Join us! Member Area

18-12 | 26 November 2012

Topics: Design View EUIPO Cooperation Fund Geographical Indications Hague System Lisbon System TM View

ECTA becomes an official partner of the European IPR Helpdesk
For more information please check HERE

ECTA-WIPO-DPMA WORKSHOP ON DESIGNS- “SCHUTZ UND DURCHSETZUNG VON GESCHMACKSMUSTERN”, 30 NOVEMBER IN MUNICH
REGISTRATIONS FOR THE WORKSHOP ARE CLOSED! MORE THAN 190 REGISTRATIONS!

ECTA launches ECTA AWARD for the 1st time!
For more information please check HERE

Table of Contents

1. LAW
1.1 Trade Secrets
  • DG MARKT’s Survey on Trade Secrets and Confidential Business Information in the Internal Market
1.2 Trade Marks
  • Results of the Public Consultation on Directive 2006/114/EC concerning Misleading and Comparative Advertising and on unfair commercial practices affecting businesses
1.3 Geographical Indications
  • Publication in the Official Journal of the European Union of the applications 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

2 OFFICE PRACTICE
2.1 OHIM
  • OHIM Designview Working Group Meeting, 19 October 2012
  • TM5 Annual Meeting, 30-31 October 2012
  • OHIM 11th Liaison Meeting on Designs, 19 - 20 November 2012
  • Austria and Germany join TMview
  • Release of the Cooperation Fund tools
2.2 WIPO
  • Final Report of the Fifth Session of the Working Group on the Development of the Lisbon System (Appellations of Origin), 11-15 June 2012, Geneva
  • Working Group on the Legal Development of the Hague System for the International Registration of Industrial Designs, 5-7November 2012, Geneva
  • Advisory Committee on Enforcement : Eighth Session,19-20 December 2012, Geneva
  • Mexico becomes part of the International Trade Mark System
  • Accession to the Geneva Act (1977) by Montenegro
2.3 National Offices
  • New Agreement on Common Regional CETMOS (Central European Trade Mark Observation Service) Trade Mark Search Signed
  • Greece: Reduction of official trade mark fees
  • Romania: National Office joins EuroClass
  • Slovakia: CF 1.1.4 Seniority project officially implemented
  • Spain: Publication Study on the "Impact of the brands in the Spanish economy and society" by the Spanish Patent Office

3. CASE LAW

Summaries and case law provided by

T-415/11 of 8 November, Paul Hartmann AG vs. OHIM
The trade mark is descriptive

T-301/09 of 26 September 2012, IG Communication Ltd vs. OHIM – Citigroup, Inc and Citibank, NA
The mark applied for will take advantage of the aura attaching to the CITIBANK mark

T-373/09 du 27 September 2012, El Corte Inglés, SA vs. OHIM – Emilio Pucci International BV
The registration of the mark applied for would take unfair advantage of the repute of the earlier mark

T-39/10 of 27 September 2012, El Corte Inglés, SA vs. OHIM – Emilio Pucci International BV
Trade marks are different

T-357/09 of 27 September 2012, Emilio Pucci International BV vs. OHIM – El Corte Inglés, SA
The earlier trade mark has a reputation in Italy for clothes and shoes for ladies (para. 77)

T-555/11 of 13 November 2012, tesa SE vs. OHIM – La Superquimica
There is a likelihood of confusion

T-529/11 of 14 November 2012, Evonik Industries AG vs. OHIM – Impulso Industrial Alternativo, SA
There is a likelihood of confusion

C-101/11P and C-102/11P of 18 October 2012, Herbert Neuman and Andoni Galdeano del Sel vs. OHIM – José Manuel Baena Grupo SA
Assessment of the overall impression produced by an earlier trade mark and a contested design

C-553/11 of 25 October 2012, Bernard Rintisch vs Klaus Eder
Use of a trade mark in a form, itself registered as a trade mark, differing in elements which do not alter the distinctive character of the mark


4 ECTA NEWS
  • ECTA becomes an official partner of the European IPR Helpdesk
  • "Meet the Belgian Judges", Workshop, MARQUES & BMM, 18 October 2012, Brussels- Report

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

1 Law

1.1 Trade secrets

DG MARKT’s Survey on Trade Secrets and Confidential Business Information in the Internal Market - until 3 December 2012

Following a call for tender, the European Commission contracted Baker & McKenzie to carry out a study on the economic and legal aspects linked with the use, misappropriation and litigation on confidential business information and trade secrets.

