May 2002)

Trade marks:

LIFECYCLE LIFECYCLE
Earlier trade mark Trade mark applied for

Classes: 12, 28

Decision: The electric or motorised bicycles in Class 12 are slightly similar to the exercise bikes included in the goods ‘machines for physical exercises’ in Class 28 (para. 41 to 53).

There is a likelihood of confusion (para. 57 to 59).

The Board of Appeal’s decision is upheld.


Case T-328/12 of 16 October 2013, Mundipharma GmbH vs. OHIM – AFT Pharmaceuticals Ltd (contested decision : R 1788/2010-4 of 23 May 2012).

Trade marks:

OXYGESIC Maxigesic
Earlier trade mark Trade mark applied for

Class: 5

Decision: The trade marks are visually (para. 49) and aurally (para. 50 to 52) similar. Conceptually (para. 53), they are different. Overall (para. 63), they are different.

The Board of Appeal’s decision is upheld.


Case T-114/12 of 23 October 2013, Bode Chemie GmbH vs. OHIM – Laros Srl (contested decision : R 2423/2010-4 of 16 January 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 3, 5

Decision: The trade marks are visually (para. 27 to 28), aurally (para. 29) and conceptually (para. 29) similar.

Given that the common part of the signs, namely the prefix "steril", is not very distinctive and suffixes verbal elements of those signs are important distinctive position, there is pack of confusion (para. 32 to 34).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-597/12P of 17 October 2013, Isdin SA vs. OHIM – Bial-Portela & Ca SA (contested decision : T-366/11 of 9 October 2012)

Trade marks:

ZEBINIX ZEBEXIR
Earlier trade mark Trade mark applied for

Classes: 3,5

Decision: An examination of the grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought (para. 25).

Where the same ground of refusal is given for a category or group of goods or services, the reasoning may be general for all of the goods or services concerned (para. 26). However, such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services. The mere fact that the goods or services concerned are within the same class of the Nice Agreement is not sufficient for a finding that such homogeneity exists (para. 27).

The General Court itself drew a distinction between goods within the same class of the Nice Agreement on the basis of the conditions under which they are marketed. Consequently, it was incumbent on the General Court to set out reasons for its decision with regard to each group of goods which it had established within that class (para. 28).

The General Court’s is annuled.


4 ECTA News

ECTA Workshops on IP Translator

The latest Workshop on IP Translator took place on 24 October in Stockholm and was attended by 37 participants from law firms and industries.

Pictures of the Workshop may be found under Section Past Events.

The next workshop on IP Translator will take place on 6 November in Budapest.

Program is available HERE

Registration Form may be found HERE

Conference “Intellectual property protection in the EU: risks, challenges and prospects” - Report

As mentionned in the last Flash, 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 may be found HERE

Speakers’ Presentations may be found HERE

ECTA Press Publication "All roads lead to Brussels", IPPro The Internet, The Annual 2013-2014

Article prepared by ECTA Legal Coordinator Ewa Grabiak was published in the latest edition of IPPro The Annual 2013-2014.

The article may be found HERE

The entire IPPro The Annual 2013-2014 may be found HERE


Trade Mark Boards of Appeal, OHIM, Trade Mark