The 32rd ECTA Annual Conference took place between 19 and 22 June 2013 in Bucharest, Romania. It was the first time that such big conference dedicated to Intellectual Property took place in Romania. Hotel JW Marriott Bucharest Grand Hotel was designated as the main location of the event. The professional programme was this year highly focused on the reform of the European Community Trade Mark system and in particular on the Commission’s proposal published on 27 March 2013.
The first day of the conference started with a Workshop on “Regime of collective and Certification Marks at EU level” and traditionally the committee meetings. The second day was dedicated to the recent up-to-date issues and must-knows for the EU practitioners. Friday, the last day of the conference, was a unique opportunity to get more information about the legislative reform and further implications at European and national level. The second topic was also genuine use and the enforcement of CTMs and national trade marks in the EU.
As always, ECTA prepared rich social events, organized in special locations and namely Willbrook Platinum Center, a modern building hosting the exhibition on Romanian aviation and the Romanian Palace of Justice, specially prepared to host the Gala Dinner.
Wednesday, 19 June 2013
Concept of collective trade marks and practice of the OHIM, Dimitris Botis, Deputy Director for Legal Affairs, International Cooperation & Legal Affairs Department, OHIM, ES
The Conference started traditionally with the Committee Meetings, which are always an excellent opportunity to discuss the committee projects with the members. For those, who did not have to attend the committee meetings, the workshop dedicated to the regime of collective and certification marks at EU level was proposed. Benjamin Fontaine, Chair of ECTA Geographical Indications Committee was the moderator. The first part of the workshop was presented by Dimitris Botis (Deputy Director of Legal Affairs, OHIM, GR). Mr Botis focused on collective trade marks and explained the system of rarely used. Between 1996 and 2013, the applications for collective trade marks were only 2,079, which is (0.18% of 1,177, 221 CTM applications. Mr Botis distinguished three possible explanations:
- Insufficient promotion: It is very probable that CTM Applicant do not have sufficient knowledge of the benefits offered by the collective trade marks.
- Unclear legal framework: Too many overlaps with other IPRs
- Wrong filing strategy: In majority of cases, trade marks which are in essence collective are very often filed as individual.
The nature of the collective trade mark is particular given the fact that they have features in common with the traditional trade marks and on the other hand they have their own characteristics. The examination of CCTMs in terms of classification, formalities and Absolute Grounds is in principle the same as that of individual CTMs, with some exceptions foreseen in the regulations. The exceptions concern the formalities as the application must expressly mention the collective trade mark and the applicant must provide the Regulation of Use ; the entitlement as only Associations or Legal Person can be owners ; the use, as the members of the owner legal body may use it; and finally the function of the trade mark. As regards to the examination, Mr Botis pointed out the differences in examination of the collective and individual trade marks and namely:
- Descriptive indications consisting of geographical terms;
- Misleading Character as regards the function of the mark;
- Regulation of Use contrary to public policy and morality.
Further Mr Botis spoke about the regime of Certification Marks, which are not formally available under the CTM system, although this type of right is known in the jurisdiction of a number of MS. He explained that the main feature of a certification mark is that it is not used by the proprietor of the mark but instead by its authorized users for the purpose of guaranteeing to the relevant public that goods or services possess a particular characteristic. The proprietor’s mark merely certifies the presence of the characteristic. It does not indicate trade origin from the members of an association but merely distinguishes g&s, which are certified from those which are not. Further Mr Botis also made a complete comparison between applications for collective trade marks, fro individual trade marks, geographical indications and certifications trade marks.
The second part of the workshop was presented by Pr Jacques Larrieu (University of Toulouse, FR) and related to the protection the names of local communities. Seeking trade mark protection for the names of local communities became a popular trend and it requires the adapted regulation of the use of local communities’ names in the trade mark law.
Further Dr. Gail Evans from Queen Mary University of London focused on the increasing integration of the collective within the trade mark system.
In the same time ECTA Council Meeting took place. The debates mainly focused on the legislative package.
Thursday, 20 June 2013
The second day of the conference was fully dedicated to all IP practitioners. The session “Nine "Must-Knows" for the EU Trade Mark Practitioner” was moderated by Ruta Olmane, ECTA 2nd Vice President.
