ECTA Amicus Curiae Task Force Reports: The Nightwatch Case Finally Decided by the EUIPO BoA
On 14 October 2024, the EUIPO Grand Board of Appeals issued its decision in the Nightwatch case, for which our dedicated ECTA Amicus Curiae Task Force prepared and filed a brief in June 2024.
In essence the Grand Board, following a request by the EUIPO Executive Director, had to decide whether EUIPO’s current practice on conversion is legally correct. The Grand Board, after reviewing the case law and the Amicus Curiae briefs filed by ECTA and by other associations, decided it is not.
The Grand Board held that «there is no legal basis for requiring the EUTM applicant to file an appeal against the refusal decision (or any subsequent dismissal of the appeal) before submitting the conversion request» (at §134). Therefore, in the Grand Board view, conversion cannot be excluded on the basis of a decision refusing the EUTM application in ex parte or inter partes proceedings where the application is subsequently withdrawn before the refusal could take effect. Furthermore, where conversion is requested subsequent to a withdrawal of the EUTM application (Article 139(5) EUTMR), article 139(2)(b) EUTMR - which prevents conversion - does not apply.
Therefore, EUIPO current practice embodied in the EUIPO Guidelines at Part E, Register Operations, Section 2 Conversion, Paragraph 4 will have to be amended.
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We wish to extend our gratitude to the ECTA Amicus Curiae Task Force for their dedicated efforts in compiling the recommendations for the Grand Board and for reaching this significant milestone in the history of our association.
In essence the Grand Board, following a request by the EUIPO Executive Director, had to decide whether EUIPO’s current practice on conversion is legally correct. The Grand Board, after reviewing the case law and the Amicus Curiae briefs filed by ECTA and by other associations, decided it is not.
The Grand Board held that «there is no legal basis for requiring the EUTM applicant to file an appeal against the refusal decision (or any subsequent dismissal of the appeal) before submitting the conversion request» (at §134). Therefore, in the Grand Board view, conversion cannot be excluded on the basis of a decision refusing the EUTM application in ex parte or inter partes proceedings where the application is subsequently withdrawn before the refusal could take effect. Furthermore, where conversion is requested subsequent to a withdrawal of the EUTM application (Article 139(5) EUTMR), article 139(2)(b) EUTMR - which prevents conversion - does not apply.
Therefore, EUIPO current practice embodied in the EUIPO Guidelines at Part E, Register Operations, Section 2 Conversion, Paragraph 4 will have to be amended.
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We wish to extend our gratitude to the ECTA Amicus Curiae Task Force for their dedicated efforts in compiling the recommendations for the Grand Board and for reaching this significant milestone in the history of our association.
Sven Stürmann Appointed as President of the EUIPO Boards of Appeal, Edyta Barbara Demby-Siwek as Deputy Executive Director of the EUIPO
We are pleased to inform ECTA members that Sven Stürmann, who previously served as Chairperson of the 2nd Board of Appeal, has been appointed President of the EUIPO Boards of Appeal. Additionally, Edyta Barbara Demby-Siwek, who previously served as President of the Polish Patent Office, has been appointed Deputy Executive Director of the EUIPO.
We extend our sincere congratulations to Mr. Stürmann and Ms. Demby-Siwek on their appointments and wish them great success in their new positions. Learn more in the official news here.
We extend our sincere congratulations to Mr. Stürmann and Ms. Demby-Siwek on their appointments and wish them great success in their new positions. Learn more in the official news here.
Upcoming EUIPO TMD Webinar Series - Including Webinar Organised With ECTA on 14 November
The EUIPO ECP7 TMD Implementation Training project has organised, in collaboration with National IPOs and User Associations, including ECTA, a series of live webinars which will cover topics related to the implementation of the Trade Mark Directive and national practice in each country.
