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18-13 | 3 December 2013

Topics: Counterfeiting Designs EU - Dialogue with Third Countries EU Legislative Package EU Observatory Nice classification

IP SUMMIT 2013, 9-11 DECEMBER, PARIS
The programme and other important information may be found HERE
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ECTA AWARD - EDITION 2014
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Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • EU-US Transatlantic Trade and Investment Partnership - Latest developments
  • EU-China Dialogue on IPRs - Latest developments
1.2 Trade Marks
  • Reform of the European CTM system - Latest developments
2 OFFICE PRACTICE
2.1 OHIM
  • Common Communication on the Common Practice on the General Indications of the Nice Class Headings v1.0
  • EU Observatory Study "European citizens an Intellectual Property: perception awareness and behaviour”
  • OHIM´s new website
  • OHIM 12th Liaison Meeting on Designs - Report
  • OHIM latest decisions and communications
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-666/11 of 7 November 2013, Danuta Budziewska SA vs. OHIM – Puma SE
The design lacks individual character

T-52/13 of 14 November 2013, Efag Trade Mark Company GmbH & Co. KG vs. OHIM
The mark is contrary to good morals

T-313/11 of 21 November 2013, Günter Heede vs. OHIM
The trade mark is descriptive

T-524/12 of November 2013, Recaro Holding GmbH vs. OHIM – Certino Mode SL
The trade mark has been genuinely used

T-63/13 of 7 November 2013, Three-N-Products Private Ltd vs. OHIM – Munindra Holding BV
There is a likelihood of confusion

T-377/10 of 18 November 2013, Preparados Alimenticios, SA vs. OHIM – Rila Feinkost-Importe GmbH & Co. KG
There is no likelihood of confusion

T-443/12 of 21 November 2013, Equinix (Germany) GmbH vs. OHIM – Acotel SpA
There is a likelihood of confusion

EUROPEAN COURT OF JUSTICE

C-383/13P of 14 November 2013, Environmental Manufacturing LLP vs. OHIM – Société Elmar Wolf
Detrimental to the distinctive character of a trade mark with a reputation

4 ECTA NEWS
  • ECTA Workshops on IP Translator - Update

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 15 November EU and US concluded the second round of week-long negotiations for the Transatlantic Trade and Investment Partnership.

The negotiators discussed investment rules, trade in services, energy and raw materials, as well as a range of regulatory issues, including regulatory coherence, technical barriers to trade and sectoral approaches. Talks on public procurement took place before the planned October meeting, cancelled due to the US government shutdown.

In addition to the physical meetings in Brussels, video conferences took place covering plant health and hygiene measures, intellectual property rights, competition policy and small and medium enterprises. A future meeting to discuss financial services regulation was scheduled in Brussels for 27 November.

More information may be found HERE


EU-China Dialogue on IPRs - Latest developments

A delegation of nine members of the Committee on Legal Affairs of the European Union Parliament (JURI) visited China from 28 to 31 October to discuss regulatory issues and legislative dossiers where the People’s Republic of China is involved as a key EU trading partner. The Delegation was led by Raffaele Baldassarre.

The delegation visited Beijing in order to meet with representatives of the national Parliament, high level officials in the administration, authorities, representatives from law firms and consumer organizations. The exchanges mainly focused on intellectual property law in order to get a further insight on the progress of legislations and enforcements of rights.

Michele Ferrante, an active Member of ECTA Anti-counterfeiting Committee, made a presentation during a meeting organized by the European Union Delegation to China and Mongolia. The meeting had the purpose to brief the EU Parliament members on the current status of enforcements laws, regulation and practices highlighting the main issues faced by industries and stake-holders. Representatives of the EU Chamber of Commerce and EU-China SME IPR helpdesk were also present in order to brief the JURI delegation.

Michele Ferrante’s overview focused on the many improvements that the China legislative system has achieved during the years, remarking that the system of IPR protection is rather new in China, especially if compared with our European tradition. It was highlighted that there are evidences of positive developments in the intellectual property field, yet there are still some system’s main issues that need to be addressed.

Notwithstanding said needed improvements, more trust in the system is a core step forward that SMEs and Multinational Companies shall take in order to pursue effective protection of their intangible assets in China. Careful registration of rights, activation of Customs surveillance at borders, monitoring of physical and online marketplace are the basics that every right owner shall consider.

