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17-12 | 7 November 2012

Topics: EU Legislative Package EUIPO Cooperation Fund Geographical Indications Hague System

IP SUMMIT ON TRADE MARKS, 10-12 DECEMBER 2012, ALICANTE
The programme and other important information may be found HERE
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ECTA-WIPO-DPMA WORKSHOP ON DESIGNS- “SCHUTZ UND DURCHSETZUNG VON GESCHMACKSMUSTERN”, 30 NOVEMBER IN MUNICH-JOIN US!

PROGRAMME may be found HERE
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Report of the Round Table Session in Amsterdam may be found HERE

Table of Contents

1. LAW
1.1 Anti-counterfeiting
  • DG SANCO’s public consultation regarding Implementing Act on a common logo for legally operating online pharmacies/retailers offering medicinal products for human use for sale at a distance to the public
1.2 Trade Marks
  • Italy - First Italian Trade Mark Opposition Decision
1.3 Internet
  • Data Protection Reform - Viviane Redig speech at the Justice and Home Affairs Council Meeting
1.4 Geographical Indications
  • Publication of an amendment application pursuant to Article 6(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - CASATELLA TREVIGIANA
  • Publication of a cancellation request pursuant to Article 12(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - WERNESGRÜNER BIER
  • Publication of an application pursuant to Article 6(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - ACEITE DE NAVARRA
  • Publication of an amendment application pursuant to Article 6(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - NOCCIOLA DEL PIEMONTE’/‘NOCCIOLA PIEMONTE

2 OFFICE PRACTICE
2.1 OHIM
  • 8th Liaison meeting on trade marks, Alicante, 10-11 October 2012
  • Slovenia, Bulgaria and Benelux Office of Intellectual Property join Seniority Project
  • TM5 Annual Meeting, 30-31 October 2012, Barcelona
  • Extenion of deadlines for parties afftected by the hurricane Sandy
  • Cooperation Fund Meetings, 15-19 October 2012, Alicante
  • OHIM Manual on Trade Mark practice - Revision
2.2 WIPO
  • WIPO Re:Search Project -1 Anniversary
  • Working Group on the Legal Development of the Hague System for the International Registration of Industrial Designs, 5-7 November 2012, Geneva
  • Committee on Development and Intellectual Property (CDIP) : Tenth Session,12-16 November 2012

3. CASE LAW

Summaries and case law provided by

T-26/11 of 19 September 2012, V. Fraas GmbH vs. OHIM
The trade mark is devoid of any distinctive character

T-371/11 of 16 October 2012, Monier Roofing Components GmbH vs. OHIM
The trade mark is devoid of any distinctive character

T-445/10 of 20 September, HerkoPlast Kubern GmbH vs. OHIM – Heidi A.T. How
The goods are different

T-278/10 of 21 September 2012, Wesergold Getränkenindustrie GmbH & Co. KG vs. OHIM – Lidl Stiftung & Co. KG
Assessment of the likelihood of confusion

T-265/09 of 26 September 2010, Enrique Serrano Aranda vs. OHIM – Burg Groep BV
There is no likelihood of confusion

T-535/08 of 27 September 2012, Tuzzi fashion GmbH vs. OHIM – El Corte Inglés, SA
Trade marks are different

T-39/10 of 27 September 2012, El Corte Inglés, SA vs. OHIM – Emilio Pucci International BV
Unfair advantage of the repute of the earlier trade mark

T-584/10 of 3 October 2012, Mustafa Yilmaz vs. OHIM – Tequila Cuervo, SA de CV
The goods are different

T-204/10 of 5 October 2012, Lancôme parfums et beauté & Cie vs. OHIM – Focus Magazin Verlag GmbH
There is a likelihood of confusion

T-366/11 of 9 October 2012, Bial-Portela & C, SA vs. OHIM – Isdin, SA
There is a likelihood of confusion

T-569/10 of 10 October 2012, Bimbo, SA vs. OHIM – Panrico, SA
There is a likelihood of confusion

T-485/10 of 17 October 2012, MIP Metro Group Intellectual Property GmbH & Co. KG vs. OHIM – J.C. Ribeiro, SGPS, SA
Trade marks are different


