10 year anniversary ip key ec consultation on review ... · ec consultation on review satellite and...
TRANSCRIPT
European Communities Trade Mark Association 4 September 2015
10 Year Anniversary IP key
EC consultation on review Satellite and Cable Directive
Algeria accession to the Madrid Protocol
2
European Communities Trade Mark Association 4 September 2015
1. ECTA NEWS
1.1 10 Year Anniversary of IP Key 1.2 ECTA Brussels meeting 1.3 ECTA comments on Work Package 1-2016 OHIM 1.4 ECTA attending the Cooperation Fund meeting 1.5 Observatory Meetings
2. LAW
2.1 Copyright- EC consultation on review Satellite and Cable
Directive
2.2 Geographical Indications- ‘Ogulinski kiseli kupus’/‘Ogulinsko
kiselo zelje’ received Protected Designation of Origin status
2.3 Domain Names- Release of Country and Territory Names
ICANN
3. CASE LAW
3.1 ON ABSOLUTE GROUNDS FOR REFUSAL– GENERAL
COURT
3.1.1 Case T-215/13 of 15 July 2015, Deutsche Rockwool
Mineralwoll GmbH & Co. OHG vs. OHIM – Recticel SA
3.2 ON RELATIVE GROUNDS FOR REFUSAL– GENERAL
COURT
3.2.1 Case T-436/12 of 8 July 2015, Rockwool
Mineralwoll GmbH & Co. OHG BV vs. OHIM –
Ceramicas del Foix, SA
3.2.2 Case T-324/12 of 15 July 2015, Knauf Insulation Technology
vs. OHIM – Saint Gobain Cristaleria, SL
3.2.3 Case T-398/13 of 15 July 2015, TVR Automotives
Ltd vs. OHIM – TVR Italia Srl
3.2.4 Case T-323/12 of 15 July 2015, Knauf Insulation
Technology vs. OHIM – Saint Gobain Cristaleria, SL
3.2.5 Case T-333/13 of 15 July 2015, Westermann
Lernspielverlag GmbH vs. OHIM – Diset, SA
3.2.6 Case T-24/13 of 15 July 2015, Cactus SA vs.
OHIM – Isabel DelRio Rodriguez
4. OFFICE PRACTICE
4.1 OHIM
4.1.1 Second set guidelines enter into force
4.1.2 Extension time limit Greece
4.1.3 UK in DesignView
4.1.4 Back Office for Designs: Greece
4.1.5 OHIM academy webinars
4.2 WIPO
4.2.1 Madrid Protocol: change in the amount of individual fee
4.2.2 Algeria accession to the Madrid protocol
4.3 ERA
4.3.1 ERA Annual conference- 25% discount for ECTA
members
4.4 NATIONAL OFFICES
4.4.1 Trade register and register of associations centralized at
Finnish Patent and Registration Office
Please note: there are hyperlinks to articles by clicking on
the news title.
Editorial team: Bárbara Díaz Alaminos, Jean-Jo Evrard and Daniela Derksen
TABLE OF CONTENTS
3
1.1 10 YEAR ANNIVERSARY OF IPKEY
On 29 June 2015, the Ministry of Commerce of the People’s Republic of China, (MOFCOM), and
DG Trade of the European Commission, celebrated the 10th anniversary of the EU-China IP dia-
logue Mechanism with an event in Brussels.
F. Peter Müller, ECTA President attended this meeting on behalf of ECTA.
A report is available to ECTA members HERE.
1.2 ECTA BRUSSELS MEETINGS
On 17 September 2015, the ECTA delegation will meet with representatives from the European
Institutions in Brussels. Following these meetings, ECTA will hold, on 18 September 2015, its ECTA
Management Committee meeting in Brussels.
1.3 ECTA COMMENTS ON WORK PACKAGE 1-2016 OHIM
On 3 September 2015, ECTA has thanks to the Law Committee, Harmonization Committee and the
Geographical Indications Committee sent its comments on the Work Package 1-2016 to OHIM.
The comments are available for ECTA members HERE.
1.4 ECTA ATTENDING THE COOPERATION FUND MEETING
On 8 September 2015, The Cooperation Fund will organize a meeting in order to offer an update on,
amongst others, Benefits Realization of the Cooperation Fund projects, and lessons learnt.
Bárbara Díaz Alaminos, ECTA’s Manager Legal Affairs, will attend this meeting on behalf of ECTA.
1.5 OBSERVATORY MEETINGS
From 29 September to 1 October 2015 the European Observatory Working Groups will be held in
Brussels.
