ECTA - EUIPO bilateral meeting. ECTA - WIPO bilateral meeting. Marrakesh Treaty reports. EUIPO- New eappeal form. 3 May 2017

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1 3 May 2017 Editorial team: Daniela Derksen, Jean-Jo Evrard and Anna Ostanina ECTA - EUIPO bilateral meeting ECTA - WIPO bilateral meeting Marrakesh Treaty reports EUIPO- New eappeal form

2 3 May 2017 TABLE OF CONTENTS 1. ECTA NEWS 4. OFFICE PRACTICE 1.1. ECTA - EUIPO bilateral meeting EUIPO 1.2. ECTA - WIPO bilateral meeting 4.1. New eappeal form 1.3. Meetings and events attended by ECTA 4.2. Successful annual audit at the EUIPO 1.4. ECTA represented at the INTA Annual Meeting 4.3. EUIPO Academy webinars 4.4. Philippines joins Designview 1.5. ECTA Immediate Past President, contracted by the EUIPO 4.5. India joins TMview 4.6. IP Case Law Laboratory LAW 3D PRINTING WIPO WIPO Classification Practices 4.8. Madrid Highlights 4.9. Seminar - Mediation in R&D and Related Commercial Disputes Authorisation to draw own-initiative report for the European ParliamentCommittee on Legal Affairs ON 3D printing TRADE MARKS 2.2. The European Union Trade Mark Regulation (codification) ANTI-COUNTERFEITING 2.3. Detention cases relating to packing material of Hong Kong customs World Intellectual Property Day Strong Demand for Trade mark and Industrial Design protection WIPO exhibiting at INTA COPYRIGHT 2.4. Marrakesh Treaty reports 3. CASE LAW On Relative Grounds for Refusal General Court 3.1. T-538/15 of 28 March 2017, Regent University vs. EUIPO Regent s College 3.2. T-387/15 of 29 March 2017, J & Joy SA vs. EUIPO Joy-Sportswear GmbH 3.3. T-209/16 of 30 March 2017, Apax Partners UK Ltd v EUIPO 3.4. T-495/15 of 30 March 2017, Sociedad agrarian de transformation n 9982 vs. EUIPO Spanish Oranges,SL 2

3 1. ECTA NEWS 1.1. ECTA - EUIPO bilateral meeting On 31 March 2017, ECTA held a bilateral meeting with the EUIPO. The ECTA delegation met with António Campinos, Executive Director of the EUIPO and other EUIPO representatives. The meeting was attended by Ruta Olmane, ECTA President; Tobias Dolde, Chair of the ECTA EUIPO - Link Committee; Anna Ostanina, ECTA Manager Legal Affairs; Benjamin Fontaine, Chair of the ECTA Geographical Indications Committee; Christina Bercial Chaumier, Chair of the ECTA Law Committee; Fabio Angelini, Vice Chair of the ECTA Copyright Committee; Sergio Rizzo, Member of the ECTA Design Committee; Manuel Minguez, Member of the ECTA Professional Affairs Committee; Tamás Kocsis, Member of the ECTA Law Committee, and Peter Schramm, Co-chair of the Design Committee. During the meeting, ECTA received feedback from EUIPO representatives related to EUIPO practices, developments in IP law and feedback on ECTA s recent position papers. Courtesy of the EUIPO. bilateral meeting which took place at WIPO s headquarters on 6 April A delegation of 8 ECTA colleagues travelled to WIPO to meet Director General Mr. Francis Gurry and the heads of sections and many other WIPO colleagues. ECTA was represented by Ruta Olmane the President of ECTA; Judit Lantos the Chair of the WIPO-Link Committee; Anna Ostanina Manager Legal Affairs; Ignacio Elzaburu WIPO Link and Law Committee member; Mara Modolfo Vice -Chair of ECTA Harmonization Committee and WIPO-Link Committee Member; Bernard Volken Chair of the Design Committee; Cecilia Falconi Pérez WIPO Link Committee and Geographical Indications Committee member and Franc Enghardt WIPO Link Committee and Professional Affairs Committee member ECTA - WIPO bilateral meeting ECTA WIPO Link Committee s biggest project was the preparation for and participation at the WIPO-ECTA annual Before the meeting, we reached out to several legal committees and compiled discussion points. WIPO colleagues gave a very detailed update on their activities with many interesting presen- 3