4 ECTA NEWS
  • OHIM 44th Meeting of the Administrative Board and 42nd Meeting of the Budget Committee, 13-15 November 2012, Alicante
  • Conference on Financial Stability, the Single Market and Growth, 19 November 2012, Brussels
  • APRAM Annual Meeting "2012 : Une année de pratique communautaire de la marque et du modèle", APRAM, 30 Novembre 2012, Paris

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

1 Law

1.1 Anti-counterfeiting, Anti-Fraud

DG SANCO’s public consultation regarding Implementing Act on a common logo for legally operating online pharmacies/retailers offering medicinal products for human use for sale at a distance to the public

On 17 October 2012 DG SANCO launched a public consultation regarding Implementing Act on a common logo for legally operating online pharmacies/retailers offering medicinal products for human use for sale at a distance to the public.

On 1 July 2011, Directive 2011/62/EU of the European Parliament and of the
Council of 8 June 2011 amending Directive 2001/83/EC on the Community code relating to medicinal products for human use, as regards the prevention of the entry
into the legal supply chain of falsified medicinal products was published.

Directive 2011/62/EU introduces EU-wide rules in relation to ’the offer of medicinal
products for human use for sale at a distance to the public by means of information
society services’ as defined in EU legislation
. This directive introduces also a "common logo" for websites of legally-operating online pharmacies/retailers.

The Commission is under an obligation to adopt implementing acts regarding:

  • the technical, electronic and cryptographic requirements for verification of the authenticity of the common logo;
  • the design of the common logo.

More information may be found HERE

Stakeholders are invited to submit their comments by 17 January 2013.


1.2 Trade Marks

First Italian Trade Mark Opposition Decision

On 27 September 2012, the first opposition decision (No. 1/2012) was issued by the Italian Patent and Trade Mark Office (IPTO), in opposition case No. 7/2011.
The IPTO held that a likelihood of confusion exists between Italian trademark application No. MI2011C007751 BLUEMARE (figurative), filed for class 25 goods in the name of Mr. Liu Ruoai, and the BLUMARINE word mark (with rights dating back to 1977), covering identical goods and owned by the Italian company Blufin S.p.A.

The decision also awarded the refund of the official opposition fees of 250 euro by the applicant to the winning party. The structure of the decision closely follows the pattern of the opposition decisions of the OHIM.
The English translation of the decision may be found HERE

An appeal against the decision is possible within 60 days from the date of receipt of the decision.
While IPTO opposition decisions must be handed down within 24 months from the date of filing of the opposition notice (without taking into account the cooling-off period and the period during which proceedings may have been suspended such as in the event of an opposition based on a pending application or on a trademark against which cancellation proceedings are pending), it appears from the timing of the above decision (and considering the new procedure’s growing pains), that the current time frame for obtaining a decision in an opposition case, under favourable conditions, could be within 1 year from filing the opposition.


1.3 Internet

Data Protection Reform - EU Commissioner ’s Viviane Redig speech at the Justice and Home Affairs Council Meeting

At the Justice & Home Affairs Council Meeting of 25-26 October, EU Commissioner Viviane Redig reminded the main objectives of the data protection reform.

As she stated A high level of data protection will turn the European Union into an international standard setter that will improve internet governance worldwide. The digital Single Market will also benefit. Only a high level of data protection will generate trust between citizens and private enterprises.

Regarding the critics that the new Regulation will cause an administrative burden, Ms Redig replied that the "(...) Regulation’s objective is to greatly simplify the legal environment for EU business and lead to potential savings of around 2.3 billion EUR per year. A single set of rules is good for competitiveness, good for big business, good for SMEs. Our goal is certainly not to impose a bigger burden, and that is why SMEs are already exempt from some requirements, like having a Data Protection Officer. It has never been the Commission’s intention to apply the same rules to the small hairdresser as to a multinational (...)."

The complete version of the speech may be found HERE


1.4 Geographical Indications

Publication of an amendment application pursuant to Article 6(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - CASATELLA TREVIGIANA

The amedment application was published in the Official Journal of the European Union on 24 October 2012.

The full text may be found HERE

Statements of objection must reach the Commission within six months of the date of the publication.

Publication of a cancellation request pursuant to Article 12(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - WERNESGRÜNER BIER

The cancellation request was published ion 24 October 2012.

The full text version may be found HERE

Statements of objection must reach the Commission within six months of the date of the publication.

Publication of an application pursuant to Article 6(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - ACEITE DE NAVARRA

The application was published in the Official Journal of the European Union on 24 October 2012.

