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17-13 | 15 November 2013

Topics: Counterfeiting Designs E-filing EU - Dialogue with Third Countries EU Legislative Package Lisbon System

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Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • EU-US Transatlantic Trade and Investment Partnership - Latest developments
1.2 Trade Marks
  • Reform of the European CTM system - Latest developments
2 OFFICE PRACTICE
2.1 OHIM
  • 12th Liaison Meeting on Designs - Working documents
  • Administrative Board, Joint and Budget Committee meetings - 19-21 November 2013
  • Observatory Plenary Meeting - Report
  • Signature of OHIM - Icelandic Patent Office MoU
  • Slovenia joins Designview, Conference "Counterfeit Household Products and Fake Automotive Parts", 4-6 November 2013
  • Webinar on the new e-filing system – the user perspective
  • Greece and Morocco join TMview
  • German Patent and Trade Mark Office now part of the Harmonised Database
2.2 WIPO
  • World Intellectual Property Report 2013 "Brand - Reputation and Image in the Global Marketplace"
  • 52nd Series of Meetings of the Assemblies of the Member States of WIPO-Working Documents
  • 8th Session of the Working Group on the Development of the Lisbon System
  • 9th Session of the Advisory Committee on Enforcement
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-566/11 and 567/11 of 23 October, Viejo Valle SA vs. OHIM – Etablissements Coquet
Unauthorised use of a work protected under the french copyright law

T-231/10 of 25 October 2013, Merlin Handelsgesellschaft mbH, Rolf Krämer, BLS Basteln Lernen Spielen GmbH, Andreas Hohl vs. OHIM – Dusyma Kindergartenbedarf GmbH
Assessment of novelty and individual character

T-245/12 of 12 November 2013, Gamesa Eolica, SL vs. OHIM – Enercon GmbH
Error of assessment of the trade mark’s nature

T-155/12 of 23 October 2013, Hans Gerd Schulze vs. OHIM – GKL Gemeinsame Klassenlotterie der Länder
There is a likelihood of confusion

T-417/12 of 23 October 2013, SFC Jardibric vs. OHIM – Aqua Center Europa, SA
There is a likelihood of confusion

T-378/12 of 5 November 2013, Capitalizaciones Mercantiles Ltda vs. OHIM – Leineweber GmbH & Co. KG
There is a likelihood of confusion

T-533/12 of 7 November 2013, IBSolutions GmbH vs. OHIM – IBS AB
There is a likelihood of confusion

4 ECTA NEWS
  • ECTA Workshops on IP Translator - Update
  • European IPR Helpdesk Stakeholder Meeting, 26 November 2013, Brussels

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

1 Law

1.1 Anti-counterfeiting

EU-US Transatlantic Trade and Investment Partnership - Latest developments

On 4 November 2013 the EU and the US representatives announced they will hold a second round of the Transatlantic Trade and Investment Partnership (TTIP) talks in Brussels from Monday 11 – Friday 15 November 2013. The week-long round of negotiations replaces the talks originally scheduled for 7-11 October but postponed due to the shutdown of the US government. This round of negotiations will now put the TTIP discussion process fully back on track in terms of the planned negotiation timeline.

The talks in Brussels will be followed by a third round of negotiations to be held in Washington DC the week of 16 December.

The European Commission will organise a briefing session for stakeholders during the second round of the negotiations on 15 November.

More information may be found HERE and HERE

1.2 Trade Marks

Reform of the European CTM system - Latest developments

On 26 November, the JURI Committee will adopt the final report.

During the meeting Mr António Campinos, President of OHIM, will present the upcoming study on "European citizens and intellectual property: perception, awareness and behaviour".

Draft Agenda of the meeting may be found HERE


2 Office Practice

2.1 OHIM

12th Liaison Meeting on Designs - Working documents

The 12th liaison Meeting on Designs will take place on 25 and 26 November 2013.

ECTA will be represented by Andreas Renck, Chair of ECTA OHIM Link Committee.

Draft Agenda of the is available HERE

Other Working Documents may be found under section OHIM Link Committee-Working Documents.

OHIM Administrative Board, Joint and Budget Committee meetings , 19-21 November 2013

Working Documents are placed under section OHIM Link Committee - Working Documents.

Max Oker-Blom, ECTA Secretary General and Ewa Grabiak, ECTA Legal Coordinator, will attend the meeting on behalf of ECTA.

Observatory Plenary Meeting - Report

As mentionned in ECTA Flash 16-13 the 2nd Observatory Plenary Session took place on 28 and 29 October in Alicante.

Cristina Bercial-Chaumier, Secretary of ECTA Law Committee attended the meeting on behalf of ECTA.

Her Report of the meeting may be found HERE

The presentation used during the Meeting are available to ECTA Members, under section Anti-counterfeiting Committee - Working Documents.