4 1. ECTA NEWS Before the meeting, ECTA reached out to several legal committees and compiled discussion points. WIPO colleagues gave a very detailed update on their activities with many interesting presentations and figures, and at the same time we received answers to many of our questions. An important point was inviting WIPO to take an active part in the upcoming Autumn Council Meeting which will take place in Geneva on October 18-19, Meetings and events attended by ECTA (i) The following meeting were attended by ECTA in April 2017: Working Group for the Preparation of Common Regulations under the Lisbon Agreement, WIPO, Geneva, was attended on 4-5 April by Cecilia Falconi Pérez, member of the ECTA WIPO-Link Committee and of the Geographical Indications Committee; Observatory Working Group Meetings, Alicante, Spain, will be attended on 3-5 May 2017 by: Sergio Rizzo, Member of the ECTA EUIPO - Link Committee and of the ECTA Design Committee; Olivier Vrins, Vice Chair of the ECTA Anti-Counterfeiting Committee; Sarka Petivlasova, Member of the ECTA Law Committee; Daniela Derksen, ECTA Legal Communicator. CEPS Seminar Combating Counterfeiting and Illicit Trade, Brussels, Belgium, will be attended on 10 May 2017, by Carina Gommers, Member of the ECTA Anti-Counterfeiting Committee, who will be a speaker at the panel. Regional Enforcement Seminar by EUIPO, Cyprus, 4-6 April 2017, Sozos- Christos Theodoulou, ECTA First Vice- President, spoke at this seminar about goods in transit. EUIPO 17th LM on Trade Marks, attended on 25 and 26 April by Tobias Dolde, Chair of the ECTA EUIPO-Link Committee. (ii) The following meetings will be attended by ECTA in May 2017: 4

5 1. ECTA NEWS 1.4. ECTA represented at the INTA Annual Meeting On May 2017, the International Trademark Association (INTA) will hold for the 3rd time in Europe its 139th Annual Meeting in Barcelona, Spain. During INTA s 139th Annual Meeting, ECTA will be represented by Ruta Olmane, ECTA President, Max Oker- Blom, ECTA Secretary General, Anna Ostanina, ECTA Manager Legal Affairs and Daniela Derksen, ECTA Legal Communicator. ECTA is pleased to invite you to visit our Booth D69 during the exhibition hours! We will be more than happy to meet you and answer all your questions related to ECTA ECTA Immediate Past President, contracted by the EUIPO ECTA is happy to announce that, ECTA Immediate Past President, F. Peter Müller, Managing Partner of Müller Schupfner & Partner (DE), has been contracted by the EUIPO (European Union Intellectual Property Office) as a Special Advisor to the European Cooperation External Advisory Board (ECEAB) and the European Trade Mark and Design Education Centre (ETMD Ed Centre). In his new function, F. Peter Müller will advise the Executive Director of the EUIPO and the Management Board on the way forward for the implementation of the projects from a stakeholder s perspective. Furthermore, he will advise on and advocate the benefits of the European Cooperation projects. Additionally, he will also be involved in the Steering Committee of the ETMD Ed Centre project during the strategic implementation phase. ECTA would like to congratulate F. Peter Müller on his new function and wish him every success in his new duties as Special Advisor to ECEAB and ETMD Ed Centre. 5

