31 March 2017

ECTA Round Table ‘Hot Design Topics’

Editorial team: Daniela Derksen, Jean-Jo Evrard and Anna Ostanina

ECTA’s 36th Annual Conference - early bird registration

ECTA webinar available

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31 March 2017

1. ECTA NEWS

1.1. ECTA - Round Table - "Hot Design Topics" 1.2. ECTA’s 36th Annual Conference—early bird registration 1.3. ECTA Workshop - ‘‘The Operation of the EU law on the detention of counterfeit goods in transit - Update on the EU Trade Mark Implementing package’’ 1.4. Meetings and events attended by ECTA 1.5. Anti-Scam Network Meeting 1.6. Conference on IPR Enforcement in Malta 1.7. ECTA Represented at the INTA Annual Meeting 1.8. ECTA Meetings with EU Officials 1.9. The United Kingdom formally triggering the Brexit process

2. LAW

TRADE MARK 2.1. Report on the proposal for a regulation of the European Parliament and of the Council on the European Union trade mark

COPYRIGHT 2.2. Draft opinion on Online Platforms and the Digital Single Market

ANTI-COUNTERFEITING 2.3. Assessment of OLAF Regulation

3. CASE LAW

On Relative Grounds for Refusal – General

Court

3.1. Case T-495/15 of 16 March 2017, Socie dad agraria de transformacion n° 9982 Montecitrus vs. EUIPO – Spanish Oranges, SL

3.2. Case T-132/15 of 14 March 2017, IR vs. EUIPO – Pirelli Tyre SpAKCI Licensing,Inc

4. OFFICE PRACTICE

EUIPO 4.1. EUIPO is the world’s most innovative IP Office 4.2. Closure of the EU-Asean project 4.3. EU-wide survey showing widespread

support of intellectual property rights among EU citizens

4.4. EUIPO Academy webinars

5. NATIONAL OFFICES

UK 5.1. Registered Designs Examination Practice Guide

TABLE OF CONTENTS

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1.1. ECTA - Round Table - "Hot

Design Topics"

On 30 March 2017, ECTA held a round table on ''Hot design topics", in Alicante in the Brussels Conference room at EUIPO.

The first panel discussed functional de-signs, the ‘‘multiplicity of forms’’ or ‘‘technical features’’ approach.

The second panel discussed the nature of the product and the relevance to the individual character assessment.

The round table was moderated by To-bias Dolde, Chair of EUIPO Link Com-mittee and had some fantastic speakers including Christoph Bartos, Member of the Boards of Appeal, Stephan Hanne, Member of the International Cooperation and Legal Affairs Department, EUIPO, Peter Schramm, Co-Chair of the ECTA Design Committee and Sergio Rizzo, Member of the ECTA Design Commit-tee.

The roundtable was followed by interest-ing debates and exchange of views on the most controversial design issues and it ended with a networking recep-tion.

1.2. ECTA’s 36th Annual Confer-

ence - early bird registration

In case you haven't as yet registered to attend ECTA's 36th Annual Conference "TRADE MARK: A BRIDGE BETWEEN TWO" which will take place from 28 June - 1 July 2017 in Budapest, Hunga-ry, we kindly remind you that the early bird registration period closes on 31 March 2017.

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

The preliminary programme is available HERE.

Kindly note that the programme is avail-able in electronic format only and will not be distributed as a printed brochure. We look forward to welcoming you at the 36th Annual ECTA Conference in June 2017 and hope you will have a memorable time exploring Budapest and invite you to take a look at the Budapest promotional film HERE.

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1.3. ECTA - Workshop - ‘‘The op-eration of the EU law on the de-tention of counterfeit goods in transit– Update on the EU Trade

Mark Implementing package’’

On 8 March 2017, ECTA held a work-shop on the operation of the EU law on the detention of counterfeit goods in transit - Update on the EU Trade Mark Implementing Package.

The workshop was held in Brussels at the NH Collection Brussels Grand Sa-blon Hotel.

In the first part of the workshop, Tomas Lorenzo Eichenberg, Principal Adminis-trator of Unit F5/ Intellectual Property and Fight against Counterfeiting, updat-ed the attendees on the EU Trade Mark Implementing Package.

In the second part, goods in transit were discussed from the perspective of the industry and from the European Obser-vatory on Infringements of IP rights.

At the end, practitioners talked about the liability of right holders following discon-tinuance of a procedure for detention of goods as well as the operation of the new provisions with reference to EC Notice ‘On the customs enforcement of IPR concerning goods brought into the customs territory of the Union without being released for free circulation in-cluding goods in transit’ (July 2016).

