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21-11 | 1 December 2011

Topics: EUIPO Cooperation Fund Lisbon System

ECTA - BMM - WIPO - BOIP WORKSHOP ON INTERNATIONAL REGISTRATION OF DESIGNS THE HAGUE, THE NETHERLANDS, 12 DECEMBER 2011

After successful events in London in February, Rome in March, Paris in July and Hamburg in September 2011, ECTA is pleased to invite you to attend a further workshop on international registrations of designs in order to promote the Hague System and to prove its great advantages. This workshop, held in collaboration with our Sister Association BMM, WIPO and BOIP, will take place in The Hague on 12 December 2011. The language of the event will be English.

Programme

Registration form


ECTA GEOGRAPHICAL INDICATIONS ROUND TABLE, ALICANTE, 16 FEBRUARY 2012

Join us with experts from Producers Association, the OHIM and professional representatives for a lively discussion on GIs and the Community Trade Mark System! Round Table will take place in the Salon Benacantil, at the Alicante Chamber of Commerce. Further details will be available soon.


GRUR-ECTA JOINT BRUSSELS WORKSHOP “EUROPEAN TRADE MARK SYSTEM(S) UNDER REVIEW – A FIRST SUMMARY OF THE NEW LEGAL FRAMEWORK”, BRUSSELS, 30 MAY 2012

GRUR and ECTA are pleased to invite you to a workshop on 30 May 2012 (from noon to 5pm) in Brussels at the Permanent Representation of the State of North-Rhine Westphalia to the European Union the workshop “European Trade Mark System(s) under review – A first summary of the new legal framework”. Please already mark your agenda. The detailed programme and registration form will be available in the coming weeks.


Table of Contents

1 LAW
1.1 Trade Marks
  • OHIM Cooperation Fund – Lord Mogg’s letter on latest developments
  • OHIM Administrative Board and Budget Committee meetings on 15 and 16 November in Alicante
1.2 Enforcement
  • IMCO’s Public hearing on customs enforcement of IP Rights at the European Parliament on 22 November 2011 in Brussels
  • Danish Court decision of 8 November 2011 re personal allowance
2 OFFICE PRACTICE
2.1 OHIM
  • OHIM President’s letter to the Users Associations on Users Satisfaction survey 2011
  • Second Meeting of the Designview Working Group
2.2 WIPO
  • WIPO 7th session of the Advisory Committee on Enforcement from 30 November 2011 to 1 December 2011, Geneva
  • 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-561/10 DIRECT DRIVE
The Board of Appeal’s decision is upheld

T-275/10 mPAY24
The trade mark is descriptive

T-59/10 AMPLIDECT
The Board of Appeal’s decision is upheld

T-434/10 alpine (fig) vs. ALPINE (fig)
There is a likelihood of confusion

T-308/06 fig vs. fig
The earlier trade mark has been genuinely used

T-500/10 DORMA (fig) vs. doorsa (fig)
There is no likelihood of confusion

T-216/10 MONSTERS OF ROCK vs. MONSTER ROCK
There is a likelihood of confusion

T-483/10 fig vs. PUKKA
There is a likelihood of confusion

COURT OF JUSTICE

C-307/10 Chartered Institute of Patent Attorneys (IP Translator)
Opinion of the Advocate General regarding the use of class headings

C-446/09 (Philips) and C-495-09 (Nokia)
Where goods coming from non-Member States that are imitations or copies of goods protected in the EU by intellectual property rights are in customs warehousing or in transit in the EU, they can be classified as "counterfeit" or "pirated" goods if it is proven that they are intended to be put on sale in the EU.

4 ECTA NEWS
  • ECTA AT 59th APAA Council Meeting in Manila

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


1 Law

1.1 Trade Marks

OHIM Cooperation Fund – Lord Mogg’s letter on latest developments

OHIM sent on 29 November Lord Mogg’s letter and annexes B, C, D, E and F in connection with the status in the Cooperation Fund and planned next steps. His letter requests confirmation of ECTA volunteers’ participations for 2012.

