No. 23-08 17 November 2008 23rd OHIM-Link Meeting The 23rd ECTA OHIM-Link meeting will take place in Alicante on February 23, 2009. Should you have any issues to be raised at this meeting, would you please send an e-mail, ASAP, to João Pereira da Cruz, Chair of the OHIM-Link Committee, at: joaoppcruz@jpcruz.pt and/or to Anne-Laure Covin, ECTA Legal Co-ordinator at: anne-laure.covin@ecta.org by January 15, 2009. TABLE OF CONTENTS 1 Law 1 1 Trade Mark Directive Codified version of trade mark Directive 2 Case Law 2 1 Court of First Instance T-400/07 - GretagMacbeth LLC The trade mark is devoid of any distinctive character. T-256/06 - Neopert Servisys AG The trade mark is descriptive for flow regulators. T-373/07 - EOS GmbH Electro Opticals Systems The trade mark is descriptive. T-270/06 - Lego Juris A/S Registration contrary to Art 7(1)(e)(ii) of Reg No 40/04. T-346/07 - Duro Sweden AB Sign is descriptive for goods. T-87/07 Seil proteins GmbH The trade marks are highly similar T-304/07 Calzaturificio Frau Spa The trade marks are visually and conceptually similar. T-281/07 ecoblue AG The trade marks are visually and aurally similar. T-161/07 Group Lottuss Group SL There is a likelikhood of confusion with respect to the services that are similar to the goods of the earlier trade mark. T-7/04 Shaker di L. Laudato & C. Sas The trade marks are visually, aurally and conceptually similar. T-210/05 Nalocebar Consultores e Serviços Lda The trade marks are visually, aurally & conceptually similar. Goods are identical or similar. T-242/07 Dieter Weiler The trade marks are similar overall. 3 ECTA news 3-1 WIPO Ad Hoc Working Group on the Legal Development of the Madrid System. Twentieth Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications 3-2 OHIM OHIM exhibition in European Parliament 3.3 ECTA In Miami Exhibition stand 1
1 Law 1 1 Trade Mark Directive Codified version of trade mark Directive The European Union has published a codified version of the Directive bringing national rules on trade marks more closely into line with each other. Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 approximates the laws of the member states relating to trade marks. The Directive replaces the content of Council Directive 89/104/EEC of 21 December 1988 as amended by a 1992 Council Decision, without any substantive change. The link to the relevant Directive can be found at: http://eur-lex.europa.eu/lexuriserv/ LexUriServ.do?uri=OJ:L:2008:299:0025:0033:EN:PDF On 1 July ECTA raised concern regarding the proposal for a revised version of the Community Trade Mark Regulation, under the aspect of what is called Better Regulation.. A copy of the letter can be found at: http://www.ecta.org/position_papers/2008-06- Codification.pdf Further to the Commission s response which can be found at http://www.ecta.org/ position_papers/2008-codification-reply.doc, ECTA sent a letter on 7 November 2008 to Mr. Charlie McCreevy with copies to Jörgen Holmquist, Margot Fröhlinger, Olivier Varhelyi and Wubbo de Boer regarding Codification of Council Directive 89/104/EEC of 21 December 1998 to approximate the laws of the Member States relating to trade marks and of Council Regulation (EC) No. 40/94 of 20 December 1993 on the A copy of this letter can be found at http://www.ecta.org/position_papers/ LtrCommission-reCodification.pdf 2
2 Case Law 2 1 Court of First Instance of the European Court of Justice On absolute grounds for refusal Trade mark: 1. Case: T-400/07 dated 12 November 2008, GretagMacbeth LLC vs OHIM (contested decision : R 30/2007-4 of 30 August 2007) Trade Mark: Class: 9, 16 and 42 The trade mark is devoid of any distinctive character ( para. 40 to 60 ) The Board of Appeal s decision is upheld. 2. Case: T-256/06 dated 5 November 2008, Neopert Servisys AG vs OHIM (contested decision : R 1388/2005-4 of 17 July 2006 ) Trade mark: HONEYCOMB Class: 11 The trade mark is descriptive for flow regulators. The term refers to a web-like shape or structure or one similar to a honeycomb (para. 31). It can therefore be used to designate the web-like shape of a flow regulator nozzle which, by making it possible to alter the pressure of the water jet, constitutes a relevant characteristic of the goods (para. 32). 3
