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22-11 | 15 December 2011

Topics: EU - Dialogue with Third Countries EUIPO Convergence Programme

ECTA SEMINAR "CRUCIAL CHALLENGES FOR THE EUROPEAN TRADE MARK SYSTEM", BRUSSELS, 8 FEBRUARY 2012

In the framework of the Study on the overall functioning of the trade mark system in Europe and in view of the publication of the legislative package covering the Directive and Regulation on trade marks, ECTA will organize a seminar in Brussels on 8 February 2012 in the Silken Berlaymont hotel. The topics "territoriality of genuine use" and "class headings and means to facilitate clearance of the CTM register" will be discussed.
Programme and Registration Form will be soon available. Please already mark your agenda.


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! Further details will be available soon. Please already mark your agenda.


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 their members to attend 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 final programme and registration form will be made available in early 2012.


Table of Contents

1 LAW
1.1 EU Matters
  • Accession Treaty with Croatia signed in Brussels on 9 December 2011
1.2 Trade Marks
  • Expanded Trade Mark Trilateral meeting – TM4, in Washington, from 5 to 7 December 2011
  • 9th meeting of the EU-China IPR working Group
2 OFFICE PRACTICE
2.1 OHIM
  • ECTA’s reply to OHIM President’s letter on accessibility to Examiners
  • December edition of the IPC&C (cooperate and converge) newsletter available
  • Class Headings Project - Working Package 2
2.2 WIPO
  • WIPO 7th session of the Advisory Committee on Enforcement, in Geneva, from 30 November to 1 December 2011
3 CASE LAW

Summaries and case law provided by

GENERAL COURT

T-363/10 RESTORE
The trade mark is descriptive

T-123/10 COMPLETE
The trade mark is not descriptive

T-276/10 COTO DE IMAZ, EL COTO vs. Fig mark
The trade marks are similar

T-434/09 POWERBALL vs. Powerball
The appeal is not admissible

T-477/10 SE So Easy vs. SE (fig mark)
There is a likelihood of confusion

T-152/10 ALAIA (fig mark) vs. ALAIA
There is a likelihood of confusion

4 ECTA NEWS
  • ECTA - BMM - WIPO - BOIP Workshop on International Registrations of designs, the Hague, The Netherlands, 12 December 2011

Editorial Board: Anne-Laure Covin, Jean-Jo Evrard, Annick Mottet Haugaard, and Petra Haenitsch


1 Law

1.1 EU Matters

Accession Treaty with Croatia signed in Brussels on 9 December 2011

The Accession Treaty with Croatia was signed in Brussels on 9 December 2011 and will come into effect on 1 July 2013. Croatia’s membership of the European Union brings with it implications for the Community trade mark and designs systems and the Treaty outlines that all CTMs and RCDs registered in Member States before the date of accession shall be extended to the territory of Croatia on the day of accession.
The treaty can be found HERE.
The commission report can be found HERE.


1.2 Trade Marks

Expanded Trade Mark Trilateral meeting – TM4, in Washington from 5 to 7 December 2011

The Annual Meeting of the Expanded Trade Mark Trilateral – TM4 took place in Washington, U.S.A. from 5 to 7 December 2011. António Campinos (OHIM), Joonseok Lee (KIPO), Deborah Cohen (USPTO), Li Yali (SAIC) and Dr. Masahiro Hashimoto (JPO) represented the 4 offices. The Korean Intellectual Property Office (KIPO) also joined OHIM, USPTO and JPO for the first time as official partners, with the Chinese office SAIC confirming that they too will join as full partners at the beginning of 2012, when the group will then go under the new name of TM5. The partners have agreed to establish a common work plan. Projects will be identified and a Project Manager will be assigned to each one in order to achieve higher efficiency. It was also agreed that user associations may participate in projects if appropriate. Achievements will be presented during the Annual meetings. WIPO and various users groups (such as AIM, APRAM and INTA) also attended as observers. The next year’s meeting will be hosted by OHIM.


9th meeting of the EU-China IPR working Group

On the 14th and 15th of November 2011, the EU and China held the 9th Meeting of the EU-China IPR Working Group in Beijing.The working group is designed to promote dialogue between the EU and China on IPR issues and bring together officials, ministries, experts and industry representatives from both sides. Their aim is a bilateral discussion where the EU and China can exchange views on the latest developments in IPR policy, with each highlighting their main practical and political concerns. READ MICHELE FERRANTE’s COMPLETE REPORT.


2 Office Practice

2.1 OHIM

ECTA’s reply to OHIM President’s letter on accessibility to Examiners

Following the OHIM President’s letter sent to the Users Associations on 18 October regarding the accessibility of the OHIM Examiners (see FLASH 19-11), ECTA, under the leadership of Fabio Angelini, Chair of the ECTA Law Committee, sent to António Campinos on 13 December 2011 a reply.

December edition of the IPC&C (Cooperate and Converge) newsletter available

The latest edition of the IPC&C (Cooperate and Converge) newsletter, charting progress in the wide-ranging cooperation activities by OHIM, national IP offices and user organisations, is now available for digital download in 22 languages. The December edition leads with an exclusive interview with Lord Mogg, the Chairman of the Cooperation Fund Management Board. This edition also carries an update on the Convergence Programme, where partner offices are jointly tackling issues of different office practice and a wide range of reports on other activities of the EU Trade Mark and Design Network, ranging from the growth of video conferencing to plans to tackle international fraudsters.