Regarding overall progress, it is worthy to mention that: “all projects in packets one and two are now well underway; technical and consulting support for all projects has been recruited; prototypes are available for almost all new projects; Euroclass v2 was launched at the beginning of October; TMview v2 is due for launch by the end of this year; CF213 Architecture, standards and procurement is in closeout and CF114 Seniority first successful live results were shown on national databases of PT, CZ and HU. Those relating to IE are about to be achieved. The next meeting of Working Groups is scheduled for February 2012.

The next steps are as follows: “The approach to software development and resourcing is being closely examined together with the relevant OHIM experts and internal project teams. The aim of this is to make sure that work is not repeated either between different CF projects or between the CF and OHIM´s on-going efforts. In parallel with this, preparations for the provision of on-site assistance to Offices during the most demanding part of this exercise, in 2012, are being finalised. OHIM plans to cover this activity outside.”


OHIM Administrative Board and Budget Committee meetings on 15 and 16 November in Alicante

The Administrative Board and Budget Committee of the Office met in Alicante on 15 and 16 November. Among other issues covered, President Antonio Campinos gave a report on the activities and performance of the Office over the past months. The Commission representative gave an overview of the current status of the legislative reform process and the Office offered an update on the Cooperation Fund and Convergence programme projects and presented the implementation of its Strategic Plan. Five members of the Boards of Appeal were also appointed at the meeting.The attendees present expressed their gratitude to Robert ULLRICH, who will end his term as Chairperson of the Budget Committee in March 2012 after seven years in the post. He will be replaced by Anne Rejnhold Jørgensen, who will hold the position until March 2015. Duncan Wearmouth was appointed as Deputy Chairperson for a three year period as of 16 November 2011.

Annick Mottet Haugaard, ECTA President and Andreas Renck, ECTA Chair of the OHIM Link Committee, respectively attended the Administrative Board meeting and the joint meeting of the Administrative Board and Budget Committee on 15 November, and Budget Committee meeting on 16 November.

1.2 Enforcement

IMCO’s Public hearing on customs enforcement of IP Rights at the European Parliament on 22 November 2011 in Brussels

Anne-Laure Covin, ECTA Legal Coordinator, Olivier Vrins, Belgian member of the ECTA Anti-Counterfeiting Committee and Marius Schneider, Chairman of the ECTA Anti-Counterfeiting Committee participated in a public hearing of the Committee of the Internal Market and Consumer Protection of the European Parliament on Customs Enforcement of Intellectual Property Rights. The hearing took place in the premises of the European Parliament in Brussels on 22 November 2011. It was inter alia chaired by Jürgen Creutzmann, the Rapporteur, as well as Josefa Andrés Barea (Committee on International Trade) and Marielle Gallo (from the Committee on Legal Affairs). The meeting was well attended and several stakeholders had the opportunity to speak. Amongst the interventions, it is worthy to highlight those of Mr. Zimmermann of the World Customs Organization, who underlined why strong border measures for the Enforcement of Intellectual Property Rights were required. The right-holders’ point of view was very ably advocated by Jeremy Newman representing INTA and Christiane Laï of UNIFAB. The meeting can be reviewed HERE


Danish Court decision of 8 November 2011 re personal allowance

The verdict of the Danish Court of 8 November 2011 in Copenhagen has been much anticipated as it would be one of the first in the EU to interpret the rules in relation to “personal allowance. READ ELLEN BREDDAM’S REPORT

2 Office Practice

2.1 OHIM

OHIM President’s letter to the Users Associations on Users Satisfaction survey 2011

António Campinos, the OHIM President, sent to the Users Associations a letter in connection with the future launch of Users Satisfaction survey. The President mentioned that the exercise constitutes an important element under our Strategic Plan, in particular the Key Initiative 25 -Improve the quality of OHIM services as perceived by users. For conducting the exercise the OHIM has retained the services of QUOTA Research company. Since 25 November invitations have been sent to users of OHIM’s services during the period September 2010 to October 2011.

Questions will deal with the levels of satisfaction with CTM and RCD related procedures together with issues related to complaints, information and communication services as well as the Office’s image. Andreas Renck, Chair of the OHIM Link Committee, will follow closely the matter.

