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.
ECTA GEOGRAPHICAL INDICATIONS ROUND TABLE, ALICANTE, 16 FEBRUARY 2012
Join us with experts from Producers Associations, the OHIM and professional representatives for a lively discussion on GIs and the Community Trade Mark System!
ECTA - COAPI – AGESORPI – WIPO – OEPM WORKSHOP ON INTERNATIONAL REGISTRATION OF DESIGNS, MADRID, 21 MARCH 2012
After successful events in London, Rome, Paris and Hamburg, 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 COAPI – AGESORPI – WIPO – OEPM will take place in Madrid on 21 March 2012. The language of the event will be Spanish. Further details will be available soon. Please mark you 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 soon.
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Table of Contents
1 LAW
1.1 Parasitic copying and trade secrets
- Commission publishes a study on unfair competition practices of "parasitic copying"
- Commission publishes a study on legal protection of trade secrets
2 OFFICE PRACTICE
2.1 OHIM
- EuroClass expands
- Daily publication of RCD Recordals
2.2 WIPO
- IP filings worldwide rebound in 2010 despite economic turmoil
- WIPO Report shows growing demand for IP
- Reform in Romania, EU membership and colour trade marks
3 CASE LAW
Summaries and case law provided by
GENERAL COURT
T-531/10 Vorfront
The trade mark is descriptive
T-425/10 Mixfront
The trade mark is descriptive
T-166/11 Infront
The trade mark is descriptive
T-377/09 PASSIONATELY SWISS
The trade mark is descriptive
T-109/09 PROTIPLUS, PROTI, PROTIPOWER vs.PROTIVITAL
Submission of evidence out of time
COURT OF JUSTICE
C-119/10 Frisdranken Industries BV
Filling of cans – Use of a sign similar to a trade mark
4 ECTA NEWS
- EEPP Group hearing on the European Trade Mark system in the 21st century, 11 January 2012 in Brussels
Editorial team: Jean-Jo Evrard, Annick Mottet Haugaard, and Cathy van Vuuren
1 Law
1.1 Parasitic copying and trade secrets
Commission publishes a study on unfair competition practices of "parasitic copying"
On 13 January 2012, the European Commission published a study on the existing national legal protection in the EU Member States against parasitic copying (the practice of marketing products which are designed to resemble or look like pre-existing products of well established brands). The study reports on the different ways in which the laws of the Member States address this problem and concludes that the legal framework varies greatly between Member States and leads to different results. The study provides the basis for reflection on the adequacy of the current legal framework throughout the European Union. Products marketed under a parasitic copying strategy – commonly referred to as "parasitic copies", "look-alikes", or "slavish imitations" - lead consumers to associate or confuse the two competing products. They take unfair advantage of the reputation of the products copied and divert sales. Companies suffering losses from parasitic copying should be in the position to react against such unfair practices. The study is available HERE
Commission publishes a study on legal protection of trade secrets
On 13 January 2012, the Commission published a study on the legal protection of trade secrets (often referred to as confidential business information). According to the study, although trade secrets are legally protected against theft in all Member States, the nature and scope of such protection varies considerably leading to fragmentation in their enforcement. The study also highlights the increasing need for effective protection since in recent years, for a number of reasons (the advent of the "information society", growth in outsourcing of manufacturing, the ease with which large quantities of documents and data can be copied, downloaded, stored and transmitted, etc.), companies face legal uncertainty when it comes to exploiting their trade secrets across borders. The study concludes that the need for effective protection has increased in recent years. The study also reports on the different ways through which Member States protect trade secrets, as well as on the available means of redress against misappropriation and respective remedies. It finds variable levels of protection and significant differences in national procedures to enforce the relevant laws protecting trade secrets. The study is available HERE
2 Office Practice
2.1 OHIM
EuroClass expands
Three national offices have joined the EuroClass classification project. Cyprus and France joined the project on 1 January, followed a few days later by Austria, bringing the total number of participating offices to 23.
The EuroClass database provides lists of descriptions of goods and services that have been accepted by the participating offices and, where no entry is found, it provides a list of similar terms in the classes searched. If a term marked as accepted by OHIM is selected from the result list and included in a CTM application, it is guaranteed that it will be automatically accepted by OHIM.
For more information on EuroClass see the OHIM website.
Daily publication of RCD Recordals
As of 10 January 2012, recordals concerning Registered Community Designs (entries made in the Register, renewals and information on expired registrations, Restitutio in Integrum) will be published on a daily basis in the RCD Bulletin as opposed to the once weekly Friday publication that has taken place up until now.
With this change, all items for publication relating to CTMs and RCDs are now published on a daily basis.
More information can be found on the OHIM website.
2.2 WIPO
IP Filings worldwide rebound in 2010 despite economic turmoil
A report published by WIPO shows that intellectual property (IP) filings worldwide rebounded strongly in 2010 after a considerable decline in 2009.
The recovery in IP filings was stronger than the overall economic recovery. Patent and trademark filings grew by 7.2% and 11.8% respectively in 2010 compared to growth of 5.1% in the global gross domestic product (GDP), with China and the United States (US) accounting for the greatest share of the increased filings.
In Europe, IP filing growth by France, Germany and the UK far exceeded the GDP growth rate of the three largest European economies in 2010.
