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17-14 | 1 December 2014

Topics: Counterfeiting Design View E-filing EU Legislative Package Geographical Indications Plain Packaging TM View

Table of Contents

1 LAW
1.1 Trade Marks
  • Trade mark legislative reform
  • Plain Packaging in the United Kingdom
1.2 Anti-Counterfeiting
  • 1.2 million counterfeit goods seized in Cyprus
1.3 Geographical Indications
  • UK Plymouth gin in danger of losing its geographical indication
2 OFFICE PRACTICE
2.1 WIPO
  • Updated study on copyright limitations and exceptions
2.2 OHIM
  • Fast-track processing trade mark applications
  • E-filing tool implementations
    • Slovenia
    • Lithuania
    • Spain
  • Cyprus joins Designview
  • Iceland made trade mark available to TMview
2.3 WTO
  • Preliminary ruling on plain-packaging in favour of Dominican Republic
3 CASE LAW

Summaries and case law provided by

T-53/13 Vans Inc. (fig)
The trade mark is devoid of any distinctive character. No distinctiveness acquired through use

T-567/12 KAATSU
The trade mark is descriptive

T-483/13 THE YOUTH EXPERTS
The trade mark is devoid of any distinctive character

T-524/11 VOLVO vs. LOVOL (fig)
The trade marks are different

C-581/13P and C-582/13P BALLON D’OR vs. GOLDEN BALLS
Article 8(5) of Regulation N° 207/2009. Degree of similarity between the trade marks

High Court of London
UK: combatting counterfeit goods on websites

4 ECTA NEWS
  • ECTA attending the 18th Work Sessions and Administrative Council of ASIPI
  • Madrid Informal consultation group

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


1 Law

1.1 Trade Marks

1.1.1. Trade mark legislative reform

The European trade mark legislative reform is envisaged to be finalised and approved by March next year.

In the meantime, Trialogue meetings are taking place and ECTA’s Committees are preparing additional comments for submission to the EU Institutions.

ECTA’s additional comments will be made available to ECTA members in December.


1.1.2 Plain packaging in the United Kingdom

Following Ireland, the United Kingdom has notified the EU Commission on their intention to implement plain packaging measures for tobacco products.

The United Kingdom draft bill is similar to that of Ireland. However, there are some differences between them, such as:

(i) The draft bill of the United Kingdom applies to only retail packaging (packaging intended to be used for the sale to consumers) and not apply to packaging that is used vis-à-vis trade (similar to Ireland);

(ii) It applies only to cigarettes and roll your own. In comparison, the Irish draft bill contains other tobacco products that it might be applied to, such as novel tobacco products and reduced risk products that contain tobacco;

Further information is available HERE.


1.2 Anti-Counterfeiting

1.2.1. 1.2 million counterfeit goods seized in Cyprus

130 million cigarettes and 1.2 million counterfeit goods have been seized in the course of an international joint custom operation that was coordinated by the Eu-ropean Anti-Fraud Office (OLAF).

The operation took place between 31 March and 11 April 2014, in Cyprus, and focused on goods which could endanger the environment, health and safety of consumers.

It is estimated that the value of the equivalent genuine products is to be more than 65 million euros.

Further information is available HERE.


1.3 Geographical Indications

1.3.1. UK’s Plymouth gin in danger of losing its Geographical Indication

Pernod Ricard, a French brand owner, has decided to withdraw its support for Plymouth gin Geographical Indication (GI).

Plymouth gin is the only gin in the United Kingdom that has GI and England’s only spirit that has been protected. Pernod Ricard’s decision means that the gins that have been produced in South West English city will more likely lose their right to claim protective status within the European Union, unless if another distiller supports the GI.

If another distiller is interested in supporting the Plymouth gin GI, following the European Regulation No 110/2008 on spirit drinks, the distiller is required to submit a dossier entailing the details of the organoleptic and geographical characteristics of a spirit. Furthermore, the deadline for the submission is February 2015. Thus, any distiller that has the adequate heritage, would have three months to begin production and submit the dossier.

Further information is available HERE.


