ECTA Members’ Voice: The fight against counterfeit cannot be only legal. Technological solutions are essential to increase the effectiveness of anti-counterfeiting strategies - The Observatory publishes an Anti-Counterfeiting Technology Guide.
Sign up for the ECTA virtual Round Table - Influencers, super brands and celebs: just fame or a brand with a repute? - 11 February 2021
European Commission: Consultation on the revision of the EU GIs systems in agricultural products and foodstuffs, wines and spirit drinks
ECTA TAKES A STAND - POSITION PAPER ON THE CONCEPT OF “REPUTATION” IN GEOGRAPHICAL INDICATIONS BY ECTA GI COMMITTEE
ECTA Member’s Voice: Benelux IPO abolishes paper applications and changes Rules on evidence submission
COMMISSION PUBLISHED THE INCEPTION IMPACT ASSESSMENT ON GI PROTECTION AT EU LEVEL FOR NON-AGRI PRODUCTS
EUROPEAN COMMISSION (DG AGRI) AND EUIPO - DIGITAL CONFERENCE ‘STRENGTHENING GEOGRAPHICAL INDICATIONS’
ECTA MEMBERS’ VOICE: The Dark Knight rises above…again. WIPO reveals Batman was the most used Franchise Character in Movies and Games throughout the years.
ECTA MEMBERS’ VOICE: Do You Like “Anji Bai Cha”? EU-China Agreement on Geographical Indications is Signed!
EUIPO Observatory: Intellectual Property Infringement and Enforcement Tech Watch Discussion Paper 2020
ECTA MEMBERS’ VOICE - WIPO new free database of judicial decisions on intellectual property from around the world has been launched
EUROPEAN COMMISSION STUDY ON EVALUATION OF PRACTICES FOR COMBATING SPECULATIVE AND ABUSIVE .EU DOMAIN NAME REGISTRATIONS
EUROPEAN COMMISSION: NEW REPORTS DEMONSTRATING THE IMPACT OF MoU ON FIGHTING ONLINE COUNTERFEITING AND PIRACY
ECTA WEBINAR 'PARALLEL IMPORTS: HOW IMPORTANT IS A TRADE MARK? A LIMITLESS SEA? (PHARMA PERSPECTIVE)' - 11 JUNE 2020!
INFORMATION EXCHANGE ON COVID-19 PROTECTION PRODUCTS VIA THE EUIPO OBSERVATORY IP ENFORCEMENT PORTAL
Publication: WIPO Collection of Leading Judgments on Intellectual Property Rights People’s Republic of China (2011–2018)
The WIPO Mediation Pledge for IP and Technology Disputes: Why consider mediation for IP- and tech-related disputes?
Withdrawal of the notification made under Rule 20bis(6)(a) of the Common Regulations under the Madrid Agreement and the Madrid Protocol: Germany
EUIPO Observatory Publications: Case-law Collection on the Liability and Obligations of Intermediary Service Providers
ECTA Members’ Voice: National implementation of the new Directive on copyright: the deadline has passed, but not much is happening. An update.