The full text may be found HERE

Statements of objection must reach the Commission within six months of the date of the publication.

Publication of an amendment application pursuant to Article 6(2) of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - NOCCIOLA DEL PIEMONTE’/‘NOCCIOLA PIEMONTE

The amendment application was published in the Official Journal of the European Union on 27 October 2012.

The text may be found HERE

Statements of objection must reach the Commission within six months of the date of the publication.


2 Office Practice

2.1 OHIM

8th Liaison meeting on trade marks, Alicante, 10-11 October 2012

On 10 and 11 October 2012 the delegates from all across the EU and beyond, plus representatives of WIPO, ECTA and other associations attended the 8th Liaison meeting on trade marks.

The Agenda of the meeting may be found HERE

Gilles Corbally, member of ECTA Harmonization Committee attended the meeting on behalf of ECTA.

His report of the meeting may be found HERE

Slovenia, Bulgaria and Benelux Office of Intellectual Property join Seniority Project

The Seniority Project is a part of OHIM´s Cooperation Fund and involves establishing links between entries in the national and Community databases and making the information accessible online.

On 18 October 2012 Slovenia has become the fifth national office to implement the Seniority Project, after Ireland, Hungary, Portugal and the Czech Republic.

The Benelux Office of Intellectual Property joined the Seniority Project on 24 October 2012.

Bulgaria joined the project on 31 October 2012.

TM5 Annual Meeting, 30-31 October 2012

The TM5 group celebrated its first Annual Meeting, hosted this year by OHIM in Barcelona on 30 and 31 October.

TM5 brings together delegations from the biggest national IP Offices of the USA, Japan, Korea and China, alongside OHIM, WIPO (attending as observers) and representatives of a number of user associations from each country.

In total 9 collaborative projects being developed by the TM5 group.

The Summary of the collaborative projects may be found HERE

Mireia Curell, ECTA Past President attended the meeting.

The list of questions raised by ECTA may be found HERE

On 31 October, both in the field of designs and of trade marks, OHIM, the USPTO, the JPO, KIPO and SAIC issued a Joint Statement, setting out the agreements reached in each of the project and establishing the steps which will now be taken to get each project up and running.

The Joint Statement may be found HERE

Extenion of deadlines for parties afftected by the hurricane Sandy

The official decision No EX-12-3 of the President of the Office of 31 October 2012
concerning extension of time limits is available HERE

Cooperation Fund Meetings, 15-19 October 2012

Between 15 and 19 October 2012, Cooperation Fund working groups met in Alicante in order to make a general update on the progress and gave input into the development of many of the tools in the Cooperation Fund´s suite.

Cristina Bercial-Chaumier, Secretary of ECTA Law Committee, attended the Similarity working group meeting (Co-operation Fund Project 1.2.9) on behalf of ECTA.

The Agenda of the meeting is available HERE

Her report of the meeting may be found HERE

OHIM Manual on Trade Mark practice - Revision

OHIM has announced the modifications of the following sections of the OHIM Manual:


2.2 WIPO

WIPO Re:Search Project -1 Anniversary

WIPO Re:Search is a consortium where public and private sector organizations share valuable intellectual property (IP) and expertise with the global health research community to promote development of new drugs and vaccines.

On 30 October 2012, one year after its launch, WIPO announced that the project has doubled its membership and resulted in ten research collaborations or agreements.

Under the terms of WIPO Re:Search, organizations agree to make IP assets available (such as pharmaceutical compounds, drug discovery technologies, regulatory data, and know-how), to qualified researchers anywhere in the world on a royalty-free basis, provided the research is focused on neglected tropical diseases, malaria, and tuberculosis. Any products resulting from this research will also be royalty-free for sales in least developed countries (LDCs).

If you wish to obtain more information, please contact Media Relations Section at WIPO

Working Group on the Legal Development of the Hague System for the International Registration of Industrial Designs, 5-7November 2012, Geneva

Keith Hodkinson, member of ECTA Designs and OHIM Link Committees, is attending the meeting on behalf of ECTA.

