16 March 2016: ECTA Workshop on the Trade Mark Reform and the

4 March 2016
Editorial team: Bárbara Díaz Alaminos, Daniela Derksen and Jean-Jo Evrard.
16 March 2016:
ECTA Workshop
on the Trade Mark Reform and the
Internet of Things
Registrations for the ECTA 35th Annual
Conference have now been opened
Communication OHIM President regarding article 28(8) EUTMR
ECTA’s Award
Deadline 15 March 2016
4 March 2016
TABLE OF CONTENTS
1. ECTA NEWS
3.3.
T-711/13 and T-716/13 of 18 February
2016, Harrys Pubar AB vs. OHIM – Harry's
New York Bar
1.1.
ECTA Workshop on the Trade Mark
reform and the Internet of things
1.2.
Registrations for the ECTA 35th Annual
Conference have now been opened
1.3.
ECTA e-bulletin- February
1.4.
ECTA Management Committee Meeting
and Brussels meetings
1.5.
Joint Statement on list of goods and
services-512 characters
1.6.
ECTA-OHIM Link Committee Meeting
1.7.
ECTA Round Table on Geographical
Indications
European Court of Justice
1.8.
EU Observatory Working Groups Meetings
in Alicante
3.6.
1.9.
ECTA Award
On Absolute Grounds for Refusal – General
Court
3.4.
3.5.
TRADE MARKS
OHIM
2.1.
4.1.
Communication of OHIM president on the
implementation of Article 28(8) EUTMR
ANTI-COUNTERFEITING
Fifth and sixth sectorial report on the
economic cost of IPR infringement
GEOGRAPHICAL INDICATIONS
2.3.
Progress report EURid available
3. CASE LAW
On Relative Grounds for Refusal – General
Court
3.1.
3.2.
4.2.
4.3.
4.4.
4.5.
4.6.
‘Salam de Sibiu’ obtained EU protected
geographical indications
DOMAIN NAMES
2.4.
Case C-163/15 of 4 February 2016, Yous
sef Hassan vs. Breiding Vertriebsgesellschaft mbH
4. OFFICE PRACTICE
2. LAW
2.2.
T-411/14 of 24 February 2016, The CocaCola Company vs. OHIM
Case T-543/14 of 26 February 2016, pro
vima Warenhandels GmbH vs. OHIM –
Renfro Corp.
T-541/14 of 2 February 2016, Antica
Azienda Agricola Vitivinicola Dei Conti
Leone De Castris Srl vs. OHIM, SA
T-169/13 of 2 February 2016, Benelli Q.J.
Srl vs. OHIM – Demharter GmbH
The National Institute for Intellectual
Property of Brazil joins TMview
OHIM renewal fees
EDB Forum
OHIM Academy Webinars
March User Associations Communication
Clarification of Scope of International
Registrations designating the European
Union
WIPO
4.7.
Change in the amount of the individual
fee: European Union
NATIONAL OFFICES
4.8.
Structure change of Estonian Patent Office
2
1. ECTA NEWS
1.1. ECTA Workshop on the EU
Trade Mark reform and the Internet of things
Furthermore, articles and case law show
intellectual property issues from different
jurisdictions.
On 16 March 2016, ECTA will hold a
workshop on the latest news and state
of the EU Trade Mark reform, and on
the Internet of things.
The ECTA e-bulletin is available HERE.
Further information is available HERE.
1.2. Registrations for the ECTA
35th Annual Conference have now
been opened
ECTA is pleased to announce that registrations for ECTA’s 35th Annual Conference 'ROGUE WAVES AND CROSSWINDS: TRADE MARKS IN MOTION'
have now been opened.
1.4. ECTA Management Committee Meeting and Brussels meetings
On 18 March 2016, the ECTA Management Committee and its Manager Legal
Affairs will held the 87th Management
Committee meeting in Brussels.
In addition, on 17 March 2016, several
meetings will be held with EU Officials
from the EU Commission and other relevant institutions to discuss topics such
as the state of the EU Trade Mark legislation.
The event will take place in Dubrovnik,
Croatia from 22-25 June 2016.
On-line Registration and further information is available HERE.
1.3. ECTA e-bulletin– February
edition
ECTA is pleased to inform that the February edition of the ECTA e-bulletin has
been made available on 8 February
2016.
The February edition includes interviews
with Kristiane Brøndum Vandborg,
Christopher Morcom and the ECTA new
members.
