ECTA - European Communities Trade Mark Association

Table of Contents

1 LAW

1.1 EU ISSUES

• European e-Justice internet portal launched

1.2 ENFORCEMENT

• 9th ACTA negotiating round – US statement - DG TRADE Commissioner’s speech – Next steps

• Commission’s annual report on EU customs actions to enforce intellectual property rights

• EU Commission and BAT signed agreement to combat illicit trade in tobacco

• DG TRADE’s survey on IPR protection and enforcement in third countries – Deadline of 31 October 2010 to respond

1.3 DOMAIN NAMES

• ICANN - Meeting in Brussels, 20-25 June 2010

• ICANN – Latest version of the applicant guidebook in the Top Level Domain programme – ECTA and MARQUES’s comments sent on 21 July 2010

2 OFFICE PRACTICE

OHIM

• Changes in practice on suspensions and extensions of time, as well as on proof of use in opposition proceedings effective from 15 September 2010

• Increasing number of CTM applications for trade marks and designs

• RCD e-certificates in the pipeline

• OHIM collaboration with the Turkish Patent Institute

3 CASE LAW

GENERAL COURT

T-385/08 Device of a dog
The trade mark is descriptive

T-386/08 Device of a horse
The trade mark is descriptive

T-351/08 MATRATZEN vs. MATRATZEN CONCORD (fig)
By not stating the reasons why it held that the earlier trade mark has been genuinely used in Spain, the Board of Appeal violated article 73 of Regulation 40/94

T-60/09 STABILAT vs. Stabilator (fig)
The goods and services are not similar

T-124/09 RONCATO vs. CARLO RONCATO
The opponent failed to prove that the trade mark applied for would take unfair advantage of the repute of its trade mark

T-430/08 GRAIN MILLERS (fig) vs. GRAIN MILLERS
Business name used in the course of trade and significance of such use not merely local, within the meaning of article 8 (4) of Regulation 40/94

COURT OF JUSTICE

C-214/09 BUDWEISER vs. BUDWEISER
Earlier rights to the name in Germany and Austria, where genuine use sufficiently evidenced, are a sufficient basis upon which to base a successful opposition

4 ECTA NEWS

• ECTA at WIPO sessions

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Editorial Board: Annick Mottet Haugaard, ECTA President, Anne-Laure Covin, ECTA Legal Co-ordinator, and Cathy van Vuuren, ECTA Assistant

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1 Law

1.1 EU Issues

European e-Justice internet portal launched

The Council of the European Union announced, on 16 July 2010, the launch of the European e-Justice portal, an electronic one-stop-shop for access to justice throughout the European Union. Citizens, lawyers, notaries judges, and businesses will be able to use this system, enabling cross-border legal questions, and increasing the mutual understanding of the different legal systems.

The contents of the website is available in 22 official EU languages. Website links will direct users to national information of Member States such as jurisprudence databases (national and EU), registers (companies, insolvency, business and land registers) and various information on legal issues.

The Commission Press release can be found HERE

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1.2 Enforcement

9th ACTA negotiating round – US statement - DG TRADE Commissioner’s speech – Next steps

Following the last ACTA negotiating round in Lucerne (see Flash 13-10), the Office of the United States Trade Representative, issued a statement on 1 July 2010. The USA has blocked the release of an updated negotiating text because "[t]here was not sufficient progress at this round to make release of new text meaningful" and "[t]he issues under discussion are still well reflected in the text that is public now."

The Commissioner of DG TRADE, Karel De Gucht, made a speech at the European Parliament Committee on Civil Liberties on 13 July 2010, and presented the state of play of the ACTA negotiations. He refered amongst others, to the inclusion of geographical indications in the scope of the agreement.

The next ACTA meeting will be hosted by the USA (location and dates not yet decided), where participants have “committed to continue their work with the aim of concluding ACTA as soon as possible in 2010.” The participants of the negotiations have agreed to issue another consolidated text sometime in the future.