By Fabio Angelini, ECTA Copyright Committee Vice-Chair, Bugnion S.p.A. (IT) Despite much fanfare and somewhat wishful thinking headlines by the European Commission (cf. ‘New EU copyright rules that will benefit creators, businesses and consumers start to apply'), 7 June 2021 marked another disappointing step in the so far quite arduous path of the Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (the ‘New Copyright Directive’). Indeed, while according to Art. 29 of the New Copyright Directive Member States were required to bring into force the laws, regulations and administrative provisions necessary to comply with this Directive by 7 June 2021, at this time, only a handful have done so. To the best of my knowledge, only Denmark and Germany have actually passed bills to implement the full text of the New Copyright Directive, (cf. here), while the European Commission website reports that only France, Hungary and Czech Republic have notified the Commission of having implemented some part of the New Copyright Directive (cf. here). Surely it did not help Member States that the European Commission waited until 4 June 2021 to publish its ‘Guidance on Article 17 of Directive 2019/790’ (possibly the most contested and controversial article of the New Copyright Directive), which is certainly an interesting document to read, but whose effectiveness at this time, when many Member States have already engaged in lengthy internal discussions and various draft bills are pending, is doubtful. Another factor in the delay of implementation could also be the challenge by Poland at the Court of Justice (cf. case C-401/19, action brought on 24 May 2019 — Republic of Poland v European Parliament and Council of the European Union) where Poland is seeking the annulment of Article 17(4)(b) and Article 17(4)(c), in fine (i.e. the part containing the following wording: ‘and made best efforts to prevent their future uploads in accordance with point (b)’) or in the alternative, should the Court find that the contested provisions cannot be deleted from Article 17 without substantively changing the rules contained in the remaining provisions of that article, that the Court annul Article 17 in its entirety. As widely reported, Poland alleged infringement of the right to freedom of expression and information guaranteed by Article 11 of the Charter of Fundamental Rights of the European Union, claiming specifically that the imposition on online content-sharing service providers of the obligation to make best efforts to ensure the unavailability of specific works and other subject-matter for which the right holders have provided the service providers with the relevant and necessary information and the imposition on online content-sharing service providers of the obligation to make best efforts to prevent the future uploads of protected works or other subject-matter for which the rightsholders have lodged a sufficiently substantiated notice, make it necessary for the service providers (in order to avoid liability) to carry out prior automatic verification (filtering) of content uploaded online by users, and therefore make it necessary to introduce preventive control mechanisms. Thus, according to Poland, such mechanisms undermine the essence of the right to freedom of expression and information and do not comply with the requirement that limitations imposed on that right be proportional and necessary. The Advocate General had said it would render his opinion in April 21, but then the Court of Justice announced that the opinion would be delayed until July 15 (cf. here). Thus, it is perhaps comprehensible that Member States are not rushing to implement the New Copyright Directive. The ECTA Copyright Committee is closely following the implementation of the New Copyright Directive and welcomes contributions and comments by all ECTA members. ---- The views expressed are those of our members and not necessarily of ECTA as an association. The content has not been subjected to a verification process, the accuracy of the information contained in the article is responsibility of the author.
EUIPO LAUNCHED A NEW OUT-OF-COMMERCE WORKS PORTAL
The EUIPO launched a new Out-Of-Commerce Works Portal, a platform where to access information about ongoing and future uses of out-of-commerce works: books, films, or visual works, that are still protected by copyright but are no longer or have never been commercially available. Cultural heritage institutions contain millions of out-of-commerce works in their collections, which still hold value for research or education purposes or are simply entertaining. Directive (EU) 2019/790 introduced a legal framework to support the digitisation and cross-border dissemination of out-of-commerce works. Information about these works has to be stored in a public single online portal, the creation and management of which has been entrusted to the EUIPO. The regime will complement the measures already in place for the use of orphan works at European level such as the Orphan Works Database.
EUIPO TUESDAY WEBINARS IN JUNE
The EUIPO’s Academy offers webinar courses every Tuesday. These sessions are open to all and a live chat with the speakers will be made available. Please note that the recorded webinars are available on the EUIPO learning portal after the broadcast. The June schedule of the webinars is as follows: Tuesday 15 June, 10:00-11:30 (CET): IP behind and inside movies – a practical analysis of today's movie industry. Webinar organised in collaboration with the EPO - intermediate Tuesday 22 June, 10:00-11:00 (CET): Promote creativity, innovation and entrepreneurship with IdeasPowered@school resources! - Basic Tuesday 29 June, 10:00-11:00 (CET): The new services offered by alternative dispute resolution - Basic Visit the Academy's Calendar to access the webinars and see the latest updates for the upcoming months. On the EUIPO Learning Portal you can also find the following eLearning courses: - Digital infringement study - Intermediate - Link - Track on Case Law: Judgments of the GC and CJEU- Decisions of the EUIPO Boards of Appeal 2021 - Advanced - Link - Introduction to the Geneva Act & Lisbon System for the International Registration of Appellations of Origin and Geographical indications - Intermediate - Link - New Common Practices 2021: new types of trade marks and appeal proceedings - Advanced - Link For further information please visit the Academy's Learning Portal.