1.5 Joint Statement on list of
goods and services – OHIM 512
characters limitation
On 10 February 2016, ECTA, APRAM,
BMM, GRUR, ITMA and UNION-IP submitted a joint statement to OHIM.
The Joint Statement highlights issues
that users face due to the fact that
OHIM does not allow more than 512
characters without a semicolon when
drafting the list of goods and services in
a CTM application online.
The joint statement is available HERE.
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1. ECTA NEWS
1.6. ECTA-OHIM Link Committee
Meeting
On 19 February 2016, the ECTAOHIM Link Committee meeting was
held in Alicante, Spain.
The meeting was attended by all
members of the ECTA-OHIM Link
Committee, such as Andreas Renck,
Chair of the Committee, as well as
by the ECTA President, F. Peter
Müller and Bárbara Díaz Alaminos,
ECTA Manager Legal Affairs.
1.7. ECTA Round Table on Geographical Indications
On 18 February 2016, ECTA held a
Round Table on Geographical Indications in the legislative package and in
the recent case law of the General
Court.
The Round Table was held in Alicante
and was attended by more than 90 persons.
The speakers in the Round Table were:

Christoph Bartos, Member Boards
of Appeal, OHIM, ES

Magnus Cormack, Director of Legal
Affairs, The Scotch Whiskey Association, SCT

Benjamin Fontaine, Chair of the ECTA Geographical Indications Committee, Trade Mark Attorney,
E.G.Y.P. SAS, ES

Oscar Mondejar, Head of Legal
Practice, OHIM, ES
The Power Point Presentations are
available HERE.
1.8. EU
Observatory
Working
Groups Meetings in Alicante
The EU Observatory on Infringements of
Intellectual Property Rights organized
meetings from 1 to 3 March 2016 in
Alicante, Spain.
In this regard, Carina Gommers, member of the ECTA Anti-Counterfeiting
Committee, attended the meetings of
the IP in the Digital Work Working
Group.
Additionally, Annick Mottet, member of
the ECTA Anti-Counterfeiting Committee, attended the meetings of the Legal
and International Working Group, and
Bárbara Díaz Alaminos, ECTA Manager
Legal Affairs, attended the meeting sof
the Economic and Statistics Working
Group.
Reports will be made available to ECTA
members.
1.9.
ECTA Award
ECTA takes pleasure in inviting students
and professionals to take part in the ECTA AWARD 2016. The deadline for receipt of papers is 15 March 2016.
4
1. ECTA NEWS
The purpose is to grant an Award to an
individual who has written an article or
an essay of importance for the development of European Trade Mark Law. It is
intended to present the Award in Dubrovnik at a special ceremony during the
Association’s 35th Annual Conference
on Friday 24 June 2016.
This initiative shall have a great impact
on both students and professionals involved, who will be motivated to improve
their knowledge in their areas of interest, as well as to give their unique contribution in creating more unified solutions within the European Union trade
mark jurisdictions.
The full ECTA Award criteria can be
found HERE.
The synopsis for the Student category
can be found HERE.
The synopsis for the Professional category can be found HERE.
5
2. LAW
TRADE MARKS
ANTI-COUNTERFEITING
2.1. Communication of OHIM
president on the implementation
of Article 28(8) EUTMR
2.2. Fifth and sixth sectorial report on the economic cost of IPR
infringement
On 15 February 2016, the President of
OHIM published a Communication regarding Article 28(8) of the amending
EU trade mark Regulation.
On 11 February 2016, the fifth and sixth
sectorial report on the economic cost of
IPR infringement, covering jewelry and
watches and handbags and luggage,
was released.
Article 28(8) EUTMR allows a transitional period of six months, in which proprietors of EU trade marks that have:
(i) applied for before 22 June 2012; and,
(ii) registered in respect of the entire
heading of a Nice class;
can declare that during the date of filing
their intention was to seek protection in
respect of goods and services beyond
those covered by literal meaning of the
heading.
The Communication of the President of
OHIM consists of information on the
framework for proceedings before the
Office for entering a declaration under
Article 28(8) EUTMR in the register, and
includes an Annex which contains a non
-exhaustive list of examples of goods
and services whom are not covered by
the literal meaning of the general indications of the Nice class headings.
