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The TMA Committee has kicked-off the year 2016 with a fantastic event. On Thursday, 28 January 2016, a mini-seminar was organized by the International Trademark Association (INTA) and the German Patent and Trademark Office (DPMA) in Munich, Germany. The seminar was specially developed for Trademark Administrators (TMAs) and Paralegals in Germany.
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The four-hour event with the title “Make Yourselves Invaluable to Your Firm and Company”, with over 90 attendees was, thanks to the organizing committee, speakers and sponsors, an overwhelming success.
The topics included:
- Promoting INTA and the work of the German TMA Committee;
- An update from the German Patent and Trademark Office (DPMA);
- The role and challenges of a paralegal working outside your country at another office and how to use this to enhance your career;
- The challenges and views on running a trademark portfolio in-house;
- What you need to know about preliminary injunction proceedings (PI´s) in trademark cases in Germany.
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The fee system at the European Union Intellectual Property Office (EUIPO) will change from the fee system applied by OHIM - the "old" name of the office until 23 March 2016. The system will change from a basic fee that covers up to three classes of goods and services to a ‘pay-per-class' system.
In the area of fees, the Amending Regulation introduces the following changes:
Pay for what you need
- a new one-fee-per-class system for application and renewal fees;
- an overall decrease in fees payable to the Office;
- the incorporation of the provisions of the CTM Fees Regulation into the basic regulation.
The Community trade mark included protection for three classes, costing €900 for an electronic application and €1 050 for a paper application. The Amending Regulation sees the Office move to a one-class-per-fee system. This means that in practice applicants will pay a lower fee if they only apply for one class, the same fee if they apply for two, and a higher fee if they apply for three or more. Renewal fees are substantially reduced in all instances and set to the same level as application fees, and there are also reductions in opposition, cancellation and appeal fees.
Application fees (e-filing)| CTM (old system) | Fee | EUTM (new system) | Fee |
|---|---|---|---|
| First class | €900 covers up to three classes | First class | €850 |
| Second class | Second class | €50 | |
| Third class | Third class | €150 | |
| Fourth and all subsequent classes | €150 | Fourth and all subsequent classes | €150 |
| CTM (old system) | Fee | EUTM (new system) | Fee |
|---|---|---|---|
| First class | €1 350 covers up to three classes | First class | €850 |
| Second class | Second class | €50 | |
| Third class | Third class | €150 | |
| Fourth and all subsequent classes | €400 | Fourth and all subsequent classes | €150 |
European Union certification marks will be introduced in 21 months' time. These will allow 'a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods and services complying with the certification requirements' (Article 74b EUTMR). The registration cost for an EU certification mark will be the same as for an EU collective mark, i.e. €1 800 (€1 500 e-filing); €50 for a second class; €150 for a third (and all subsequent) classes.
This information has been taken from the office's website: https://oami.europa.eu/ohimportal/en/eu-trade-mark-regulation-feesPost Date:
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The EU trademark reform package was approved by the European Parliament on 15 December 2015. The amendments are expected to come into force in March/April 2016. The reform package brings changes to the Community Trademark Regulations (Council Regulation (EC) No 207/2009) and adopts a new Directive to approximate the laws of the Member States relating to trademarks. The reform is extensive; the new Directive consists of 57 articles whereas the old Directive only had 19 articles. Major changes are also made to the regulation: for example, the structure of the fees payable will be significantly changed.
The aim of the reform is to foster innovation and economic growth as well as to ensure coexistence and harmonization between trademark systems. The changes are intended to make trademark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security.
We have listed some of the main features of the changes to the regulation and the new directive. The list is not exhaustive – and this is just a very short overview.
- Name changes
- Use of class headings
- Anti-counterfeiting provisions
- Fee structure
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The reform of the EU trademark system has been ongoing since 2008 and is finally ready for publication. The updated rules aim for a more efficient and cost effective trademark registration process. The dual system of national and EU trademarks covering all 28 member states is retained, whilst national and EU trademark registration procedures are streamlined and further harmonized.
The trademark reform package includes amendments to Council Regulation (EC) No 207/2009 on the Community trademark and the adoption of a new Directive to approximate the laws of the Member States relating to trademarks. European Parliament adopted the new laws without any amendments to the Council’s position in first reading.
One of the significant changes to the Community Trademark Regulation is the new fee structure for EU trademark registration, which is supposed to make trademark protection on average cheaper, especially for SMEs. Another important aspect of the changes is providing better means to fight against counterfeit goods in transit through EU territory.
The Regulation will enter into force 90 days after its publication. The new Directive will still have to be implemented by the member states. The implementation needs to be done within three years after the entry into force of the Directive, except for the implementation of the administrative invalidation and revocation procedures. For this the member states will have 7 years.
For more information about the trademark reform package, please see the European Parliament Press release.
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The General Court (EGC) held that as the marks were phonetically identical and visually and conceptually similar they should be regarded as similar overall. Followed from this it was held that the mark at issue could be perceived by the relevant public as originating from the same undertaking or undertakings economically linked to the earlier word mark. The EGC upheld the invalidity action and found that there was likelihood of confusion (Judgment dated 15 October 2015; Case T‑642/13).