WORLD ANTI-COUNTERFEITING DAY 2021: RISKS AND DAMAGES POSED BY IPR INFRINGEMENT IN EUROPE
Today is the World Anti-Counterfeiting Day and the EUIPO has launched a Pan-European Campaign to raise awareness of the risks and damages posed by IPR infringement in Europe. According to the EUIPO study European Citizens and Intellectual Property, consumers still find it difficult to distinguish between genuine and fake goods. Nearly one in ten Europeans (9%) claimed that they were misled into buying counterfeits, with significant differences among EU Countries: Member States with a higher proportion of misled consumers are Bulgaria (19%), Romania (16%) and Hungary (15%), while Sweden (2%) and Denmark (3%) have the lowest figures within the EU. In a context where e-commerce is booming (over 70% of Europeans shopped online in 2020, according to Eurostat) uncertainty regarding counterfeit products remains a concern among EU citizens. According to the study, a third of Europeans (33%) wondered whether a product they had bought was original. A joint study by the EUIPO and the OECD shows that counterfeits represent 6.8% of EU imports worth EUR 121 billion and they impact every sector: cosmetics, toys, wine and beverages, electronics, clothing and even pesticides. During the COVID-19 pandemic, concern over counterfeit products has risen with a sensitive increase of counterfeit medicines and other medical products (e.g. antibiotics, painkillers, personal protective equipment, face masks, etc.). In addition to the health and safety risks, counterfeits often lead to security breaches and financial losses. Digital piracy is another lucrative market for infringers, especially in the case of IPTV - televised content acquired through an internet connection. Providers of illegal IPTV gain almost EUR 1 billion euro every year in the EU, harming content creators and legitimate businesses. Besides, counterfeiting not only affects consumers but also entails significant damage to the EU economy and, in particular, to SMEs. According to the IP SME scoreboard published by the EUIPO, one out of four SMEs in Europe claims to have suffered from IP infringement. To find out more about risks and damages posed by IPR infringement in Europe, please read here and here. ----- ECTA is also actively contributing to the fight against counterfeiting by sharing professional experience and best practices at the EU level and beyond, inter alia in its Anti-Counterfeiting Committee. To learn more about our Anti-Counterfeiting Committee, please click here.
ECTA Debate Club and June Meetings
June has just arrived, and we are looking forward to having you on board for our upcoming initiatives and meetings! We are about to launch the registration for the new online ECTA Debate Club, a series of educational and networking IP sessions open to a maximum of 30 members. Here is what you can expect to debate on: Tuesday, 15 June (14.00-15.30 CET): Registrability of trade marks against public order or morality Thursday, 17 June (14.00-15.30 CET): NFTs – A brave new world, or the emperor’s new clothes? Friday, 25 June (14.00-15.30 CET): Proof of use of a trade mark. A very important factor for all countries? Tuesday, 29 June (11.00-12.30 CET): Are we in a new era in the fight against trade mark squatting in China? All sessions are organised with the support of Knowledge Partner of the ECTA Debate Club June 2021 Koushos Korfiotis Papacharalambous LLC. Save the date and look out for ECTA emails announcing each session separately with the respective registration link or check the ECTA Private Site/News Section. Places will be assigned on a first come-first served basis, so make sure you apply quickly! Besides, from 21 to 25 June, we will hold online Supervisory Board and Committee Meetings. While the Supervisory Board will discuss ECTA strategic and financial aspects, Committee Meetings will be an invaluable opportunity to network with peers, advance projects and learn about recent case law, legislative and policy developments. All ECTA members are invited to join us at the Annual General Meeting on 25 June. To consult the schedule of June events, please click here.
ECTA MEMBER’S VOICE - AT LAST: COUNTERFEITING ON THE POLITICAL PRIORITY LIST IN BRUSSELS
By Gie van den Broek, ECTA Anti-Counterfeiting Committee, LXA The Law Firm (NL) and Bartosz Krakowiak, ECTA Anti-Counterfeiting Committee, POLSERVICE Patent and Trademark Attorneys Office (PL) Over the past years, various international institutions have hit the alarm regarding the undermining impact of counterfeit products on society as a whole. Counterfeiting costs jobs, it can endanger health, it can be interrelated with money laundering and funding of terrorism, in most cases, it is related to tax evasion. It hurts the economy and is theft of intellectual property in any case. Counterfeit products find their way to consumers in a few online clicks nowadays. This requires action and political courage to change the rules. With a set of conclusions under the name EMPACT (European multi-disciplinary platform against criminal threats administered by Europol), the Council of the European Union has now formally earmarked IP crime and counterfeiting as one of the priorities to be implemented in an operational action plan with an aim defined as follows: 'to combat and disrupt criminal networks and criminal individual entrepreneurs involved in IP crime and in the production, sale or distribution (physical and online) of counterfeit goods or currencies, with a specific focus on goods harmful to consumers’ health and safety, to the environment and to the EU economy.' To find out more, please read here and here. ---- ECTA is a recognised discussion partner for the most important public and political bodies such as EU Institutions, EUIPO, WIPO and other national and international organizations. Yearly official meetings with the European Commission, EUIPO and WIPO allow us to maintain a strong influence on the developments impacting our members as well as on future of intellectual property rights policy and regulation. ECTA was one of the associations which successfully joined their forces to convince the decision makers at the EU and national levels to list IP crime and counterfeiting as one of the priorities for Europol’s EMPACT.
