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17-11 | 4 October 2011

Topics: ACTA Domain Names EUIPO Convergence Programme EUIPO Cooperation Fund

Trade Marks - Enforcement - Domain Names - OHIM - WIPO - ECTA News

Table of Contents

1 LAW
1.1 Trade Marks
  • OHIM Cooperation Fund – Lord Mogg’s communication and kick-off meetings at OHIM
  • OHIM President ‘s letter on Convergence Programmes – Meeting in Alicante
  • ECTA delegation met with the Commission on 22 September in Brussels
1.2 Enforcement
  • ACTA signing ceremony in Japan on 1 October 2011
  • Cyprus introduces stricter checks on the green line
1.3 Domain Names
  • Trade mark Owners can block .xxx Domain Names until 28 October 2011
2 OFFICE PRACTICE
2.1 OHIM
  • IP C&C Newletter
  • Croatia signed Memorandum of Understanding with OHIM on 27 September
  • Russia signed Memorandum of Understanding with OHIM on 27 September
  • OHIM Academy holds major IP seminar
  • Call for public service to be “part of the solution”
  • Signature of Host Agreement between Spain and OHIM
  • OHIM President at MARQUES 25th Annual Conference and GRUR Annual meeting
2.2 WIPO
  • Director General welcomes advances in normative agenda, outlines future challenges
  • IP Facts & Figures 2011
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-232/10 Fig mark
The Board of Appeal’s decision is upheld

T-512/10 DYNAMIC SUPPORT
The Board of Appeal’s decision is upheld

T-1/09 METAFORM (fig) vs. META
There is a likelihood of confusion

T-174/10 A vs. Fig mark
The similarity is not sufficient to create a likelihood of confusion

T-581/08 PROTON vs. Proton Motor (fig)
The goods and services are different

T-356/10 Victory vs. VICTORY RED
There is a likelihood of confusion

COURT OF JUSTICE

C-323/09 Interflora Inc. and Interflora British
Use of a trade mark in a keyword advertising on the Internet

C-482/09 Anheuser Busch
Limitation in consequence of acquiescence

4 ECTA NEWS
  • ECTA Workshop on international registrations of designs in collaboration with GRUR, WIPO and DPMA on 26 September 2011 in Hamburg
  • ECTA at IP Week 2011, Brussels 6 to 9 December 2011

Editorial Board: Anne-Laure Covin, Jean-Jo Evrard, Annick Mottet Haugaard, and Cathy van Vuuren


1 Law

1.1 Trade Marks

OHIM Cooperation Fund – Lord Mogg’s communication and kick-off meetings at OHIM

On 16 September 2011, Lord Mogg provided the Delegations and Observers at the Administrative Board and Budget Committee with an update on projects of Cooperation Fund. Letter and annex can be found HERE and HERE.

All projects in packets 1 and 2 are well underway. By October 2011, they will have recruited technical and consulting support for each of the projects. As of 7 September every project has the minimum requirement for making progress (Project Manager, technical lead, working group of national offices and user associations). Specific consulting expertise is now in place in all packet one projects, and in most packet two projects (all are selected and in the contracting phase, with the exception of IT architects, which are a notoriously scarce resource). By the end of September, the first project, CF213 XML and Architecture, will be complete, as will the main elements of the CF 114 Seniority project.

More than 80 experts from all 27 member states and 8 user organisations took part in OHIM from 26 to 30 September for the launch of the second wave of Cooperation Fund projects and for a meeting of the Convergence Programme.

Imogen Wiseman, Member of the ECTA Law Committee for CF 321 Common call centre, Marius Schneider, Chair of the ECTA Anti-Counterfeiting Committee for CF 423 Harmonised counterfeiting data collection standard and Cristina Bercial, Secretary of the Law Committee, for CF 125 Harmonizing and sharing Quality Standards. Their reports will be soon available for ECTA members.

The meetings covered the common e-filing tool (first project to get under way from the Future Software Package of tools), common user satisfaction survey, common call centre, common gateway for applications and two enforcement-related projects. In addition the event included a demonstration of the new seniority tool (ECTA was represented by Andreas Renck, Chair of the OHIM Link Committee), and the launch of EuroClass Version 2.


