European Communities Trade Mark Association 7 August 2015 ECTA delegation meeting with representatives from the European Institutions PGI approval Irish whiskey and Hellim / Halloumi OHIM s second set of updated guidelines in force
European Communities Trade Mark Association 7 August 2015 Editorial team: Bárbara Díaz Alaminos, Jean-Jo Evrard and Daniela Derksen TABLE OF CONTENTS 1. ECTA NEWS 1.1 ECTA BRUSSELS MEETING 1.2 ECTA LETTER TO OHIM ON TAXONOMY CHANGES 1.3 EU CUSTOMS-RIGHT HOLDERS AND STAKEHOLDERS MEETING 3.3 EUROPEAN COURT OF JUSTICE 3.3.1 CASE C-379/14 OF 16 JULY 2015, TOP LOGISTICS BV AND VAN CAEM INTERNATIONAL BV VS BACARDI & COMPANY LTD AND BACARDI INTERNATIONAL LTD 3.3.2 CASE C-580/13 OF 16 JULY 2015, COTY GERMANY GMBH VS STADTSPARKASSE MAGDEBURG 2. LAW 2.1 GEOGRAPHICAL INDICATIONS 2.1.1 APPROVAL OF PGI FOR IRISH WHISKEY,POITIN AND CREAM 2.1.2 HELLIM / HALLOUMI TO RECEIVE PROTECTED DESIGNATION OF ORIGIN STATUS 2.2 DOMAIN NAMES 2.2.1 2015.EU PROGRESS REPORT 3. CASE LAW 3.1 ON ABSOLUTE GROUNDS FOR REFUSAL GENERAL COURT 3.1.1 CASE T-55/14 OF 14 JULY 2015, GENOSSEN SCHAFTSKELLEREI ROSSWAG-MÜHLHAUSEN EG VS. OHIM 3.2 ON RELATIVE GROUNDS FOR REFUSAL GENERAL COURT 3.2.1 CASE T-404/10 RENV OF 30 JUNE 2015, GAMBLING COMMISSION VS. OHIM MEDIATEK ITALIA SRL 3.2.2 CASE T-657/13 OF 2 JULY 2015, BH STORES BV VS. OHIM- ALEX TOYS LLC 3.2.3 CASE T-436/12 OF 8 JULY 2015, ROCKWOOL MI,ERALWOLL GMBH & CO. OHG BV VS. OHIM CERAMICAS DEL FOIX, SA 3.2.4 CASE T-7 JULY 2015, ALPINESTARS RESEARCH SRL VS. OHIM WANG YU 4. OFFICE PRACTICE 4.1 OHIM 4.1.1 FORMER YUGOSLAV REPUBLIC OF MACEDONIA AND SERBIA JOIN TMVIEW 4.1.2 26 BILLION EUROS LOST DUE TO COUNTERFEITING CLOTHES,SHOES AND ACCESSORIES 4.1.3 LAUNCH OF IDEAS POWERED WEBSITE 4.1.4 OHIM S SECOND SET OF UPDATED GUIDELINES IN FORCE 4.1.5 OHIM ACADEMY WEBINARS 4.2 WIPO 4.2.1 MADRID PROTOCOL: CHANGE IN THE AMOUNT OF INDIVIDUAL FEE OF SAN MARINO 4.2.2 HAGUE AGREEMENT:CHANGE IN THE AMOUNTS OF INDIVIDUAL FEE OF HUNGARY 4.2.3 NEW GOODS AND SERVICES FROM MADRID SYSTEM AVAILABLE 4.3 NATIONAL OFFICES 4.3.1 CHANGE IN AMOUNT OF PROCEDURAL RATES: INPI Please note: there are hyperlinks to articles by clicking on the news title. 2
1. ECTA NEWS 1.1 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. 1.2 ECTA LETTER TO OHIM ON TAXONOMY CHANGES On 30 July 2015, ECTA submitted a letter to OHIM on Taxonomy changes for version 2016. ECTA s letter, is available to members under the OHIM-Link Committee paper section. 1.3 EU CUSTOMS RIGHT HOLDERS AND STAKEHOLDERS MEETING On 10 July 2015, the right holders and stakeholders meeting on customs enforcement of Intellectual Property Rights was being held by the European Commission DG Taxation and Customs Union (TAXUD). Joe Cohen, Chair of the Anti-Counterfeiting Committee attended this meeting on behalf of ECTA. The report is available for ECTA members under Anti-Counterfeiting Committee paper section. 3
2. LAW 2.1 GEOGRAPHICAL INDICATIONS 2.1.1 APPROVAL OF PGI FOR IRISH WHISKEY, POITIN AND CREAM The Irish whiskey, Irish Poitin and Irish cream, have been approved by the European Commission to be a Protected Geographical Indication (PGI). The approval means that products labeled as Irish Whiskey, Poitin or cream must be made in the Republic of Ireland or in Northern Ireland under strict specifications. 2.1.2 HELLIM / HALLOUMI TO RECEIVE PROTECTED DESIGNATION OF ORIGIN STATUS On 28 July 2015, the European Commission published the application to register the name Hellim / Χαλλουμι (Halloumi), as Protected Designations of Origin for the cheese that is produced in the island of Cyprus. The publication is the first step in the process to grant EU-wide protection to these names, and to include them in the list of well-known quality European products. 2.2 DOMAIN NAMES 2.2.1 2015.EU PROGRESS REPORT On 3 August 2015, EURid published the latest progress report on the.eu registry. The report shows, amongst others, that.eu has maintained a high renewal rate for nine consecutive years. Moreover, in ten European Union and EEA member states the total number of.eu registrations has increased during the second quarter of 2015. The full report is available HERE. 4