The promptness to tackle the infringement and the increase of proactive seizures were emphasized as an administrative enforcement improvement. The increase of Public Security Bureau’s (PSB) intervention in cases of infringing goods sold online was also highlighted as a very important improvement especially if considering the in-depth investigative power of the Police and the deterrent effect of the criminal action. For the judicial enforcement, the increasing expertise of the judges to deal with more complex matters was also deemed as a positive developments.

The next EU-China IP Working Group Meeting will take place in Beijing on 10 December.

Draft Agenda is available on ECTA Website under Section ECTA Anti-counterfeiting Committee - Working Documents.


1.2 Trade Marks

Reform of the European CTM system - Latest developments

At the Parliament level the amendments proposed by the JURI Commitee were published on 4 November:

The adoption of the JURI Report has been postponed and will take place on 17 December.

At the Council level, Members States finalized the 1st reading of the Directive and reached a compromise.

The document may be found HERE

Currently the reading of the Regulation is ongoing and expected to be finalized before Christmas. The compromise should be presented in the beginning of next year.


2 Office Practice

2.1 OHIM

Common Communication on the Common Practice on the General Indications of the Nice Class Headings v1.0

Following the release of the “Common Communication on the Interpretation of the IP Translator”, EU IP offices, OHIM and NIPO have published on their respective websites a second Common Communication on the Common Practice of the General Indications of the Nice Class Headings on 20 November.

The document is available HERE

This subsequent Common Communication provides users and offices alike with a list of 11 general indications which lack clarity and precision, and consequently cannot be accepted without further specification. The Communication also details the reasons why each of these unacceptable general indications were deemed insufficiently clear and precise.


EU Observatory Study "European citizens an Intellectual Property: perception awareness and behaviour”

On 25 November the second study "European citizens and Intellectual Property" prepared by the EU Observatory was officially presented in Brussels at the European Parliament.

“European Citizens and Intellectual Property” is the first EU-wide study of its kind.

It provides a comprehensive assessment of citizens’ perceptions of Intellectual Property (IP) and its infringements, both from a qualitative and quantitative point of view.

The study is underpinned by a survey of 26,500 people aged 15 and over and it aims to provide independent and reliable data and serve as a baseline for future actions and policy-making.

The study complements the previously launched study “Intellectual Property Rights Intensive Industries: Contribution to Economic Performance and Employment in the EU”, and has been commissioned by the Office for Harmonization in the Internal Market (OHIM), through the European Observatory on Infringements of Intellectual Property.

The research took place between December 2012 and August 2013 and covered the 28 Member States of the European Union.


OHIM´s new website

The launch of the new OHIM website took place on 2 December.

More information may be found HERE


OHIM 12th Liaison Meeting on Designs - Report

As mentioned in the last Flash, the 12th Liaison Meeting on Designs took place on 25 and 26 November in Alicante.

Andreas Renck, Chair of ECTA OHIM-Link Commitee attended the meeting on behalf of ECTA.

His report is available for ECTA Members under the section OHIM Link Commitee - Papers.


OHIM latest decisions and communications

On 28 November OHIM confirmed the publication of 3 new decisions:

  • Decision No EX 13-2 concerning electronic communication with and by the Office is the legal basis for the Office’s communications and interactions with the users via the new website. This new Decision replaces Decision No EX-11-3 and presents in a clearer and more succinct way all the relevant aspects concerning electronic communication with and by the Office. The Decision creates, in particular, the new platform called ‘User Area’ via which users may interact with the Office.

This Decision is accompanied by a set of ‘terms and conditions concerning electronic communication with and by the Office within the user area’ to which users must adhere when signing-up for the new user area.

The Decision is available HERE

  • Decision No EX-13-3 concerning the availability of decisions of refusals of CTM applications based on absolute grounds provides the legal basis for the Office to publish the decisions of refusals through its databases available on the website.

The Decision may be found HERE

  • Decision No EX 13-4 ‘concerning keeping of files’ establishes the period for which the Office keeps physical files.

The Decision is available HERE

The President has also issued Communication No 1/13 concerning a new administrative tool for classification purposes (taxonomy) and the use of Class Headings of the Nice Classification.

With the release of OHIM’s new e-filing system, the drafting of lists of goods and services will be done using a new hierarchical structure, called ’taxonomy’, which is embedded in the Office’s e-filing.

The Communication No 1/13 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

Case T-666/11 of 7 November 2013, Danuta Budziewska SA vs. OHIM – Puma SE (contested decision: R 1137/2010-3 of 23 September 2011)

Trade Mark/Design:



Earlier Trade Mark Contested Design

Class: 25

Decision: The overall impression produced by the contested design is not different from that produced by the earlier mark (para. 38). The design challenge is therefore devoid of individual character (para. 43).