New OHIM practices Update on latest changes / OHIM Manual, Dr. Andreas Renck, Chair of the ECTA OHIM Link Committee, Attorney at Law, Hogan Lovells, ES
The session started with Andreas Renck, Chair of the ECTA OHIM Link Committee, who focused on the new practices at OHIM. He divided his presentation in two parts. The first part was dedicated to the developments regarding the absolute grounds and the changes in OHIM’s examination practice on geographical Indications (GI), deceptiveness and acquired distinctiveness. Andreas Renck pointed out that certain parts of the Manual on Articles 7(1)(j) and 7(1)(k) CTMR were updated by Knowledge Circles in December 2012. In addition the revision of wider part of the Manual has been undertaken by the Knowledge Circles.
Regarding the GI examination practice Art. 7(1)(j) and 7(1)(k) CTMR apply where:
- CTM application and the PGI/PDO cover identical goods,
- CTM application covers comparable products to those of the PGI/PDO
In other words, the practice concerns now even comparable goods. Furthermore, the novelty is also that Art. 7(1)(j) and 7(1)(k) CTMR apply where the CTM application contains or consists of a term or a sign which is evocative of the PGI/PDO. No actual confusion or liability to mislead the public is necessary.
As regards to the deceptiveness practice (Art. 7 (1) (g) CTMR), the new practice of the OHIM on Article 7(1)(g) was also revised by Knowledge Circle and has entered into force on 1 July 2012. The new practice is that the objection will be raised when the list of goods/services contains goods/services for which it is impossible to envisage a non - deceptive use of the CTM. On the other hand, no objection is raised when the list of goods/services is worded in such a broad way that a non - deceptive use is possible.
Regarding the acquired distinctiveness, it was pointed out in the recent Chocolate rabbit case that it is unreasonable to require proof of acquired distinctiveness for each individual Member State. There are some opinions that this decision may pave the way for less strict approach. The new practice is based on the notion of “well-known fact”. Contrary to the old practice based on the extensive proof, the new practice allows that the reputation of an earlier mark may be a well - known fact which can be found by the BoA ex officio. Andreas Renck also pointed out that there have been some procedural changes in respect of opposition proceedings.
OHIM Convergence Projects re designs Harmonization of national practices, António Andrade, Chair of the ECTA Design Committee, Attorney at Law, Vieira de Almeida & Associados, PT
The next speaker António Andrade (Chair of ECTA Designs Committee, PT) focused on the OHIM Convergence Programs on Designs. Contrary to the title of the session “Strike the iron when is hot”, António in the context of Designs it is often worth to strike the iron when it is not hot. As he explained, the efforts to achieve convergence in the way offices around the world operate have led to only modest results. Within the EU, there is still a long way to go in order to iron out the discrepancies among the 27 offices. There are still unnecessary differences of practices that need to be addressed in order to strengthen the trade mark and design protection in Europe. While the harmonization in the trade mark field has been very intensive in the last years, the efforts regarding the designs have also to be pointed out. The existence of two titles and namely RCD (direct registered Community design filings at OHIM) and International (Hague Agreement - IR) filings where only the OHIM is designated in the IR, confirm it. There are no differences in the legal effect of a RCD obtained directly as opposed to an international registration designating OHIM. The comparison really concerns speed, ease of use and costs, with a few issues concerning the application as a basis for protection outside the UE. The 2012 was the year of great success for Cooperation Fund and Convergence Programme and provided concrete results – a tribute to the dedication of the teams at national and Benelux offices, EPO, WIPO, user associations and OHIM. For 2013 the core objectives are:
- The Design View: continuing the efforts to improve;
- Postponing of a filing date if the representations need to be amended to exclude background material, etc;
- Need of Convergence of practice on design representations – a convergence project on this and other design law issues can be expected at the beginning of 2014;
- Integration of IPOs databases;
- Alignment of practices with IPOs;
- Alignment with WIPO/Hague System.
Social platforms Data protection and IP rights on social platforms, Katja Grabienski, Chair of the ECTA Publications Committee, Attorney at Law, JONAS Rechtsanwaltsgesellschaft mbH, DE and Dr. Peter Schramm, Member of the ECTA Design Committee, Attorney at Law, Meyerlustenberger Lachenal, CH
The concept of bad faith Focus on re-filing trade marks, Benjamin Fontaine, Chair of the ECTA Geographical Indications Committee, Trademark Attorney, E.G.Y.P. SAS, ES
Benjamin Fontaine, Chair of ECTA Geographical Indications Committee, focused on the notion of bad faith in the context of refiling. As he reminded, the concept of bad faith: a subjective motivation (dishonest intention or other “sinister motive”, which can be established by reference to objective criteria) . In practice applicants are therefore free to adopt whatever specification they wish. The General Court is not that straightforward. It considers legitimate to cover the goods already marketed; cover the goods expected to be marketed in the future; cover goods which the applicant markets under a different brand. On the other hand, OHIM took very clear position in the Manual in the context of refiling: “Where the proprietor of a CTM makes repeated applications for the same mark with the effect of avoiding the consequences of revocation for non-use of earlier CTMs, whether in whole or in part, the proprietor is acting in bad faith”. In practice, though, overcoming a claim of bad faith refiling is quite easy, if one takes a look at the existing precedents.
