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18-11 of 17 October 2011 | 17 October 2011

Topics: ACTA EUIPO Convergence Programme EUIPO Cooperation Fund Lisbon System

Thank you to those who attended the last Autumn meeting in Seville. Committee reports will be soon available for Members on the website.

Table of Contents

1 LAW
1.1 Trade Marks
  • OHIM Cooperation Fund – Reports on kick-off meetings at OHIM
  • ECTA’s letter to OHIM President re Convergence Programmes
1.2 Enforcement
  • ACTA – Joint press release of business community and ECTA press release
2 OFFICE PRACTICE
2.1 OHIM
  • New EuroClass tool launched
  • Alicante IP Judges’ meetings on 13 & 14 October
2.2 WIPO
  • WIPO Assemblies provide direction for future work - Director General welcomes positive engagement of Member States on substantive issues
  • WIPO Working Group on the Development of the Lisbon System (Appellations of Origin) from 12 to 16 December 2011
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-201/09 SCOMBER MIX
The trade mark is descriptive

T-526/09 PAKI
The trade mark is contrary to public policy or morality

T-508/08 fig
The shape gives substantial value to the goods

T-207/09 Nike (fig) vs. NC (fig)
Concept of similarity between trade marks

T-118/09 BLOOM vs. fig
There is a likelihood of confusion

T-176/10 Zeven (fig) vs SEVEN FOR ALL MANKIND
The trade marks are similar

T-425/09 BLAST vs. BLAST
The goods are similar. There is a likelihood of confusion

4 ECTA NEWS
  • 12th NGO Coordination Meeting on 17 October 2011 in Hyderabad, India

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


1 Law

1.1 Trade Marks

OHIM Cooperation Fund – Reports on kick-off meetings at OHIM

As mentioned in the Flash of 17-11, 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.

Reports on below matters can be found at OHIM Link Committee - Papers - Section:

CF 125 Harmonizing and sharing Quality Standards, Cristina Bercial, Secretary of the ECTA Law Committee
CF 129 Common tool on similarity of goods and services, Cristina Bercial, Secretary of the ECTA Law Committee
CF 321 Common call centre, Imogen Wiseman, Member of the ECTA Law Committee
CF 423 Harmonised counterfeiting data collection standard, Marius Schneider, Chair of the ECTA Anti-Counterfeiting Committee


ECTA’s letter to OHIM President re Convergence Programmes

Following OHIM President’s letter of 19 September 2011 re Convergence Programmes (see Flash 17-11) and his invitation to the Associations to propose candidates for 3 convergence projects, ECTA sent a letter to Antonio Campinos on 11 October 2011 to propose the following candidates:

- Ellen Breddam (DK), Member of the Council and Anti-Counterfeiting Committee
- Tobias Dolde (DE), Member of the Harmonization Committee
- Nikolaos Lyberis (GR), Member of the Council and Anti-Counterfeiting Committee

In addition, ECTA mentioned to the OHIM President that ECTA is also willing to participate in the Harmonization and Class headings projects.

The Association also took the opportunity to propose another project covering designs: “International coordination of formalities regarding designs”. The purpose of this project would be to propose convergence of formalities requirements in national, community and international design registration laws in order to:
(i) simplify and harmonize these formalities, saving cost and duplication of effort for applicants, and
(ii) reduce the current uncertainty as to the legal effect of design registrations arising from different national rules and practices on the interpretation of representations in design registrations.

The ECTA letter can be found at the Law, Design, Harmonization, OHIM Link Committees - Papers Section.


1.2 Enforcement

ACTA – Joint press release of business community and ECTA press release

As mentioned in the Flash 17-11, Australia, Canada, Japan, the Republic of Korea, Morocco, New Zealand, Singapore and the United States signed the ACTA agreement on 1 October in Tokyo.

ECTA joined other organizations in a press release: "Business Community Lauds Countries’ Signing of the Anti-Counterfeiting Trade Agreement - Organizations Urge the Rest of the Negotiators to Follow Suit”.

ECTA also published its own press release on 12 October 2011.

ECTA is currently working 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.


2 Office Practice

2.1 OHIM

New EuroClass tool launched

OHIM has launched a new improved version of its EuroClass tool, incorporating the functions of the now obsolete EuroAce and EuroNice applications. The tool helps with the classification of goods and services, allowing to compare the content of the national classification databases and the acceptance of goods and services in 20 national trade mark offices.

The complete communication of OHIM can be found HERE


Alicante IP Judges’ meetings on 13 & 14 October

The 7th European Trade Mark and Designs Judges’ Symposium took place in Alicante on 13-14 October 2011. OHIM President António Campinos mentioned at the meeting that the seminars and symposia supported by the OHIM Judges’ Network has been steadily growing in importance and influence with over 600 national judges having taken part in one or more of the sessions. The OHIM President has praised the "valuable progress" made over the past 4 years by IP judges from EU member states and other stakeholders in reaching a common understanding of the many difficult enforcement issues facing the EU.

The OHIM President’s speech can be found HERE


2.2 WIPO

WIPO Assemblies provide direction for future work - Director General welcomes positive engagement of Member States on substantive issues

Representatives of WIPO’s 184 member states, meeting at their annual Assemblies in Geneva from 26 September to 5 October 5 2011 took a landmark decision to call a diplomatic conference to agree an international treaty on the rights of performers in their audiovisual performances. They took stock of the Organization’s substantive work over the last year, provided direction for the future work program, and approved a program and budget for the Organization for the next biennium (2012/13). WIPO Director General Francis Gurry said this year’s Assemblies were characterized by a remarkable spirit of engagement and commitment by Member States to address the pressing intellectual property issues on the global agenda and hoped this would continue.