ECTA WEBINAR ON SLOGANS - WATCH THE RECORDING!
Have you missed the interactive discussion of our latest Webinar ‘Slogans..but made for branding. A new threshold for registrability of slogans after Oatly?’ The recording of it is now available on demand! ECTA Second Vice-President Carina Gommers (Wiggin, BE) moderated a high-level panel of speakers: Klaudia Błach-Morysińska (Zaborski, Morysiński Law Office, PL), Luc Suykens (UBA,BE), and Bart ten Doeschate (Heineken, NL). How easy is it to register slogans, should they be registered, and what can be done to ensure their protection? After an overview of relevant EU judgements, including the last ‘milky’ case, our speakers discussed the degree of distinctiveness required and whether it will be easier to register slogans as trade marks. They also provided insights from a marketing perspective, such as how a slogan is practically developed as well as addressed in-house legal challenges around this topic. If you are interested in receiving access to the recording of the Webinar, please send a request to firstname.lastname@example.org. The price of this on demand offering is 25,00 € for ECTA members and 55,00 € for non-members.
EUIPO TRADE MARK AND DESIGN EDUCATION PROGRAMME – REGISTRATION CLOSES ON 30 JUNE
The EUIPO has recently opened the registration for the 4th edition of its Trade Mark and Design Education Programme for Practitioners as well as launched the 1st edition of the Programme for Paralegals. The Education Programme, which is held annually, has been created to offer structured training to the community of intellectual property professionals, helping them to better support EU businesses and, in so doing, to strengthen the trade mark and design registration systems managed by the EUIPO. - 4th edition of the ETMD EP for Practitioners The EUIPO Trade Mark and Design Education Programme for Practitioners has been specially designed to accommodate the training needs of intellectual property practitioners dealing with the registration and prosecution of European Union trade marks and Community designs. This edition offers 60 places, starts in September 2021 and lasts until May 2022. - 1st edition of the ETMD EP for Paralegals This newly introduced programme is a custom-made training course mainly intended for professionals working as intellectual property administrators, legal assistants, company employees who deal with legal matters or similar. This edition offers 50 places, starts in September 2021 and lasts until February 2022. Registration for both programmes closes on 30 June 2021 and places will be allocated on a first come - first served basis. For more information about the programme, please visit the ETMD EP website. ECTA is honoured to continue to be closely involved in this initiative by participating actively on the Steering Committee and Examination Board as well as nominating speakers/teachers for the programme. ECTA has been advocating for the need of a special programme for paralegals and is looking forward with enthusiasm to the first edition of this important initiative. We encourage our members and paralegals in their firms to enrol and take part in the programmes.
ECTA TAKES A STAND - POSITION PAPER ON THE INTERPRETATION OF TECHNICAL FUNCTIONALITY UNDER ART. (8)1 CDR
By Barnabas Mezo, ECTA Design Committee member, Oppenheim (HU) and Ralf Hackbarth, ECTA Design Committee member, Klaka (DE) With its recent DOCERAM decision (Case C 395/16), the CJEU gave an interpretation on how to assess if a product appearance is solely dictated by its technical function and hence excluded from Community design protection. The CJEU has opted for the theory of causality, according to which the exclusion laid down in Article 8(1) CDR should come into play where aesthetic considerations do not have the slightest influence in developing the design. However, this does not mean that a design must have an aesthetic quality. At first glance, the DOCERAM decision might give a different impression. Through its work, ECTA Design Committee found that the now applicable theory of causality, also called ‘no-aesthetical-consideration-test’, might lead to a greater legal uncertainty as to when features of appearance of a product are solely dictated by function. Furthermore, ECTA Design Committee has realised that some national courts interpret the technical functionality exception too broadly, thereby excluding designs that should be protected from protection. Against this background, ECTA considers it necessary to comment on the interpretation of technical functionality under Article 8(1) CDR and proposes a clarification to the Recitals of the future European Design package. ECTA wants to express that technical designs features are still protected by design law, as opposed to designs features solely dictated by function under Article 8(1) CDR. ECTA's position paper, recently submitted to the European Commission, welcomes the applicability of the causality theory (‘no-aesthetical-consideration-test’). However, this position paper also notes that the DOCERAM decision does not mean that aesthetic considerations become more important and does not at all affect the interpretation of technical features of designs with regard to the overall impression under Art. 6 and 10 CDR. Finally, it gives some practical guidance as to determining the features solely dictated by technical function.