OHIM President ‘s letter on Convergence Programmes – Meeting in Alicante

Following OHIM President António Campinos’s letter of 21 June 2011 and ECTA’s letter of 15 July 2011 (ref to Flash of 20 July 2011), OHIM President sent a letter in connection with convergence programmes. The 3 below new projects are proposed to be added to those currently in progress (the Class Headings project and the Harmonization on Classification project):

1. Convergence of Practice concerning the examination of absolute grounds for refusal as regards figurative trade marks with purely descriptive / non distinctive words/expressions. (When does the figurative element carry the trademark distinctiveness?)

2. Convergence of Practice of the scope of protection of trade marks in black, white and/or shades of grey only. (Do they cover any/all colours or not?)

3. Convergence of Practice on how to deal with non-distinctive/weak components of trademarks in the context of the examination of relative grounds for refusal, (Likelihood of confusion).

OHIM is looking for experts to become members of these working groups. Due to the similar nature of these projects, Antonio Campinos has suggested that the same expert could deal with all three projects, which could be organized at the same time.

ECTA has accordingly informed its Council Members and Committee Members to inform the Management Committee about possible candidacies. The final names and CVs will be sent to OHIM prior to the OHIM deadline of 10 October 2011.

According to OHIM, during the last week of September, there was a meeting of experts working on the Class Headings project under the auspices of the Convergence Programme which has been set up to try and reach consensus on issues of practice where offices and users agree that the differences should be eliminated.


ECTA delegation met with the Commission on 22 September in Brussels

ECTA, represented by Annick Mottet Haugaard, President, Max Oker-Blom, Secretary General, Fabio Angelini, Chair of the Law Committee, Marius Schneider, Chair of the Anti-Counterfeiting Committee, and Anne-Laure Covin, Legal Co-ordinator, met with representatives of Commissioner Barnier and Commissioner Dalli Cabinets, as well as with representatives from DG TRADE on 22 September 2011 in Brussels. The minutes of the meetings can be found at the Anti-Counterfeiting and Law Committees - Paper Sections.

1.2 Enforcement

ACTA signing ceremony in Japan on 1 October 2011

The signing ceremony of ACTA took place in Tokyo on 1 October attended by the representatives of all the participants in the ACTA negotiations. 8 countries signed the agreement: Australia, Canada, Japan, the Republic of Korea, Morocco, New Zealand, Singapore and the United States. The Reuters link can be found HERE.

ECTA is currently in contact with other associations on a joint paper to be provided to all EU stakeholders including European Parliament Members to demonstrate the advantages for the EU to sign ACTA.


Cyprus introduces stricter checks on the green line

Cypriot Customs Authorities decided in July 2011 to render their controls on the so-called “Green Line” (i.e. the “border” between the Republic of Cyprus and the occupied by Turkey north of the island) stricter. Thus, they now come up with many small seizures of even personal items (usually, 1-10 pieces), the usual personal allowance not being applicable in these cases. READ SOZOS-CHRISTOS THEODOULOU’s FULL ARTICLE


1.3 Domain Names

Trade mark Owners can block .xxx Domain Names until 28 October 2011

The so-called "adult industry" has set up the ICM Registry being responsible for the new Top Level Domain (TLD) *.xxx. If one is not interested in using the new top level domain *.xxx for its contents, once may nevertheless be interested in blocking its trade marks as second level domain under *.xxx (e.g. brand.xxx). The ICM Registry has just opened so-called Sunrise B Period until 28 October 2011 for this purpose. Trade mark owners can block the second level domain for their trade mark (brand.xxx).

Request cannot be filed directly but only via Internet service providers (ISP). ISP charge in the range of 200 EUR – 400 EUR for unlimited time of blocking. In short, the requirements for blocking are:

- Special signs (for instance &, +, =) can be transcribed, substituted by a hyphen or omitted; if the trade mark comprises a hyphen, this has to be in the domain name.
- The domain name must have at least three and cannot have more than 63 signs including the TLD.
- Any variation of the trade mark has to be blocked separately as a domain name.
- Usual data of the registered trade mark as well as copy of the registration certificate etc. have to be filed as well as status as trade mark owner, licensee or representative.
- The blocked domain name will lead to a standard text of the ICM registry that the domain name is blocked. The trade mark owner will not be revealed. The WHOIS-entry will only show the Internet service provider but not the trade mark owner.

Further information is also available on www.icmregistry.com.