OHIM’s complete website communication can be found HERE

Second Meeting of the Designview Working Group

The OHIM hosted the second meeting of the Designview Working Group on 22 November 2011 as part of the ongoing activities of the Cooperation Fund Programme. The meeting was attended by experts from the national offices of the Czech Republic, Germany, Denmark and the United Kingdom, as well as representatives from OHIM. The agenda included an overview of a prototype of Designview and discussed Eurolocarno, linguistic and technical issues

2.2 WIPO

WIPO 7th session of the Advisory Committee on Enforcement from 30 November 2011 to 1 December 2011, Geneva

ECTA, represented by Marius Schneider, Chair of the ECTA Anti-Counterfeiting Committee, is attending 7th session of the Advisory Committee on Enforcement from 30 November to 1 December at WIPO in Geneva. The agenda and working documents of the meeting can be found HERE


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

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 working documents of the meeting can be found HERE

3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-561/10 of 22 November 2011, LG Electronics, Inc. vs. OHIM (contested decision: R-1027/2010-2 of 22 September 2010)

Trade mark applied for:

DIRECT DRIVE

Classes: 7,11

Decision: The trade mark is descriptive. The expression "direct drive", has a specific meaning in English, which is driven directly by the motor, without an intervening belt (para. 23). Therefore, the mark applied for, used in connection with electric household appliances, will be directly understood by the English-speaking public as a description of the technical features of those goods (para.25).

The Board of Appeal’s decision is upheld.


Case T-275/10 of 22 November 2011, mPAY24 GmbH vs. OHIM – Ultrad.o.o. Proizvodnja elektronskih naprav) (contested decision: R-216/2009-1 of 24 February 2010)

Contested trade mark:

mPAY24

Classes: 9,16,35,3638

Decision: The trade mark is descriptive. Given that the public will necessarily understand the meaning of the word "pay", as meaning "to pay", it will associate the other two elements, namely "m" and "24", with the action of paying. Thus, it is reasonable to take the view that the sign MPAY24 could be understood as referring to a system making it possible to pay by mobile telephone around the clock (mobile payment) or even a multifunctional payment system available around the clock (multi payment) (para. 50)

The Board of Appeal’s decision is upheld.


Case T-59/10 of 23 November 2011, Geemarc Telecom International Ltd vs. OHIM-Audioline GmbH (contested decision: R-913/2009-2 of 20 November 2009)

Contested trade mark:

AMPLIDECT

Classes: 9,16

Decision: The trade mark is descriptive. The term "amplidect" immediately and unequivocally informs the relevant public of the essential characteristics of the goods marketed by the applicant and covered by the disputed registration, namely an amplificatory function incorporated in a telephone and using DECT technology (para.54). The applicant has failed to show that the mark AMPLIDECT has become distinctive in consequence of the use which has been made of it (para. 81).

The Board of Appeal’s decision is upheld.


On relative grounds for refusal

Case T-434/10 of 15 November 2011, Vaclav Hrbek vs. OHIM – The Outdoor Group Ltd (contested decision: R-1441/2009-2 of 8 July 2010)

Trade marks:



Earlier trade mark Community trade mark applied for

Classes: 18,24,25,28

Decision:
1. Umbrellas, umbrella covers and parasols (in Class 18) are similar to bags and luggage (in Class 18) (para. 36). Sleeping bags and sleeping sacks (in Class 24) are similar to backpacks and rucksacks (in Class 18) (para. 38). Sporting articles (in Class 28) are similar to skiwear (in Class 25) (para. 46)
2. The term alpine dominates the overall impression created by the signs at issue (para. 55). The trade marks are aurally (para. 60 to 61), visually (para. 56 to 59) and conceptually (63 to 64) similar.
3. There is a likelihood of confusion (para. 74).

The Board of Appeal’s decision is upheld.


Case T-308/06 of 16 November 2011, Buffalo Milke Automotive Polishing Products, Inc vs. OHIM – Werner & Mertz GmbH (contested decision: R-1094/2005-2 of 8 September 2006)

Trade marks:



Earlier trade mark Community trade mark applied for

Class: 3

Decision: The invoices filed for the first time before the Board of Appeal were sufficient
to show, in conjunction with the rest of the evidence, that the earlier German mark on which the opposition was based had been put to genuine use in relation to the goods specified by the Board of Appeal (para. 76).

The Board of Appeal’s decision is upheld.