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Commission’s annual report on EU customs actions to enforce intellectual property rights

The EU Commission published on 22 July 2010 its report on EU customs actions to enforce intellectual property rights. This report shows an increase in the number of counterfeit goods seized by the customs in 2009 which were involved in 43,500 cases covering 118 million articles. Amongst the top categories of goods seized, are cigarettes (19%), other tobacco products (16%), labels (13%) and medicines (10%).

The reports underlines that, unlike in the past where luxury goods were the most concerned by IPR infringement, there are more and more daily used products affected, such as shampoos, toothpaste, toys, medicines or household appliances. This represents a potential danger to people’s health.

China remains the main origin of IPR infringing goods with 64% of the total IPR infringing articles. More than 77% of the detained products were destroyed or a court case was initiated to establish if there was an infringement.

The full report and additional information are available HERE

The European Commission press releases can be found HERE and HERE

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EU Commission and BAT signed agreement to combat illicit trade in tobacco

On 15 July 2010, the EU Commission and the British American Tobacco (BAT), signed an agreement reflecting the fact that coordination and cooperation between the EU law enforcement authorities and manufacturers like BAT can significantly contribute to the success in defeating the illicit trade in tobacco products.

It is estimated that the EU and Member States lose up to 10 billion euro in unpaid taxes every year from counterfeit and smuggled tobacco products. The illicit trade in cigarettes is often used to fund more sinister activities, such as terrorism and organised crime. The Commission and the EU Member States have made the fight against counterfeit and contraband cigarettes a significant priority.

The Commission press release can be found HERE.

The memo from BAT, explaining the agreement in more detail, can be found HERE.

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DG TRADE’s survey on IPR protection and enforcement in third countries – Deadline of 31 October 2010 to respond

After similar exercises in 2003 and 2006 (see http://ec.europa.eu/trade/creating-…), DG TRADE has launched a new survey regarding IPR protection and enforcement in third countries (relevant from a EU trade policy perspective), targeting in the first place, EU companies established or operating in third countries.

The replies to the survey will be taken into account by DG TRADE in reviewing their priorities in that area and will enable them to update their list of "priority countries" (cf. IPR Enforcement Report 2009).

The Chair of the ECTA Anti-Counterfeiting Committee, Marius Schneider, has invited his members to reply to the survey, keeping in mind that the deadline is 30 October 2010.

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1.3 Domain Names

ICANN Meeting in Brussels, 20-25 June 2010

ICANN’s last meeting took place in Brussels from 20-25 June 2010 and was attended by more than 1600 participants, the second best attended ICANN meeting of all times. READ Massimo Cimoli’s report

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ICANN – Latest version of the applicant guidebook in the Top Level Domain programe- ECTA and MARQUES’s comments sent on 21 July 2010

As mentioned in Flash 12-10, the ECTA Internet Committee, and the MARQUES Cyberspace Team, jointly prepared comments in connection with the ICANN proposed draft 4 of the applicant guidebook. These comments were sent to ICANN on 21 July 2010.

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2 Office Practice

OHIM

Changes in practice on suspensions and extensions of time, as well as on proof of use in opposition proceedings effective from 15 September 2010

Following discussions with users at the OAMI Users Group meeting of 15 March 2010 (see Flash 07-10) and communication of some Users Associations’ positions, OHIM informed the Users Associations on 30 July that they will introduce changes in practice on suspensions and extensions of time, as well as on proof of use in opposition proceedings which will take effect from 15 September 2010.

Regarding suspensions and extensions of time , under the new policy, if a suspension is requested by the opposition parties, the Office will grant it for a period of one year (instead of variable periods at present). Subsequent requests will be granted for the same period. During all suspensions any party will be able to opt out and bring the suspension to an end. Concerning the extensions, any first request for an extension during examinations, oppositions or cancellations, which is received in time, will always be granted. However, any subsequent request for an extension of the same period of time will be refused, unless the party requesting the second extension demonstrates that there are exceptional circumstances. Examples of exceptional circumstances are given HERE.

OHIM took partly into consideration the comments ECTA made on 22 June 2010.