The Draft Agenda may be found HERE

More information is available HERE

Committee on Development and Intellectual Property (CDIP), Tenth Session,12-16 November 2012

The Draft Agenda may be found HERE

Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Twenty-Eighth Session, 10-14 December 2012

The Draft Agenda may be found HERE

More information is available HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-26/11 of 19 September 2012, V. Fraas GmbH vs. OHIM (contested decision : R 1317/2010-4 of 15 November 2010)

Trade mark:

Classes: 18,24, 25

Decision:The trade mark is devoid of any distinctive character. The tiles representation does not entail any significant change compared to the conventional representation of such grounds. Therefore, the public will perceives a pattern banal and current. (para. 74).

The Board of Appeal’s decision is upheld.


Case T-371/11 of 16 October 2012, Monier Roofing Components GmbH vs. OHIM (contested decision : R 2026/2010-1 of 28 April 2011)

Trade mark applied for: CLIMA COMFORT

Class: 17

Decision: The trade mark is devoid of any distinctive character.
The consummer will see in the sign only an indication of quality or a simple factual assertion indicating a particular quality that the products in question contribute to a particular indoor climate is comforatble and agreeable (para.39).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-445/10 of 20 September, HerkoPlast Kubern GmbH vs. OHIM – Heidi A.T. How (contested decision : R 1014/2009-4 of 27 July 2010)

Trade marks:

ECOPAK
Earlier trade mark Trade mark applied for

Class: 16,20

Decision: There is no similarity between the “ matières plastiques pour l’emballage” (cl. 16) and “ plaques de culture en plastique" (cl. 20) ( para. 20 to 28).

The Board of Appeal’s decision is annuled.


Case T-278/10 of 21 September 2012, Wesergold Getränkenindustrie GmbH & Co. KG vs. OHIM – Lidl Stiftung & Co. KG (contested decision : R 770/2009-1 of 24 March 2010)

Trade marks:

WESERGOLD WESTERN GOLD
Earlier trade mark Contested trade mark

Classes: 32, 33

Decision:

1. There is only a low degree of similarity between the spirits covered by the mark applied for and the non-alcoholic beverages covered by the earlier mark (para. 41).

2. The trade marks have an average degree of visual (para 45 to 47) and aural (para. 48 to 50) similarity. Conceptually, they are different (para.51 to 56).
Overall, they are different (para. 58).

3. The Board of Appeal erred in finding that the applicant had not claimed that the earlier marks had acquired enhanced distinctiveness through use. That error means that the Board of Appeal failed to examine a potentially relevant factor in the global assessment as to whether there was a likelihood of confusion (para. 82).

The Board of Appeal’s decision is annuled.


Case T-265/09 of 26 September 2010, Enrique Serrano Aranda vs. OHIM – Burg Groep BV (contested decision : R 366/2008-1 of 27 March 2009)

Trade marks:

EL LANCERO LE LANCIER
Earlier trade mark Contested trade mark

Classes: 30,31

Decision:

1. Given the existence of a certain degree of complementarity, there is little similarity between "the fruits and vegetables" in class 31 and "oils, edible fats, vinegar, mustard, salt, sauces and spices" in class 30. (para. 23 to 41).

2. The trade marks are visually (para. 45 to 55) and aurally (para. 56 to 60) similar. Conceptually, they are different (para. 61 to 69). Overall, they are remotely similar (patra. 70).

3. In view of the remote similarity between the goods and the trade marks, there is no likelihood of confusion (para. 76).

The Board of Appeal’s decision is upheld.


Case T-535/08 of 27 September 2012, Tuzzi fashion GmbH vs. OHIM – El Corte Inglés, SA (contested decision : R 1531/2007-2 of 23 September 2008)

Trade marks:

TUZZI
Earlier trade mark Trade mark applied for

Class: 25

Decision: The trade marks are visually (para. 48 to 52), aurally (para. 53 to 58) and conceptually (para. 59 to 52) different.

The Board of Appeal’s decision is upheld.


Case T-39/10 of 27 September 2012, El Corte Inglés, SA vs. OHIM – Emilio Pucci International BV (contested decision : R 173/2009-1 of 29 October 2009)

Trade marks:

EMILIO PUCCI
Earlier trade mark Trade mark applied for

Classes: 9,18,20,22,24,25

Decision: The registration of the mark applied for perfumery, cosmetics and household products daily in class 3 and cleaning equipment ands steel wool included in class 21 could take unfair advantage of the repute of the earlier trade mark for goods in class 25 or prejudice within the meaning of Article 8, paragraph 5 of Regulation No 207/2009.