6 2. LAW 3D PRINTING 2.1. Authorisation to draw owninitiative report for the European Parliament Committee on Legal Affairs on 3D printing The European Parliament Committee on Legal Affairs, which is responsible for civil liability and intellectual property rights, has been authorized to draw up an own-initiative report on Threedimensional printing, a challenge in the fields of intellectual property rights and civil liability. The Committee has appointed Joelle Bergeron (France ENF) as rapporteur. A presentation of the draft report will be revealed on 12 July Further information is available HERE. TRADE MARK 2.2. The European Union Trade Mark Regulation (codified) ANTI-COUNTERFEITING 2.3. Detention cases relating to packing material at Hong Kong customs Under the IPR customs cooperation between EU and Hong Kong, Member States regularly report on detention cases relating to packing material, such as, stickers and labels, which are shipped from Hong Kong. This means that IPR infringing materials cannot be stopped by Hong Kong customs even where it did not escape their attention The Hong Kong customs authorities have therefore decided to convey recommendations to right holders in the EU. The recommendation is available HERE. On 27 April 2017, the European Parliament adopted the proposal for a codified version of the Trade Mark Regulation of the European Parliament and of the Council of the European Union (the Trade Mark Regulation). The final adoption of the trade mark regulation is planned for mid-may The corrected version is available HERE. 6

7 2. LAW COPYRIGHT 2.4. Marrakesh Treaty reports On 23 March 2017, the European Parliament Committee on Legal Affairs adopted two legislative reports regarding the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (The Marrakesh Treaty). The Marrakesh Treaty provides for copyright exceptions for formats such as audiobooks and Braille. The next step will be for the committee to start informal talks with the European Council on the two legislative reports with a view to reaching a first- reading agreement. Further information is available HERE. 7

3. CASE LAW Provided by There is a likelihood of confusion (para. 72). The Board of Appeal decision is upheld. ON RELATIVE GROUNDS FOR REFUSAL - GENERAL COURT 3.1.

EUIPO Joy- Sportswear GmbH (contested decision: R-1352/2014-2 of 22 April 2015 of 22 April 2015) Trade marks Trade marks Earlier trade mark Earlier trade mark REGENT UNIVERSITY Trade mark applied for

8 3. CASE LAW Provided by There is a likelihood of confusion (para. 72). The Board of Appeal decision is upheld. ON RELATIVE GROUNDS FOR REFUSAL - GENERAL COURT 3.1. Case T-538/15 of 28 March 2017, Regent University vs. EUIPO Regent s College (contested decision: R-1859/ of 6 July 2015) 3.2. Case T-387/15 of 29 March 2017, J & Joy SA vs. EUIPO Joy- Sportswear GmbH (contested decision: R-1352/ of 22 April 2015 of 22 April 2015) Trade marks Trade marks Earlier trade mark Earlier trade mark REGENT UNIVERSITY Trade mark applied for Class: 41 Decision: The dominant element of the earlier trade mark is the word «regent s» (para. 53) and the dominant element of the contested trademark is the word «regent» (para. 55). The trade marks are visually (para. 57), aurally (para. 58) and conceptually (para. 59 to 69) similar. J AND JOY Trade mark applied for Classes: 18, 25 Decision: The trade marks are visually (para. 52 to 62), aurally (para. 63 to 73) and conceptually (para. 74 to 81) similar. There is a likelihood of confusion (para. 96 to 97). The Board of Appeal decision is upheld. 8

3. CASE LAW 3.3. Case T-209/16 of 30 March 2017, Apax Partners UK Ltd v EUIPO (Contested decision: R 1611/2014-2) Trade marks APAX Earlier trade mark APAX PARTNERS Trade mark applied for Classes:

the second element in that sign, partners, is weakly distinctive with regard to the services concerned, it being a common term for financial or law firms.