ECTA JUNE MEETINGS AND EVENTS
A lot is cooking for ECTA members in June! Here a glimpse of what to expect: As you know, we are launching soon our new online event concept ECTA Debate Club, a series of educational and networking IP sessions exclusively open to ECTA members for free. The sessions will take place virtually on 15, 17, 25 and 29 June and will be open to a maximum of 30 members to allow interactivity. Places will be assigned on a first come-first served basis, so make sure to apply as soon as the registration opens in the coming weeks! From 21 to 25 June, we will hold online Supervisory Board and Committee Meetings. While the Supervisory Board will discuss ECTA strategic and financial aspects, Committee Meetings will be an invaluable opportunity to network with peers, advance projects and learn about recent case law, legislative and policy developments. Besides, all ECTA members are invited to join us at the Annual General Meeting on 25 June. To consult the schedule of June events, please check the News Section in the private site. We invite you to stay updated by checking the ECTA website, LinkedIn, Twitter and the ECTA APP regularly.
ECTA TAKES A STAND - POSITION PAPER ON 3D PRINTING AND ITS IMPLICATIONS ON DESIGN LAW BY ECTA
By Katri Kiviniemi, ECTA Design Committee member, Castrén & Snellman Attorneys Ltd (FI) and Marta Alves Vieira, ECTA Design Committee Secretary, Vieira de Almeida & Associados (PT) ECTA’s Design Committee has been carefully following the developments of industrial 3D and 4D printing and their potential impact on intellectual property rights, particularly in design law and practice. A task force was created within the ECTA Design Committee to monitor the developments in this field and to assess whether a change in the current legislation would be appropriate and recommended in order to deal with the challenges brought by these new technical developments. 3DP is a fast-developing technology, even if it still is somewhat unclear to what extent and how fast it will become more widely spread and used in the industry and in private use. It is, however, clear that this technology and other developing technologies alike are challenging intellectual property laws, and when reviewing changes to these laws, their implications should be anticipated or, at least, taken into consideration. In April 2020, the European Commission launched a Study carried out for the European Commission, entitled ‘The Intellectual Property Implications of the Development of Industrial 3D Printing’ dated February 2020. In June 2020, the Committee had already been engaged in ECTA’s Brief Report on 3D Printing and Comments to this European Commission Study. Moreover, ECTA is strongly committed with the European Union Design Reform project and has already contributed to the Public Consultation with an assessment on design law and protection. This contribution led to the European Commission’s Evaluation of EU legislation on design protection published in November 2020. In this context and based on the ECTA Design Committee’s reflections and discussions in the last years, a Position Paper on 3D Printing and its Implications on Design Law has been approved and submitted by ECTA to the European Commission in April 2021. This paper addresses several aspects of the design law to be carefully evaluated in relation to 3D printing. Firstly, the definition of a product should be reconsidered to clearly include new technologies. In this sense, a design within a CAD file should be considered a ‘product’ and a CAD file encompassing the design of a digital item should be eligible for design protection. Besides, the defence available for acts done privately and for non-commercial purposes in accordance with the Design Regulation should be interpreted narrowly. However, it may be too early to fully understand the practical implications of the use of this exemption considering that widespread use of the 3D printing technology is not yet a reality. Therefore, it may be too early for an actual change in the law in this aspect. Also, it would be relevant and necessary to explicitly include contributory infringement in the design law to provide legal clarity and more effective tools for rights holders in defending their right. Considering the potential impact of 3D printing in relation to spare parts, it is advisable to maintain limited and balanced protection for spare parts. In line with the ‘ECTA Position Paper – Designs and Spare Parts’ published back in 2016, it is useful to explore alternatives to achieve a balance between total liberalisation (removing all design protection from items categorised as spare parts) and full exclusivity of design rights in spare parts (even if time restricted). Finally, considering that there is already a multitude of legal tools, including other IP laws in place to stimulate innovation and control the markets, at the time being there is no further need for a specific sui generis law to govern 3D printing technology. Moreover, ECTA does not see any clear obstacles to further amending the current EU design laws to cover the implications of 3D printing or other related foreseeable digital technologies (such as 4D printing).