The complete communication of WIPO can be found HERE


WIPO Working Group on the Development of the Lisbon System (Appellations of Origin) from 12 to 16 December 2011

ECTA, represented by Florent Gevers and Jan Wrede, respectively Chair and Vice Chair of the ECTA Geographical Indications Committee, will attend the Working Group on the Development of the Lisbon System (Appellations of Origin) from 12 to 16 December 2011 at WIPO in Geneva. The agenda and the below working documents can be found HERE:
- Draft new Instrument concerning the international registration of geographical indications and appellations of origin
- Notes on the draft new instrument concerning the international registration of geographical indications and appellations of origin


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-201/09 of 21 September 2011, Rügen Fisch AG vs. OHIM (contested decision: R-230/2007-4 of 20 March 2009)

Trade mark applied for:

SCOMBER MIX

Classes: 29, 35

Decision: The trade mark is descriptive. The term "scomber" is, phonetically speaking, sufficiently close to the Italian word "sgombro" - meaning mackerel - for Italian consumers to be able to understand the meaning of this word (para 30). The sign SCOMBER MIX simply indicates that the goods covered are made of mackerel (scomber) mixed together with other ingredients (mix) (para 31).

The Board of Appeal’s decision is upheld.


Case T-526/09 of 5 October 2011, PAKI Logistics GmbH vs. OHIM (contested decision: R 1805/2007-1 of 23 October 2009)

Trade mark applied for:

PAKI

Classes: 6,20,37,39

Decision: The trade mark is contrary to public policy or morality within the meaning of Article 7 (1) (f) of Regulation 207/2009. The term ’paki’ is perceived by the English-speaking public of the EU as a racist insult (para. 37).

The Board of Appeal’s decision upheld


Case T-508/08 of 6 October 2011, Bang & Olufsen A/S vs. OHIM (contested decision: R 497/2005-1 of 10 September 2008)

Trade mark applied for:


Classes: 9,20

Decision: The sign at issue falls within the scope of Article 7(1)(e)(iii) of Regulation No 40/94 that provides that signs which consist exclusively of the shape which gives substantial value to the goods are not to be registered.

For the goods at issue, the design is an element which will be very important in the consumer’s choice even if the consumer also takes other characteristics of the goods at issue into account (para.73). The shape for which registration is sought reveals a very specific design and the applicant itself admits that that design is an essential element of its branding and increases the appeal of the product at issue, that is to say, its value (para.73).

The Board of Appeal’s decision upheld


On relative grounds for refusal

Case T-207/09 of 27 September 2011, Mustapha El Jirari Bouzekri vs. OHIM - Nike International Ltd (contested decision: R 554/2008-2 of 25 February 2009)

Trade marks:



Earlier trade mark Community trade mark applied for

Class: 9

Decision: The concept of similarity between the marks is the same in the case of a refusal to register a mark applied for because of a likelihood of confusion pursuant to Article 8(1)(b) of Regulation No 40/94, and of refusal because of damage to the reputation of an earlier mark, pursuant to Article 8(5) of Regulation No 40/94. (para. 31)

The Board of Appeal assessed the similarity of the marks at issue in a contradictory manner, by finding a lack of similarity between the mark applied for and the earlier mark when examining the conditions for the application of Article 8(1)(b) of Regulation No 40/94, and a sufficient degree of similarity between the same signs for the application of Article 8(5) of the same regulation, that last finding necessarily implying that there is similarity between the marks at issue. It therefore committed an error of law (para. 32).

The Board of Appeal’s decision is annulled.


Case T-118/09 of 5 October 2011, La Sonrisa de Carmen, SL and Bloom Clothes, SL vs. OHIM – Harold Heldmann (contested decision: R-695/2008-2 of 8 January 2009)

Trade marks:

BLOOM
Earlier trade mark Community trade mark applied for

Classes: 18,25,35

Decision: The trade marks are visually (para. 44 to 45) and aurally (para.46 to 48) similar.
There is a likelihood of confusion.

The Board of Appeal’s decision is upheld.


Case T-176/10 of 6 October 2011, Seven SpA vs. OHIM – Seven for all mankind LLC (contested decision: R-1514/2008-2 of 28 January 2010)

Trade marks:


SEVEN FOR ALL MANKIND
Earlier trade mark Community trade mark applied for

Classes: 14,18

Decision: The trade marks are visually (para. 39 to 42), aurally (para.43 to 47) and conceptually (para. 48 to 50) similar.

The Board of Appeal’s decision is annuled.


Case T-425/09 of 6 October 2011, Honda Motor Co. Ltd vs. OHIM – Hendrik Blok (contested decision: R 1097/2008-1 of 6 July 2009)

Trade marks:

BLAST BLAST
Earlier trade mark Community trade mark applied for

Class: 7

Decision: There is some similarity between “Outboard engines; and structural parts and fittings thereof” and “Exhaust systems and exhaust system trim parts for cars and motorcycles”. The similarity between those goods is strengthened by the proximity of their channels of distribution and, more particularly, by the well-known fact, that some companies which produce cars and motorcycles also manufacture outboard engines for boats (para.23). In the context of the interdependence of the factors taken into account, the low degree of similarity between the goods concerned is offset by the identity of the signs at issue (para.31).There is a likelihood of confusion (para. 32).

The Board of Appeal’s decision is upheld


4 ECTA News

12th NGO Coordination Meeting on 17 October 2011 in Hyderabad, India

Ruta Olmane, Member of the ECTA Council and Secretary of the ECTA Professional Affairs Committee will take part in the 12th NGO Coordination Meeting which will be held on 17 October 2011 during the AIPPI ExCo / Forum in Hyderabad, India.

Enforcement, Trade Mark OHIM, WIPO