Regarding evidence of proof of use , the Office has underlined that this evidence is not always presented in a manner enabling it to be properly analysed by the Office or other parties to the proceedings. The Office has therefore drawn up a template for a standard letter proposed for use in opposition proceedings containing an annex giving instructions on the way in which the evidence should be structured as well as suggestions on the desirable content and format of the evidence. The letter template and accompanying instructions can be found HERE. The instructions are detailed and cover what type of evidences should be filed, and how it should be organised with regard to, among other things, numbering pages and describing the purpose of evidence. In particular, the Office strongly recommends that a maximum limit of 110 pages in correspondence should be observed. Failure to follow the instructions may lead to evidence not being taken into account.

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Increasing number of CTM applications for trade mark and design

OHIM has informed that the figures for Community trade mark and design applications for the first six months show that the recovery in demand has continued. CTM applications were 15% up on the same period in 2009 and RCDs also showed a return to growth. The complete article from the Alicante newsletter can be found HERE

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RCD e-certificates in the pipeline

OHIM is planning, in the coming months, to introduce the option of downloading e-certificates for RCDs via the RCD online database. The new e-certificates will have the same legal value and appearance as the existing paper certificates, which will continued to be provided by the Office for the time being.

The complete article from the Alicante newsletter can be found HERE

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OHIM collaboration with the Turkish Patent Institute

OHIM has reached an agreement with the Turkish Patent Institute (TPI) to cooperate in a project aimed at bringing IPR registration and enforcement in line with the EU practice.

The complete article from the Alicante newsletter can be found HERE

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3 Case Law

Summaries and case law provided by Darts IP

General Court

On absolute grounds for refusal

Case T-385/08 of 8 July 2010, Nadine Trautwein Rolf Trautwein GbR, Research and Development vs. OHIM (contested decision: R 1734/2007-1 of 30 June 2008)

Trade mark:

Classes: 18 and 31

Decision: The trade mark is descriptive. The relevant public perceives the illustration of an animal on the packaging of a product for animals as indicating the intended purpose of the product. The image of an animal hence constitutes an indication in respect of the variety, type or intended purpose of the product (para. 24 to 30).

The Board of Appeal’s decision is upheld.

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Case T-386/08 of 8 July 2010, Nadine Trautwein Rolf Trautwein GbR, Research and Development vs. OHIM (contested decision: R 1730/2007-1 of 7 July 2008)

Trade mark:

Classes: 18, 25 and 31

Decision: The trade mark is descriptive. The relevant public perceives the illustration of an animal on the packaging of a product for animals as indicating the intended purpose of the product. The image of an animal hence constitutes an indication in respect of the variety, type or intended purpose of the product (para. 31 to 42).

The Board of Appeal’s decision is upheld.

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On relative grounds for refusal

Case T-351/08 of 30 June 2010, Matratzen Concord vs. OHIM – Pablo Barranco Schnitzler and Mariano Barranco Rodriguez (contested decision: R 71034/2007-2 of 30 May 2008)

Trade marks:

MATRATZEN

Earlier trade mark

Community trade mark applied for

Classes: 10, 20 and 24

Decision: The Board of Appeal has not duly stated the reasons why it held that the earlier trade mark has been genuinely used in Spain. It violated article 73 of Regulation 40/94 (para. 19 to 28).

The Board of Appeal’s decision is annuled.

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Case T-60/09 of 7 July 2010, Herhof-Verwaltungsgesellschaft mbH vs. OHIM – Stabilator sp. Zo.o. (contested decisions: R 483/2008-4 and R 705/2008-4 of 16 December 2008)

Trade marks:

STABILAT

Earlier trade mark

Community trade mark applied for

Classes: 19, 37, 40 and 42

Decision:
The following goods and services are different:
"non-metal building materials" (class 19) and "chemical and physical analysis, in particular of building materials" (class 42) (para. 28 to 33);

"building services, building supervision, restoration of buildings and other engineering objects, preservation of buildings and other engineering objects, demolition services, scaffoldings assembly, drilling the wells, lending the building machines and tools" (class 37) and "chemical and physical analysis, in particular of building materials" (class 42) (para. 28 to 33);