In the report on the economic costs of
IPR infringement in the jewelry and
watches sector, it is stated that 13.5% of
sales are lost by the sector due to counterfeiting. Additionally, €1.9 billion on
revenue has been lost in this sector annually.
In the second report on IPR infringement in handbags and luggage, it is
stated that 12.7% of sales has been lost
in this particular sector due to counterfeiting.
Furthermore, € 1.6 billion of revenue
has been lost in this sector annually.
The sectorial report on jewelry & watches is available HERE.
The sectorial report on handbags & luggage is available HERE.
Further information is available HERE.
6
2. LAW
GEOGRAPHICAL INDICATIONS
2.3. ‘Salam de Sibiu’ obtained
EU protected geographical indications
The Romanian salami called ‘Salam de
Sibiu’ has obtained entry in the European register of protected designations of
origin and protected geographical indications (PGI).
The Salam de Sibiu will officially acquire
the PGI on 10 March 2016.
Further information is available HERE.
DOMAIN NAMES
2.4. Progress report EURid available
The .eu registry called EURid made a
new progress report available regarding
the last quarter of 2015.
During the last quarter of 2015 , .eu registrations increased by 7.937.
The report shows that the total number
of .eu registration increased in 25 of the
31 EU Member States and EEA countries.
The full report is available HERE.
7
3. CASE LAW
Provided by
ON RELATIVE GROUNDS FOR REFUSAL - GENERAL COURT
3.1. Case T-541/14 of 2 February
2016, Antica Azienda Agricola
Vitivinicola Dei Conti Leone De
Castris Srl vs. OHIM, SA
(contested decision: R-917/2013-4
of 21 May 2014)
3.2. Case T-169/13 of 2 February
2016, Benelli Q.J. Srl vs. OHIM –
Demharter GmbH (contested decision: R-95/2012-2 of 16 January
2013)
Trade marks
Earlier trade mark:
Trade mark applied for:
Trade marks
Earlier trade mark :
CASTILLO DE LIRIA
Classes: 9,12,25
Trade mark applied for:
Decision: Well-known marks within the
meaning of Article 6bis of the Paris Convention are marks which, on the basis of
their reputation in the territorial area at
issue
Class: 33
Decision: The trade marks are visually
(para. 26 to 31) and aurally (para. 32 to
35 ) similar. There is a likelihood of confusion (para. 43 to 48).
The Board of Appeal's decision is upheld.
and, irrespective of whether proof of
registration is provided, enjoy protection
against a likelihood of confusion (para.
54).
Since Article 8(2)(c) of Regulation No
207/2009 refers to trade marks which
are ‘well known in a Member State, in
the sense in which the words “well
known” are used in Article 6bis of the
Paris Convention’ it is necessary, in order to ascertain how the existence of a
well-known mark can be proved, to refer
to the guidelines for the interpretation of
8
3. CASE LAW
Article 6bis (para 55).
Even after assessing as a whole all of
the evidence submitted by the applicant,
it still cannot be inferred that the applicant has proved the well-known character of the earlier non-registered marks
(para. 83).
The Board of Appeal's decision is upheld.
3.3. Cases T-711/13 and T-716/13
of 18 February 2016, Harrys Pubar
AB vs. OHIM – Harry's New York
Bar (contested decisions: R946/2012-1 and R-995/2012-1 of 8
October 2013)
Trade marks
Earlier trade mark :
yoghurts’ in Class 29 are similar to the
services ‘serving of food and drink
through restaurant, pub and café services’ in Class 43 covered by the earlier
mark.
Those goods are necessarily used in the
serving of food and drink, with the result
that those goods and those services are
complementary. Furthermore, food may
be offered for sale in places in which
food and drink are served. Such goods
are therefore used and offered through
restaurant, pub and café services.
Those goods are consequently closely
connected with those services (para.
59).
The same reasoning applies to goods in
Class 30 (para. 65), 32 (para. 69) and
33 (para. 74).
2. The trade marks are visually (para. 89
to 93), aurally (para. 94 to 95) and conceptually (para. 96 to 99) similar.
There is a likelihood of confusion (para.
106 to 110).
Trade mark applied for:
The Board of Appeal's decisions are
annulled in part.