9 3. CASE LAW 3.3. Case T-209/16 of 30 March 2017, Apax Partners UK Ltd v EUIPO (Contested decision: R 1611/2014-2) Trade marks APAX Earlier trade mark APAX PARTNERS Trade mark applied for Classes: 35,36 Decision: The signs at issue are similar overall, in particular since the only element in the earlier mark, apax, is identical to the element which comes in first place in the sign at issue and the second element in that sign, partners, is weakly distinctive with regard to the services concerned, it being a common term for financial or law firms. The services of insurance covered by the contested mark and the financial services covered by the earlier mark are similar (para. 39). Most banks also offer insurance services, or they act as agents for insurance companies with which they are often economically linked. Insurance companies are subject to similar rules of licensing, supervision and solvency as banks and other institutions providing financial services and it is not unusual to see financial institutions and insurance companies in the same economic group. The competing services have a similar nature, might be provided by the same undertakings or related undertakings and share the same distribution channels (para. 32). The Board of Appeal decision is upheld 3.4. Case T-495/15 of 30 March 2017, Sociedad agrarian de transformation n 9982 vs. EUIPO Spanish Oranges,SL (contested decision: R-87/2014 of 26 June 2015) Trade marks Earlier trade mark Trade mark applied for Classes: 29,31 Decision: As regard the visual comparison, there is a low degree of similarity between the signs at issue, as regards the phonetic comparison, there is an average degree of similarity between them and, as regards the conceptual comparison, there is, depending on the linguistic knowledge of the relevant public, a high degree of similarity or a lack of any 9

10 3. CASE LAW similarity between them (para. 57). Food products in Classes 29 and 30 are normally purchased supermarkets or similar establishments and are thus selected from the shelf by consumers directly, rather than being asked for orally. Similarly, in such establishments, consumers lose little time between successive purchases and often do not read all the information on the various products, letting themselves be guided more by the overall visual impression produced by the labels or packaging. In those circumstances, for the purposes of assessing whether there is a likelihood of confusion or a link between the signs in question, the result of the analysis of the visual similarity between those signs becomes of greater importance than the result of the analysis of their phonetic and conceptual similarities. Moreover, in that assessment, the figurative elements of a mark are deemed to play a more important role that its word elements from the relevant consulars s point of view (para. 63). In the light of the low degree of visual similarity between the signs at issue above and the absence of any increased distinctive character of the earlier mark as a result of the use which has been made of it, the latter point being one which is not, moreover, disputed, the Board of Appeal was entitled to find that, in spite of the identity of the goods at issue, there was no likelihood of confusion between the marks at issue for the average consumer in the European Union (para. 69). The Board of Appeal's decision is upheld. 10

11 4. OFFICE PRACTICE EUIPO 4.1. New eappeal form As of 10 April 2017, EUIPO made it possible for users to file an appeal online through the eappeal form. The eappeal form can be accessed directly through the User Area, or under Actions and Communication after accessing the file in Esearch plus. An explanation on how the eappeal form works has been made available online HERE. Applications e-filing. Further information and the Academy s calendar are available HERE Philippines joins Designview On 26 April 2017, the Intellectual Property Office of the Philippines(IPOPHL) made its industrial design data available to the Designview search tool. With IPOPHL, there are now a total of 54 offices participating in Designview. Further information is available HERE Successful annual audit at the EUIPO On 7 April 2017, the EUIPO completed a full re-certification audit of all its activities. In particular for (i) quality (ISO 9001), (ii) information security, (iii) environment (EMAS), (iv) health and safety (OHSAS 18001), and (v) universal accessibility (UNE170001). Further information on the EUIPO management systems is available HERE EUIPO Academy webinars EUIPO Academy will hold a number of publicly available webinars in May In particular, the webinars on (i) Certification mark under the new EUTM Regulation; (ii) 3D printing and its implications for design law; and, (iii) International 4.5. India joins TMview On 26 April 2017, the Indian Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) made its trade mark data available on the TMview search tool. With CGPDTM, there are now a total of 57 offices participating in TMview. Further information is available HERE IP Case Law Laboratory On 12 June 2017, EUIPO will be holding its first Case Law Laboratory. The event will focus on topics such as non-traditional trade marks and functional trade mark and designs. Further information is available HERE. 11

