4 March 2016

16 March 2016:

ECTA Workshop

on the Trade Mark Reform and the

Internet of Things

Communication OHIM President re-

garding article 28(8) EUTMR

ECTA’s Award

Deadline 15 March 2016

Editorial team: Bárbara Díaz Alaminos, Daniela Derksen and Jean-Jo Evrard.

Registrations for the ECTA 35th Annual

Conference have now been opened

2

4 March 2016

1. ECTA NEWS

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

1.8. EU Observatory Working Groups Meetings in Alicante

1.9. ECTA Award

2. LAW

TRADE MARKS

2.1. Communication of OHIM president on the implementation of Article 28(8) EUTMR

ANTI-COUNTERFEITING

2.2. Fifth and sixth sectorial report on the economic cost of IPR infringement

GEOGRAPHICAL INDICATIONS

2.3. ‘Salam de Sibiu’ obtained EU protected geographical indications

DOMAIN NAMES

2.4. Progress report EURid available

3. CASE LAW

On Relative Grounds for Refusal – General

Court

3.1. T-541/14 of 2 February 2016, Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl vs. OHIM, SA

3.2. T-169/13 of 2 February 2016, Benelli Q.J. Srl vs. OHIM – Demharter GmbH

3.3. T-711/13 and T-716/13 of 18 February 2016, Harrys Pubar AB vs. OHIM – Harry's New York Bar

On Absolute Grounds for Refusal – General Court 3.4. T-411/14 of 24 February 2016, The Coca- Cola Company vs. OHIM

3.5. Case T-543/14 of 26 February 2016, pro vima Warenhandels GmbH vs. OHIM – Renfro Corp.

European Court of Justice

3.6. Case C-163/15 of 4 February 2016, Yous sef Hassan vs. Breiding Vertriebsgesell- schaft mbH

4. OFFICE PRACTICE

OHIM

4.1. The National Institute for Intellectual Property of Brazil joins TMview

4.2. OHIM renewal fees

4.3. EDB Forum

4.4. OHIM Academy Webinars

4.5. March User Associations Communication

4.6. 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

TABLE OF CONTENTS

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1.1. ECTA Workshop on the EU Trade Mark reform and the Inter-

net of things

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.

Further information is available HERE.

1.2. Registrations for the ECTA 35th Annual Conference have now

been opened

ECTA is pleased to announce that regis-trations for ECTA’s 35th Annual Confer-ence 'ROGUE WAVES AND CROSS-WINDS: TRADE MARKS IN MOTION' have now been opened.

The event will take place in Dubrovnik, Croatia from 22-25 June 2016.

On-line Registration and further infor-mation is available HERE.

1.3. ECTA e-bulletin– February

edition

ECTA is pleased to inform that the Feb-ruary 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.

Furthermore, articles and case law show intellectual property issues from different jurisdictions.

The ECTA e-bulletin is available HERE.

1.4. ECTA Management Commit-tee Meeting and Brussels meet-

ings

On 18 March 2016, the ECTA Manage-ment 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 rele-vant institutions to discuss topics such as the state of the EU Trade Mark legis-lation.

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 sub-mitted 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.

1. ECTA NEWS

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1.6. ECTA-OHIM Link Committee

Meeting

On 19 February 2016, the ECTA-OHIM 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 Geo-

graphical Indications

On 18 February 2016, ECTA held a Round Table on Geographical Indica-tions 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 per-sons.

The speakers in the Round Table were:

Christoph Bartos, Member Boards of Appeal, OHIM, ES

Magnus Cormack, Director of Legal Affairs, The Scotch Whiskey Associ-ation, SCT

Benjamin Fontaine, Chair of the EC-TA Geographical Indications Com-mittee, 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, mem-ber 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 Commit-tee, 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 EC-TA AWARD 2016. The deadline for re-ceipt of papers is 15 March 2016.