3. Case: T-373/07 dated 12 November 2008, EOS GmbH Electro Opticals Systems vs OHIM (contested decision : R 333/2005-4 of 20 July 2007 ) Trade mark: PrimeCast Classes: 19 and 40 The trade mark is descriptive. The term means top quality mould or first casting and therefore for moulds designates the goods themselves, for mould patterns designates their intended purpose and also designates the nature of the services used in the production of such moulds or mould patterns (para 33). 4. Case: T-270/06 dated 12 November 2008, Lego Juris A/S vs OHIM ( contested decision : R 856/2004-3 of 10 July 2006 ) Trade mark: Class: 9 and 28 The registration is contrary to Article 7(1)(e)(ii) of Regulation No 40/04 that precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution ( para. 70 to 88 ). 5. Case: T-346/07 dated 13 November 2008, Duro Sweden AB vs OHIM ( contested decision : R 1065/2005-4 of 3 July 2007 ) Trade mark : EASYCOVER Classes : 19, 24 and 27 Decision : Taken as a whole the sign EASYCOVER conjures up the idea of easy covering or of something which can be easily applied or placed on an object ( para. 55 ). Therefore, the sign is descriptive for goods in Classes 19, 24 and 27, except for monuments, not in metal (para. 56 to 60 ). 4
On relative grounds for refusal 1. Case: T-87/07 dated 12 November 2008, Seil proteins GmbH vs OHIM Indena SpA (contested decision : R 10/2006-2 of 23 January 2007 ) AFFILIN Class: 1 The trade marks are highly similar ( para. 32 ). Regarding the goods, Biological preparations for laboratory analysis and diagnostics are similar to extracts of medicinal plants for use in the pharmaceutical, cosmetic and food industries, not for diagnostic purposes ( para. 33 to 51 ). There is then a likelihood of confusion ( para. 21 ). 5
2. Case: T-304/07 dated 5 November 2008, Calzaturificio Frau Spa vs OHIM Camper, SL (contested decision : R 768/2006-1 of 14 June 2007 Class: 18 The trade marks are visually ( para. 33 to 35 ) and conceptually similar (para. 36 to 38). Overall, they are similar. ( para. 44 ). Given that the goods in question are identical, there is a likelihood of confusion (para. 53). 3. Case: T-281/07 dated 12 November 2008, ecoblue AG vs OHIM Banco Bilbao Vizcaya Argentaria SA (contested decision : R 844/2006-1 of 25 April 2007) BLUE Ecoblue Classes: 36 and 38 The trade marks are visually and aurally similar ( para. 31 to 34 ). They are also conceptually similar ( para. 35 ). 6
Given that the services in question are identical or similar, there is a likelihood of confusion ( para.. 37 ). 4. Case: T-161/07 dated 4 November 2008, Group Lottuss Group, SL vs OHIM Ugly Inc ( contested decision : R 165/2006-2 and R194/2006-2 of 2 March 2007 ).) COYOTE UGLY Classes: 32, 41 and 43 Regarding the comparison of goods and services, Beer ( class 32 ) is similar to entertainment services, services for discos, night clubs ( class 41 ) and cocktail lounge services ( class 43 ) (para. 28 à 35 ) Beer ( class 32 ) is not similar to cultural activities ( class 41 ) ( para. 41 to 44 ). There is then a likelihood of confusion with respect to the services that are similar to the goods of the earlier trade mark ( para.37 ). 5. Case: T-7/04 dated 12 November 2008, Shaker di L. Laudato & C. Sas vs OHIM Liminana y Botella, SL (contested decision : R 933/2002-2 of 24 October 2003) LIMONCHELO 7
