6 April 2016

Registrations for the ECTA 35th Annual

Conference - Early bird period extended to

15 April

Change of the name of the Office -

EUIPO

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

Entry into force of the EU Trade

Mark Regulation

2

4 March 2016

1. ECTA NEWS

1.1. Registrations for the ECTA 35th Annual Conference - Early bird period extended to 15 April 1.2. ECTA Workshop on the EU Trade Mark reform and the Internet of things

1.3. Nomination of Anette Rasmussen as the next ECTA Second Vice-President

1.4. Meetings and events attended by ECTA

1.5. ECTA’s submissions and position papers - March 2016

2. LAW

TRADE MARKS

2.1. EU Trade Mark Legislative Package

DOMAIN NAMES

2.2. .eu top-level domain in Cyrillic to be launched on 1 June 2016

ANTI-COUNTERFEITING

2.3. Counterfeit of DESIGUAL clothes and pro- ducts found in Alicante

GEOGRAPHICAL INDICATIONS

2.4. Latvia applied for EU Protected Geographical Indication status for Rucava white butter

COPYRIGHT

2.5. European Court of Justice ruled that free Wi-Fi providers will not be liable for users’ piracy

3. CASE LAW

On Relative Grounds for Refusal

3.1. Case T-557/14 of 1 March 2016, Brand Group GmbH vs. OHIM - Brauerei S. Rie- gele, Inh. Riegele KG

3.2. Case T-53/15 of 10 March 2016, credentis AG vs. OHIM - Aldi Karlslunde K/S

On Absolute Grounds for Refusal 3.3. Case T 78/15 of 17 March 2016, Mud- hook Marketing, Inc. Vs. OHIM

3.4. Case T-501/13 of 18 March 2016, Karl- May-Verlag GmbH vs. OHIM - Constan- tin Film Produktion GmbH

European Court of Justice

3.5. Case C-99/15 of 17 March 2016, Christian Liffers vs. Producciones Mandarina SL and Mediaset Espana Comunicacion SA

3.6. Case C-179/15 of 3 March 2016, Daimler AG vs. Együd Garage Gépjarmjavito es Ertékesit Kft

4. OFFICE PRACTICE

OHIM

4.1. Brunei Darussalam Intellectual Property Office and the Department of Intellectual Property of the Ministry of Commerce of Cambodia join TMclass

4.2. Revised version of the Guidelines publis- hed

4.3. Change of the name of the Office

4.4. Observatory ‘Follow the Money’ seminar

4.5. New workshops on the EU trade mark Regulation and online IP management

WIPO

4.6. Withdrawal of Declaration Contained in the Madrid Agreement: Denmark

4.7. New optional form for request for the corr- ection of recording

4.8. Madrid Goods and Services Manager - New version

NATIONAL OFFICES

4.9. Record numbers for German trade marks

TABLE OF CONTENTS

3

1.1. Registrations for the ECTA 35th Annual Conference - Early

bird period extended to 15 April

Early bird period to register for ECTA’s 35th Annual Conference is extended to 15 April.

More than 600 registrations have al-ready been made for the ECTA’s 35th Annual Conference.

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

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

net of Things

On 16 March 2016, ECTA held a work-shop on the Internet of Things, which included also and update on the state of the EU Trade Mark Reform.

Power Point Presentations are available HERE

A report will be shortly made available.

1.3. Nomination of Anette Ras-mussen as the next ECTA Second

Vice-President

The ECTA Management Committee has, in accordance with the guidelines for the Selection of the Second Vice-President, nominated Anette Rasmus-sen. This decision, which was unani-mous, took place on 18 March 2016.

The Management Committee strongly believes that Anette, being a senior member of Council and having gained experience as a Vice Chair of the OHIM-Link Committee as well as being an ex-perienced professional, will serve ECTA well.

On the basis of above, the Management Committee of ECTA recommends thus to the Council that Anette be chosen Second Vice-President at the ECTA Council meeting on 22 June 2016 in Dubrovnik, Croatia.