1. ECTA NEWS

5

The purpose is to grant an Award to an individual who has written an article or an essay of importance for the develop-ment of European Trade Mark Law. It is intended to present the Award in Du-brovnik 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 in-volved, who will be motivated to improve their knowledge in their areas of inter-est, as well as to give their unique con-tribution in creating more unified solu-tions 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 cate-gory can be found HERE.

1. ECTA NEWS

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TRADE MARKS

2.1. Communication of OHIM president on the implementation

of Article 28(8) EUTMR

On 15 February 2016, the President of OHIM published a Communication re-garding Article 28(8) of the amending EU trade mark Regulation.

Article 28(8) EUTMR allows a transition-al period of six months, in which proprie-tors 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 indica-tions of the Nice class headings.

Further information is available HERE.

ANTI-COUNTERFEITING

2.2. Fifth and sixth sectorial re-port on the economic cost of IPR

infringement

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.

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 coun-terfeiting. Additionally, €1.9 billion on revenue has been lost in this sector an-nually.

In the second report on IPR infringe-ment in handbags and luggage, it is stated that 12.7% of sales has been lost in this particular sector due to counter-feiting.

Furthermore, € 1.6 billion of revenue has been lost in this sector annually.

The sectorial report on jewelry & watch-es is available HERE.

The sectorial report on handbags & lug-gage is available HERE.

2. LAW

7

GEOGRAPHICAL INDICATIONS

2.3. ‘Salam de Sibiu’ obtained EU protected geographical indica-

tions

The Romanian salami called ‘Salam de Sibiu’ has obtained entry in the Europe-an register of protected designations of origin and protected geographical indi-cations (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 avail-

able

The .eu registry called EURid made a new progress report available regarding the last quarter of 2015.

During the last quarter of 2015 , .eu reg-istrations 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 coun-tries.

The full report is available HERE.

2. LAW

8

Provided by

ON RELATIVE GROUNDS FOR RE-

FUSAL - 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)

Trade marks

Earlier trade mark :

CASTILLO DE LIRIA

Trade mark applied for:

Class: 33

Decision: The trade marks are visually (para. 26 to 31) and aurally (para. 32 to 35 ) similar. There is a likelihood of con-fusion (para. 43 to 48).

The Board of Appeal's decision is up-held.

3.2. Case T-169/13 of 2 February 2016, Benelli Q.J. Srl vs. OHIM – Demharter GmbH (contested deci-sion: R-95/2012-2 of 16 January 2013)

Trade marks

Earlier trade mark:

Trade mark applied for:

Classes: 9,12,25

Decision: Well-known marks within the meaning of Article 6bis of the Paris Con-vention are marks which, on the basis of their reputation in the territorial area at issue

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 or-der to ascertain how the existence of a well-known mark can be proved, to refer to the guidelines for the interpretation of

3. CASE LAW

9

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 appli-cant has proved the well-known charac-ter of the earlier non-registered marks (para. 83).

The Board of Appeal's decision is up-held.

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: R-946/2012-1 and R-995/2012-1 of 8 October 2013)

Trade marks

Earlier trade mark :

Trade mark applied for:

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; jel-lies, jams, marmalades, compotes; eggs; milk and dairy products; butter; cheese; edible oils and fats; milk-based beverages; instant drinks based on milk;

yoghurts’ in Class 29 are similar to the services ‘serving of food and drink through restaurant, pub and café ser-vices’ 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 con-ceptually (para. 96 to 99) similar.

There is a likelihood of confusion (para. 106 to 110).

The Board of Appeal's decisions are annulled in part.