The workshop was also streamed live and has been made available on our ECTA website under Publications -

Webinars.

All ECTA members have the possibility to view the workshop online for free. Non-ECTA members can view the work-shop upon payment of 50€ per webinar.

All webinars are password protected. To view the password protected page please contact Daniela Derksen, ECTA Legal Communicator, at daniela.derksen@ecta.org.

1. ECTA NEWS

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1.4. Meetings and events attend-

ed by ECTA

(i) The following meeting were attend-

ed by ECTA in March 2017:

12th LM on Cooperation, Alicante, was attended on 1-3 March 2017, by Cristina Bercial, Chair of the ECTA Law Commit-tee.

The European Conference 2017 at Harvard University, Cambridge, Massa-chusetts, was attended on 3 and 4 March 2017, by Benjamin Fontaine, Chair of the ECTA Geographical Indica-tions Committee, who was a speaker at this conference on behalf of ECTA.

European Sister Organisations 2017 Annual Meeting, Paris, was attended on 23 and 24 March 2017, by Anna Ostani-na, ECTA Manager Legal Affairs and Max Oker-Blom, ECTA Secretary Gen-eral.

ECP Working Group Meetings, Alicante, was attended on 30 March by Eva-Maria Strobel, member of the ECTA Design Committee.

ECTA meeting with EUIPO, Alicante, was attended on 31 March 2017 by:

• Ruta Olmane, ECTA President;

• Anna Ostanina, ECTA Manager Le-gal Affairs;

• Tobias Dolde, Chair of ECTA EUIPO Link Committee;

• Benjamin Fontaine, Chair of ECTA

Geographical Indications Commit-tee;

• Cristina Bercial Chaumier, Chair of the ECTA Law Committee;

• Peter Schramm, Co-chair of the EC-TA Design Committee;

• Fabio Angelini, Vice Chair of the ECTA Copyright Committee;

• Tamás Kocsis, member of the EC-TA Law Committee;

• Sergio Rizzo, member of the ECTA Design Committee;

• Manuel Minguez, member of the ECTA Professional Affairs Commit-tee.

(ii) The following meetings will be

attended by ECTA in April 2017:

Working Group for the Preparation of Common Regulations under the Lisbon Agreement, WIPO, Geneva, will be at-tended on 4-5 April by Cecilia Falconi Pérez , member of the WIPO-Link Committee;

ECTA—WIPO Meeting, Geneva, will be attended on 6 April 2017 by:

• Ruta Olmane, ECTA President;

• Judit Lantos, Chair of the ECTA WIPO-Link Committee;

• Myrtha Hurtado Rivas, Vice-Chair of ECTA WIPO-Link Committee;

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• Ignacio Elzaburu, ECTA-WIPO Link Committee member, Member of ECTA Law Committee;

• Mara Modolfo, ECTA WIPO-Link Committee Member, Vice-Chair of ECTA Harmonization Committee;

• Bernard Volken, Chair of ECTA De-sign Committee;

• Cecilia Falconi Pérez, ECTA-WIPO Link Committee member, Member of ECTA Geographical Indications Committee;

• Franc Enghardt, ECTA-WIPO Link Committee member, Member of ECTA Professional Affairs Commit-tee;

• Anna Ostanina, ECTA Manager Le-gal Affairs.

Regional Enforcement Seminar by EUIPO , Cyprus, 4-6 April 2017 , Sozos-Christos Theodoulou, ECTA First Vice-President, will speak at this seminar about goods in transit.

EUIPO 17th LM on Trade Marks, will be attended on 25 and 26 April by Tobias Dolde, Chair of the EUIPO-Link Commit-tee.

1.5. Anti-Scam Network Meeting

On 28 February 2017, the Anti-Scam Network Meeting was held at the EUIPO in Alicante.

Manolo Mínguez, member of the Profes-sional Affairs Committee attended the event on behalf of ECTA.

1.6. Conference on IPR Enforce-

ment in Malta

On 2 March 2017, a conference on IPR Enforcement was held in Malta.

The conference was organized by the Maltese Customs, Malta EU Presidency and the European Observatory on In-fringements of Intellectual Property Rights.

Luigi Sansone, member of the ECTA Professional Affairs Committee, and Francesca Warrington, Member of the ECTA Harmonization Committee, were speakers at this conference on behalf of ECTA.

They spoke about goods in transit from the Maltese and the EU perspective.

Their report is available under the mem-ber area - Activities.