Signature of OHIM - Icelandic Patent Office MoU

On 29 October 2013 OHIM signed a Memorandum of Understanding with the Icelandic Patent Office.

The agreement was formalised in Alicante between Mrs. Borghildur Erlingsdóttir of the Icelandic Patent Office and OHIM President, António Campinos, both of whom are attending the Plenary Session of the European Observatory on the Infringements of Intellectual Property Rights.

This MoU aims to strength the cooperation initiatives between both organisations in different fields of activity, namely the participation of Iceland in the TMview and Designview tools, TMclass, harmonisation of trade mark and design practice, training and enforcement related activities.

Press Release is available HERE

Slovenia joins Designview

On 4 November the Slovenian Intellectual Property Office (SIPO) was integrated into Designview. Slovenia is the tenth EU IP office to join Designview, adding nearly 4,000 Slovenian designs to the database of nearly one million designs from IP offices across the European Trade Mark and Design Network.

Press Release may be found HERE and HERE

Conference "Counterfeit Household Products and Fake Automotive Parts", 4-6 November 2013, Alicante

Between 4 and 6 November the conference "Counterfeit Household Products and Fake Automotive Parts" took place in Alicante. In order to help Member States to deal with the problem of dangerous counterfeits and new phenomenon of fake auto parts, EUROPOL and the EU Observatory organized this knowledge building conference.

The Conference brought together private sector experts in the field, alongside competent EU and international authorities, including the European Commission, OLAF, INTERPOL and the World Customs Organisation.

Marius Schneider, Chair of ECTA Anti-counterfeiting Committee attended the Conference.

More information may be found HERE

Agenda of the Conference is available HERE

Webinar on the new e-filing system – the user perspective

Live webinar organised by OHIM’s Academy on the new e-filing tool will take place on 27 November at 14.00 (Brussels time).

The webinar will be open to all interested users HERE

OHIM´s new e-filing system will introduce completely fresh navigation and filing features, including a classification guide called Taxonomy, as well as new options for users requiring advanced functionalities, and a wizard for first-time users, providing guidance on the e-filing process.

More information may be found HERE

Greece and Morocco join TMview

On 11 November 2013, the Greek Ministry for Development and Competiveness (GGE) and the Moroccan Industrial and Commercial Property Office (OMPIC) have made their trade mark data available to the TMview search tool.

The integration of OMPIC is a concrete result of the collaboration between OMPIC and OHIM established after the signing of a Memorandum of Understanding (MoU) in June 2013 as part of OHIM’s International Cooperation programme.

More information is available HERE

German Patent and Trade Mark Office now part of the Harmonised Database

On 12 November, the German Patent and Trade Mark Office (DPMA) became a part of the Common Harmonised Database of Goods and Services for trade mark classification.

As a result, the German translations of Harmonised Database set is now available to all users through the TMclass application. At the same time the DPMA will also offer the German translations of Harmonised Database to their efiling users.

More information may be found HERE

2.2 WIPO

World Intellectual Property Report 2013 "Brand - Reputation and Image in the Global Marketplace"

Published on 14 November, the new WIPO’s World Intellectual Property Report 2013 explores the role that brands play in today’s global marketplace. The Report looks at how branding behavior and trade mark use have evolved in recent history, how they differ across countries, what is behind markets for brands, what lessons economic research holds for trade mark policy, and how branding strategies influence companies’ innovation activities.

Press Release is available HERE

Full Report may be found HERE

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

Two new documents are available and namely:

8th Session of the Working Group on the Development of the Lisbon System, 2-6 December 2013, Geneva

Working documents are available and namely:

Othe documents may be found HERE

9th Session of the Advisory Committee on Enforcement, 3-5 March 2014, Geneva

Draft Agenda is available 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

Cases T-566/11 and T-567/11 of 23 October, Viejo Valle SA vs. OHIM – Etablissements Coquet (contested decisions : R 1054/2010-3 and R-1055/2010-3 of 29 July 2011)

Designs:



Earlier Design Contested Design

Decision: Under article 25 (1) (f) of Regulation N° 6/2002 on Community designs, « a Community design may be declared invalid if the design constitutes an unauthorised use of a work protected under the copyright law of a Member State ».

The intervener’s work consists in the decorating of items of crockery with a pattern of fine parallel and concentric grooves, of the same width and unbroken, on all of the exterior of the cup and nearly all the inside surfaces of the saucer and of the soup dish, except for the central circle (para. 85). That particular decoration of the items of crockery confers upon them a sufficiently original character, such that it warrants their protection under French law (para. 86).

In order to assess the ground for invalidity, it is not appropriate to compare the designs at issue as a whole, but only to determine whether the work protected by copyright was used in the later designs, that is to determine whether the presence of that work could be noted in those designs (para. 100).