ON ABSOLUTE GROUNDS FOR RE-

FUSAL– GENERAL COURT

3.4. Case T-411/14 of 24 Febru-ary 2016, The Coca-Cola Compa-ny vs. OHIM (contested decision: R-540/2013-2 of 27 March 2014)

3. CASE LAW

10

Trade marks

Trade mark applied for

Classes: 6,21, 32

Decision: 1. The trade mark applied for is made up of a combination of ele-ments, each of which is likely to be com-monly 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 de-void of any distinctive character in rela-tion to the goods concerned generally

leads to the conclusion that that trade mark, taken as a whole, is devoid of dis-tinctive 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 ap-plied 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 com-monly 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 appli-cant, are not capable of proving that the mark applied for had acquired distinctive character throughout the European Un-ion in respect of a significant part of the relevant public. The surveys were con-ducted 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 applica-tion 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 up-held.

3. CASE LAW

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3.5. Case T-543/14 of 26 Febru-ary 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 de-scriptive.

Although the element ‘sox’ does not cor-respond to the word for socks in Eng-lish, it cannot be excluded that the rele-vant consumer will understand it as re-ferring to socks, forming part of the arti-cles 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’. Neverthe-less, 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 ele-ment ‘sox’ and the word ‘socks’ (para. 27).

The word ‘hot’ in the sense of ‘extremely warm’ or ‘very high temperature’ associ-ated with the goods at issue is not de-scriptive 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 per-ceive it, without any reflection, as mean-ing ‘fashionable socks’ or ‘currently pop-ular socks’ (para. 43).

It is highly unlikely that the average con-sumer 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 sexual-ly provocative (para. 49).

The Board of Appeal's decision is up-held.

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 ques-tion referred by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düs-seldorf, Germany), concerning the inter-pretation 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 :

3. CASE LAW

12

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 sub-ject of the licence, although that licence has not been entered in the Register of Community trade marks.

3. CASE LAW

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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 mil-lion trade marks from INPI, TMview is now providing access and information to more than 40 million trade marks in to-tal.

Further information is available HERE.

4.2. OHIM Renewal fees

Due to the entry into force of the amend-ing 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 ex-pire before 23 March 2016 shall be sub-jected to the fees of the current fee structure. This also applies to renewals that are requested and paid for after 23 March 2016.

(ii) Community Trade Marks which ex-pire on or after 23 March 2016 shall be subjected to the fee structure estab-lished 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 Feb-ruary 2016).

The communication is available HERE.

4.3. EDB forum

On 28 and 29 June 2015, the EDB Fo-rum 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 counter-feit products, in which right holders can show enforcers copies of their goods and can explain where further infor-mation can be found. Further information is available HERE.

4. OFFICE PRACTICE

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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 Inter-net

2. Usage of TMC and its more useful functionalities

Further information is available HERE.

4.5. March User Associations Communication

Each month, the Office for Harmoniza-tion in the Internal Market (OHIM) dis-tributes relevant information to our members on, amongst others, the Ob-servatory, Webinars and the European Cooperation Fund .

The March issue is available HERE.

4.6. Clarification of Scope of In-ternational Registrations desig-

nating 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 Septem-ber 2016, to clarify the goods and ser-vices that fall outside the literal meaning of a NICE Class heading, through a dec-laration submitted to OHIM.

The declarations shall not be filed at

4. OFFICE PRACTICE

15

at WIPO, but with OHIM, using the Re-cordal Application Form.

Further information is available here: Communication No. 1/2016 of the Presi-dent of OHIM

Information Notice No. 10/2016

Annex I of the Communication

WIPO

4.7. Change in the amount of in-

dividual fee: European Union

The Director General of WIPO has es-tablished new amounts of the individual fee to be paid when the European Union is designated in an international applica-tion in accordance with the Madrid Pro-tocol: (i) in an international application or (ii) in a designation subsequent to an international registration; or (iii) in re-spect of the renewal of an international registration.

Further information is available HERE.

NATIONAL OFFICES

4.8. Structure change of Estoni-

an Patent Office

Starting from 1 February 2016, the Esto-

nian Patent Office will be based on a new structure.

Instead of seven departments, the Esto-nian Patent Office will now have four departments: Trade Mark, Patent, Reg-istry and Financial and Administrative Department.

4. OFFICE PRACTICE