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1.7. ECTA represented at the INTA

Annual Meeting

On 20-24 May 2017, the International Trademark Association (INTA) will hold for the 3rd time in Europe its 139th An-nual 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.

In addition, 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.

1.8. ECTA Meetings with EU

Officials

On 9 March 2017, the ECTA delegation composed of the members of the ECTA Management Committee, namely Ruta Olmane (ECTA President), Sozos-Christos Theodoulou (ECTA First Vice President), Anette Rasmussen (ECTA Second Vice President), Max Oker-Blom (ECTA Secretary General) and Anna Ostanina (ECTA Manager Legal Affairs) met with several EU authorities.

They met with (i) DG Growth, (ii) DG Connect, (iii) DG Taxud, (iv) DG Trade, (v) Permanent representation of UK to the EU, and, (vi) Permanent representa-tion of Estonia to the EU.

Mr Christian Freudenberg (Chair of EC-TA Copyright Committee) also attended the DG Connect meeting and Mr Joe Cohen (Chair of ECTA Anti-Counterfeiting Committee) participated in the DG Taxud and the Permanent representation of UK meeting.

1.9. The United Kingdom formally

triggering the Brexit process

This week the UK has started the pro-cess of leaving the European Union. This means that the UK will automatical-ly leave the EU in two years. For the coming two years, the EU and the UK will be negotiating on which terms the UK will be leaving, as well as how their future relationship will be.

The EU will first need to establish a set of directives for the negotiations with the UK. Michel Barnier has been appointed as EU’s Chief Negotiator. The set of negotiation directives are subject to ap-proval by the Council of the European Union. Following such approval, the ne-gotiations with the UK will commence.

IP rights will be part of the topics for ne-gotiation. ECTA has signalled towards relevant authorities its willingness to

1. ECTA NEWS

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to contribute.

ECTA has now been contacted by a representative of EU’s Task Force for the Preparation and Conduct of Negotia-tions with the UK under Article 50 TFEU (TF50), informing us that the ECTA pa-per on the Brexit has received their full-est attention. It was agreed with TF50 that ECTA will take the lead in working together with the main stakeholders and other NGOs towards TF50 and will pro-vide input on legal issues and solutions, especially regarding trademarks and designs.

ECTA is pleased to actively take part in the process and aims to find balanced legal solutions and legal certainty in the area of IP rights.

ECTA will keep its members informed of the process.

1. ECTA NEWS

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TRADE MARK

2.1. Report on the proposal for a regulation of the European Parlia- ment and of the Council on the

European Union trade mark

On 6 March 2017, a report by the Euro-pean Committee on Legal Affairs was made available regarding the proposal for a regulation of the European Parlia-ment and the Council on the European Union trade mark.

The report contains concludes that the proposal is a straightforward codification of existing texts, without change in their substance.

Further information is available HERE.

COPYRIGHT

2.2. Draft opinion on Online Plat- forms and the Digital Single Mar-

ket

The European Parliament Committee on Legal Affairs has made available an opinion which is directed to the Commit- tee on Industry, Research and Energy and the Commit tee on the Internal Mar- ket and Consumer Protection. The draft opinion incorporated sugges tions into their motion for a resolution. These are, inter alia: (i) ‘‘whereas online platforms (hereinafter ‘platforms’) cover a wide range of actors involved in numer- ous economic activities and are therefore

not subject to any clear and precise defi- nition, the formulation of which would be the first step of a sectoral regulation pro cess’’;

(ii) ‘‘whereas the emergence of plat- forms, by fostering the relationship be tween service providers and consumers, results in the shaping of both new and existing markets, which may at times have a disruptive effect on the economic value of such markets’’;

The draft opinion is available HERE.

ANTI – COUNTERFEITING

2.3. Assessment of OLAF

Regulation

The European Commission, supported by an independent external contractor, are assessing if Regulation No. 883/2013 concerning investigations conducted by the European Anti-Fraud Office (OLAF), has conveyed its intend-ed objective of providing a clear and effective framework for OLAF’s activi-ties. Furthermore, the evaluation will also consider if changes need to be im-plemented taking into account the im-pact that the proposed European Public Prosecutor’s Office (EPPO) would have on OLAF’s investigative role and to reg-ulate collaboration between the two.

Further information is available HERE.

