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16-14 | 12 November 2014

Topics: Designs E-filing EU Legislative Package Geographical Indications Plain Packaging

 

Table of Contents

1 LAW
1.1 Trade Marks
  • Trade mark legislative reform
  • Plain packaging case delayed
  • Vans to prove genuine use
1.2 Anti-Counterfeiting
  • AIFA director: Quality of medicines conference
1.3 Copyright
  • European Court of Justice: Video embedding is not a copyright infringement
  • Role of new European Commissioners in the digital domain
1.4 Domain Names
  • ICANN: resolution on internet governance.
2 OFFICE PRACTICE
2.1 WIPO
  • Diplomatic conference on appellations of origin and geographical indications
  • Lithuania withdraws from notification 20 bis (6)(b)
  • Sint Maarten according to Article 8(7)(a) of Madrid Protocol
2.2 OHIM
  • Database for orphan works
  • Only paid community trade mark applications will be examined
  • ISO 9001, 27001 and the OHSAS 18001 certification awards
  • Examination international registrations: vague terms
  • Spanish online industrial design application
  • Greece: trade marks e-filing
  • OHIM Administrative Board and Budget Committee meetings
2.3 National Office
  • Police Intellectual Property Crime Unit granted with a 3 million pounds funding
3 CASE LAW

Summaries and case law provided by

T-484/12 SMILECARD
The trade mark is descriptive

T-266/13 Curve
The trade mark is contrary to the accepted principles of morality

T-39/13 Cezar Przedsibiorstwo Produkeyjne Dariusz Bogdan Niewiski vs. Poli-Eco Tworzywa Sztuczne sp. z o.o. (Design)
Visibility of component parts of complex products

T-122/13 and T-123/13 DODOT vs. Dodie (fig)
There is no likelihood of confusion

T-342/12 Max Fuchs (fig) vs. Les Complices SA (fig)
There is a likelihood of confusion

T-262/13 SKY vs. SKYSOFT
There is a likelihood of confusion

T-515/12 El Corte Inglés vs. The English Cut
The trade marks are different

T-444/12 LINES PERLA vs. LINEX
There is no likelihood of confusion

4 ECTA NEWS
  • ECTA’s Autumn Council and Committee meetings
  • ECTA’s contribution: Protection of geographical indications for non-agricultural products
  • ECTA’s Legal Communicator
  • ECTA’s new office
  • How to become a member of an ECTA Committee

Editorial team: Daniela Derksen, Bárbara Díaz Alaminos, Jean-Jo Evrard


1 Law

1.1 Trade Marks

1.1.1. Trade mark legislative reform

Discussions between the EU Institutions and Members States are still on-going with regard to the final approval of the trade mark legislative reform. Meanwhile, the European Federation of Pharmaceutical Industries and Associations (EFPIA) submitted, together with other trade mark associations, an open letter to the European Commission, the European Parliament, and Member States. The letter focuses on four issues:

1) Control of counterfeit goods in transit;
2) Consultation of trade mark users;
3) Involvement of trade mark users in the determination of the use of OHIM funds;
4) Rights conferred by the trade mark and its limitation in the European Parliament’s text.

Further information is available HERE.


1.1.2. Plain packaging case delayed

Opponents at TRIPS Council have urged countries to delay their plans until the case involving Australia’s law is settled.

They have stated that the plain packaging legislation will make it easier to counterfeit products and would have a great impact on the poor producers of tobacco. They found plain packaging to be too drastic for the objective of health.

Further Information is available HERE.


1.1.3. Vans to prove genuine use

On 13 November 2014, the American manufacturer of shoes Vans will need to prove to the European Court of Justice whether they are a distinctive brand.

While OHIM’s decision is to not grant a trade mark, because the symbol is devoid of a distinctive character, Vans claimed that their symbol is already being used and recognised in Europe. Nevertheless, OHIM stated that very few consumers would be able to associate the symbol with Vans.

Further information is available HERE.


1.2 Anti-Counterfeiting

1.2.1. AIFA director: Quality of medicines conference

A conference organised by the European Directorate for the Quality of Medicines & Healthcare took place in Strasbourg from 6 to 8 October 2014.

During the conference, Domenico Di Giorgio, Director of counterfeit prevention at the Italian Medicines Agency, stated that the main concern in counterfeiting is not in the pharmaceutical products but the drug ingredients of dietary products.

Further information is available HERE.


1.3 Copyright

1.3.1. European Court of Justice: Video embedding is not a copyright infringement

Video embedding is used to describe a video that is hosted by a third-party website that is displayed in one’s own website.

On 21 October 2014, the European Court of Justice answered the question given by the German Supreme Court on whether embedding infringes copyright.