Background of the case and subject matter
On 10 October 2005 the applicant, Wolverine International LP, obtained an international registration designating the European Community for the figurative mark ‘cushe’ (No. 859087):
[[{"type":"media","fid":"4574","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2432 alignnone","typeof":"foaf:Image","style":"","width":"150","height":"56"}}]]The mark was registered in Class 25 of the Nice Agreement for the goods ‘clothing, footwear and headgear’. On 20 September 2010 BH Store BV filed a request for a declaration of invalidity against the mark based on the following earlier trademarks:
- the word mark SHE, registered on 8 November 2000 in Germany (No. 39975501) for the goods in Class 25: ‘clothing, footwear and headgear’;
- the figurative mark ‘SHE’, registered on 25 April 2000 in Germany (No. 30018423) for goods included in Classes 3, 9, 16, 18 and 25 and reproduced below:
- the figurative mark ‘SHE’, registered on 15 January 2000 in Germany (No. 39726287) for goods in Classes 3 and 25, identical to the mark reproduced above.
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The General Court (EGC) dismissed HP’s appeals in both cases and confirmed that the Community Trademarks (CTM) ELITEDISPLAY and ELITEPAD are descriptive for the goods in respect of which registrations were sought (Judgments dated 22 October 2015; Cases T-470/14 and T‑563/14).
Background of the Cases and Subject Matter
On 5 November 2012 Hewlett Packard Development Company LP (HP) filed a CTM application for the word mark ELITEPAD (No: 011318284) with the Office for Harmonization in the Internal Market (OHIM) and on 4 February 2013 HP filed a CTM application for the word mark ELITEDISPLAY (No: 011541901). Both applications were sought in Class 9 of the Nice Agreement Classification. The description of goods for ELITEPAD consisted of “computers; personal computers; laptop computers; notebook computers; tablet computers; computer hardware and computer peripherals”, whereas, the description of goods for ELITEDISPLAY consisted of “computer monitors and computer displays”.
Both applications were rejected by the examiner in respect of all the goods concerned on the ground that the marks applied for were descriptive and devoid of any distinctive character. The applicant appealed to the OHIM Board of Appeal (BoA).
The BoA dismissed the appeal as it found that the sign ELITEDISPLAY consisted of two conjoined word elements, ‘elite’ and ‘display’, and therefore it would be understood as referring to a computer screen or similar piece of equipment that shows information, selected as the best. It found that the two elements were individually descriptive, and the mark consisting of two descriptive elements, was itself descriptive. The appeal for the application ELITEPAD was also dismissed on similar grounds as the BoA found that the sign would be understood by the relevant public as referring to computers or computer hardware containing a panel which is responsive to pressure or touch and which is exclusive or has exclusive and special characteristics or which is of excellent quality.
Decision of the Court
The EGC dismissed HP’s appeals in both cases.
Firstly, the ECG stressed that the descriptiveness of a sign may only be assessed in relation to the relevant public’s perception of it and in relation to the goods or services concerned. The Court held that as it is usual in English to create words by coupling together two words, the combination of ‘elite’ and ‘display’ would not result in a specific meaning different from that conveyed by the two components.
In both decisions the EGC held that the word ‘elite’ is used in English to describe not only persons, but also objects. In addition, the word ‘elite’ refers to the notion of exclusivity. Therefore, the signs ELITEDISPLAY and ELITEPAD present a sufficiently close link with the goods designated by the mark applied for, for the signs to fall within the scope of the prohibition laid down in Article 7(1)(c) of Regulation No 207/2009.
The issue of previous decisions of OHIM accepting registration of marks containing the word ‘elite’ is also examined in both judgements. The EGC states that decisions already made in respect of similar applications should be taken account of. It should also be considered with special care whether they should be followed or not. However, in the present cases the applicant cannot successfully rely on OHIM’s previous decisions as the Board of Appeal has duly given its reasons for not following the previous decisional practice.
The EGC holds that the signs ELITEDISPLAY and ELITEPAD were descriptive of the goods in respect of which registration was sought and that they could not, as a result, be registered as Community Trademarks.
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[[{"type":"media","fid":"4573","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2409 alignright","typeof":"foaf:Image","style":"","width":"267","height":"61"}}]]The World Customs Organization (WCO) was established in 1952 as the
Customs Co-operation Council (CCC). It is an independent intergovernmental body with a mission to enhance the effectiveness and efficiency of customs administrations. It is the only international organization with competence in customs matters.
In 2011 the WCO made available The Interface Public-Members (IPM) platform, which is a unique tool allowing customs officers to verify the authenticity of products and rights holders to share relevant product information online. The platform started out as a genuine and fake database, featuring pictures and basic descriptions of products. After many improvements, the platform has now been developed to a system offering additional options, including the ability to send alerts to customs officers, an e-learning feature and a mobile application.
In September 2015, the web and mobile versions of the redesigned new platform was made available to WCO Members. The changes in the platform were based primarily on feedback collected from all stakeholders. The updated platform includes new functionalities and offers users, for example, the ability to search a product simply by scanning the barcode and, when available, verifying a product using security features.
For more information about the IPM please click the link below:
http://www.wcoipm.org/