1.4. Meetings and events attended

by ECTA

(i) The following meetings have been

attended by ECTA, in March 2016:

11th LM Technical Cooperation: attend-ed by Cristina Bercial-Chaumier, Chair of the Law Committee, on 1-2 March 2016;

15th International TM Conference: at-tended by F. Peter Müller, ECTA Presi-dent and Daniela Derksen, ECTA Legal Communicator, on 9-11 March 2016;

ITMA Spring Conference: attended by Simon Miles, ECTA Legal Advisor, on 16-18 March 2016;

BMM Spring Meeting: attended by Cari-na Gommers, member of the Anti-Counterfeiting Committee and the Publi-cations Committee, on 24 March 2016.

(ii) The following meetings will be

1. ECTA NEWS

4

attended by ECTA members, in April

2015:

15th LM Trade Marks: attended by Tobi-as Dolde, Member of the ECTA Harmo-nization Committee and the WIPO Link Committee, on 12-13 April 2016;

Sister Association Meeting: will be at-tended by Max Oker- Blom, ECTA Sec-retary General; F. Peter Mueller, ECTA President, and; Bárbara Díaz Alaminos, ECTA Manager Legal Affairs, on 14-15 April 2016;

WIPO Conference, The Global Digital Content Market: will be attended by Daniela Derksen, ECTA Legal Commu-nicator, on 20-22 April 2016.

1.5. ECTA’s Submissions and po-

sition papers - March 2016

ECTA has submitted the following pa-pers during the month of March 2016:

1) Comments regarding the taxonomy update 2016 - group titles and class scopes.

2) Comments on the European coop-eration projects under Article 123 c) of Regulation 2424/2015.

3) Comments to OHIM Consultation on the Draft Guidelines of Work Pack-age 2-2016.

4) Comments to OHIM Strategic Plan 2020.

This submissions will be made available to ECTA Members.

ECTA would like to thanks its Commit-tee members for their hard work.

1. ECTA NEWS

5

TRADE MARKS

2.1. EU Trade Mark Legislative

Package

The EU Trade Mark Regulation, pub-lished in December 2015, entered into force on 23 March 2016.

Further information is available on EC-TA’s blog HERE.

DOMAIN NAMES

2.2. .eu top-level domain in Cy-rillic to be launched on 1 June

2016

On 1 June 2016, the .eu top-level do-main in Cyrillic will be launched.

According to EURid External Relations Manager, Giovanni Seppia, the imple-mentation of .eu in Cyrillic, will broaden users’ ability to enjoy full International-ised Domain Names.

Further information is available HERE.

ANTI-COUNTERFEITING

2.3. Counterfeit of DESIGUAL clothes and products found in Ali-

cante

The Alicante Civil Guard has intervened in an operation in which more than 1.300 DESIGUAL products, valued over 110,000€, were found in Alicante, Spain.

The products were hidden in a ware-house and were ready to be sold imme-diately, in a local annex to the ship.

Further information is available HERE.

GEOGRAPHICAL INDICATIONS

2.4. Latvia applied for EU Pro-tected Geographical Indication

status for Rucava white butter

The European Commission has re-ceived an application to give the Pro-tected Geographical Indication (PGI) status to Rucava white butter. The Rucava white butter has been made in the Rucava area in western Latvia and has been made by means of a specific churning method.

Further information is available HERE.

COPYRIGHT

2.5. European Court of Justice ruled that free Wi-Fi providers will

not be liable for users’ piracy

On 16 March 2016, the European Court of Justice ruled that businesses provid-ing free and open Wi-Fi to customers will not be liable for copyright infringe-ments committed by users of that net-work.

Further information is available HERE.

2. LAW

6

Provided by

ON RELATIVE GROUNDS FOR RE-

FUSAL - GENERAL COURT

3.1. Case T-557/14 of 1 March 2016,

BrandGroup GmbH vs. OHIM – Brau-erei S. Riegele, Inh. Riegele KG (contested decision : R-941/2013-1 of 15 May 2014)

Trade marks

Earlier trade mark: Spezi

Trade mark applied for: SPEZOOMIX

Classes: 32,33

Decision: The trade marks are visually (para. 42 to 46) and aurally (para. 47 to 52) similar.

There is a likelihood of confusion (para. 55 to 66).