"installation services for composting installations, installations for generating biogas from waste materials, installations for the treatment, processing and/or purifying of air and/or exhaust air, installations for stabilising residual waste materials and thermal recycling installations for residual materials" (class 37) and "building services" (class 37) (para. 34 to 39);

"architectural services, technical research in range of construction, construction, advisory, engineering expertise in range of construction, building design" (class 42) and "chemical and physical analysis, in particular of compost, earth and building materials, and of biogas, air and exhaust air; planning, namely the design and construction supervision of composting installations, installations for generating biogas from waste materials, installations for the treatment, processing and/or purifying of air and/or exhaust air, installations for stabilising residual waste materials and thermal recycling installations for residual materials" (class 42) (para. 40 to 44);

"demolition services" (class 37) and "generating thermal and electrical energy from recycling installations; composting of waste materials, recycling of waste materials to produce biogas, stabilising of residual materials and thermal recycling of residual materials, for a fee, for others" (class 40) (para. 45 to 50).

The Board of Appeal’s decision is upheld.

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Case T-124/09 of 7 July 2010, Valigeria Roncato SpA vs. OHIM – Roncato Sr (contested decisions: R 236/2008-1 and R 237/2008-1 of 23 January 2009)

Trade marks:

RONCATO	CARLO RONCATO

Earlier trade mark

Community trade mark applied for

Classes: 3, 9, 14 and 18

Decision: The opponent failed to prove that the trade mark applied for would take unfair advantage of the repute of its trade mark (para. 42 to 50).

The Board of Appeal’s decision is upheld.

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Case T-430/08 of 9 July 2010, Grain Millers, Inc. vs. OHIM – Grain Millers GmbH & Co. KG (contested decision: R 478/2007-2 of 23 July 2008)

Conflicting signs:

	GRAIN MILLERS

Earlier business name

Community trade mark applied for

Classes: 29, 30, 31

Decision: The opponent succeeded in establishing that its business name was used in the course of trade and that the significance of such use was not merely local, within the meaning of article 8 (4) of Regulation 40/94 (para. 40 to 48).

The Board of Appeal’s decision is upheld.

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Court of Justice

Case C-214/09 of 29 July 2010, Anheuser-Busch Inc. / OHMI – Budejovicky Budvar, narodni podnik (contested decision: T-191/07 of 25 March 2009. See Flash 07-09 )

Trade marks:

BUDWEISER	BUDWEISER

Earlier trade mark

Community trade mark applied for

Class: 32

Decision: The Court of Justice dismissed the appeal against the General Court’s decision that upheld the opposition filed by Budvar on basis on national trade marks “BUDWEISER” against the registration of an identical trade mark. The Court held that Budvar’s earlier rights to the name in Germany and Austria, where genuine use was sufficiently evidenced, were a sufficient basis upon which to base a successful opposition.

The Court also held (para. 69) that:

• OHIM is entitled to require proof that an earlier mark had been renewed, where that mark was due to expire after the notice of opposition was filed;
• an opposing party is not required to provide such proof on its own initiative.

4 ECTA News

ECTA at WIPO sessions

• Working Group on the Development of the Lisbon System (Appellations of Origin) on 30-31 August and 1-3 September 2010

ECTA, represented by Florent Gevers, Chair of the ECTA Geographical Indications Committee, and Jan Wrede, Vice-Chair of the ECTA Geographical Indications Committee, will attend the Working Group on the Development of the Lisbon System (Appellations of Origin) on 30-31 August and 1-3 September 2010.

The meeting documents can be found HERE

• Forty-Eighth series of Meetings of the Assemblies of the Member States on 20-29 September 2010

The Meetings of the Assemblies enable to bring together WIPO’s 184 Member States, allowing them to take stock of the progress in WIPO’s work and to discuss future policy directions.

All available documents can be found HERE

• Twenty-Fourth Session Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications on 1-3 November 2010

The current available document is the questionnaire concerning the protection of names of States against registration and use as trade marks.

• Twenty-First Session of the committee of experts of Nice Union on 22-26 November 2010

No documents are available at this stage.