Several methods, alone or combined, must be pointed out:
- Alteration of the sign: T- 136/11, PELIKAN;
- Update / modernization of the specification of goods: C- 5817, DirecTV;
- Refiling combining the old specification + additional goods and services, for reasons of better management of a trade mark portfolio: the OHIM considers that, by doing so, the trade mark owner avoids having to renew its old trade mark;
- Global policy of multiple applications in various jurisdictions , including registries in which there is no issue of refiling;
How OHIM and the General Court (GC) handle the question? In C- 5499 Pelikan and C- 5817, DirecTV, the OHIM disregarded the existence of on-going litigation between the parties at the date of filing the litigious CTM.
In T-136/11, Pelikan, the GC disregarded the fact that the litigious CTM was applied for three months before the expiry of the grace period for non-use.
What about the reform of the European Trade Mark system? The proposal extends the opposition proceedings to bad faith cases, but not applicable to refiling. In addition, the relevant date for the determination of the obligation of use is to become the filing date of the opposed European mark (current system refers to the date of publication).
1000+ new gTLDs Clearinghouse and Dispute Resolution, Dr. Luca Barbero, Member of the ECTA Internet Committee, Trademark Attorney, Studio Barbero, IT
Mr Barbero explained that ICANN, has liberalised in 2011 the current gTLD namespace of 22 Generic Top Level Domain names and about 270 country codes TLDs, allowing any organisation to apply for their own gTLD registry. 1930 applications were received (81 have since then have been withdrawn), of which 1409 unique strings, 230 with multiple applicants and 116 Internationalized Domain Names. In view of the launch of such a considerable number of new gTLDs, start-up and post - launch right protection mechanisms (“RPMs”) will be provided to support trade mark owners in the protection of their IP rights. It means that during the initial phases for registration in the new TLDs, every Registry of a new gTLD shall provide two services, namely the Sunrise period and the Trade Mark Claims service. Both the services will be supported by the Trade Mark Clearinghouse, that will authenticate and validate the trademarks recorded in the Clearinghouse and will serve as a verified database to provide information to the new gTLD Registries to support all the pre-launch rights protection measures. After the Registries go live, two new trademark right dispute resolution procedures will allow trade mark holders to challenge infringement of trade mark rights. Mr Barbero concluded that in the light of these developments, the trade mark holders shall therefore adopt an enhanced strategy to protect their IP rights on line, both availing of the above new right protection mechanisms and of possible selective defensive registrations during Sunrise phases in the new TLDs of interest.
Harmonization in other parts of the world IP Associations / Governments / Offices, Mònica Wolf de Camhi, Attorney at Law, Wolf Mendez Abogados Asociados, CO
It was a perfect occasion for ECTA Members to find out how the harmonization question is handled in Latin America. Mrs Wolf de Camhi expressed her admiration for Europe, where the harmonization has been achieved at such advanced level within 27 different countries, operating different languages. Still it is very difficult in Latin America, even though there is no language barrier.
On the Intellectual Property level the Common Regime on Industrial Property is contained in Decision 486 of the Commission of the Andean Community (in force since December 1st 2000). It contains substantive aspects which were required by the TRIPS Agreement (such as Treatment of Nationals, Treatment of the Most Favored Nation) and specifically, regulates all aspects regarding registration and protection of patents, utility models, layout design for integrated circuits, industrial designs, trademarks, trade- names and geographical indications. It contains also regulations regarding border measures, criminal measures, preventive injunction measures and unfair competition related to industrial property. It is important to clarify that this Decision 486 is a common regime, but it does not mean that the Andean Community has reached to a point of a community trade mark such as the EU.