Case T-500/10 of 16 November 2011, Dorma GmbH & Co. KG vs. OHIM – Puertas Doorsa, SL (contested decision: R-542/2009-4 of 17 August 2010)

Trade marks:



Earlier trade mark Community trade mark applied for

Classes: 6,9,19

Decision: The trade marks are aurally (para. 31 to 33) and visually (para. 35 to 42) dissimilar.
There is no likelihood of confusion (para. 58 to 65).

The Board of Appeal’s decision is upheld.


Case T-216/10 of 23 November 2011, Monster Cable Products, Inc. vs. OHIM – Live Nation (Music) UK Ltd (contested decision: R-216/2009-1 of 24 February 2010)

Trade marks:

MONSTERS OF ROCK MONSTER ROCK
Earlier trade mark Community trade mark applied for

Class: 9

Decision:
1. Cables, wires, connectors and control are similar to apparatus for the recording, transmission or reproduction of sound and images (para. 26 to 28).
2. The trade marks are visually (para. 36 to 38), aurally (para.41 to 42) and conceptually (para. 45 to 49) similar. There is a likelihood of confusion (para.5 to 54).

The Board of Appeal’s decision is upheld.


Case T-483/10 of 23 November 2011, The Pukka Luggage Company Ltd vs. OHIM – Jesus Miguel Azpiroz Arruti (contested decision: R-1175/2008-4 of 29 July 2010)

Trade marks:


PUKKA
Earlier trade mark Community trade mark applied for

Classes: 18,25

Decision:
1. Belts (in Class 25) are similar to luggage and travelling bags (in Class 18) (para. 23 to 26).
2. The trade marks are aurally (para. 43 to 44) and visually (para. 45 to 51) similar.
3. There is a likelihood of confusion (para. 54).

The Board of Appeal’s decision is upheld.

COURT OF JUSTICE

Preliminary rulings

Opinion of the Advocate General of 29 November 2011 in case C-307/10, Chartered Institute of Patent Attorneys vs. Registrar of Trade Marks

The Advocate General proposes that the Court of Justice reply as follows to the questions referred for a preliminary ruling by the Person Appointed by the Lord Chancellor under section 76 of the Trade Marks Act 1994, on Appeal from the Registrar of Trade Marks, submitted by the High Court of Justice of England and Wales:

(1) (a) Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark are to be interpreted as meaning that the identification of the goods or services for which the applicant seeks protection must satisfy requirements of clarity and precision which are sufficient to enable the competent authorities and the economic operators to determine accurately the scope of the protection conferred by the trade mark.

(b) Those requirements may be satisfied by a specific list of each of the goods and services for which the applicant seeks protection. They may also be fulfilled by identification of the basic goods or services enabling the competent authorities and economic operators to determine the essential characteristics and objective properties of the goods and services concerned.

(2) Directive 2008/95 and Regulation No 207/2009 are to be interpreted as not precluding the applicant from identifying the goods or services for which he seeks protection by using the general indications of the class headings of the common classification of goods and services for which a mark is registered, provided that that identification satisfies the necessary requirements of clarity and precision.

(3) Communication No 4/03 of the President of the Office for Harmonisation in the Internal Market (Trade marks and designs) (OHIM) of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, by which the President indicates that OHIM does not object to the use of any of the general indications and class headings as being too vague or indefinite and that the use of those indications constitutes a claim to all the goods or services falling within the class concerned, does not guarantee the clarity and precision required for the purposes of the registration of a trade mark, whether a national or a Community trade mark.


Joined Cases C-446/09 (Philips) and C-495-09 (Nokia)

READ REPORT FROM OLIVIER VRINS

4 ECTA News

ECTA AT 59th APAA Council Meeting in Manila

The 59th APAA Council Meeting took place on 12-15 November 2011 in Manila in Philippines. Around 1,000 participants attended from all over the world, mainly India, Japan, and Korea. ECTA was represented by Jan Wrede, Vice Chair of the GI Committee, as a special guest. APAA is currently deciding whether to open up more easily to members from non Asian countries as well. The occasion was very welcome to exchange experiences between European and Asian colleagues and a warm invitation was launched to everyone to attend ECTA’s next annual meeting in Palermo.

Enforcement, Trade Mark OHIM, WIPO