For further information see HERE
WIPO Report shows growing demand for IP
The World Intellectual Property Report 2011- The Changing Face of Innovation – a new WIPO publication – describes how ownership of intellectual property (IP) rights has become central to the strategies of innovating firms worldwide. With global demand for patents rising from 800,000 applications in the early 1980s to 1.8 million in 2009, the Report concludes that growing investments in innovation and the globalization of economic activities are key drivers of this trend.
For further information see HERE
Reform in Romania, EU membership and colour trade marks
James Nurton conducted an interview with Andrew Vlad Ratza, ECTA Council Member, Ratza & Ratza, RO about reform in Romania, EU membership and colour trade marks.
3 Case Law
Summaries and case law provided by Darts IP
GENERAL COURT
On absolute grounds for refusal
Case T-531/10 of 14 December 2011, Häfele GmbH & Co. KG vs. OHIM (contested decision: R 570/2010-1 of 14 September 2010)
Trade mark:
Vorfront
Classes: 6,7,19,20
Decision: The trade mark is descriptive. The element ’vor’ will be understood by the relevant public as meaning ’before’ and the element ’front’ as meaning ’front’. Taken as a whole, the sign Vorfront will be understood as referring to something located at the front of something (para. 26). It will be perceived by the relevant public, in relation to the goods in question, as an indication that the goods concerned are intended to be used or installed in the front of a construction or an item of furniture or in front of another element in the construction or furniture (para. 28).
The Board of Appeal’s decision is upheld.
Case T-425/10 of 14 December 2011, Häfele GmbH & Co. KG vs. OHIM (contested decision: R 338/2010-1 of30 June 2010)
Trade mark:
Mixfront
Classes: 6,20
Decision: The trade mark is descriptive. The element ’mix’ will be understood by the relevant public as meaning ’mix’ and the element ’front’ as meaning ’front’. Taken as a whole, the sign Mixfront will be understood as referring to something which combines with the front part of something (para. 26). It will be perceived by the relevant public, in relation to the goods in question, as an indication that the goods concerned are intended to be used or installed in combination with other elements on the front of a construction or an item of furniture (para 28).
The Board of Appeal’s decision is upheld.
Case T-166/11 of 14 December 2011, Häfele GmbH & Co. KG vs. OHIM (contested decision: R 1711/2010-1 of 17 January 2011)
Trade mark:
Infront
Classes: 6,20
Decision: The trade mark is descriptive. The element ’in’ will be understood by the relevant public as meaning ’in’ and the element ’front’ as meaning ’front’. Taken as a whole, the sign Infront will be understood as referring to something located at the front of something (para. 25). It will be perceived by the relevant public, in relation to the goods in question, as an indication that the goods concerned are intended to be used or installed in the front of a construction or an item of furniture (para 27).
The Board of Appeal’s decision is upheld.
Case T-377/09 of 15 December 2011, Mövenpick vs. OHIM (contested decision: R 1457/2008-1 of 23 July 2009)
Trade mark:
PASSIONATELY SWISS
Classes: 16,35,41,43,44
Decision: The trade mark is descriptive. Goods and services of Swiss origin are generally perceived as being of high quality. The element ’Swiss’ in the trade mark applied for not only provides information relating to the geographical origin of the goods and services in question but also offers a quality criterion (para. 44).
The Board of Appeal’s decision is upheld
On relative grounds for refusal
Case T-109/09 of 16 December 2011, Bernhard Rintisch vs. OHIM – Valfleuri Pâtes Alimentaires SA (contested decision: R 1660/2007-4 of 21 January 2009)
Trade marks:
| PROTIPLUS | PROTIVITAL |
|---|---|
| PROTIPOWER | PROTI |
| Earlier trade mark | Community trade mark applied for |
Classes: 5,29,30
Decision: The possibility for parties to proceedings before OHIM to submit facts and evidence after the expiry of the periods specified for that purpose is conditional upon there being no provision to the contrary. It is only if that condition is met that OHIM has a discretion as regards the taking into account of facts and evidence submitted out of time (para.33).
Rule 20(1) of Regulation No 2868/95 provides: ‘If until expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well his entitlement to file the opposition, the opposition shall be rejected as unfounded.’
The Board of Appeal is bound to apply Rule 20(1) of Regulation No 2868/95 in the proceedings before it and, therefore, to find that the submission of evidence after the expiry of the period specified for that purpose by OHIM, in order to establish the existence, validity and scope of protection of the earlier mark, results in the rejection of the opposition without the Board of Appeal having a discretion in that regard (para. 38).
COURT OF JUSTICE
Case C-119/10 of 15 December 2011, Frisdranken Industries BV vs. Red Bull GmbH
Decision: The Court of Justice replies to a question referred by the Dutch Supreme Court (“Hoge Raad”) in relation to the filling of cans already bearing a sign similar to a trade mark.
The Court’s reply is as follows :
“Article 5(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a service provider who, under an order from and on the instructions of another person, fills packaging which was supplied to it by the other person who, in advance, affixed to it a sign which is identical with, or similar to, a sign protected as a trade mark does not itself make use of the sign that is liable to be prohibited under that provision”.
4 ECTA News
EPP Group hearing on the European Trade Mark system in the 21st century, 11 January 2012 in Brussels
Annick Mottet Haugaard, ECTA President participated as a speaker in the first panel on the subject "Practical aspects of trademarks - latest trends. Why is trademark important to the economy".
The EPP TV report of the event can be seen HERE
Annick Mottet Haugaard’s report can be found HERE.