2 Office Practice

2.1 WIPO

2.1.1. Updated study on copyright limitations and exceptions

The study on copyright limitations and exceptions has been updated for libraries and archives.

The study was commissioned by the World Intellectual Property Organization and conducted by Dr. Kenneth D. Crews.

The results of the study confirm the need for legal change, specifically regarding copyright issues that have been given legislative attention by lawmakers in different countries.

Further information is available HERE.


2.2 OHIM

2.2.1 Fast-track processing trade mark applications

On 24 November 2014, a new fast-track for trademarks has been made available at OHIM.

The fast-track accelerates the procedure for the publication of trade marks applications. The procedure is free of charge and has no classification deficiencies. Users can select their goods and services from the Harmonized database, whose terms have been accepted by most national intellectual property law offices of the European Union and OHIM.

Further information is available HERE.


2.2.2 E-filing tool implementations

2.2.2.1 Slovenia

On 10 November 2014, the Slovenian Intellectual Property Office (SIPO) implemented an e-filing system for designs and trademarks. The e-filing tool has been developed through the framework of the Cooperation Fund.

Further information is available HERE..


2.2.2.2 Lithuania

As of 30 September 2014, trade marks, designs and other related documents can be filled through the e-filing system in Lithuania.

The e-filing system introduces new navigation and filing features, it includes a classification guide called taxonomy, and advanced functionalities for users who requires those. The applicant will be able to submit new applications, request the review of the status of the documents and find history reports.

Further information is available HERE.


2.2.2.3 Spain

On 14 November 2014, the Spanish Patent and Trade Mark Office (SPTO) implemented e-filings for designs.

The implementation of the new system is the result of the collaboration between OHIM and the experts of the SPTO.

Further information is available HERE.


2.2.3 Cyprus joins Designview

Cyprus made their design data available in the Designview on 10 November 2014.

Designview is a search tool to revise registered design information given by the participating National Offices, WIPO and OHIM. With the participation of Cyprus, there is a total number of 18 National offices taking part in Designview.

Further information is available HERE.


2.2.4 Iceland made trade mark available to TMview

On 24 November 2014, the Iceland Patent Office made their trade mark data available to the search tool TMview. This is the result of an international cooperation programme that has been managed by OHIM in cooperation with other international partners.

With Iceland joining TMview, there is total number of participating offices to TMview of 37. TMview is providing almost 24,6 million trade marks in total now.

Further information is available HERE.


2.3 WTO

2.3.1 Preliminary ruling on plain-packaging in favour of Dominican Republic

The Dominican Republic has stated that plain packaging measures in Australia infringe intellectual property rights and international trade rules.

A WTO panel, consisting of independent legal and trade experts, has examined and favoured the arguments of the Dominican Republic in their challenge to Australia’s Plain Package Law.

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-53/13 of 6 November 2014, Vans, Inc vs. OHIM (contested decision: R-860/2012-5 of 14 November 2012)

Trade mark applied for:


Classes: 18,25

Decision:
1. The trade mark is devoid of any distinctive character. The relevant public will perceive the mark applied for as a simple line which combines slants and curves and will not therefore make it possible to individualise any of the goods in question in relation to competing goods (para. 75). It will be perceived by the relevant public as an exclusively ornamental element (para. 76).

2. None of the items of evidence submitted by the applicant makes it possible to establish that the relevant class of persons, or at least a significant proportion thereof, identify the goods covered by the mark applied for because of that mark. The evidence submitted makes it possible to establish only that the sign in respect of which registration has been applied for has been used by the applicant both on those goods, inter alia, footwear, which are sold in various Member States of the European Union, and in the context of various promotional activities. However, it does not make it possible to establish that that sign will be perceived by the relevant public as an indication of the commercial origin of the goods in question (para. 104).

The Board of Appeal’s decision is upheld.



Case T-567/12 of 7 November 2014, Kaatsu Japan Co. Ltd vs. OHIM (contested decision: R-435/2012-2 of 9 October 2012)

Trade mark applied for:

KAATSU

Classes: 9,10,16,28,41,44

Decision:
The trade mark is descriptive.