The decoration of the disputed designs greatly resembles the decoration of the intervener’s items of crockery, both as concerns the identical nature of the covered surfaces and as concerns the concentric nature, regularity and narrowness of the grooves.

The greater thickness and the more pronounced character of the grooves, claimed by the applicant, are not sufficient to obscure that similarity (para. 101).

The Board of Appeal’s decision is upheld.


Cases T-231/10 of 25 October 2013, Merlin Handelsgesellschaft mbH, Rolf Krämer, BLS Basteln Lernen Spielen GmbH, Andreas Hohl vs. OHIM – Dusyma Kindergartenbedarf GmbH (contested decision : R 879/2009-3 of 17 March 2010)

Designs:



Earlier Design Contested Design

Decision: Models in conflict are not limited only to the appearance of decorative elements embedded in the structural parts of which are composed games (para. 31).

It is therefore right that the Board of Appeal did not limit the examination of novelty and individual character of the contested only decorative elements of the models in conflict model (para. 42).

The Board of Appeal’s decision is upheld.


Case T-245/12 of 12 November 2013, Gamesa Eolica, SL vs. OHIM – Enercon GmbH (contested decision : R 260/2011-1 of 1 March 2013)

Trade mark applied for


Class: 7

Decision: The Board of Appeal made an error of assessment by finding that the contested mark was not a colour mark but rather a two-dimensional figurative mark made up of colours (para.39).

The Board of Appeal’s decision is annulled.


On relative grounds for refusal

Case T-155/12 of 23 October 2013, Hans Gerd Schulze vs. OHIM – GKL Gemeinsame Klassenlotterie der Länder (contested decision : R 600/2011-4 of 30 January 2012)

Trade marks:

NKL-Klassiklotterie Klassiklotterie
Earlier trade mark Trade mark applied for

Classes: 35, 41

Decision:

1.«Brokerage addresses for advertising purposes» in Class 35 is similar to «marketing and advertising» in Class 35 (para. 19).

2.The trade marks are visually (para. 38 to 43), aurally (para. 44 to 47) and conceptually (para. 48) similar.

There is a likelihood of confusion (para. 50 to 51).

The Board of Appeal’s decision is upheld.


Case T-417/12 of 23 October 2013, SFC Jardibric vs. OHIM – Aqua Center Europa, SA (contested decision : R 2230/2010-4 of 20 July 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 6,11, 21

Decision:

1. « Junctions or connections of metal, for tubes or piping used for watering or for water supply; watering systems, mobile or fixed, above or below ground » in Class 6 and « watering systems, mobile or fixed, above or below ground, sprinklers, sprayers, diffusers, sprinkler heads, accessories, tricklers, watering hose nozzles, trigger nozzles, spraying machines » in Class 21 are similar to « apparatus of distribution of water » in Class 11 (para. 57 to 59).

2.The trade marks are visually (para. 63 to 65), aurally (para. 66 to 69) and conceptually (70 to 73) similar.

There is a likelihood of confusion (para. 75).

The Board of Appeal’s decision is upheld.


Case T-378/12 of 5 November 2013, Capitalizaciones Mercantiles Ltda vs. OHIM – Leineweber GmbH & Co. KG (contested decision : R 1524/2011-1 of 15 May 2002)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 25

Decision: The trade marks are visually (para.52 to 58), aurally (para. 60) and conceptually (para. 61) similar.

There is a likelihood of confusion (para. 63 to 66).

The Board of Appeal’s decision is upheld.


Case T-533/12 of 7 November 2013, IBSolutions GmbH vs. OHIM – IBS AB (contested decision : R 771/201-2 of 21 September 2012)

Trade marks:


IBSolution
Earlier trade mark Trade mark applied for

Classes: 35, 41, 42

Decision: The trade marks are visually (para. 32 to 39) and aurally (para. 40 to 46) similar.

There is a likelihood of confusion (para. 55 to 59).

The Board of Appeal’s decision is upheld.


4 ECTA News

ECTA Workshops on IP Translator - Update

The latest Workshop on IP Translator took place on 6 November in Budapest and was attended by 41 participants from law firms and industries.

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

The ECTA Workshop on IP Translator will take place on 27 November in Lisbon and will bring together the representatives of ECTA, the Portugal Intellectual Property Office (INPI) as well as the representatives the Office for Harmonization in the Internal Market (OHIM).

European IPR Helpdesk Stakeholder Meeting, 26 November 2013, Brussels

The Stakeholder Meeting of DG Enterprise and Industry IPR support initiatives, including the China, ASEAN and MERCOSUR IPR SME Helpdesks, the European IPR Helpdesk and IPorta will take place on 26 November 2013 in Brussels.

All five projects are supervised by DG Enterprise and Industry and will present their respective 2013 achievements and programs for 2014.

Kris Keymolen from ECTA Professional Affairs Committee will attend the meeting on behalf of ECTA.