HARRY'S BAR
Classes: 25,29,30,32,33,43
Decision: 1. ‘meat; fish; poultry and
game; meat extract; preserved, dried
and cooked fruits and vegetables; jellies, jams, marmalades, compotes;
eggs; milk and dairy products; butter;
cheese; edible oils and fats; milk-based
beverages; instant drinks based on milk;
ON ABSOLUTE GROUNDS FOR REFUSAL– GENERAL COURT
3.4. Case T-411/14 of 24 February 2016, The Coca-Cola Company vs. OHIM (contested decision:
R-540/2013-2 of 27 March 2014)
9
3. CASE LAW
Trade marks
Trade mark applied for
Classes: 6,21, 32
Decision: 1. The trade mark applied for
is made up of a combination of elements, each of which is likely to be commonly used in the trade of the goods
covered by the trade mark application
and is therefore devoid of distinctive
character (para. 48).
The fact that a composite trade mark is
made up only of features which are devoid of any distinctive character in relation to the goods concerned generally
leads to the conclusion that that trade
mark, taken as a whole, is devoid of distinctive character. That would not be the
case only if concrete factors, such as
the way in which the various features
are combined, were to indicate that the
composite trade mark, taken as a whole,
is greater than the sum of its part (para.
49).
There is no indication that such factors
exist in the present case. The mark applied for is characterised by its shape
which has a curved silhouette. However,
that shape represents nothing more
than the sum of the parts of the mark
applied for, that is to say, a bottle like
the majority of bottles on the market.
Such a shape is indeed likely to be commonly used in the trade of the goods
covered by the trade mark application. It
follows that the manner in which the
components of the composite trade
mark at issue here are combined is not
capable of giving it distinctive character
either (para. 50).
2. The surveys relied on by the applicant, are not capable of proving that the
mark applied for had acquired distinctive
character throughout the European Union in respect of a significant part of the
relevant public. The surveys were conducted in 10 EU Member States, namely
Denmark, Germany, Estonia, Greece,
Spain, France, Italy, Poland , Portugal
and the United Kingdom, even though
the European Union had 27 Member
States at the date on which the application for registration was lodged. It is true
that the surveys in question concluded
that the mark applied for had acquired a
distinctive character in the 10 Member
States where they were carried out, with
the recognition rate being between 48%
(Poland) and 79% (Spain ); however,
they did not establish that that was also
the case in the other 17 Member States.
The results of those surveys cannot be
extrapolated to the 17 Member States in
which no surveys were conducted (para.
80).
The Board of Appeal's decision is upheld.
10
3. CASE LAW
3.5. Case T-543/14 of 26 February 2016, provima Warenhandels
GmbH vs. OHIM – Renfro Corp.
(contested decision: R-1959/2013-2
of 13 May 2014)
Trade marks
HOT SOX
Trade mark applied for
Class: 25
Decision: The trade mark is not descriptive.
Although the element ‘sox’ does not correspond to the word for socks in English, it cannot be excluded that the relevant consumer will understand it as referring to socks, forming part of the articles of hosiery covered by the contested
mark. Admittedly, the element ‘sox’ has
a particular spelling inasmuch as the
letters ‘c’, ‘k’ and ‘s’ of the word ‘socks’
are replaced by the letter ‘x’. Nevertheless, that particular spelling does not
induce a phonetic difference between
two words. Since, as a word mark, the
contested mark is intended to be used
orally, its particular spelling cannot be
considered to be a creative element
which may distinguish between the element ‘sox’ and the word ‘socks’ (para.
27).
The word ‘hot’ in the sense of ‘extremely
warm’ or ‘very high temperature’ associated with the goods at issue is not descriptive of them or of their characteris-
tics (para. 37). Nothing in the file before
the Court gives grounds for assuming
that English-speaking consumers in the
European Union, when faced with the
contested mark, will immediately perceive it, without any reflection, as meaning ‘fashionable socks’ or ‘currently popular socks’ (para. 43).
It is highly unlikely that the average consumer when faced with the contested
mark interprets it as referring to ‘erotic
or sexy socks’, since a pair of socks is
not generally perceived as being sexually provocative (para. 49).
The Board of Appeal's decision is upheld.
EUROPEAN COURT OF JUSTICE
3.6. Case C-163/15 of 4 February
2016,
Youssef
Hassan
vs.
Breiding
Vertriebsgesellschaft
mbH
Decision: The Court replies to a question referred by the Oberlandesgericht
Düsseldorf (Higher Regional Court, Düsseldorf, Germany), concerning the interpretation of the first sentence of Article
23(1) of Council Regulation (EC) No
207/2009.