3. CASE LAW 3.1 ON ABSOLUTE GROUNDS OF REFUSAL GENERAL COURT 3.1.1 Case T-55/14 of 14 July 2015, Genossenschaftskellerei Rosswag-Mühlhausen eg vs. OHIM (contested decision: T-641/2010-1 of 25 November 2010) Trade mark Lembergerland Trade mark applied for Class: 33 Decision: The trade mark contains the geographical indication Lemberg protected in the European Union for wines originating from South Africa. The application is therefore rejected pursuant Article 7, paragraph 1, sub j) of the Regulation N 207/2009 (para. 29). The Board of Appeal's decision is upheld 3.2 ON RELATIVE GROUNDS FOR REFUSAL GENERAL COURT 3.2.1 Case T-404/10 RENV of 30 June 2015, Gambling Commission vs. OHIM Mediatek Italia Srl (Contested decision: R1028/2009-1 of 9 June 2010) Trade marks Earlier trade mark Contested trade mark Classes: 9, 16,25,28,41 Decision: Under Article 53(2) (c) of Regulation No 207/2009 [the contested mark] shall also be declared invalid on application to [OHIM] or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Community legislation or national law governing its protection, and in particular:... a copyright (para. 25). Where an application for a declaration that a Community trade mark is invalid is based on an earlier right protected by a rule of national law, the competent OHIM Adjudicatory bodies must assess the weight and scope to be attributed to the particulars submitted by the applicant in order to establish the content of that rule. The General Court undertakes a full review of that assessment (para. 30). In finding that the applicants for a declaration of invalidity had shown the existence of an earlier right, the Board of Appeal has based its approach on a misinterpretation of the national law governing its protection. That error may have had an effect on the content of the contested decision (para. 54). The Board of Appeal's decision is annulled. 5
3. CASE LAW 3.2.2 Case T-657/13 of 2 July 2015, BH Stores BV vs. OHIM Alex Toys LLC (Contested decision: R-1950/2012-2 of 16 September 2013) Trade marks ALEX ALEX Earlier trade mark Trade mark applied for Class: 28 Decision: Children s bath toys and children s educational and developmental activity toys» in Class 28 are not similar to «sporting articles» in Class 28 (para. 54 to 94). The Board of Appeal's decision is upheld. 3.2.3 Case T-436/12 of 8 July 2015, Rockwool Mi,eralwoll 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: 2,19,27 Decision: There is only a low degree of visual, phonetic and conceptual similarity between the signs at issue (para. 76). The broader protection granted to a family of trade marks could not successfully be relied on when the shared element of the earlier trade marks was largely descriptive of the goods and services covered. A word which refers to the nature of those goods and services is not capable of constituting the shared distinctive core of a family of trade mark (para. 80). 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 on the part of the average German consumer or of professionals from the construction sector, despite the similarities between some of the goods covered (para. 97). The Board of Appeal's decision is upheld. 6
3. CASE LAW 3.2.4 Case T-7 July 2015, Alpinestars Research Srl vs. OHIM Wang Yu (contested decision: R-2309/2012-4 of 15 July 2013) Trade marks A-STARS Earlier trade mark Trade mark applied for Classes: 18, 25 Decision: The trade marks are visually (para. 21 to 31) and aurally (para. 32 to41) similar. Given the various possible meanings of the elements stars and aster and the remote conceptual link between them, there is no conceptual similarity between the signs at issue (para. 42 to 53). The earlier mark is not capable of directly conveying a clear meaning to the relevant public, with the result that the conceptual dissimilarity between the marks at issue cannot suffice to counteract the average degree of visual similarity and the high degree of phonetic similarity (para. 63). There is a likelihood of confusion (para. 64). The Board of Appeal's decision is upheld. 3.3 EUROPEAN COURT OF JUSTICE 3.3.1 Case C-379/14 of 16 July 2015, TOP Logistics BV and Van Caem International BV vs Bacardi & Company Ltd and Bacardi International Ltd The Court replies to questions referred by the Hague Court of Appeal relating to the interpretation of Article 5 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade mark. The Court s reply is as follows: Article 5 of Directive 2008/95 must be interpreted as meaning that the proprietor of a trade mark registered in one or more Member States may oppose a third party placing goods bearing that trade mark under the duty suspension arrangement after they have been introduced into the EEA and released for free circulation without the consent of that proprietor. 3.3.2 Case C-580/13 of 16 July 2015, Coty Germany GmbH vs Stadtsparkasse Magdeburg The Court replies to a question referred by the German Supreme Court relating to the interpretation of Article 8(3) (e) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights. The Court s reply is as follows: Article 8(3)(e) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding a national provision, such as that at issue in the main proceedings, which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide, pursuant to Article 8(1)(c) of that directive, information concerning the name and address of an account holder. 7