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

3.2. Case T-53/15 of 10 March 2016,

credentis AG vs. OHIM – Aldi Karls-lunde K/S (contested decision: R-353/2014-1 of 13 November 2014)

Trade marks:

Earlier trade mark: Eurodont

Trade mark applied for: Curodont

Classes: 3, 44

Decision:

1.There is a certain relationship of com-plementarity between ‘Mouth washes and dentifrices, not for medical purpos-es' in Class 3 and ‘Hygienic care for hu-man beings’ in Class 44. Those goods and services share the same overall purpose, namely hygiene and beauty care. Hygiene care for human beings forms a vast category aiming at washing and purifying the human body. Similarly, dentifrices and mouth washes are in-tended to be brought into contact with the human body, particularly with the mouth, in order to cleanse, freshen, pro-tect or maintain it in good condition (para. 30).

2.The trade marks are visually (para. 33 to 36 and aurally (para. 37 to 40) similar.

There is a likelihood of confusion (para. 53).

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

ON ABSOLUTE GROUNDS FOR

REFUSAL

3.3. Case T-78/15 of 17 March 2016, Mudhook Marketing, Inc. vs. OHIM – (contested decision : R-1417/2014-2

of 4 December 2014)

Trade mark

Trade mark applied for: IPVanish

3. CASE LAW

7

Classes: 9,38

Decision: The trade mark is devoid of any distinctive character as regards the ‘virtual private network (VPN) operating software’ in Class 9 and the ‘Providing virtual private network (VPN) services’ in Class 38.

The meaning of the term ‘ip’ is ‘Internet Protocol’ and that of the term ‘vanish’ is ‘to disappear, especially suddenly or mysteriously, to cease to exist, fade away or to become zero’. ‘vpn’ is an In-ternet encryption and privacy tool (para. 32).

In the light of the meaning of the term ‘vpn’ and of that of the terms ‘ip’ and ‘vanish’, the notion conveyed by the sign at issue, in relation to the goods and services covered by it, is that they will somehow achieve or contribute to the disappearance or continuing confidenti-ality of the user’s internet address. The notion at issue describes at least the purpose as well as a desirable quality of the goods and services.

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

3.4. Case T-501/13 of 18 March 2016, Karl-May-Verlag GmbH vs. OHIM – Constantin Film Produktion GmbH (contested decision: R-

125/2012-1 of 9 July 2013)

Trade mark

Contested trade mark: WINNETOU

Classes: 3,9,14,16,18,21,24,25,28,29,30,39,41,42,43

Decision: While OHIM is not bound by decisions made by national authorities, OHIM may nevertheless take those de-cisions into consideration, without them being binding or even determinative, as indicia in the assessment of the facts of the case (para. 36).

It follows that, apart from the situation referred to in Article 8(4) of Regulation No 207/2009 under which OHIM is obliged to apply national law, including the related national case-law, OHIM or the Court cannot be bound by the deci-sions of national administrative bodies or courts (para. 37).

In the present case, the Board of Appeal pointed out that in so far as a national Supreme Court had ruled that the term ‘winnetou’ was descriptive in Germany, the Community trade mark had also to be regarded as ineligible for protection in respect of goods and services con-nected to books, radio and television (para. 38).

3. CASE LAW

8

The Board of Appeal has treated the decisions of the German court not as possessing an indicative value as evi-dence in the context of the assessment of the facts of the case, but as binding as to the registrability of the contested mark (para. 42).

The Board of Appeal's decision is an-nulled.

EUROPEAN COURT OF JUSTICE

3.5. Case C-99/15 of 17 March 2016, Christian Liffers vs. Producciones Mandarina SL and Mediaset Espana

Comunicacion SA

Decision: The Court replies to a ques-tion referred by the the Tribunal Supre-mo (Supreme Court, Spain) concerning the interpretation of Article 13(1) of Di-rective 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 13(1) 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 inter-preted as permitting a party injured by an intellectual property infringement, who claims compensation for his materi-al damage as calculated, in accordance with heading (b) of the second subpara-

graph of Article 13(1) of that directive, on the basis of the amount of royalties or fees which would have been due to him if the infringer had requested his authorisation to use that right, also to claim compensation for the moral preju-dice that he has suffered, as provided for under heading (a) of the second sub-paragraph of Article 13(1) of that di-rective.

