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

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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

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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

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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-

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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.

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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.

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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).

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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.

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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.

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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

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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

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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

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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