The European Court of Justice has decided that embedding a video does not constitute an infringement of the right to communication, insofar as the video is not directed at a new public or is communicated through different technical means.

Further information is available HERE.


1.3.2 Role of new European Commissioners in the digital domain

The digital domain will be an important focus for the newly assigned European Commission.

Two commissioners have been assigned to harmonize the technological related policies and laws. Günther Oettinger, new Commissioner for Digital Economy and Society, and Andrus Ansip, Vice President of the Commission responsible for Digital Economy and Society. Andrus Ansip will lead the project that is focused on telecom regulation, copyright and data protection legislation. Günther Oettinger will deal with proposals to complete the digital market in the EU and will concentrate on copyright reform.

Further information is available HERE.


1.4 Domain Names

1.4.1 ICANN: resolution on internet governance

The European Council has adopted a resolution on internet governance, underlining its importance in the European Union. In its resolution, the European Council states that the ‘the new gTLD programme by ICANN has shown the limitation of ICANN functioning and model’. Therefore, it has been suggested that ICANN should have a global reform, which includes a reform of ICANN’s mandate.

The European Council decision is available HERE.


2 Office Practice

2.1 WIPO

2.1.1. Diplomatic conference on appellations of origin and geographical indications

On 31 October 2014, a Diplomatic conference was held to discuss the adoption of a new act of the Lisbon Agreement for the protection of appellations of origins and their international registration.

The Lisbon Agreement has 28 members and is being revised to include geographical indications. This will allow international organisations to be included in the Agreement.

Through their two day meeting they concluded to hold a Diplomatic conference from 11 to 21 May 2015.

A report is available HERE.


2.1.2. Lithuania withdraws from notification 20 bis (6)(b)

On 2 September 2014, Lithuania withdrew from the notification that has been made under rule 20 bis (6) (b) of the Common Regulations under the Madrid Agreement and Protocol.

Consequently, as from 2 September 2014, recording a license in the International Register relating to an international registration of a mark has effect in Lithuania. This recording would have the same effect as if it would have been made in the national Register of the State Patent Bureau of the Republic of Lithuania.

Further information is available HERE.


2.1.3. Sint Maarten according to Article 8(7)(a) of Madrid Protocol

In accordance to article 8(7)(a), on fees for international application and registration of the Madrid Protocol, WIPO received from the Kingdom of the Netherlands a declaration whereby an individual fee shall be paid as the territorial entity Sint Maarten is to be designated. Sint Maarten can be designated through an international registration, international application or through a renewal of an international registration.

After consultation with the office concerned, the Director General of WIPO established new amounts for the individual fee.

The information notice is available HERE.


2.2 OHIM

2.2.1 Database for orphan works

On 27 October 2014, OHIM launched a database for orphan works.

The term orphan works is used for the works of films, newspaper articles and other creative materials whose owner could not be identified. After establishing these works as orphan works, they may be used by public institutions.

Orphan works have now been included in an EU-wide database by OHIM, which is publicly accessible online.

Further information is available HERE.


2.2.2 Only paid community trade mark applications will be examined

Starting on 24 November 2014, OHIM will not examine any applications which have not firstly been paid for. This has been decided as a consequence of the lack of payment of some Community trade mark applications, which had already been examined by OHIM. The OHIM believes that this conversion will increase the efficiency of the paid applications.

Further information is available HERE.


2.2.3 ISO 9001, 27001 and the OHSAS 18001 certification awards

OHIM has been granted the quality management system (ISO 9001), the information security Management (ISO 27001) and the Occupational Health and Safety (OHSAS 18001) awards. OHIM stated that they will keep improving their services to satisfy its customers and stakeholders.

OHIM is now the largest IP office for trade marks and design in the world to have attained the ISO 9001 standard.

Further information is available HERE.


2.2.4 Examination of international registrations: vague terms

From 1 October 2014, OHIM will examine the classification of international registrations, designating the European Union, for vague terms.

In this regard, OHIM is entitled to send a notification of refusal for the registration of the term, would a term that is covered by international registration, designating the European Union, be considered vague, broad, lack clarity and precision.

A list of eleven terms that have been considered by OHIM to be too vague or broad, lack clarity and precision can be found HERE.


2.2.5 Spanish online industrial design application launched

The Spanish Patent and Trademark Office (SPTO), in collaboration with OHIM, has developed an online industrial design application to improve and facilitate the procedure of filing and granting industrial designs at the SPTO.

This application has been available since 7 November 2014, in the Express Design service, which has been recently implemented by SPTO to help applicants to submit their designs.

Further information is available HERE.


2.2.6 Greece: trade marks e-filing

On 3 November 2014, the trade mark Office of Greece implemented the e-filing system tool. The e-filing was successfully implemented through the joint effort of OHIM experts and the Greek trade mark Office.