12 4. OFFICE PRACTICE WIPO 4.7. WIPO Classification Practices In order to better communicate internal policies on classification, WIPO published Examination Guidelines Concerning the Classification of Goods and Services in International Applications. The document is a guide to the goods and services examination principles that are applied by trade mark examiners. Each international trade mark application filed through the Madrid System should include a list of the goods and services covered by your mark, the list must be clear and concise, and follow the principles of the International Classification of Goods and Services, also called, the Nice Classification. To offer better understanding of the classification principles applied, and minimize the risk of errors, WIPO also published the Classification Guidelines. The Examination Guidelines Concerning the Classification of Goods and Services in International Applications are available HERE. The Classification Guidelines are available HERE Madrid Highlights 2016 Madrid System Statistics The Madrid System had a record year in 2016, with 52,550 applications filed, which is 7,2% more than in the previous year. Nice Classification 11th Edition Changes The 11th edition of the Nice Classification that entered into force on 1 January 2017, introduced a number of amendments. This include the introduction of 334 new terms. Madrid Goods and Services Manager (MGS) Integrate Nice Changes The MGS integrated all modifications to the 11th edition of the Nice Classification. WIPO Classification Guidelines Published WIPO recently published guidelines called the Examination Guidelines Concerning the Classification of Goods and Services in International Applications, which include general information on the Nice Classification and the Madrid System, classification principles applied by the International Bureau and practical information on the acceptable format of goods and services lists. On 18 April 2017, WIPO published the Madrid Highlights, which indicates that: 12

13 4. OFFICE PRACTICE Automatic Call Distribution System (ACD) launched The Madrid Registry introduced the Automatic Call Distribution System. The system matches callers to WIPO Madrid staff who take calls in English, French and Spanish. Legalization of Extracts from the International register Certified copies of extracts from the International Register require legalization by members of the Madrid System, however, clients might need to have them legalized in Non-Madrid Member States. Thus, WIPO launched a service, through which users of the Madrid System can obtain legalization of certified extracts from the International Register. Guide to Completing the Most Frequently Used Forms For quick and simple reference to completing Madrid forms a manual has been created called Making the Most of the Madrid System. The Madrid Highlights are available HERE Seminar - Mediation in R&D and Related Commercial Disputes On May 2017, WIPO will hold an Arbitration and Mediation Center Seminar. The Seminar will be an extensive two-day training course in the techniques of mediation for parties and mediators. The topics include amongst others: Developing a strategy for mediation; Selection and appointment of the mediator; Effective representation at mediation; The mediation and its various stages. The programme is available HERE World Intellectual Property Day 2017 On 26 April 2017, World Intellectual Property Day was celebrated to encourage learning about the role that intellectual property has and to promote innovation and creativity, which was marked by various IP-related events around the globe. At the WIPO office UN Secretary- General Antonio Guterres joined WIPO Director General Francis Gurry in celebrating World Intellectual Property Day. During this meeting, Antonio Guterres stated that WIPO is at the frontier of knowledge that determines the future of the international community. Further information about World Intellectual Property day at WIPO is available 13

14 4. OFFICE PRACTICE Strong Demand for Trade mark and Industrial Design protection WIPO published a report which shows that there has been a strong demand for trade marks and industrial designs protection. U.S. applicants filed the largest number of international trade mark application using WIPO s Madrid System, namely 7,741. U.S. was closely followed by Germany with 7,551 international trade mark applications. As for industrial designs, Germany shows to be the largest user of the Hague System with 3,917 applications, followed by Switzerland with 2,555 industrial designs applications. Further information is available HERE WIPO exhibiting at INTA WIPO will be exhibiting at INTA s Annual Meeting in Barcelona. You can visit their booth at B21 at the Exhibition hall of the Convention Centre. Further information is available HERE. 14

WIPO Assemblies provide direction for future work - Director General welcomes positive engagement of Member States on substantive issues

WIPO Assemblies provide direction for future work - Director General welcomes positive engagement of Member States on substantive issues TABLE OF CONTENT 1 LAW 1.1 Trade Marks OHIM Cooperation Fund - Reports on kick-off meetings at OHIM ECTA's letter to OHIM President re Convergence Programmes 1.2 Enforcement ACTA - Joint press release