The 2024 series of webinars will be broadcasted via Zoom Wednesdays and Thursdays, from 17 October to 14 December, and will be done in national language with simultaneous interpretation into English. Each presentation will take approximately 20 minutes plus 10 extra minutes for Q&A.
In particular, the webinar organised with ECTA will be on 14 November (10.00-11.00 CET). During this session, Riina Pärn (Pärn & Partners, Estonia), a long-standing ECTA member, will discuss recent changes in trade mark application procedures and opposition procedure in the Baltic Countries.
To find out more about the scheduled webinars and register for those you are interested in, please click here.
The 2024 series of webinars will be broadcasted via Zoom Wednesdays and Thursdays, from 17 October to 14 December, and will be done in national language with simultaneous interpretation into English. Each presentation will take approximately 20 minutes plus 10 extra minutes for Q&A.
In particular, the webinar organised with ECTA will be on 14 November (10.00-11.00 CET). During this session, Riina Pärn (Pärn & Partners, Estonia), a long-standing ECTA member, will discuss recent changes in trade mark application procedures and opposition procedure in the Baltic Countries.
To find out more about the scheduled webinars and register for those you are interested in, please click here.
Register for the ECTA Workshop in Seville ‘Make Up or Break Up? AI and IP: The Future of Our Profession’ (11 October 2024)
Register for the ECTA workshop ‘Make Up or Break Up? AI and IP: The Future of Our Profession’ in beautiful Seville (onsite only) on 11 October 2024 (16.00-18.00)!
With the rise of AI, significant changes are expected in how IP professionals operate. Join us to hear from experts how IP legal teams can successfully navigate this evolving ecosystem and understand the impact of AI in the IP world. More information on the programme will be shared in the coming weeks.
The participation fees are as follows:
• 30,00 € (excl. VAT) for members who are not registered for the ECTA Autumn Meeting;
• 50,00 € (excl. VAT) for non-members;
• Free of charge for officials, full-time students, full-time professors.
A certificate of attendance will be sent upon request after the event.
(If you are a Supervisory Board or Committee member registered for the ECTA Autumn Meeting, you do not need to register separately for the workshop as it is included in the event!)
With the rise of AI, significant changes are expected in how IP professionals operate. Join us to hear from experts how IP legal teams can successfully navigate this evolving ecosystem and understand the impact of AI in the IP world. More information on the programme will be shared in the coming weeks.
The participation fees are as follows:
• 30,00 € (excl. VAT) for members who are not registered for the ECTA Autumn Meeting;
• 50,00 € (excl. VAT) for non-members;
• Free of charge for officials, full-time students, full-time professors.
A certificate of attendance will be sent upon request after the event.
(If you are a Supervisory Board or Committee member registered for the ECTA Autumn Meeting, you do not need to register separately for the workshop as it is included in the event!)
Mandatory use of electronic Applications for Action (eAFAs) as of 3 October 2024
As per Commission Implementing Regulation (EU) 2024/2399, starting 3 October 2024, right holders and their representatives must submit electronic Applications for Action (eAFAs) to customs exclusively through the IP Enforcement Portal (IPEP) or national portals in Germany, Italy, and Spain.
These portals will be the sole platforms for filing and managing (amending, extending, or withdrawing) AFAs. Right holders who haven’t transitioned to these portals should do so promptly, as the acceptance of paper AFAs by Member States will soon end.
Legal representatives can access IPEP via a ‘legal representative’ account, linked to a rights holder's account. They can also manage multiple rights holder accounts (detailed instructions for legal representatives are available here).
To find out more, please read here.
These portals will be the sole platforms for filing and managing (amending, extending, or withdrawing) AFAs. Right holders who haven’t transitioned to these portals should do so promptly, as the acceptance of paper AFAs by Member States will soon end.
Legal representatives can access IPEP via a ‘legal representative’ account, linked to a rights holder's account. They can also manage multiple rights holder accounts (detailed instructions for legal representatives are available here).
To find out more, please read here.
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