The following ECTA members will attend the Observatory Working Group meetings:
1. ECTA NEWS
1. Legal and International Working Group: - Olivier Vrins
- Bárbara Díaz Alaminos
2. Economics and Statistics Working
Group:
- Marius Schneider
-Bárbara Díaz Alaminos
3. Enforcement Working Group:
- Annick Mottet
-Bárbara Díaz Alaminos
4. Public Awareness Working Group:
- Bárbara Díaz Alaminos
- Daniela Derksen
5. IP in the Digital World Working Group: - Carina Gommers
- Bárbara Díaz Alaminos
4
2.1 COPYRIGHTS - EC CONSULTATION ON REVIEW SATELLITE AND CABLE
DIRECTIVE
On 24 August 2015, the European Commission published a survey for the consultation on the re-
view of the European Satellite and Cable Directive 93/83/EEC.
The purpose of the consultation is to gather input for the evaluation process in order to evaluate the
current rules.
The survey can be accessed online or by email.
Further information is available HERE.
2.2 GEOGRAPHICAL INDICATIONS- ‘OGULINSKI KISELI KUPUS’/‘OGULINSKO KISELO
ZELJE’RECEIVED PROTECTED DESIGNATION OF ORIGIN STATUS
On 10 August 2015, the European Commission published the notification that ‘Ogulinski kiseli kupus’/‘Ogulinsko kiselo zelje’ is registered as a Protected Designations of Origin for the sauerkraut that is produced in Ogulin, Croatia.
Further information is available HERE.
2.3 DOMAIN NAMES- RELEASE OF COUNTRY AND TERRITORY NAMES ICANN
On 1 September 2015, ICANN released Country and
Territory Names within the .BROTHER, .GEA, .ACO, .SECURITY, .PROTECTION, .THEATRE
and .RENT TLDs.
Four requests were submitted by the registry operators, which allowed the release of country and
territory names for the following TLDs:
Further information is available HERE.
2. LAW
TLD Registry Name
security
protection
theatre
XYZ.COM
LLC
aco ACO Severin
Ahlmann
GmbH & Co.
KG
gea GEA Group
Aktiengesell-
brother Brother Indus-
5
3. CASE LAW
3.1 ON ABSOLUTE GROUNDS OF REFUSAL– GENERAL COURT
3.1.1 Case T-215/13 of 15 July 2015, Deutsche Rockwool Mineralwoll GmbH & Co. OHG vs.
OHIM – Recticel SA (contested decision: R-112/2012-5 of 4 February 2013)
Trade mark
Contested trade mark
Classes: 17,19
Decision: The use of a mark in a form differing in elements which do not alter the distinctive character of that
mark in the form in which it was registered may be taken into account in order to ascertain whether the
condition of genuine use is satisfied (para. 55). The contested mark is not altered when it is used in the
following trade marks:
It does not lose its distinctive character since it is rather a juxtaposed element, which is substituted for a letter,
retains its independence and does not constitute a unit in connection with those other marks.
The fact that the Greek letter lambda is used in the field of physics to refer to thermal conductivity does not in
any way detract from the distinctive character of the mark as that mark consists of a figurative sign made up of
that letter — as it appears in the Greek alphabet — in white written in a red circle, which replaces the letter ‘o’
and which also confers enhanced distinctiveness on the word marks of which it is part (para. 57).
The Board of Appeal's decision is upheld.
6
3. CASE LAW
3.2 ON RELATIVE GROUNDS FOR REFUSAL– GENERAL COURT
3.2.1 Case T-436/12 of 8 July 2015, Rockwool Mineralwoll GmbH & Co. OHG BV vs. OHIM –
Ceramicas del Foix, SA (contested decision: R-495/2011-2 of 10 July 2012)
Trade marks
MASTERROCK
FIXROCK
FLEXIROCK
COVERROCK
CEILROCK
Earlier trade mark Trade mark applied for
Classes: 17,19
Decision:
There is only a low degree of visual (para. 45 to 60), phonetic (para. 61 to 69) and conceptual (para. 70 to 75)
similarity between the signs at issue.
Since the element ‘rock’ is largely descriptive and/or laudatory of the goods and services covered by the
earlier trade marks, it is not capable of constituting the shared core of a family of trade marks (para. 86).
In view of the fact that the relevant public’s level of attention is particularly high at the time of purchasing the
goods covered, the visual, aural and conceptual differences separating the signs at issue are sufficient to
prevent the similarities stemming from the presence of the shared element ‘rock’ from giving rise to a likelihood
of confusion (para. 97).
The Board of Appeal's decision is upheld.