2 Office Practice

2.1 OHIM

IP C&C Newletter

The OHIM President António Campinos sent a letter on 26 September 2011to the Users Associations informing about the publication of an electronic newsletter that will appear every two months in 22 EU languages. The first edition of the newsletter includes updates on both the Cooperation Fund and the Convergence Programme, interesting profiles of OHIM’s partners, a special report on the TMview project, and other news.

“The IP C&C (cooperate and converge) newsletter will serve, not only to keep those taking part in Working Groups informed, but also others who do not form part of any of the working group but are interested in the progress. The decision to translate it also makes it readily accessible to your associates at national level, providing a chance to showcase the projects and the association’s involvement."

ECTA will provide a link to the English version of the newsletter.


Croatia signed Memorandum of Understanding with OHIM on 27 September

OHIM signed on 27 September a Memorandum of Understanding with the State Intellectual Property Office of the Republic of Croatia (SIPO Croatia). The agreement was signed in Geneva by OHIM President António Campinos and Zeljko Topic, Director General of SIPO. The MoU signed today is testimony of OHIM’s ongoing commitment in the area of support and assistance to candidate countries and of Croatia’s continuing efforts as it works towards membership of the European Union.


Russia signed Memorandum of Understanding with OHIM on 27 September

Boris Simonov, President of Rospatent, the Russian Patent Office, signed on 27 September a Memorandum of Understanding with the OHIM President António Campinos in Geneva. The Memorandum lays down a bilateral framework which covers the mutual exchange of statical data and IP expertise as well as an agenda for annual meetings of experts from both offices over the coming years.


OHIM Academy holds major IP seminar

The OHIM Academy is holding its first major IP seminar from 26 September to 7 October, involving presentations and working sessions for around 50 experts drawn from national IP offices in EU member states and candidate countries. Topics covered include detailed overviews of the Community trade mark and design systems and of OHIM’s operations. The IP seminar includes sessions on examination on absolute grounds, relative grounds for refusal in opposition proceedings, risk of confusion, geographical indications, and e-business issues. The agenda can be found HERE.


Call for public service to be “part of the solution”

In his opening address to the Conference of Staff Associations of International Organizations, held in Alicante on 22 September 2011, OHIM President António Campinos mentioned that the EU agencies, UN organisations based in Europe and other significant bodies had a “truly global reach”. Public servants need to make sure they are “part of the solution” in the current economic crisis. The OHIM President spoke in favour of reforms to better match people’s responsibilities and their grades and to introduce a merit-based, rather than seniority-based system of promotion.
His speech can be found HERE.


Signature of Host Agreement between Spain and OHIM

A host agreement between the Kingdom of Spain and the OHIM was signed on 20 September 2011 by Diego López Garrido, Secretary of State for the European Union, and António Campinos, OHIM President.


President Campinos participates at MARQUES 25th Annual Conference and GRUR Annual meeting

President Campinos took part in the MARQUES 25th Annual Conference held between from 13 to 16 September in Baveno in Italy. His speech can be found HERE.

He also attended the Annual Meeting of GRUR held in Berlin from 14 to 17 September. His speech can be found HERE.

The President provided an update on the current state of play at OHIM and the progress of the Strategic Plan. He also commented the issues, such as building and using common tools, fostering harmonisation of practices and the work underway to further harmonise trade mark laws and procedures under the process of legislative review.

2.2 WIPO

Director General welcomes advances in normative agenda, outlines future challenges

WIPO Director General Francis Gurry said on 26 September at the meetings of the Assemblies of the Member States in Geneva that the international intellectual property (IP) community faces three major challenges in the coming years – management of demand of IP applications, the migration of all cultural content to the Internet, and enhancing the capacity of least developed and developing countries to use the IP system for encouraging innovation and creativity.
The complete communication can be found HERE.


IP Facts & Figures 2011

WIPO released on 23 September 2011 its "IP Facts & Figures 2011" which is a selection of statistics on IP activity worldwide.

3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-232/10 of 20 September 2011, Couture Tech Ltd vs. OHIM (contested decision: R 1509/2008-2 of 5 March 2010)

Trade mark:


Classes: 3,14,18,23,26,43

Decision: It is apparent from Article 7(1)(f) and (2) of Regulation No 207/2009 that a mark must be refused registration if it is contrary to public policy or to accepted principles of morality in part of the European Union, and that part may, in some circumstances, be comprised of a single Member State (para. 26).