Further Information is available HERE.


2.2.7. OHIM Administrative Board and Budget Committee meetings

The OHIM Administrative Board and Budget Committee meetings will be held from 18 to 20 November 2014, in Alicante. F. Peter Müller, ECTA President, and Bárbara Díaz Alaminos, Manager Legal Affairs, will attend these meetings on behalf of ECTA.


2.3 National Office

2.3.1. Police Intellectual Property Crime Unit granted with a 3 million pounds funding

The Police Intellectual Crime unit specializes in protecting the industries of United Kingdom who produce ‘legitimate, high quality, physical and digital content goods’. Established in 2013, the unit is based in the City of London Police at the Economic Crime Directorate.

The Police Intellectual Crime unit has been granted with a 3 million pounds funding with which it will extend its existence until the year 2017.

The minister for Intellectual Property, Baroness Neville-Rolfe, stated that it is important to protect creators, consumers and the economic growth of the UK. The Police Intellectual Property Crime Unit has shown positive results. It has, inter alia, seized more than 1. 29 million pounds worth of counterfeited goods and suspended 2.359 domain names.

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-484/12 of 25 September 2014, CEWE Stiftung & Co. KgaA vs. OHIM (contested decision: R-2279/2011-4 of 3 September 2012)

Trade mark applied for:

SMILECARD

Classes: 9,16,40

Decision:
The trade mark is descriptive.

The words “smile” and “card” belong to basics in English vocabulary (para. 22). The relevant public will immediately understand the meaning of the combined term “SMILECARD” as referring to a card (postcard, greeting card) that makes its addressee smile (para. 23)

The Board of Appeal’s decision is upheld.


Case T-266/13 of 26 September 2014, Brainlab AG vs. OHIM (contested decision: R-2073/2012-4 of 15 March 2013)

Trade mark applied for:

Curve

Classes: 9,10,35,38,41,42,44,45

Decision:
The trade mark is contrary to public policy or accepted principles of morality.

In Romanian, the word ’curve’ is the plural of the word ’curv’, the primary meaning of which in slang or vulgar terms is ’whore’ or ’prostitute’, and which is therefore intrinsically insulting and obscene and not just in bad taste (para. 29).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Trade marks:

Case T-39/13 of 3 October 2014, Cezar Przedsibiorstwo Produkeyjne Dariusz Bogdan Niewiski vs. OHIM – Poli-Eco Tworzywa Sztuczne sp. z o.o. (contested decision: R-1512/2010-3 of 8 November 2012)

Designs:




Earlier design Contested design

Decision:
Under Article 4(2)(a) and (b) of Regulation No 6/2002, in the case of component parts of complex products, the only features that need be taken into account in a comparison of the designs in question are those that are visible during normal use (para. 26).

The contested design constitutes a component part of a complex product where it is intended to cover a recess in a skirting board and, incidentally, a recess in a wall or floor (para. 27).

Only the flat surface of the contested design remains visible when that design is used to cover a recess in a skirting board or wall (para. 38).

Since a design constituting a component part of a complex product which is not visible during normal use of that complex product cannot be protected under Article 4(2)(a) of Regulation No 6/2002, it must be held, by analogy, that the novelty and individual character of a Community design cannot be assessed by comparing that design with an earlier design which, as a component part of a complex product, is not visible during normal use of that product (para. 51).

An application for a declaration of invalidity cannot be based on an earlier design which, as a component part of a complex product, is not visible during normal use of that product. As a result, the analysis of the contested design’s novelty and individual character carried out by the Board of Appeal is flawed (para. 53)

The Board of Appeal’s decision is annulled.


Case T-122/13 and T-123/13 of 8 October 2014, Laboratoires Polive vs. OHIM – Arbora & Ausonia, SLU (contested decisions: R-2324/2011-2 and R-2325/2011-2 of 28 November 2012)

Trade marks:

DODOT

Earlier trade mark Trade mark applied for

Classes: 3,5,8,10,11,16,18,21,25,28

Decision:
The trade marks are visually different (para. 37 to 42). Aurally, they are similar to a low degree, if not to a very low degree (para. 43 to 50). Overall, they are similar to only a very low degree (para. 53).

The low degree of similarity of the signs does not support the conclusion that there is a likelihood of confusion in the present case, notwithstanding
the similarity, if not the identity of the goods, and even having regard to the public, which does not display a particularly high degree of attention (para. 57).

The Board of Appeal’s decision is annulled.


Case T-342/12 of 8 October 2014, Max Fuchs vs. OHIM – Les Complices SA (contested decision: R-2040/2011-5 of 8 May 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 9,25

Decision:
The trade marks are visually (para. 41 to 45) and conceptually (para. 50 to 53) similar.