4. Office Practice 4. OFFICE PRACTICE 4.1 OHIM 4.1.1 FORMER YUGOSLAV REPUBLIC OF MACEDONIA AND SERBIA JOIN TMVIEW The Office of Industrial Property of the Former Yugoslav Republic of Macedonia (FYROM) (SOIP), and the Serbian Intellectual Property Office (IPORS), made their trade mark data available to the TMview search tool. With the integration of SOIP and IPORS into the tool the total number of participating offices to TMview has increased to 40. Further information on the Former Yugoslav Republic of Macedonia joining TMview is available HERE. Further information on Serbia joining TMview is available HERE. 4.1.2 26 BILLION EUROS LOST DUE TO COUNTERFEITING OF CLOTHES, SHOES AND ACCESSORIES A study compiled by OHIM, finds that the distribution of fake clothes, shoes and accessories has taken 26 billion euro from legitimate EU businesses which would equal to 10% of the total sale in the EU-28 sector. Moreover, since the sellers and producers of fakes do not pay taxes, VAT nor social contributions, an amount of 8 billion euro government revenue is not collected in the EU. 8
4. OFFICE PRACTICE 4.1.3 LAUNCH OF IDEAS POWERED WEBSITE On 23 July 2015, the Ideas Powered website was officially launched by OHIM. The website is dedicated to young people and IP, and shows how Intellectual Property supports innovation and creativity. 4.1.4 OHIM S SECOND SET OF UPDATED GUIDELINES IN FORCE On 1 August 2015, the second half of Guidelines on the Community trade marks and Community designs entered into force. A clean version and a track-changed version can be accessed in English, Spanish, German, French and Italian. The guidelines are available under: (i) the Current trade mark practice; and, (ii) Current designs practice 4.1.5 OHIM ACADEMY WEBINARS OHIM will hold the following publicly available webinars in August and September 2015: (i) 25 August 2015/Webinar: Public order and morality: the faith of amoral trade marks (ii) 9 September 2015/ Webinar: New Guidelines (work package 2-2015) (iii) 15 September 2015/ webinar: Decision of the Trimester 9
4. OFFICE PRACTICE 4.2 WIPO 4.2.1 MADRID PROTOCOL: CHANGE IN THE AMOUNT OF INDIVIDUAL FEE OF SAN MARINO The Director General of WIPO has established new amounts of the individual fee to be paid when San Marino 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. The change will take effect on 16 August 2015. The information notice is available HERE. 4.2.2 HAGUE AGREEMENT: CHANGE IN THE AMOUNTS OF INDIVIDUAL FEE OF HUNGARY The Director General of WIPO has established new amounts of the individual fee to be paid when Hungary is designated in an international application in accordance with the Hague agreement: (i) in an international application or (ii) in respect of the renewal of an international registration. The change will take effect on 1 September 2015. The information notice is available HERE. 4.2.3 NEW GOODS AND SERVICES FROM MADRID SYSTEM AVAILABLE On 1 July 2015, approximately 5.000 new goods and services from the Madrid System have been provided by the World Intellectual Property Office to the online services of OHIM. The online services include (i) the Five-step form, (ii) the Advanced form, (iii) Goods and Ser vices Builder and (iv) TMclass. In order for the users of the Community registration system to benefit from the advantages of having terms which are accepted at international level, further goods and services from the Madrid System will be added to the classification database of OHIM. 4.3 NATIONAL OFFICES 4.3.1 CHANGE IN AMOUNT OF PROCEDURAL RATES: INPI On 14 July 2015, new rates have been introduced by INPI. The rates had not been changed since 2008, now a ministerial decree changed the rates and will apply them to all applications which are made on or after 1 July 2015. The changed procedure rates can be found HERE. 10