The Decision contains general rules and aspects which are applicable in Industrial Property procedures in all Member Countries, but it does not replace their internal regulation. Mrs Wolf explained that there are some aspects that can be interpreted as attempts for harmonization, namely:
- Priority: Applications filed on Member Countries are accepted for claiming Paris Convention priority.
- Cancellation for non-use: A registration may be cancelled at the request of an interested party, when without a justified reason, the trade mark has not been used in at least one of the member countries, by its proprietor, by a licensee or by any other person authorized for such purposes during the three consecutive years prior to the date in which the cancellation is filed. Use in one member country is enough to stop non-use cancellation action in any of the other members.
- Andean opposition: A pending application in one of the member countries can be opposed by a previous application or registration valid in another member country. It is mandatory that the opponent credits its real interest in the market of the Member Country in which the opposition is filed, by filing an application for registration of the trademark basis of the opposition, at the time of filing such.
Practically all other procedural matters are regulated by internal laws and provisions, which shows that the harmonized trade mark law is not something that will be easily achieved in Latin America.
Mediation The Power of Negotiation, Reaching Consensus, Ignacio de Castro, Deputy Director, Arbitration and Mediation Center, WIPO, CH and Katherine M. Basile, Member of ECTA Law Committee, Partner, Novak Druce Connolly Bove + Quigg LLP, US
In the first part of the presentation, Ignacio de Castro (Deputy Director of the WIPO Arbitration and Mediation Center) presented the WIPO Arbitration and Mediation Center (WIPO Center) based in Geneva, Switzerland and in Singapore. The WIPO Center was established in 1994 as a neutral, international and non- profit dispute resolution provider specialized in IP, technology and entertainment that offers alternative dispute resolution (ADR) options to enable private parties to efficiently settle their domestic or cross-border disputes. The Center offers Mediation, Arbitration, Expedited Arbitration and Expert Determination. WIPO Mediation, (Expedited) Arbitration and Expert Determination Rules are generally suitable for all commercial disputes, and additionally feature provisions to address specific needs in IP disputes, namely provisions on confidentiality and technical evidence. Parties can draw upon a database of over 1,500 independent WIPO arbitrators, mediators and experts. The Center deals with cases involving a wide range of issues, such as trade mark, co-existence agreements, trade mark oppositions and invalidations before Intellectual Property Offices, patent infringements and many others. The WIPO Center designed the International Survey on Dispute Resolution in Technology Transactions (Survey) to assess the current use in technology related disputes of ADR methods as compared to court litigation, including a qualitative evaluation of these dispute resolution options. The Survey was developed with the support of a number of associations in the area of IP, including the International Association for the Protection of Intellectual Property (AIPPI), the Association of UniversityTechnology Managers (AUTM), the Fédération Internationale des Conseils en Propriété Industrielle (FICPI) and the Licensing Executives Society International (LESI); and the help of the WIPO Economics and Statistics Division.
Mr de Castro also highlighted the fact that the WIPO Center provides, at the request of Intellectual Property Offices (IPOs), dispute resolution advice and case administration services to offer parties a more flexible option to resolve pending disputes related to IP rights before IPOs. In the second half of the presentation, Katy Basile focused on the role of the mediator. The role of the mediator is to assist the parties in resolving their dispute by agreement. Thus mediation empowers the parties to fully explore solutions that best address the needs of their situation. The parties than can achieve a satisfactory resolution of their dispute, avoiding the uncertain outcome of litigation and at a fraction of the cost of litigation. Therefore the choice of the mediators is a crucial decision. Generally, mediators tend to be grouped into one of three different practice styles: facilitative, evaluative, or transformative. Once mediation has been agreed upon, the parties in selecting a mediator should consider which mediation style likely will be best suited for the needs of parties and the situation to be resolved.
It is necessary to prepare the mediation:
- Determine your interests and those of the other party;
- Determine your goals in the mediation;
- Understanding the other party’s goals.
At the mediation, it is crucial to state the case reasonably and use creativity in developing the best “evidence” to explain the case to the mediator. The mediation essentially is a structured negotiation. To achieve a good outcome in the mediation, engage in interest- based negotiations to seek a workable solution to a shared problem. Katy Basile concluded that the key to most mediation is establishing effective communication and building relationships and trust.
Plain Packaging - quo vadis?, Moderator: Dr. Max Oker-Blom, ECTA Secretary General, Adjunct Professor, Hanken School of Economics, FI
Another important session was dedicated to the hot topic of last months - plain packaging. Dr Max Oker-Blom, Moderator, gathered together the comments from the Consumer perspective and the Industry perspective. The debate has been extremely vivid in last months in the context of the Commission’s proposal for the Tobacco Directive.