The Board of Appeal’s decision is upheld.


Case T-52/13 of 14 November 2013, Efag Trade Mark Company GmbH & Co. KG vs. OHIM (contested decision: R 493/2012-1 of 18 October 2013)

Trade Mark applied for:

FICKEN

Classes: 25,32,33,43

Decision: The mark is contrary to good morals.

The word "ficken" in German is a common term and is used as a crude term for the practice of coitus (para 15). An average consumer with normal sensitivity threshold and tolerance, faced with a coarse sexual connotation word, the receive as a vulgar and indecent term, that is to say, as a shocking word, contrary to the rules of modesty and therefore immoral (para. 24).

The Board of Appeal’s decision is upheld.


Case T-313/11 of 21 November 2013, Günter Heede vs. OHIM (contested decision: R 1848/2010-4 of 8 April 2011)

Trade mark applied for:

Matrix-Energetics

Classes: 35,41,44

Decision: The trade mark is descriptive. The term "matrix-energetics" mean from the point of view of the German and Austrian public, an alternative method of therapy. The services covered by the mark applied for is or is likely to present a report with such a method (para. 52-59).

The Board of Appeal’s decision is upheld.


Case T-524/12 of November 2013, Recaro Holding GmbH vs. OHIM – Certino Mode SL (contested decision: R 1761/2011-1 of 6 September 2012)

Contested Trade mark:

RECARO

Class: 25

Decision: The proprietor of the Community trade mark is active as an intermediary and that its activity consists in identifying professional purchasers to which it sells footwear that it has had manufactured by producers. Those distribution and production companies are not part of the same group as the proprietor of the Community mark. The sales by the proprietor of the Community mark are such as to establish public and outward use of the mark at issue (para.26).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-63/13 of 7 November 2013, Three-N-Products Private Ltd vs. OHIM – Munindra Holding BV (contested decision: R 2296/2011-4 of 23 November 2012)

Trade marks:

AYUR AYUS
Earlier trade mark Contested Trade mark

Classes: 5,44

Decision:
1.The trade marks are visually and aurally (para. 45) similar.
2. Herbal products for medicinal use in Class 5 are similar to consulting services in the field of herbal remedies, nutrition, health and beauty in Class 44 (para. 34 to 39).

The Board of Appeal’s decision is upheld.


Case T-377/10 of 18 November 2013, Preparados Alimenticios, SA vs. OHIM – Rila Feinkost-Importe GmbH & Co. KG (contested decision : R 1144/2009-1 of 9 June 2010)

Trade marks:


Jambo Afrika
Earlier trade mark Trade mark applied for

Class: 29,30

Decision: The trade marks are visually (para. 37 to 43) and conceptually (para. 52 to 58) different. There is a weak aural similarity (para. 44 to 51).

The visual and conceptual differences between the trade marks are sufficient to preclude a likelihood of confusion (para. 62).

The Board of Appeal’s decision is upheld.


Case T-443/12 of 21 November 2013, Equinix (Germany) GmbH vs. OHIM – Acotel SpA (contested decision: R 1895/2011-4 of 3 August 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 38

Decision: The trade marks are visually (para. 27 to 37) and aurally (para. 38 to 40) similar.

There is a likelihood of confusion (para. 47 to 57).

The Board of Appeal’s decision is upheld.


EUROPEAN COURT OF JUSTICE

Case C-383/13P of 14 November 2013, Environmental Manufacturing LLP vs. OHIM – Société Elmar Wolf (contested decision: T-570/10 of 22 May 2012)

Classes: 25,32,33,43

Decision: Proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (para. 34).

The concept of ‘change in the economic behaviour of the average consumer’ lays down an objective condition. That change cannot be deduced solely from subjective elements such as consumers’ perceptions. The mere fact that consumers note the presence of a new sign similar to a earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No 207/2009, in as much as that similarity does not cause any confusion in their mind (para. 37).

The General Court’s decision is annulled.


4 ECTA News

ECTA Workshops on IP Translator - update

ECTA is pleased to inform that the last ECTA workshop on IP Translator took place in Lisbon on 27 November and was attended by 68 participants.

The presentations are available on the website under section Past Events.

The report will be published in the next Flash.

The report of the workshop in Budapest is available HERE


Anti-counterfeiting, EU-China IP Dialogue, Trade Mark OHIM, WIPO