2. LAW

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Provided by

ON RELATIVE GROUNDS FOR

REFUSAL - GENERAL COURT

3.1. Case T-495/15 of 16 March 2017, Sociedad agraria de transformacion n° 9982 Montecitrus vs. EUIPO – Spanish Oranges, SL (contested deci-sion: R-871/2014-4 of 26 June 2015)

Trade marks

Earlier trade mark

Trade mark applied for

Classes: 29,31

Decision: As regards to the visual com-parison, there is a low degree of similari-ty between the signs at issue, as re-

gards to the the phonetic comparison, there is an average degree of similarity between them and, as regards to the conceptual comparison, there is, de-pending on the linguistic knowledge of the relevant public, a high similarity be-tween them (para. 57).

Food products in Classes 29 and 30 are normally purchased in supermarkets or similar establishments and are thus se-lected from the shelf by consumers di-rectly, rather than being asked for orally. Similarly, in such establishments, con-sumers lose little time between succes-sive 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 cir-cumstances, for the purposes of as-sessing 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 than its word elements from the relevant consumer’s point of view (para.63).

In the light of the low degree of visual similarity between the signs at issue 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 Board of Appeal was entitled to find that, in spite of the identity of the

3. CASE LAW

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goods at issue, there was no likelihood of confusion between the marks at issue for the average consumer in the Europe-an Union (para. 69).

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

ON ABSOLUTE GROUNDS FOR RE-

FUSAL - GENERAL COURT

3.2. Case T-132/15 of 14 March 2017, IR vs. EUIPO – Pirelli Tyre SpAKCI Licensing,Inc (contested decision: R-1520/2013-2 of 14 August 2014)

Trade mark:

popchrono

Contested trade mark

Class: 12

Decision: As regards to the evidence of genuine use of the contested trade mark relating to proposals to enter into negoti-ations on a trade mark license agree-ment for goods in Class 12, that evi-dence shows merely an intention to pro-pose such agreements but does not demonstrate the placing on the market of goods covered by the contested trade mark. However, even if it is the intention of the proprietor of the contested mark to make real use of his trade mark, if it is not objectively present on the market in a manner that is effective, consistent over time and stable in terms of the con-figuration of the sign, so that it cannot be perceived by consumers as an indi-

cation of the origin of the goods or ser-vices in question, there is no genuine use of the trade mark (para. 83).

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

3. CASE LAW

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EUIPO

4.1. EUIPO is the world’s most

innovative IP Office

In a global survey which was carried out by the intellectual property magazine World Trademark Review, EUIPO was announced to be the most innovative IP office. The French Institut National de la Pro-priété Industrielle (INPI) and the Intellec-tual Property Office of Singapore (IPOS) were in joint second place, followed by the Korean Intellectual Property Office (KIPO), the United Kingdom Intellectual Property Office (UKIPO) and the United States Patent and Trademark Office (USPTO).

Further information is available HERE.

4.2. Closure of the EU-Asean pro-

ject

On 21 February 2017, the EU-ASEAN Project on the Protection of Intellectual Property Rights (ECAP III) Phase 2 came to an end.

The project aimed at further integrating ASEAN countries in the global economy by strengthening the contribution of in-tellectual property rights to regional inte-gration and overall economic develop-ment.

The successor project, following the pre-vious ECAP III, will start later in 2017.

Further information is available HERE.

4.3. EU-wide survey showing widespread support of intellectual

property rights among EU citizens

On 23 March 2017, the EUIPO pub-lished an update of the study on ‘European citizens and intellectual prop-erty: perception, awareness and behav-ior’.

The study conclusions result from an EU wide survey which was carried out by EUIPO. The survey shows that 97% of all EU citizens believe it is important that inventors, creators and performing art-ists can protect their rights and be paid for their work.

However, the survey also shows that among young people, there has been more tolerance for buying counterfeit goods. Further information is available HERE.

4. OFFICE PRACTICE

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EUIPO

4.4. EUIPO Academy webinars

EUIPO Academy will hold a number of publicly available webinars in April 2017. In particular, the webinars on (i) the ‘‘Study on fake smartphones’’; (ii) the ‘‘Requirements for protection of de-signs’’; and, (iii) ‘‘How to handle dupli-cated terms via TMC’’.

Further information and the Academy’s calendar are available HERE.

4. OFFICE PRACTICE

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UK

5.1. Registered Designs Examina-

tion Practice Guide

On 16 March 2017, the United Kingdom Intellectual Property Office (UKIPO) published a guide explaining the Intel-lectual Property practice under the Reg-istered Designs Act 1949 and the Regis-tered Design Rules 2006.

The Guide includes, inter alia, infor-mation regarding (i) absolute grounds for refusal; (ii) formalities requirements for submitting a design application, (iii) information on examination procedures.

The Guide is available HERE.

5. NATIONAL OFFICES