Class: 33 The dominant element of the trade mark is the word Limoncello ( para. 41 to 43 ). The trade marks are visually ( para. 46 ), aurally ( para. 47 and 48 ) and conceptually ( para. 49) similar. Overall, they are similar ( para. 50 ) Given that the goods in question are identical, there is a likelihood of confusion ( para..55 to 53-9 ). 6. Case: T-210/05 dated 12 November 2008, Nalocebar Consultores e Serviços Lda vs OHIM Liminana y Botella, SL ( contested decision : R 646/2004-1 of 18 March 2005 ) LIMONCHELO Classes: 32 and 33 The dominant element of the trade mark is the word Limoncello (para. 35 to 38). The trade marks are visually ( para. 41 ), aurally ( para. 42 ) and conceptually (para. 43) similar. Overall, they are similar ( para. 44 ) Given that the goods in question are identical or similar, there is a likelihood of confusion (para..49 to 53). 8
7. Case: T-242/07 of 12 November 2008, Dieter Weiler vs OHMI IQNet Association The International Certification Network (contested decision : R 893/2005-1 of 29 March 2007) Q2WEB QWEB Classes: 9, 38 and 42 Decision : Regarding the comparison of the signs, the word trade marks are visually, aurally and conceptually similar. Overall, they are similar (para. 41). There is also a visual, aural and conceptual similarity between the trade mark and the earlier figurative trade mark. Overall, the trade marks are similar (para. 42). Regarding the comparison of goods and services; Computer and pre-recorded computer programs, networking computer programs (class 9) and computer programming; computer software installation and maintenance; computer rental, rental of computer software; updating of computer software, leasing access time to a computer database (class 42) are similar to «telecommunication services (class 38). (para. 24 to 32). There is then a likelihood of confusion ( para. 44 ). To find the full text of the trade mark decisions reported in the ECTA Flashes, please search the ECTA Info Database including the free Darts-ip Europe Case Law database available on ECTA s website in the members only section. ECTA offers its members free access to Darts-ip search functions limited to ECJ and CFI decisions as well as for national decisions reported in ECTA Flashes. If you are interested in having full access to the 55,000 pan-european case law documents in darts-ip, additional information can be found on www. darts-ip.com. 9
3 ECTA News 3.1 WIPO The sixth Session of the Ad Hoc Working Group on the Legal Development of the Madrid System for the International Registration of Marks Union will take place in Geneva, at WIPO on 24 to 28 November 2008. ECTA will be represented by Jan Wrede, Member of the Law Committee, and Anne- Covin, ECTA Legal Coordinator The Twentieth Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications will take place in Geneva, at WIPO on 1 to 5 December 2008. ECTA will be represented by Jan Wrede, Member of the Law Committee, and Anne- Covin, ECTA Legal Coordinator. 3.2 OHIM OHIM EXHIBITION IN EUROPEAN PARLIAMENT OHIM is holding an exhibition in the European Parliament in Brussels, hosted by Parliament Vice-President Alejo Vidal-Quadras. The exhibition s official inauguration, held on November 11, was followed by a reception in which an audience of MEPs, officials and invited guests were addressed by Vice-President Vidal-Quadras, Internal Market Commissioner Charlie McCreevy, and OHIM s President, Wubbo de Boer. Annick Mottet, Vice-President of ECTA and Anne-Laure Covin, Legal Co-ordinator attended the reception.. The exhibition was open until 14 November. 3.3 ECTA IN MIAMI Having previously done so at Seattle 1994, Amsterdam 2003 and Berlin 2008, ECTA again, represented by Anne-Laure Covin, Legal Co-Ordinator will host an exhibition stand at the Interamerican Intellectual Property Law Association s annual meeting in Miami from 16-19 November 2008. ASIPI s 2008 annual meeting, the XIV Work Sessions and Administrative Council, will be held at the The Loews Miami Beach Hotel. 10