There is a likelihood of confusion (para. 62)

The Board of Appeal’s decision is upheld.


Case T-262/13 of 15 October 2014, Skysoft Computersysteme GmbH vs. OHIM – British Sky Broadcasting Group plc and Sky IP International Ltd(contested decision: R-2503/2011-4 of 20 March 2013)

Trade marks:

SKY SKYSOFT
Earlier trade mark Trade mark applied for

Classes: 9,35,37,38,42

Decision:
1. There is an average degree of similarity between the services ‘maintenance and repair of data processing equipment and computer installations (including equipment for access to networks and computer databases)’ in Class 37, on the one hand, and the goods ‘data processing equipment and computers’ in Class 9, on the other hand (para. 22 to 27).
2. The trade marks are visually (para. 29 to 30), aurally (para. 31 ) and conceptually (para. 32 to 33) similar.

There is a likelihood of confusion (para. 35 to 42).

The Board of Appeal’s decision is upheld.


Case T-515/12 of 15 October 2014, El Corte Inglés, SA vs. OHIM – The English Cut, SL (contested decision: R-1673/2011-1 of 6 September 2012)

Trade marks:

El Corte Inglés The English Cut
Earlier trade mark Trade mark applied for

Class: 25

Decision:
The trade marks are visually (para. 24) and aurally (para. 25) different.

The signs at issue have the same literal meaning: the English cut. In fact, the trade mark applied for is the English translation of the prior mark. However, consumers will only perceive that the signs at issue have an identical meaning after translating the sign ’English cut’. They will not make an immediate conceptual comparison between the signs (para. 28). Therefore, the signs at issue have a low degree of conceptual similarity which requires a correct prior translation (para. 29).

Overall, the trade marks are different (para. 33).

The Board of Appeal’s decision is upheld.


Case T-444/12 of 16 October 2014, Novartis AG vs. OHIM – Teniment Angelini SpA (contested decision: R- 414/2011-4 of 6 August 2012)

Trade marks:

LINES PERLA LINEX
Earlier trade mark Trade mark applied for

Class: 5

Decision:
1. There is only a very low degree of similarity between Pharmaceutical preparations, containing lactobacillus acidophilus’ and Ladies hygienic diaper; hygienic napkins for incontinents’ in Class 5 (para. 32 to 58).
2. Visually (para. 62) and aurally (para. 63), there is a low degree of similarity.

The degree of visual and phonetic similarity between the marks at issue, which is rather low, is not sufficient to offset the very low degree of similarity of the contested goods. There is no likelihood of confusion (para. 70).

The Board of Appeal’s decision is annulled.


4 ECTA News

4.1 ECTA’s Autumn Council and Committee meetings

ECTA’s Council and Committee meetings were successfully held on 23 and 24 October 2014, in Tallinn.

ECTA’s Strategic Plan 2014-2020 was approved by ECTA’s Council. The Strategic Plan has been developed by 5 teams of Council Members and members of the Management Committee in collaboration with the President, F. Peter Müller, and structured in 5 main areas, namely:

  • Develop Membership Benefits (DMB) / Aurélia Marie and Pierre Kihn
  • Broaden ECTA`s Expertise (BEE) / Ruta Olmane and Mladen Vukmir
  • Reinforce External Partnerships (REP) / Raluca Vasilescu and Andrew Ratza
  • Strengthen the Internal Organization (SIO) / Fabio Angelini and Max Oker-Blom
  • Broaden Financial Basis (BFB) / Frank Jorgensen and Sozos-Christos Theodoulou

4.2. ECTA’s contribution: Protection of geographical indications for non-agricultural products

ECTA has submitted comments to the European Commission, the OHIM, and WIPO, on the Green Paper on a possible extension of geographical indication protection of the European Union to non-agricultural products.

ECTA’s comments, prepared by its Geographical Indications Committee, are available HERE


4.3. ECTA’s Legal Communicator

On 3 November 2014, Daniela Derksen joined ECTA as the ECTA Legal Communicator.

We welcome Daniela and wish her all the best in her new position.


4.4. ECTA’s new office

ECTA’s Secretariat has now moved to its new office in Rue des Colonies 18, 8th Floor, 1000 Brussels.

Some pictures of the new office are available HERE


4.5. How to become a member of an ECTA Committee

Every 3 years Committee members are re-elected. In this regard, the latest re-election happened in 2013. This means that the next re-election will happen in 2016.

However, if an ECTA member would like to become a Committee member before the next re-election, this can be done by sending an email to the ECTA Secretariat who will contact the Committee Chair for their consideration of the request.

If there is not a representative from your country in the Committee you might have a greater chance to be elected in the Committee of your choice.


Anti-counterfeiting, Domain Name, Trade Mark