The Board of Appeal’s decision is upheld.


Case T-584/10 of 3 October 2012, Mustafa Yilmaz vs. OHIM – Tequila Cuervo, SA de CV (contested decision : R 1162/2009-2 of 13 October 2010)

Trade marks:

MATADOR
Earlier trade mark Trade mark applied for

Class:

Decision: There is no similarity between “beer” in Class 32 and “Tequila originating in Mexico, alcoholic cocktails containing tequila originating from Mexico,
tequila liqueurs originating in Mexico” in Class 33 (para. 41 to 71).

The Board of Appeal’s decision is upheld.


Case T-204/10 of 5 October 2012, Lancôme parfums et beauté & Cie vs. OHIM – Focus Magazin Verlag GmbH (contested decision : R 238/2009-2 of 11 February 2010)

Trade marks:

FOCUS COLOR FOCUS
Earlier trade mark Contested trade mark

Class: 3

Decision: The trade marks are visually, aurally and conceptually similar (para. 26 to 36).

There is a likelihood of confusion (para. 55).

The Board of Appeal’s decision is upheld


Case T-366/11 of 9 October 2012, Bial-Portela & C, SA vs. OHIM – Isdin, SA (contested decision : R 1212/2009-1 of 6 April 2011)

Trade marks:

| ZEBINIX | ZEBEXIR |
| Earlier trade mark | Contested trade mark |

Classes: 3,5

Decision:The trade mark are visually (para.21 to 27) and aurally (para.28 to 34) similar.

There is a likelihood of confusion (para. 40).

The Board of Appeal’s decision is annuled.


Case T-569/10 of 10 October 2012, Bimbo, SA vs. OHIM – Panrico, SA (contested decision : R 838/2009-4 of 7 October 2010)

Trade marks:

DOGHNUTS BIMBO DOUGHNUTS
Earlier trade mark Contested trade mark

Class: 30

Decision: “Doughnuts” is an English word meaning “a ring-shaped small spongy cake made of dough”. Consequently, in English that word is descriptive of the products in question. However, the word does not exist in Spanish and its meaning is not understood by the Spanish public. The earlier Spanish trade mark is therefore distinctive (para. 60 to 74).

The trade marks are visually (para. 82 to 85) and aurally (para. 82 to 88) similar.

There is a likelihood of confusion (para. 100).

The Board of Appeal’s decision is upheld.


Case T-485/10 of 17 October 2012, MIP Metro Group Intellectual Property GmbH & Co. KG vs. OHIM – J.C. Ribeiro, SGPS, SA(contested decision : R 1526/2009-1 of 5 August 2010)

Trade marks:

Miss H MISS B
Earlier trade mark Contested trade mark

Classes: 14,25

Decision: The trade marks are visually (para. 36 to 39) and aurally (para. 40 to 42) different. There is a slight conceptual similarity (para. 43) that is not sufficient to counteract the visual and aural differences. Overall, they are different (para.46 to 47).

The Board of Appeal’s decision is upheld.


4 ECTA News

OHIM 44th Meeting of the Administrative Board and 42nd Meeting of the Budget Committee, 13-15 November 2012

The Agenda and the annexes are available for ECTA Members under section working documents of ECTA OHIM Link Committee.

For all questions and suggestions, please contact ECTA Legal Coordinator, Ewa Grabiak

Financial Stability, the Single Market and Growth- Conference at DG MARKT, 19 November 2012, Brussels

On 19 November 2012 the European Commission is hosting a high level one-day conference on the progress underway to ensure the safety and stability of the EU financial sector, to reinforce the Single Market, and to help promote economic growth. Michel Barnier, EU Commissioner for Internal Market and Services will open the event, followed by an eminent line-up of speakers and panellists addressing a number of themes, including:

  • How far have we come since the start of the G20 reforms in terms of ensuring a more resilient and stable financial sector?
  • What are the main challenges to ensure a genuine EU Single Market helping to boost growth and jobs?
  • Are further steps required in terms of structural reform of EU banks to ensure their safety and viability?

The Programme of the Conference may be found HERE

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

APRAM Annual Meeting "2012 : Une année de pratique communautaire de la marque et du modèle", 30 November 2012, Paris

The Programme may be found HERE

To register, please contact APRAM Secretariat

Anti-counterfeiting, Geographical Indications, Internet, Trade Mark