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2-14 | 29 January 2014

Topics: Counterfeiting Domain Names EU Legislative Package

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Programme

SAVE THE DATE
ECTA Workshop - Trade Marks, Packaging and Lifestyle regulation

 

12 March 2014 12.00-16.30, Brussels
Further details will follow soon

Table of Contents

1 LAW
1.1 Anti-counterfeiting
  • UNODC launches new outreach campaign
1.2 Trade Marks
  • Plain Packaging - ECTA Comments to Joint Oirecachtas Committee on Health and Children
  • Tobacco Directive
  • Trade Mark Legislative Package - latest developments
1.3 Domain Names
  • Support of the creation of a specific tld category with the .brand tlds
  • .eu dispute resolution fees further discounted in 2014
2 OFFICE PRACTICE
2.1 OHIM
  • New OHIM Website - Latest developments
  • Observatory Work Programme 2014 and Multiannual Plan 2014-2018
  • Launch of the Terminology Maintenance Console
2.2 WIPO
  • Committee on Development and Intellectual Property (CDIP)
  • Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT
3 CASE LAW

Summaries and case law provided by

GENERAL COURT
T-475/12 WorkflowPilot
The trade mark is descriptive

T-434/12 Margarete Steiff GLaserSoft Imaging (fig)
The trade mark is devoid of any distinctive character

T-538/12 ALPHTRAD (fig)
No genuine use

T-304/12 ABSACKER (fig) vs. ABSACKER of Germany (fig)
There is a likelihood of confusion

T-528/11 4EVER (fig) vs. FOREVER( (fig)
There is a likelihood of confusion

T-383/12 Sunparks Holiday Parks (fig) vs. Sun Park Holidays (fig)
There is a likelihood of confusion

T-149/12 micro (fig) vs. MICRO (fig)
There is a likelihood of confusion

4 ECTA NEWS
  • ECTA President meets with representative of American Bar Association

Editorial team: Cathy van Vuuren, Jean-Jo Evrard and Annick Mottet Haugaard


1 Law

1.1 Anti-counterfeiting

UNODC launches new outreach campaign

A new global campaign has been launched by The United Nations Office on drugs and crime (UNODC) to raise awareness among consumers of the 250 billion USD a year illicit trafficking of counterfeit goods. The campaign - ’Counterfeit: Don’t buy into organized crime’ - informs consumers that buying counterfeit goods could be funding organized criminal groups, puts consumer health and safety at risk and contributes to other ethical and environmental concerns.
Further information is available HERE


1.2 Trade Marks

Plain Packaging - ECTA Comments to Joint Oirecachtas Committee on Health and Children

ECTA submitted comments to the Joint Oirecachtas Committee on Health and Children in Ireland regarding pre-legislative scrutiny of proposed law for ‘standardised’ or plain packaging for cigarettes.

ECTA refers notably to the report of KPMG and the one prepared by London Economics Institute evidencing the fact that plain packaging in Australia has facilitated illicit trade of tobacco products.


Tobacco Directive

On 22 January, the ENVI committee at the EP adopted the compromise text on the tobacco directive by 49 votes to seven, with four abstentions. The text will be put to the vote in the February or March plenary, with the Council of Ministers still having to formally adopt it. The inter-institutional discussions concluded with an agreement on the directive on 18 December, following heated discussions surrounding how electronic cigarettes should be categorised. For further information see HERE


Trade Mark Legislative Package - latest developments

Annick Mottet Haugaard, Past President of ECTA, and Anne-Laure Covin, Member of the ECTA Law Committee, met the representatives of DG MARKT (Director Kerstin Jorna, Head of Unit François Arbault, Deputy Head Michael König and Legal Officer Tomas Eichenberg) together with other Trade Mark associations (AIM, Business Europe, INTA, ICC-BASCAP and MARQUES) in order to exchange their views of the respective priorities and outstanding questions, such as:

  • Governance rules and alignment of OHIM with other EU agencies;
  • Financing of national offices and fees;
  • Use of the surplus;
  • Degree of harmonisation;
  • Goods in transit;
  • Consignments to individuals;
  • Implementation of the new classification regime.

Obviously it is very unlikely that the Trade Mark package will be adopted by the Council and the European Parliament before the elections of May 2014.

The next important milestone is the European Parliament plenary vote on the JURI report. The commission is willing to see the Parliament goes through first reading before the elections in order to have a better position for negotiation with the Council for the next European Parliament. If there is a vote on the said report, it is likely to take place at the second Plenary session of the European Parliament of February (24-27 February).

This gives little time for the associations to submit their draft amendments on their priority issues and to have them adopted.

ECTA will continue to liaise with the other associations in order to make sure that the voice of practitioners and trade mark owners are heard.

Full report of the meeting will be made available for ECTA members in the coming days under the Law (papers) section.


1.3 Domain Names

Support of the creation of a specific tld category with the .brand tlds

ECTA submitted a comment to support the proposed Specification 13 to the Registry agreement between ICANN and the .Brand TLDs registries.


.eu dispute resolution fees further discounted in 2014

The fee for a basic .eu Alternative Dispute Resolution (ADR) procedure will be cut by a further 50%, according to the .eu registry EURid and the Czech Arbitration Court (CAC), the institution appointed to rule on Alternative Dispute Resolution proceedings for the .eu top-level domain. For more information see HERE

2 Office Practice

2.1 OHIM

New OHIM Website - Latest developments

A reply was received from OHIM President further to ECTA’s letter. A detailed paper, giving specific examples, is being prepared by the OHIM Link Committee and will be presented to OHIM at the ECTA - OHIM Link Meeting on 21 February.