It is apparent from Article 269/B of the Hungarian Criminal Code, that the Hungarian legislature considered it necessary to ban certain uses of ‘symbols of despotism’, including the hammer and sickle and the five-point red star. That ban, which also covers the use of those signs as trade marks, is accompanied by criminal penalties (para. 59).

The use of the mark applied for as a trade mark would be perceived by a substantial section of the relevant public in Hungary as being contrary to public policy or to accepted principles of morality (para. 62).

The Board of Appeal’s decision is upheld.


Case T-512/10 of 21 September 2011, Nike International Ltd vs. OHIM (contested decision: R 640/2010-4 of 25 August 2010)

Trade mark:

DYNAMIC SUPPORT

Class: 25

Decision: The consumer will identify immediately and without further thought the expression ‘dynamic support’ as describing the characteristics of the footwear. Furthermore, it is noteworthy that to offer dynamic and adapted support during any sporting activities is one of the essential characteristics of sports footwear (para. 25).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-1/09 of 20 September 2011, Aloys F. Dornbracht GmbH & Co. KG vs. OHIM – Metaform Lucchese SpADeichmann SE (contested decision: R-1152/2006-4 of 3 November 2008)

Trade marks:


META
Earlier trade mark Community trade mark applied for

Classes: 6,11,20,21,24

Decision: The trade marks are visually (para. 45 to 49), aurally (para.50 to 54) and conceptually (para. 55 to 59) similar. There is a likelihood of confusion (para. 64).

The Board of Appeal’s decision is upheld.


Case T-174/10 of 22 September 2011, ara AG vs. OHIM – Allrounder SARL (contested decision: R-481/2009-1 of 26 January 2010)

Trade marks:

A
Earlier trade mark Community trade mark applied for

Classes: 18,25

Decision: There is a slight visual and conceptual similarity between the trade marks (para.31). However, the similarity is not sufficient to create a likelihood of confusion.

The Board of Appeal’s decision is upheld.


Case T-581/08 of 27 September 2011, Perusahaan Otomobil Nasional Sdn Bhd vs. OHIM – Proton Motor Fuel Cell GmbH (contested decision: R- 1675/2007-1 of 9 October 2008)

Trade marks:

PROTON
Earlier trade mark Community trade mark applied for

Classes: 7,9,12,37,42

Decision: "Electric drives with proton exchange membrane fuel cells" (in Class 7), "Proton exchange membrane fuel cells" (in Class 9) and "Development of systems for the conversion of energy using proton exchange membrane fuel cells" (in Class 42) are not similar to "Motor land vehicles and parts, fittings and accessories therefor" (in Class 12) and "Repair and maintenance of motor land vehicles; modification of motor land vehicles" (in Class 37).

Proton exchange membrane technology, which characterises the goods and services covered by the mark applied for, is based on a process of lectrochemical conversion, that is to say, the conversion of a chemical reaction into electricity, something which is not yet used by the automotive industry and is not yet accessible to the average consumer, unlike the goods and services covered by the earlier marks. Consequently, the goods and services in question are neither in competition nor complementary (para. 26).

The Board of Appeal’s decision is upheld.


Case T-356/10 of 28 September 2011, Nike International Ltd vs. OHIM – Deichmann SE
(contested decision: R-1309/2009-2 of 18 May 2010)

Trade marks:

Victory VICTORY RED
Earlier trade mark Community trade mark applied for

Class: 28

Decision: The trade marks are visually (para. 37 to 39), aurally (para.40 to 42) and conceptually (para. 43 to 47) similar. There is a likelihood of confusion (para. 52).

The Board of Appeal’s decision is upheld.


COURT OF JUSTICE

Preliminary rulings

Case C-323/09 of 22 September 2011, Interflora Inc. and Interflora British Unit vs. Marks & Spencer Direct Online Ltd and Flowers Direct Online Ltd

The Court replies to questions referred by the High Court of Justice (England and Wales) relating to the use of a trade mark in a keyword advertising on the Internet.