In this context Baker & McKenzie is launching a survey to industry aimed at collecting information on how companies manage their know-how and other information of strategic value for their competitiveness. The data to be collected from companies from all sizes and locations within the European Union will help the European Commission to better evaluate whether there is a need to provide companies, and in particular SMEs, with better means of redress against the economic harm resulting from dishonest appropriation of confidential business information.

The European Commission encourages any company to participate in the survey. In order to do so simply send a message to tradesecretstudy bakermckenzie.com expressing your willingness to participate (ex: Dear Sirs, I would like to participate in the survey). You will then receive an e-mail providing a user ID, a password and a link to the webpage of the survey. You will be able to choose between a number of languages in which to complete the survey.


1.2 Trade Marks

Results of the Public Consultation on Directive 2006/114/EC concerning Misleading and Comparative Advertising and on unfair commercial practices affecting businesses

In 2011 the European Commission conducted a public consultation on the Directive on Misleading and Comparative Advertising.

The consultation concerns practices of companies offering extension of trade marks an domain names in foreign jurisdictions

The results were published on 15 November 2012.

The Commission will broadly report about the results in its upcoming Communication on misleading marketing practices and will use them when preparing future actions in the area of business-to-business misleading marketing practices.

The results of this consultation may be found HERE


1.3 Geographical Indications

Publication in the Official Journal of the European Union of the applications 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

The applications following products were published in the Official Journal of the European Union:

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


2 Office Practice

2.1 OHIM

OHIM Designview Working Group Meeting, 19 October 2012

Elena Sonn, Vice-Chair of ECTA Design Committee attended the meeting on behalf of ECTA.

The official minutes may be found HERE

The PowerPoint presentation on Designview may be found HERE

TM5 Annual Meeting, 30-31 October 2012

Mireia Curell, ECTA Past President and Vice-Chair of ECTA Publications Committee attended the meeting on behalf of ECTA.

Her report will be published in the next Flash.

The official report of the meeting may be found HERE

OHIM 11th Liaison Meeting on Designs, 19 - 20 November 2012

On 19 and 20 November the 11th Liaison Meeting on Designs took place in Alicante.

Keith Hodkinson from ECTA Design and OHIM Link Committees attended the meeting on behalf of ECTA.

His report may be found HERE

More information regarding the meeting may be found HERE

Austria and Germany join TMview

On 13 November 2012 trade marks from the Austrian Patent Office and the German Patent and Trade Mark Office have been added to the TMview database which provides free access to trade mark applications and registrations from a number of leading trade mark offices.

The latest expansion brings the total number of offices which have made their trade mark data available through TMview to 23.

With the addition of about 184.000 Austrian trade marks and more than 1.600.000 German trade marks, TMview now provides access to more than 9.1 million trade marks in total.

For more information please check HERE

Release of the Cooperation Fund tools

On 18 November 2012 9 tools developed under the Cooperation Fund went live on the internet.

The projects were built at OHIM with the involvement of EU National Office staff and user associations, including ECTA.

The next wave of tool rollouts is planned for the first half of 2013.

For more information, please check HERE


2.2 WIPO

Final Report of the Fifth Session of the Working Group on the Development of the Lisbon System (Appellations of Origin), 11- 15 June 2012, Geneva

The Final Report of the fifth Session of the Working Group on the Development of the Lisbon System (Appellations of Origin) is now available HERE

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 attended the meeting on behalf of ECTA.

His report may be found HERE

Advisory Committee on Enforcement : Eighth Session,19-20 December 2012

Christophe Maillefer, member of ECTA Anti-countefeiting Committee will attend the session on behalf of ECTA.

More information may be found HERE

Mexico becomes part of the International Trade Mark System

On 19 November 2012 Mexico’s Secretary of Economy Bruno Ferrari deposited his country’s instrument of accession to the Madrid Protocol for the International Registration of Marks with WIPO Director General Francis Gurry.

The treaty will enter into force with respect to Mexico on 19 February 2013.

More information may be found HERE

Accession to the Geneva Act (1977) by Montenegro

On 16 November the Director General of the World Intellectual Property Organization (WIPO) presented his compliments and had the honor to notify the deposit by the Government of Montenegro of its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised at Stockholm on 14 July1967, and at Geneva on 13 May 1977, and amended on 28 September 1979.

The Geneva Act of the Nice Agreement as amended, will enter into force, with respect to Montenegro, on 16 February 2013.


2.3 National Offices

New Agreement on Common Regional CETMOS (Central European Trade Mark Observation Service) Trade Mark Search Signed

Within the framework of the meeting of the Administrative Board of the European Patent Organization, held in Munich on 25 and 26 October 2012, Directors of the national intellectual property offices of the countries of the Central Europe region signed a new Agreement on the Common Provision of CETMOS (Central European Trade Mark Observation Service) Trade Mark Search.