Further to ECTA’s request for transparency, OHIM is now reporting website errors that are still occurring with details of when they are expected to be resolved. See HERE for details.


Observatory Work Programme 2014 and Multiannual Plan 2014-2018

The Observatory’s Multiannual Plan 2014-2018 and Work Programme 2014 are now available.


Launch of the Terminology Maintenance Console

The Terminology Maintenance Console (TMC) is a project developed under the framework of the Cooperation Fund and Convergence Programmes, with the cooperation of WIPO, EU National and Regional IP Offices, user associations and OHIM.

TMC has been launched to allow EU national and regional IP offices to maintain the Harmonised Database of Goods and Services for trade mark classification.

The Harmonised Database, fully compliant with the Nice classification system, is shared by IP Offices across Europe and it contains more than 60,000 terms in all EU languages. Although it is already the biggest database for trade mark classification, it needs to continually expand to keep pace with the fast-moving needs of the global market, especially innovative new businesses.

TMC allows the authorised experts to maintain the database using a collaborative and secure system, which promotes consensus and ensures maximum quality of the database updates.


2.2 WIPO

Committee on Development and Intellectual Property (CDIP)

The thirteenth session of the Committee on Development and Intellectual Property (CDIP), will be held in Geneva, at the headquarters of WIPO, from Monday, 19 to Friday, 23 May. See draft agenda


Standing Committee on the Law of Trade marks, Industrial Designs and Geographical Indications (SCT)

The thirty-first session of the Standing Committee on the Law of Trade marks, Industrial Designs and Geographical Indications (SCT) will take place in Geneva, at the headquarters of WIPO, from Monday, 17 to Friday 21 March 2014. See draft agenda


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-475/12 of 13 January 2014, LaserSoft Imaging vs. OHIM (contested decision: R 480/2012-4 of 6 August 2012)

Trade mark applied for:

WorkflowPilot

Classes: 9, 42

Decision: The trade mark is descriptive.

The term “workflowpilot” refers directly to a pilot guiding a flow. When applied to the goods and services covered by the Community trade mark application, the relevant public will understand immediately and easily that reference is not made to a person, but to a computer program intended to channel or guide a flow of data (para. 25).

The Board of Appeal’s decision is upheld.


Case T-434/12 of 16 January 2014, Margarete Steiff GLaserSoft Imaging vs. OHIM (contested decision: R 480/2012-4 of 6 August 2012)

Trade mark applied for:


Class: 28

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

The trade mark is a position mark consisting of a metal button to be affixed to the middle of the ear of a cuddly toy together with a rectangular fabric strip label.

The sign is inseparable from one of the aspects of the goods (para. 25). The consumers would regard the buttons together with the label as one possible permutation of affixing the label or as a decorative element. They will not be perceived as an indicator of the origin of the goods (para. 29)

The Board of Appeal’s decision is upheld.


Case T-538/12 of 16 January 2014, Optilingua Holding SA vs. OHIM (contested decision: R 444/2011-1 of 8 October 2012)

Contested trade mark:


Class: 42

Decision: The applicant has failed to prove that its trade mark has been genuinely used (para. 38 to 45).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-304/12 of 16 January 2014, Message Management GmbH vs. OHIM – Absacker GmbH (contested decision: R 1028/2011-1 of 21 March 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 25, 32, 33, 43

Decision: The trade marks are visually (para. 33 to 42), aurally (para. 43 to 44) and conceptually (para. 45 to 47) similar.

There is a likelihood of confusion (para. 48 to 58).

The Board of Appeal’s decision is upheld.


Case T-528/11 of 16 January 2014, Aloe Vera of America, Inc vs. OHIM – Detimos – Gestaao Imobiliaria, SA (contested decision: R 1928/2011-4 of 25 June 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 32

Decision:
1. Although the extent of use to which the earlier mark was put is relatively limited, the Board of Appeal did not err in concluding that the evidence submitted by the applicant was sufficient for a finding of genuine use (para. 41).

2.The trade marks are visually (para. 55 to 62), aurally (para. 63 to 72) ) and conceptually (para. 73 to 79) similar.

There is a likelihood of confusion (para. 81 to 84).

The Board of Appeal’s decision is upheld.


Case T-383/12 of 16 January 2014, Ferienhäuser zum See GmbH vs. OHIM – Sunparks Groep NV (contested decision: R 1928/2011-4 of 25 June 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Classes: 39, 43

Decision: The trade marks are visually (para. 49 to 62), aurally (para. 63) and conceptually (para. 65 to 70) similar.

There is a likelihood of confusion (para. 76 to 77).

The Board of Appeal’s decision is upheld.


Case T-149/12 of 16 January 2014, Investronica, SA vs. OHIM – Olympus Imaging Corp. (contested decision: R 347/2011-4 of 31 January 2012)

Trade marks:



Earlier trade mark Trade mark applied for

Class: 9

Decision: In order not to infringe Article 8(1)(b) of Regulation No 207/2009, it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which an opposition against the registration of a Community trade mark is based (para. 39).

The trade marks are visually (para. 40 to 54), aurally (para. 55) and conceptually (para. 56 to 60) similar.

There is a likelihood of confusion (para. 62).

The Board of Appeal’s decision is upheld.


4 ECTA News

ECTA President meets with representative of American Bar Association

The ECTA President recently met with Ms. Chien-Hale, a representative of the American Bar Association and ECTA membership information has been circulated among the members of the International Trademark Treaties and Laws Committee. Information regarding membership of the Intellectual Property Law (IPL) Section of the American Bar Association can be found HERE.


Anti-counterfeiting, Domain Name, Trade Mark OHIM, WIPO