The Court’s answers are as follows:
1. Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prevent a competitor from advertising – on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor’s consent – goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions of the
trade mark. Such use:

- adversely affects the trade mark’s function of indicating origin where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party;

- does not adversely affect, in the context of an internet referencing service having the characteristics of the service at issue in the main proceedings, the trade mark’s advertising function; and

- adversely affects the trade mark’s investment function if it substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.

2. Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94 must be interpreted as meaning that the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor has, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby takes unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising is detrimental to that distinctive character (dilution) or to that repute (tarnishment).

Advertising on the basis of such a keyword is detrimental to the distinctive character of a trade mark with a reputation (dilution) if, for example, it contributes to turning that trade mark into a generic term.

By contrast, the proprietor of a trade mark with a reputation is not entitled to prevent, inter alia, advertisements displayed by competitors on the basis of keywords corresponding to that trade mark, which put forward – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark with a reputation – an alternative to the goods or services of the proprietor of that mark.


Case C-482/09 of 22 September 2011, Budejovicky Budvar vs. Anheuser Busch

The Court replies to questions referred by the Court of Appeal (England and Wales) relating to the limitation in consequence of acquiescence.

The Court’s answers are as follows:
1. Acquiescence, within the meaning of Article 9(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, is a concept of European Union law and the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use.

2. Registration of the earlier trade mark in the Member State concerned does not constitute a prerequisite for the running of the period of limitation in consequence of acquiescence prescribed in Article 9(1) of Directive 89/104. The prerequisites for the running of that period of limitation, which it is for the national court to determine, are, first, registration of the later trade mark in the Member State concerned, second, the application for registration of that mark being made in good faith, third, use of the later trade mark by its proprietor in the Member State where it has been registered and, fourth, knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration.

3. Article 4(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark
which is to guarantee to consumers the origin of the goods or services.

4 ECTA News

ECTA Workshop on international registrations of designs in collaboration with GRUR, WIPO and DPMA on 26 September 2011 in Hamburg

Similarily to the London, Rome and Paris events of respectively February, March and July 2011, ECTA held a very interesting workshop on the international registration of designs in collaboration with its Sister Association GRUR, WIPO and APRAM on 26 September 2011. Read ECTA Second Vice President F. Peter Müller’s report HERE.

Similar workshops will be organized at the beginning of 2012 in the Hague and Madrid.


ECTA at IP Week 2011, Brussels 6 to 9 December 2011

ECTA is pleased to announce its support to the IP Week 2011 (www.ipweek.eu). The IP Week 2011, researched and organised by Premier Cercle, also organizer of the biennial IP Summit since 2004, will be held from 6 December to 9 December 2011 at the Hotel Crowne Plaza Le Palace in Brussels. Around 100 speakers will participate in this event.

Keynote speakers already include:

  • Director General of WIPO Francis Gurry;
  • Minister Marcin Korolec, Polish Minister in charge of industry and commerce;
  • Baroness Wilcox, Parliamentary Under-Secretary for Business, Innovation and Skills;
  • Richard Pelly, Chief Executive of the European Investment Fund;
  • David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO;
  • Benoît Battistelli, EPO President;
  • Jorge Avila, President of Brazilian INPI;
  • Harry van Dorenmalen, Chairman EMEA of IBM Corp.;
  • Randal S. Milch, Executive Vice President and General Counsel at Verizon;
  • Urbain Vandeurzen, Chairman and CEO of LMS International.

Discussions will focus on Open innovation on 6 December. 7 December (“IP in Industry” Day) will be an opportunity to learn about the 5-6 December EU Competitiveness Council’s results, in particular regarding the high priority EU Patent. The same day will also offer debates and case studies on “trade secrets and anti-counterfeiting. Wishing to go to the next level and implement a true IP Strategy?”

Attendees will know how big and small companies are dealing with it, in a world where intellectual assets increasingly forms the sinews of power, by attending the “IP Strategies” Day on 8 December. 9 December will deal with BRICS Countries to learn more about IP in Brazil, Russia, India, China and South Africa. Programme, speakers and more on www.ipweek.eu.

Premier Cercle offers a 25% discount on the registration fee to ECTA Members wishing to attend the IP Week (790 EUR instead of 999 EUR for the four days*) by mentioning "ECTA" in the dedicated box (promotional code) of the online form on www.ipweek.eu.

*Prices are reflected in Euros, net of tax.

Domain Name, Enforcement, Trade Mark OHIM, WIPO