More details can be found HERE.

Class Headings Project - Working Package 2

OHIM hosted on 12 December 2011 a meeting of the Class Headings Project - Working Package 2 at its Alicante headquarters. The Convergence on Class Headings project is the second project under the Convergence Programme and intends to come up with a common practice on a European level with regard to Class Headings. Discussion opened with an exchange of opinions on the “IP translator” case and focused on the drawing up of a communication strategy work plan. The Czech Republic, the United Kingdom, Portugal and Denmark participated alongside OHIM at the event.


2.2 WIPO

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

ECTA, represented by Marius Schneider, Chair of the ECTA Anti-Counterfeiting Committee, attended the 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. The work of the WIPO Advisory Committee on Enforcement focused on developing a substantive study to analyse and discuss IPRs infringements in all its complexities, including the identification of different types of infractions and motivations for IPR infringements, taking into account social, economic and technological variables and different levels of development, developing analytical methodologies that measure the social, economic and commercial impact of counterfeiting and piracy on societies taking into account the diversity of economic and social realities, as well as different stages of development, and analysis of various efforts, alternate models and other possible options from a socio-economic welfare perspective to address the counterfeiting and piracy challenges.


3 Case Law

Summaries and case law provided by Darts IP

GENERAL COURT

On absolute grounds for refusal

Case T-363/10 of 15 November 2011, Abbott Laboratories vs. OHIM (contested decision: R 1560/2009-1 of 9 June 2010)

Trade mark:

RESTORE

Class: 10

Decision: The trade mark is descriptive. The use of the term "restore" for goods such as medical and surgical instruments and apparatus, stents or catheters, will be understood directly and unequivocally by the specialised medical public, which is either English speaking or at least has sufficient knowledge of the English language, as having a direct link to restoring the people benefiting from these goods to a state of health (para. 35).

The Board of Appeal’s decision is annulled.


Case T-123/10 of 30 November 2011, Paul Hartmann AG vs. OHIM (contested decision: R 601/2009-4 of 20 January 2010)

Trade mark:

COMPLETE

Classes: 5,10

Decision:The trade mark is not descriptive.The Board of Appeal has failed to establish in what way the term “complete” could have a sufficiently direct and specific relationship with each of the goods in question to enable the relevant public to perceive, immediately and without further thought, that the goods in question are part of a “complete range of incontinence products” or part of a sufficiently similar group of goods (para. 35).

The Board of Appeal’s decision is annulled.


On relative grounds for refusal

Case T-276/10 of 15 November 2011, El Coto De Rioja, SA vs. OHIM – Maria Alvarez Serrano (contested decision: R-1020/2008-4 of 28 April 2010)

Trade marks:

COTO DE IMAZ
EL COTO
Earlier trade mark Community trade mark applied for

Class: 33

Decision: The trade marks are visually ( para. 45 to 46), aurally (para. 47) and conceptually (para. 48) similar.

The Board of Appeal’s decision is annulled.


Case T-434/09 of 16 November 2011, Rory McLoughney vs. OHIM – Ernst Kern (contested decision: R 1547/2006-4 of 30 September 2009)

Trade marks:

POWERBALL Powerball
Earlier trade mark Community trade mark applied for

Classes: 10,20,25

Decision: Under Article 21 of the Statute of the Court of Justice and Article 44(1)c of the Rules of Procedure, every application is to contain a summary of the pleas in law on which it is based and that information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court of First Instance to rule on the action (para. 18). The appeal does not satisfy these requirements (para. 20 to 26).

The appeal is not admissible.


Case T-477/10 of 30 November 2011, SE-Blusen Stenau GmbH vs. OHIM – Sport Eybl & Sports Experts GmbH (contested decision: R-1393/2009-1 of 22 July 2010)

Trade marks:

SE So Easy
Earlier trade mark Community trade mark applied for

Classes: 18, 25

Decision: The trade marks are visually ( para. 32 to 47) aurally (para. 51 to 56) and conceptually (para. 61 to 66) similar. There is a likelihood of confusion (para. 71 to 72).

The Board of Appeal’s decision is annuled.


Case T-152/10 of 7 December 2011, El Corte Inglés, SA vs. OHIM – Azzedine Alaïa (contested decision: R-924/2008-4 of 3 February 2010)

Trade marks:


ALAIA
Earlier trade mark Community trade mark applied for

Classes: 14,18,25

Decision: The trade marks are visually ( para. 43 to 46) and aurally (para. 47 to 54) similar. There is a likelihood of confusion (para. 58 to 60).

The Board of Appeal’s decision is upheld.


4 ECTA News

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 organized in collaboration with the BOIP, WIPO and BMM Association another workshop on international registrations of designs in order to promote the Hague System and to prove its great advantages. The event took place in The Hague on 12 December 2011. READ ANNICK MOTTET AND BRAM VAN EECKHOUT’S REPORT

EU Issues, Trade Mark OHIM, WIPO