More information may be found HERE

Greece: Reduction of official trade mark fees

On 9 November 2012 a slight decrease of the Greek trade mark fees was confirmed and namely:

  • TM application (domestic, CTM conversion and IRs) fees are now 110 EUR in one class and 20 EUR for each additional class until the 10th
  • TM renewals are now 90 EUR in one class and 20 EUR for each additional class until the 10th
  • Recordal of change of name, address, legal form is now 50 EUR
  • Recordal of assignment is now 90 EUR
  • Recordal of license/sublicense is now 90 EUR
  • Restriction of goods/services is now 20 EUR
  • Restitutio in integrum is 110 EUR

Romania: National Office joins EuroClass

On 13 November 2012 the Romanian State Office for Inventions and Trademarks (OSIM) was integrated into EuroClass.

This new incorporation brings the number of Participating Offices to 29, including OHIM.

More information may be found HERE

Slovakia: CF 1.1.4 Seniority project officially implemented

On 19 November 2012 Slovak Republic has become the eighth national office to implement the Seniority Project.

They join Bulgaria, Benelux, Slovenia, Ireland, Hungary, Portugal and the Czech Republic in implementation.

Eleven national offices are set to implement the project in 2012, with further intents to implement also indicated.

For more information, please check HERE

Spain: Publication Study on the "Impact of the brands in the Spanish economy and society" by the Spanish Patent Office

On 21 November 2012 the study on the "Impact of the brands in the Spanish economy and society" was officially presented with the presence of the Director General of the Spanish Patent Office (SPTO) and President of the National Association for the Defence of the Brand (ANDEMA).

The report, commissioned by the SPTO and ANDEMA was prepared by the Marketing Department of the University of Alicante and is intended to quantify the value of brands in the economy and society in Span. The report is multisectoral, and took into account more than 40 economic sectors of the Spanish industrial representative.

The value and importance of the brand lies in its ability to help establish trust between businesses and consumers.

More information may be found HERE


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-415/11 of 8 November, Paul Hartmann AG vs. OHIM (contested decision : R 1524/2010-1 of 26 May 2011)

Trade mark applied for: Nutriskin Protection Complex

Classes: 3,5

Decision: The trade mark is descriptive. One of the possible meanings of the sign is that of a product or a complex helping protect the skin by nourishing or nursing (para. 30).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-301/09 of 26 September 2012, IG Communication Ltd vs. OHIM – Citigroup, Inc and Citibank, NA
(contested decision : R 821/2005-1 of 30 April 2009)

Trade marks

CITI  
CITIGROUP  
CITIBANK CITIGATE
Earlier trade marks Trade mark applied for

Classes: 35,36,42

Decision: The similarity of the signs at issue is such that the relevant public will think, on encountering the CITIGATE mark, that it is a new mark belonging to the CITI family of trade marks (para. 119).

Not only does the CITIBANK mark enjoy a reputation within the European Union but its distinctive character is further enhanced as a result of the fact that it belongs to a family of trade marks, the distinctive element of which is ‘citi’ (para. 120).

There is a risk that the mark applied for will take advantage of the aura attaching to the CITIBANK mark on account of its reputation and that, lastly, the relevant section of the public might decide to use the applicant’s services in the belief that the mark in question is linked to the well-known mark CITIBANK (para. 122).

The Board of Appeal’s decision is upheld.


Case T-373/09 du 27 September 2012, El Corte Inglés, SA vs. OHIM – Emilio Pucci International BV (contested decision : R 770/2008-2 et R 826/2008-2 of 18 June 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 3,9,18,21,24,25

Decision: The trade marks are visually and aurally similar (para. 44).

The earlier trade mark has a reputation in Italy for clothes and shoes for ladies (para. 60).

The registration of the mark applied for perfumery, cosmetics and household products daily in class 3 and cleaning equipment and steel wool included in class 21 could take unfair advantage of the reputation of the earlier mark or harm within the meaning of Article 8, paragraph 5 of Regulation No 207/2009 (para. 69).

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:

E. TUCCI
PUCCI
Earlier trade marks Trade mark applied for

Classes: 18,25,28

Decision: The applicant before the Court has only proved genuine use of the earlier mark for men’s clothing and shoes in Class 25 (para. 38).

The trade marks are visually (para. 60 to 61) and aurally (para. 62) different.

“Men’s clothing and footwear” in Class 25 are similar to “shoulder bags, attache-cases, briefcases, pouches, pocket wallets, purses, key-holders and card holders” in Class 25 (para. 78) and different to “gymnastic and sporting articles, namely ski accessories” (para. 82).
The Board of Appeal’s decision is upheld.