Dr Enrico Bonadio pointed out the measures proposed by the Commission. Contrary to Australia, plain packaging has not been recommended but minimum size (75%) of pack warnings. In addition, the Commission recommends measures such as ban on slim cigarettes and ban on menthols and other tobacco products with characterizing flavours.
In general, plain packaging is likely to interfere with the two main functions of trade marks, namely indication of trade origin, enabling consumers to make educated purchase choices and create confusion amongst consumers and sellers.
Further, Mr Bonadio focused on 3 points:
- IPR- Positive or negative right: Mr Bonadio explained that currently IPRs offer only negative right, in other words the right to prevent others from exploiting the asset provided by IPR. However, as pointed out by Max Oker-Blom, ECTA Secretary General, certain opinions claim that the perception of IPRs as exclusively negative rights is out of date and the right to use the trade mark should be expressly recognised.
- Plain packaging and the right of property;
- Plain packaging and the respect of international treaties (TRIPs, WTO).
Mr Bonadio concluded that the plain packaging may very soon touch other types of products, such as alcohol, food and cosmetics.
John Noble (British Brands Group, UK) explained that differentiation is oxygen for brands. Especially for the consumers, the diversity brings real benefits such as choice, diversity, better solutions and, for some, a means of self- expression. It can broaden competition, on quality, innovation and reputation as well as price, and increase e the scope for innovation, yielding better ways of living and working. On the other hand packaging is important as it may influence our consumers’ behaviours. The proposals to limit significantly the ability to differentiate tobacco products seek to shift an entire consumer category from the differentiated to the similar, from the branded to the commodity, on the premise that differentiation may have negative effects. It is unquestionably a significant regulatory intervention. Plain packaging raises important questions on the effect of packaging and branding on product consumption. Mr Noble stated that it may be argued that tobacco products are so undesirable that any policy that might conceivably reduce consumption is worth trying, whether or not there is evidence of its efficacy. An intervention that undermines branding so fundamentally however may well have significant unforeseen consequences, delivering results opposite to those intended. In other words, this measure, supposed to protect the consumer, may have in fact adverse effect.
The second part of the day was dedicated to the most important recent court decision in the field of trade marks. The participants had the opportunity to get more information on the case law and in particular what consequences these decisions will have their daily practice. Amongst the speakers there were representatives of OHIM and German Federal Patent Court.
The evening reception took place in the Willbrook Center, where the participants had the chance to admire the exhibition dedicated to the Romanian aviation and see the performance of the traditional Romanian dance.
Friday, 21 June 2013
The last of the conference was dedicated to the current legislative reform of the European Trade Mark system and the new Customs Regulation, adopted in the beginning of June.
Revision of the European trade mark system, Background, overview and outlook of the initiatives package Tomás Eichenberg, Principal Administrator, Directorate General Internal Market and Services, Unit D2 Industrial Property, European Commission, BE
The first speaker Tomás Eichenberg (Principal Administrator, Directorate General Internal Market and Services, Unit D2 Industrial Property, European Commission, BE) presented the main lines of the Commission’s proposal published on 27 March 2013. As he pointed out, the main objectives of the reform are to foster innovation and economic growth by making trade mark systems all over Europe more accessible and to ensure and develop complementarity and inter-operability between Union and national systems. As pointed out by Mr Eichenberg this proposal the Commission intends to modernize and increase the legal certainty namely through:
- Definition of a trade mark (Art 3 TMD/4 CTMR) – graphical representation replaced by more flexible criteria
- Rights conferred by a trade mark (Art 10, 11 TMD/9, 9a TMD), in particular more effective protection to fight counterfeiting (goods in transit)
- Intervening rights (Art 8, 18 TMD/Art 13a , 53(1) CTMR) → proof of use/5 years preceding date of filing/date of priority (Art 46(1), 48(2) TMD/42(2), 57(2) CTMR)
The Commission also included the protection of Geographical Indications (Art 7(1)(j) CTMR) and introduced a novelty – a set of rules related to European Certification Marks (Art 74b – 74k CTMR). The Commission’s objective is also to achieve a greater approximation of substantive law, through for instance:
- Protection of geographical indications (Art 4(1)(i), 5(3)(d) TMD) ;
- Protection of trade marks with reputation (Art 5(3)(a) TMD);
- Trade marks as objects of property (transfer, licencing, rights in rem, levy of execution and insolvency, Art 22 – 27 TMD);
- Collective marks (Art 30 – 37 TMD).