3.6. Case C-179/15 of 3 March 2016, Daimler AG vs. Együd Garage Gép-

jarmjavito es Ertékesit Kft

Decision: The Court replies to a ques-tion referred by the Fvárosi Törvényszék (Budapest Municipal Court, Hungary) concerning the interpretation of Article 5(1) of Directive 2008/95.

The Court’s reply is as follows: Article 5(1)(a) and (b) of Directive 2008/95/EC must be interpreted as meaning that a third party, who is named in an adver-tisement on a website, which contains a sign identical or similar to a trade mark in such a way as to give the impression that there is a commercial relationship between him and the proprietor of the trade mark, does not make use of that sign that may be prohibited by that pro-prietor under that provision, where that advertisement has not been placed by that third party or on his behalf or, if that advertisement has been placed by that third party or on his behalf with the con-sent of the proprietor, where that third party has expressly requested the

3. CASE LAW

9

operator of that website, from whom the third party ordered the advertisement, to remove the advertisement or the refer-ence to the mark contained therein.

3. CASE LAW

10

OHIM

4.1. Brunei Darussalam Intellec-tual Property Office and the De-partment of Intellectual Property of the Ministry of Commerce of

Cambodia join TMclass

On 21 March 2016, the Brunei Darus-salam Intellectual Property Office (BriIPO) and the Department of Intellec-tual Property of the Ministry of Com-merce of Cambodia (D/IPR) joined TMclass.

With the addition of BruIPO and D/IPR, the total number of national and regional IP Offices participating in to the tool is 60.

Further information is available HERE.

4.2. Revised version of the Guide-

lines published

On 17 March 2016, a revised version of the Guidelines on Trade Mark Practice and Designs, has been published.

The Guidelines have been revised to align their content with the new legisla-tive framework, and will enter into force on 23 March 2016.

The revised guidelines are available HERE.

4.3. Change of the name of the

Office

On 23 March 2016, the Office for Har-monization in the Internal Market (OHIM) officially changed its name to the European Union Intellectual Proper-ty Office (EUIPO), as has been stated in the amending EU trade mark Regulation (Regulation (EU) nr. 2015/2424 of the European Parliament and the Council).

Additionally, the Community Trade Mark (CTM), will likewise officially change its name to the European Union trade mark (EUTM).

Further information is available HERE.

4.4. Observatory ‘Follow the

Money’ seminar

On 21 April 2016, the EU Observatory, together with the Netherlands EU Presi-dency, will hold the seminar ‘Follow The Money: hitting IP-infringers where it hurts– working with advertisers and pay-ment systems’.

4.5. New workshops on the EU trade mark Regulation and online

IP managelent

OHIM continues its workshops on the EU trade mark Regulation and online IP management.

Further information is available HERE.

4. OFFICE PRACTICE

11

WIPO

4.6. Withdrawal of Declaration Contained in the Madrid Agree-

ment: Denmark

On 11 March 2016, the Danish Patent and Trademark Office specified that, as of 13 April 2016, the Madrid Protocol will apply to the Faroe Islands in respect of designations of Denmark in international registrations and in subsequent desig-nations.

Further information is available HERE.

4.7. New optional form for re-quest for the correction of record-

ing

On 15 March 2016, the World Intellectu-al Property Office (WIPO) made a new official form available to request a cor-rection in the International Register (MM21). This will make it easy for users to cap-ture and provide all the information re-quired by the International Bureau to process requests for the correction of recording.

Further information is available HERE.

4.8. Madrid Goods and Services

Manager - New version

Several functions and content, such as

explanatory notes in all languages and search by Nice classification indication basic number, are now available under the new version of the Madrid Goods and Services Manager.

Further information is available HERE.

4. OFFICE PRACTICE

12

NATIONAL OFFICES

4.9. Record numbers for German

trade marks

On 2 March 2016, the German Patent and Trade Mark Office informed that trade mark applications reached a new record last year: (i) trade mark applica-tions have increased to 69,130, which implies an increase of around 3.8% from last year; (ii) international registrations have increased up to 4,528 trade marks, which is an increase of 11.4%.

Further information is available HERE.

4. OFFICE PRACTICE