7
3. CASE LAW
3.2.2 Case T-324/12 of 15 July 2015, Knauf Insulation Technology vs. OHIM – Saint Gobain
Cristaleria, SL (contested decisions: R-1193/2011-5 and R-1426/2011-5 of 4 May 2012)
Trade marks
ECOSEC FACHADAS
Earlier trade mark Trade mark applied for
Classes:2,17,19
Decision: There is only a low degree of visual similarity between the conflicting signs (43 to 53). The trade
mark are aurally similar (para. 51 to 56) and there is no direct conceptual similarity (para. 57 to 59).
The relevant public, who will have a high level of attention, will perceive the conflicting signs as having only a
low degree of similarity (para. 73). There is no likelihood of confusion (para. 74).
The Board of Appeal's decision is annuled.
3.2.3 Case T-398/13 of 15 July 2015, TVR Automotives Ltd vs. OHIM – TVR Italia Srl (contested
decision: R-823/2011-2 of 14 May 2013)
Trade marks
TVR
Earlier trade mark Trade mark applied for
Classes: 12,25,37
Decision: 1. The principle of res judicata which prohibits a final judicial decision being called into question, is
not applicable so far as concerns the relationship between a final decision in opposition proceedings and an
application for a declaration of invalidity, given, inter alia, first, that proceedings before OHIM are
administrative and not judicial and, second, that the relevant provisions of Regulation No 207/2009, namely
Article 53(4) and Article 100(2), lay down no rule to that effect (para. 38).
It follows that the Board of Appeal is not obliged to follow faithfully the considerations and conclusions set out
in the Cancellation Division’s decision. If that were not so, the effectiveness of the separate legal remedies of
opposition to the registration of a Community trade mark, on the one hand, and revocation proceedings and
proceedings for a declaration of invalidity in respect of a registered Community trade mark, on the other, would
be undermined, even though it is possible, under Regulation No 207/2009, to bring such proceedings in turn or
in parallel (para. 39).
8
3. CASE LAW
2. The provision for a five-year period in Article 42(2) and Article 15(1) of 53 Regulation No 207/2009 does not
mean that proof of genuine use of the earlier trade mark has to be provided for each of the years covered by
that period separately, rather it is sufficient to demonstrate that, taking account of all the relevant factors spe-
cific to the particular case, for at least part of that period, that trade mark was used not merely in a token
manner, but was actually used and used in order to create or preserve an outlet for the goods or services in
question (para. 15).
The Board of Appeal's decision is upheld.
3.2.4 Case T-323/12 of 15 July 2015, Knauf Insulation Technology vs. OHIM – Saint Gobain
Cristaleria, SL (contested decision: R-259/2011-5 of 17 April 2012)
Trade marks
ECOSEC FACHADAS ECOSE
Earlier trade mark Trade mark applied for
Classes: 17,19
Decision: The trade marks are visually (para. 35 to 40) and aurally (para. 41 to 47) similar. There is no direct
conceptual similarity (para. 48 to 50).
Having regard to the goods covered by the earlier mark, the Spanish word ‘fachadas’ (facades) contained in
the earlier mark would be perceived by the relevant public, that is to say, construction professionals in the
construction sector and do-it-yourself enthusiasts, as being descriptive and therefore not very distinctive (para.
55). There is a likelihood of confusion (para. 60).The Board of Appeal's decision is upheld.
3.2.5 Case T-333/13 of 15 July 2015, Westermann Lernspielverlag GmbH vs. OHIM – Diset, SA
(contested decision: R-1323/2012-2 of 3 April 2013)
Trade marks
Earlier trade mark Trade mark applied for
Classes: 9, 16, 28
Decision: The signs are visually (para. 20 to 28), aurally (para. similar (para. 29 to 38) and conceptually (para.
33 to 37) similar.
Even if the distinctive character of the earlier mark is weak, that does not preclude a finding that there is a
likelihood of confusion (para. 51).
The Board of Appeal's decision is upheld.
9
3. CASE LAW
3.2.6 Case T-24/13 of 15 July 2015, Cactus SA vs. OHIM – Isabel DelRio Rodriguez (contested
decision: R-2005/2011-2 of 19 October 2012)
Trade marks
Earlier trade mark Trade mark applied for
Classes: 31,39,44
Decision: Several documents provided by the applicant show only the use of the figurative element of the
earlier figurative mark, namely the stylised cactus, without the word element ‘Cactus’ (para. 59).