The Commission considers that a better harmonization of procedural proceedings is also another objective to be achieved. Mr Eichenberg presented then few examples, such as:
- Designation and classification of goods and services, including use and interpretation of class headings (Art 40 TMD/28 CTMR)
- Ex officio examination – limited to absolute grounds for refusal (Art 41 TMD)
- Fees – "one-class-per-fee" system, allowing more targeted registration per product class for a proportionate fee (Art 44 TMD) → Draft COM Reg. on fees
- Mandatory administrative opposition procedure, incl. non-use defense (Art 45, 46 TMD)
- Mandatory administrative cancellation procedure, incl. non-use defense (Art 47, 48 TMD). With the legislative proposal, the Commission hopes to provide a framework for cooperation to promote convergence of practices and common tools. The Commission proposes to adopt a mandatory cooperation to promote convergence of practices and tools, coordinated by the Office, now proposed to be called “Agency” (OHIM). He also explained the introduction of what is called “delegated acts”, such as:
- Alignment of the "comitology" powers conferred upon the Commission to Article 290 of the Treaty
- Currently three implementing Regulations on: (i) procedures in general, (ii) fees, and (iii) functioning of Board of Appeals
- New Articles: 24a, 35a, 45a, 49a, 57a, 65a, 74a, 74k, 93a, 114a, 144a and 161a CTMR.
He concluded that currently the text is discussed at the EU Parliament and the EU Council and that both institutions are willing to finalize the trade mark dossier before the European elections in May 2014.
The next speaker Petre Ohan (Director of the Department Appeals, Strategy and Marketing Romanian Patent and Trademark Office, RO) focused on the national perspectives and what would be the potential ffects of the proposed amendments to the TM Directive on national Law. Mr Ohan pointed out the major changes proposed in the new draft directive and namely:
- Change of the trade mark definition to adapt it to the practices and technological possibilities of representation of the distinctive signs;
- Considering the descriptive (or misleading) in all official EU languages;
- Relative grounds for refusal completing by three new cases on bad faith (Art. 5(3)): trade mark applied for by agents or representatives without consent of the right owner;
- Registration of trade marks (registered) and used outside the Union in order to block the entry of the mark in the common market, and
- Marks contrary to Union legislation on the protection of designations of origin and geographical indications;
- New rules for the identification and classification of goods and services;
- Administrative post – registration opposition;
- Administrative revocation and cancellation (invalidation).
Mr Ohan concluded that the new draft Directive will force the national offices to apply the same criteria, very restrictive (to national TMs) as OHIM (to European TMs). Thus the difference between the TMs registration conditions at NIPOs and OHIM will most probably disappear.
Ms Beate Schmidt (President, Federal Patent Court and former Director at OHIM, DE) also pointed out the most important points of the reform and namely Art 3, definition of a trade mark, Art 4 para 2 and 3, absolute grounds for refusal or invalidity, Art 16 and use of the trade mark, Art 40 –classification, Art 41, 45 Opposition Proceedings and Art 47, procedure for revocation or declaration of invalidity.
The next part of the presentations focused on the matter of the genuine use. The session “Genuine use in the EU: What the ONEL case tells us: What and how is it going to change the rules of the game?’” was moderated by Carolin Kind (Chair of the ECTA Harmonization Committee, Attorney at Law, Greyhills Rechtsanwälte, DE). The main goal of the session was to discuss how the Onel case affected big companies and SMEs.
Myrtha Hurtado Rivas (Member of the ECTA Law Committee, Global Head Trademarks, Domain Names & Copyright, Novartis, CH) stated that when considering the consequences of the ONEL case with respect to the strategy pursued by large global companies regarding opposition and cancellation actions, are not very significant. It can be assumed that when filing oppositions large global companies will ascertain the use of their mark and eventually the reasons for not having used the mark for the relevant period of time. In the latter case the company will evaluate the risks associated to an opposition filed under the specific circumstances. This decision will not change this process.
Myrtha Hurtado Rivas pointed out that if a large global company requests proof of use as a defense strategy during opposition proceedings this decision will not alter the strategy either. It may want to investigate further the use of the prior mark in order to ascertain its chances more accurately and would need to take into account that use in a single Member State might be sufficient to prove genuine use. But at this stage it appears to be difficult to think of an area of the industry where an industrial product of a large global company could “face” a product commercialized only in one Member State and being able to maintain and create market share under specific circumstances.