Case T-357/09 of 27 September 2012, Emilio Pucci International BV vs. OHIM – Elk Corte Inglés, SA (contested decisions : R 770/2008-2 and R 826/2008-2 of 18 June 2009)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 3,18,21,24,25

Decision: The trade marks are visually and aurally similar (para. 77).

Clothing (Class 25) are not similar to perfumes (class 3), glasses (Class 9) as well as jewelery and watches (Class 14) (para.53).

The earlier trade mark has a reputation in Italy for clothes and shoes for ladies (para. 77).

The registration of the mark applied for glasses (Class 9), jewelery and jewelery watches (Class 14) as well as toilet paper (Class 16) is likely to undermine the image of exclusivity, luxury and quality associated with the earlier mark (para. 84).

In contrast, the mark applied for may be registered for goods in Classes 1 and 13 as well as services in Class 40 (para. 86)

The Board of Appeal’s decision is partially annulled.


Case T-555/11 of 13 November 2012, tesa SE vs. OHIM – La Superquimica(contested decision : R 866/2010-1 of 5 July 2011)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 16

Decision: The trade marks are visually (para. 26 to 39) and aurally (para. 40 to 44) similar.

There is a likelihood of confusion (para.49 to 57).

The Board of Appeal’s decision is upheld.


Case T-529/11 of 14 November 2012, Evonik Industries AG vs. OHIM – Impulso Industrial Alternativo, SA (contested decision : R 1101/2010-2 of 20 June 2011)

Trade marks:


Impulso creador
Earlier trade mark Trade mark applied for

Classes: 35,36,37,42

Decision: The trade marks are visually (para. 27 to 30), aurally (para. 31 to 32) and conceptually (para. 33 to 35) similar.

There is a likelihood of confusion (para. 37 to 41).

The Board of Appeal’s decision is upheld.

COURT OF JUSTICE

Cases C-101/11P and C-102/11P of 18 October 2012, Herbert Neuman and Andoni Galdeano del Sel vs. OHIM – José Manuel Baena Grupo SA (contested decision : T-513/09 of 16 December 2010)

Trade marks:



Earlier trade mark Contested design

Class: 25

Decision: The General Court considered that the differences between the two silhouettes are sufficiently significant to create a different overall impression on the informed user, in spite of similarities concerning other aspects and the significant
freedom enjoyed by the designer of silhouettes such as those at issue.

When comparing the earlier mark and the contested design, the General Court did not err in law by basing its reasoning on the informed user’s imperfect recollection of the overall impression produced by the two silhouettes (para. 57).

The General Court’s decision is upheld.


Case C-553/11 of 25 October 2012, Bernard Rintisch vs Klaus Eder

Decision: The Court replies to questions referred by the German Supreme Court relating to the use of a trade mark in a form, itself registered as a trade mark, differing in elements which do not alter the distinctive character of the mark

The Court’s replies are as follows :

1. Article 10(2)(a) Directive 89/104 must be interpreted as meaning that the proprietor of a registered trade mark is not precluded from relying, in order to establish use of the trade mark for the purposes of that provision, on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark.

2. Article 10(2)(a) of Directive 89/104 must be interpreted as precluding an interpretation of the national provision intended to transpose it into domestic law whereby Article 10(2)(a) does not apply to a ‘defensive’ trade mark which is registered only in order to secure or expand the protection of another registered trade mark that is registered in the form in which it is used.


4 ECTA News

ECTA becomes an official partner of the European IPR Helpdesk

The European IPR Helpdesk is managed by the European Commission’s Executive Agency
for Competitiveness and Innovation (EACI), with policy guidance provided by the European
Commission’s Enterprise & Industry Directorate-General.

The European IPR Helpdesk offers free of charge, first-line support on IP and IPR matters to beneficiaries of EU funded research projects and EU SMEs involved in transnational partnership agreements, especially within the Enterprise Europe Network (EEN).

ECTA is the first IP Association to become an official partner of the European IPR Helpdesk.

ECTA and the European IPR Helpdesk will promote their events, workshops, trainings and publications.

ECTA members will also be recommended for the second- line advice.

We hope that our common efforts will help to raise awareness of IPR matters through Europe.

Meet the Belgian Judges, Workshop, MARQUES & BMM,18 October 2012- Report

Ewa Grabiak attended the meeting on behalf of ECTA.

The programme of the meeting may be found HERE

The report of the meeting may be found HERE


Greece Geographical Indications, Trade Mark, Trade Secrets National Office Practice