23(1) of Council Regulation (EC) No
207/2009.
The Court’s reply is as follows :
11
3. CASE LAW
The first sentence of Article 23(1) of
Council Regulation (EC) No 207/2009 of
26 February 2009 on the Community
trade mark must be interpreted as
meaning that the licensee may bring
proceedings alleging infringement of a
Community trade mark which is the subject of the licence, although that licence
has not been entered in the Register of
Community trade marks.
12
4. OFFICE PRACTICE
OHIM
4.1. The National Institute for
Intellectual Property of Brazil
joins TMview
The National Institute for Intellectual
Property of Brazil (INPI) made its trade
mark data available to TMview on 29
February 2016.
With the addition of more than 3.1 million trade marks from INPI, TMview is
now providing access and information to
more than 40 million trade marks in total.
Further information is available HERE.
4.2. OHIM Renewal fees
Due to the entry into force of the amending EU trade mark Regulation on 23
March 2016, the President of OHIM has
published a Communication regarding
the calculation of the amount of renewal
fees.
The Communication announces, inter
alia, that:
(i) Community Trade Marks which expire before 23 March 2016 shall be subjected to the fees of the current fee
structure.
(ii) Community Trade Marks which expire on or after 23 March 2016 shall be
subjected to the fee structure established in the amending EU trade mark
Regulation.
This also applies to renewals that are
requested and paid for before the entry
into force of the Communication (1 February 2016).
The communication is available HERE.
4.3.
EDB forum
On 28 and 29 June 2015, the EDB Forum of 2016 will take place at OHIM in
Alicante.
The Forum of 2016 will be dedicated to
counterfeiting from the perspective of
enforcement. In attendance will be,
amongst others, DG Taxud, Customs
and Police officers of the 28 EU Member
States and Europol.
An exhibition will take place on counterfeit products, in which right holders can
show enforcers copies of their goods
and can explain where further information
can
be
found.
Further information is available HERE.
This also applies to renewals that are
requested and paid for after 23 March
2016.
13
4. OFFICE PRACTICE
4.4.
OHIM Academy webinars
OHIM will hold the following publicly
available webinars in March 2016:
8 March 2016:
1. Decisions of the Trimester of the GC
and the EUCJ
2. Update on changes to the online
tools and databases as a result of
the new EU trade mark Regulation
3. How to find the best HDB term for
your CTM
15 March 2016:
1. Decisions of the Trimester of the
Boards of Appeal of OHIM
2. Webinar for external users on the
Legal Reform: Office guidelines
29 March 2016:
1. Assessing evidence from the Internet
2. Usage of TMC and its more useful
functionalities
Further information is available HERE.
4.5. March User
Communication
Associations
Each month, the Office for Harmonization in the Internal Market (OHIM) distributes relevant information to our
members on, amongst others, the Observatory, Webinars and the European
Cooperation Fund .
The March issue is available HERE.
4.6. Clarification of Scope of International Registrations designating the European Union
Holders of international registrations
designating the European Union (prior
to 22 June 2012), which relied on the
Nice Class heading to define the scope
of protection, have to consider clarifying
the scope of these registrations before
the OHIM.
Not clarifying the scope before OHIM,
could mean that the scope of protection
in the European Union will be limited to
the literal meaning of the NICE Class
heading only.
In accordance with Article 28(8)
EUTMR, holders have until 24 September 2016, to clarify the goods and services that fall outside the literal meaning
of a NICE Class heading, through a declaration submitted to OHIM.
The declarations shall not be filed at
14
4. OFFICE PRACTICE
at WIPO, but with OHIM, using the Recordal Application Form.
nian Patent Office will be based on a
new structure.
Further information is available here:
Instead of seven departments, the Estonian Patent Office will now have four
departments: Trade Mark, Patent, Registry and Financial and Administrative
Department.
Communication No. 1/2016 of the President of OHIM
Information Notice No. 10/2016
Annex I of the Communication
WIPO
4.7. Change in the amount of individual fee: European Union
The Director General of WIPO has established new amounts of the individual
fee to be paid when the European Union
is designated in an international application in accordance with the Madrid Protocol: (i) in an international application or
(ii) in a designation subsequent to an
international registration; or (iii) in respect of the renewal of an international
registration.
Further information is available HERE.
NATIONAL OFFICES
4.8. Structure change of Estonian Patent Office
Starting from 1 February 2016, the Esto-
15