It relates to an exercise method or technique that induces muscle hypertrophy and increases muscle strength, basically by applying a controlled reduction of blood flow to the muscles exercised by means of compressing the vasculature proximal and related areas (para. 33). It will be understood as containing direct information as to the nature and subject-matter of the goods and services referred to (para. 38).

The Board of Appeal’s decision is upheld.


Case T-483/13 of 18 November 2014, Lumene Oy vs. OHIM (contested decision: R-187/2013-2 of 26 June 2013)

Trade mark applied for:

THE YOUTH EXPERTS

Classes: 3,5

Decision:
The trade mark is devoid of any distinctive character.

It will be understood as a self-explanatory laudatory message that the applicant’s goods are designed, produced or made by young experts with an extensive knowledge in the relevant field, which would reassure the consumer as to the quality of the goods in question, those goods being based on an improved formula or recently developed, for example. It is a banal slogan with a clear and unambiguous audatory meaning that would not be perceived by the relevant public as an indication of the commercial origin of the goods concerned, but as purely promotional information (para. 42).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-524/11 of 12 November 2014, Volvo Trademark Holding AB vs. OHIM – Hebei Aulion Heavy Industries Co., Ltd (contested decision: R-1870/2010-1 of 19 July 2011)

Trade marks:

VOLVO



Earlier trade marks Trade mark applied for

Classes: 7,12

Decision:
The trade marks are visually (para. 24 to 38) and aurally (para. 39 to 46) different. It is not possible to carry out a conceptual comparison (para. 54). Overall, the trade marks are different (para. 56).

The Board of Appeal was entitled to conclude that the mark applied for could not be refused registration on the basis of Article 8(5) of Regulation No 207/2009

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Cases C-581/13P and C-582/13P of 20 November 2014, Intra-Presse SAS vs. OHIM – Golden Balls Ltd (contested decisions: T-448/11 and T-437/11 of 16 September 2013) See Flash 15-13 of 11 October 2013

Trade marks:

BALLON D’OR GOLDEN BALLS
Earlier trade mark Trade mark applied for

Classes: 9,14,16,18,21,24,25,28,31,41

Decision:
The degree of similarity required under Article 8(1)(b) of Regulation No 2007/2009, on the one hand, and Article 8(5) of that regulation, on the other, is different. Whereas the implementation of the protection provided for under Article 8(1)(b) is conditional upon a finding of a degree of similarity between the marks at issue so that there exists a likelihood of confusion, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5). The types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (para. 72).

Article 8(5) , like Article 8(1)(b), is manifestly inapplicable where the General Court rules out any similarity between the marks at issue. It is only if there is some similarity, even faint, between the marks at issue that the General Court must carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public (para. 73).

In the present cases, the General Court found that the signs at issue were not at all visually or phonetically similar. It also found that there was a low degree of conceptual similarity between them. Thus, the General Court did not, in those judgments, rule out all possibility that the marks at issue were similar (para. 75).

Consequently, the General Court was wrong to rule out the application of Article 8(5) without first undertaking an overall assessment of the marks at issue in order to ascertain whether that low degree of similarity was nevertheless sufficient, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, for the relevant public to make a link between those marks (para. 76).

The General Court’s decision is annulled.


High Court of London
UK: combatting counterfeit goods on websites

On 17 October 2014, the High Court of London delivered a landmark judgment on blocking websites that sell counterfeit goods online.

The claimant requested a court order for Internet Service Providers (ISPs) to block access to websites that sell counterfeit goods.

The High Court has asserted that ISPs play an essential role against counterfeit goods on the internet and ordered five ISPs to block websites that advertised and sold counterfeit goods.

Further information is available HERE.

4 ECTA News

4.1 ECTA attending 18th Work Sessions and Administrative Council of ASIPI

From 30 November to 3 December 2014, Lorenzo Litta will, on behalf of ECTA, attend the 18th Work Sessions and Administrative Council of the Inter-American Association of Intellectual Property (ASIPI) in Mexico-city.


4.2 Madrid Informal consultation group

ECTA is participating in an informal consultation mechanism between the International Bureau and the main NGOs with regard to the Madrid System.

This group provides a forum for the informal exchange of views on the Madrid system.