The earlier figurative mark is made up of a figurative element namely a stylised cactus, followed by the word
element ‘Cactus’. The two elements therefore convey the same semantic content. Both in the figurative mark
registered and the abbreviated form of that mark, the representation of the stylised cactus is the same, with
the result that the consumer equates the abbreviated form of that mark with its registered form. It follows that
the earlier figurative mark, as registered, and the mark, as used by the applicant in its abbreviated form, must
be regarded as essentially equivalent. It must therefore be concluded that the applicant’s use only of the
stylised cactus does not alter the distinctive character of the earlier figurative mark (para. 61).
The Board of Appeal's decision is upheld.
10
4.1 OHIM
4.1.1 SECOND SET GUIDELINES ENTER INTO FORCE
On 1 August 2015, the second set of OHIM’s updated guidelines entered into force.
The texts are available in English, French, German, Italian and Spanish, through a clean version
or a track changed version.
The guidelines are available through the following links:
Current Trade Mark Page
Current Design Page
4.1.2 EXTENSION TIME LIMIT GREECE
On 28 June 2015, the Greek government imposed a maximum daily withdrawal limit of 60 euros
from Greek bank accounts as well as capital controls affecting international money transfers and
payments which were affected from 29 June to 7 July 2015.
Due to this, the President of OHIM decided to sign a Decision which extended time limits relating
to fees for affected parties who are residing or are registered in Greece, to 14 August.
Further information is available HERE.
4. Office Practice 4. OFFICE PRACTICE
11
4.1.3 UK IN DESIGNVIEW
On 10 August 2015, United Kingdom made their UK design applications available for
DesignView.
With the total addition of 164,287 designs contributed by the United Kingdom, DesignView is
now providing access and information to nearly 4.2 million designs,
Further information on UK joining DesignView is available HERE.
4.1.4 BACK OFFICE FOR DESIGNS: GREECE
On 21 August 2015, the Hellenic Industrial Property Organization (GR OBI) included the Back
Office for Designs into their system.
The Back Office was developed under the framework of the cooperation fund, and assists in the
progress of application examination, as well as renewals and expiration automations.
Further information is available HERE.
4.1.5 OHIM ACADEMY WEBINARS
OHIM will hold the following publicly available webinars in September 2015:
(i) 9 September 2015/ Webinar: New Guidelines (work package 2-2015)
Further information is available HERE.
(ii) 15 September 2015/ webinar: Decision of the Trimester
Further information is available HERE.
4. OFFICE PRACTICE
12
4.2 WIPO
4.2.1 MADRID PROTOCOL: CHANGE IN THE AMOUNT OF INDIVIDUAL FEE
The Director General of WIPO has established new amounts of the individual fee to be paid when the following countries are designated in an international application in accordance with the Madrid Protocol: (i) in an international application or (ii) in a designation subsequent to an inter-national registration; or (iii) in respect of the renewal of an international registration:
The change will take effect on 13 September 2015. The information notice is available HERE.
4.2.2 ALGERIA ACCESSION TO THE MADRID PROTOCOL
On 31 July 2015, the Algerian Government deposited to the Director of WIPO its instrument of
accession to the Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks.
The accession was accompanied with the declaration stated in article 5(2)(b) and ( c), in which
there is a time limit of a year to notify a provisional refusal of protection by 18 months, and
a provisional refusal resulting from an opposition can be notified after the expiry of the 18
months time limit.
Further information is available HERE .
4.3 ERA 4.3.1 ERA ANNUAL CONFERENCE-25% DISCOUNT FOR ECTA MEMBERS
On 8 and 9 October 2015, the Academy of European Law (ERA), will hold their Annual Conference on Trade Marks and Designs in Europe, in Alicante Spain. The Conference aims to meet the requirements of trade mark and design law practioners by keeping them informed about recent case law and the latest EU legislative developments. The key topics of the conference are, amongst others:
- Recent decisions regarding acronyms, sequences and letters as trade marks
- Landmark judgment on the registration and scope of protection of layout trade marks
Additionally, as an ECTA member you are provided with 25% conference fee discount by registering through the registration form HERE.
Further information on the ERA annual Conference is available HERE.
4. OFFICE PRACTICE
Mexico Tunisia
Turkmenistan Tajikstan
13
4.4 NATIONAL OFFICES
4.4.1 TRADE REGISTER AND REGISTER OF ASSOCIATIONS CENTRALIZED AT FINNISH
PATENT AN REGISTRATION OFFICE
On 1 September 2015, the Finnish Patent and Registration Office (PRH) took over the tasks of
the local register offices and the ELY centers in matter relating to the Trade Register and the
Register of Associations.
Furthermore, the PRH office will also deal with housing company tasks from local register offices.
Further information is available HERE.
4. OFFICE PRACTICE