In the case of large global companies in the situation where a cancellation action is brought against a third party on the ground of non-use, depending on the use found on the pertinent national territory of the opposing mark, it might be necessary to look further around the EU for more use. Again this should not represent a major change as use investigations are usually part of the assessment of chances regarding such an action. The same applies in the case that a cancellation action is filed against a CTM owned by a large global company, use would need to be considered according to the criteria mentioned above, which would mean that the territorial aspect if just one factor out of many.
Prof. Dr. Alexandra von Bismarck (Member of the ECTA Harmonization Committee, Partner, Head of Trade marks Germany, Field Fisher Waterhouse, Hamburg, and Professor of Law at GGS German Graduate School of Management and Law (Heilbronn), DE) focused on the SMEs.
As she stated “by abolishing the criteria of territorial borders and not providing any guidelines for the assessment of genuine use the main advantages of CTMs, reduced costs due to the unitary nature of the Community trade mark, are contradicted by the ONEL-decision.
Thus, from a dogmatic legal standpoint the ONEL-decision the distinction between Community and domestic trade marks by abolishing territorial boundaries as the sole criteria to determine genuine is a convincing, yet impractical ruling” .
Small and medium-sized enterprises are considered to be the backbone of the economy of the Federal Republic of Germany and are one of the main reasons for the minor impact of the financial crisis in Germany.
However, small and medium-sized enterprises often lack the financial and human resources to fulfill the requirements for genuine use established by the ECJ. Instead of relying on the use in one member state as recommended in the joint statement, these businesses must assess the essential function of a trademark as well as the respective market share in advance. Since the relevant product market of small and medium-sized enterprises often does not extend beyond national borders they are particularly affected by new requirements with regard to genuine use established by the ECJ in the ONEL-decision.
Therefore, small and medium-sized enterprises are likely to abandon the Community trade mark and turn their attention to domestic trade marks, if no further guidelines with regard to the definition of genuine use are provided.
The session “Enforcement of CTMs and national TMs in the EU” moderated by Olivier Vrins, (ECTA Council Member, Member of the ECTA Anti-Counterfeiting Committee and of the Enforcement working group of the European Observatory on Infringements of Intellectual Property Rights, Attorney at Law, Altius, BE)
Marius Schneider focused on the review of the 3 important texts:
- Enforcement Directive 2004/48/EC
- Regulation 5129/2013/EC on Customs Enforcement
- Legislative package: review of the Trade Mark Harmonisation Directive 2008/95/EC and the Community Trade Mark Regulation 207/2009
Regarding the Enforcement matters, the Commission is currently working internally on the document summarizing the responses to the public consultation on the efficiency of proceedings and accessibility of measures. In the beginning of 2014 the Commission will highlight of specific points and future action points. The new Enforcement Directive will enter into force on 1 January 2014. Marius presented the most important changes, which will be applicable from this day to the customs authorities as well as to the right holders.
As regards to the legislative package, the Commission’s proposal deals with the questions of goods in transit and small consignments.
The next speakers Gerhard Bauer (IP-Consultant, DE) and Geraldina Mattsson (European IP Counsel, Honda Motor Europe Limited, UK) focused on the cross border aspects. They advised to determine the types of information necessary for Customs to effectively seize goods at borders (trade marks, images of genuine products, images of counterfeit products previously seized, brief explanation of some distinctive features of the product and/or its packaging) and avoid providing any sensitive information, particular to those Customs Administrations that you are unfamiliar with. It is also fundamental to determine the amount of information to provide to the Customs Authorities.
F. Peter Mueller, ECTA 1st Vice-President, made the final conclusions of the Conference, thanked the speakers for excellent presentations and invited all participants to fill the satisfaction survey.
The evening event took place in a very particular place- the Palais of Justice, currently the seat of the Court of Appeal, specially prepared for ECTA event.
The Friday Gala Dinner was also a special occasion, as for the 1st time ECTA Awards were officially presented. ECTA President Domenico de Simone together with Sozos Theodoulou, Chair of ECTA Professional affairs Committee and Ruta Olmane, ECTA 2nd Vice-President, presented the winners in the student and professional categories and delivered them the Awards, specially designed for ECTA.