ECTA WEBINAR ON SLOGANS (18 MAY 2021)
Don’t forget to register for the ECTA webinar “Slogans..but made for branding. A new threshold for registrability of slogans after Oatly?” - 18 May 2021 (14.00-15.30 Brussels time)! ECTA Second Vice-President Carina Gommers (Wiggin, BE) will moderate a high-level panel of speakers comprised of Klaudia Błach-Morysińska (Zaborski, Morysiński Law Office, PL), Luc Suykens (UBA,BE), and Bart ten Doeschate (Heineken International, NL). How easy is it to register slogans, should they be registered, and what can be done to ensure their protection? After an overview of relevant EU judgements, including the last ‘milky’ case, our speakers will discuss the degree of distinctiveness required and whether it will be easier to register slogans as trade marks. They will also provide insights from a marketing perspective, such as how a slogan is practically developed as well as address in-house legal challenges around this topic. The webinar will be held in English via the Zoom Webinar platform. The cost is: • ECTA members - 40,00€ • Non-members - 65,00€ • Students and full-time academics - 15,00€ • Officials - Free of charge Upon request, you will receive a certificate of attendance, in order to ask for CLE credits from your national Bar Associations, if applicable.
SMEs fund - third application window is now open
SMEs can apply for financing support under the new Ideas Powered for Business SME Fund until 31 May 2021. This is the third of five windows for applications that will be open in alternate months until September 2021. The Fund is a € 20 million grant scheme to help enterprises in the EU, that fit the official definition of a SME, access their IP rights. Applications can be made for financial support in the form of reimbursements for trade mark and design application and for IP pre-diagnostic services (IP scan) available at participating national and regional IP offices*. Each SME that applies can be reimbursed up to a maximum amount of € 1.500. Thanks to the efforts of some User Associations, including ECTA, professional IP representatives can now assist SMEs in deciding about the services offered through the SME Fund as well as requesting the funding in their name. This is a change in comparison to January window 1. Kindly note that next applications windows will be open according to the following timetable: Window 4 (1 July 2021 - 31 July 2021), Window 5 (1 September 2021 - 30 September 2021). Full information about the requirements and how to apply for financing support can be consulted on the EUIPO website here. Grants are awarded on a first come, first served basis. *Before applying, you should check the list to ensure that the IP office in your Member State offers this service.
EUIPO TUESDAY WEBINARS IN MAY
The EUIPO’s Academy offers webinar courses every Tuesday. These sessions are open to all and a live chat with the speakers will be made available. Please note that the recorded webinars are available on the EUIPO learning portal after the broadcast. The May schedule of the webinars is as follows: Tuesday 11 May, 10:00-11:00 (CET): Register and fees operations – the great unknown - Advanced Tuesday 18 May, 10:00-11:00 (CET): Proof of Reputation: What evidence to submit - Intermediate Tuesday 25 May, 10:00-11:00 (CET): Plant Variety Rights: insights and tips for enforcers - Intermediate Tuesday 25 May, 15:00-16:00 (CET): Judicial Cooperation Study Visit the Academy's Calendar to access the webinars and see the latest updates for the upcoming months. On the EUIPO Learning Portal you can also find the following eLearning courses: - AG examination of trade marks that refer to the content of the goods and services - Intermediate - Link - AI & IP at the crossroad - Intermediate - Link - Digital Services Act: new rules of the game - Intermediate - Link For further information please visit the Academy's Learning Portal
EUROPEAN COMMISSION LAUNCHED A PUBLIC CONSULTATION ON NON-AGRI GIs
The European Commission recently launched a Public Consultation on the EU-wide protection of geographical indications for non-agricultural products (such as handicrafts and industrial goods). Since there is no harmonised mechanism for the protection of such products, the IP Action Plan adopted on 25 November 2020 announces that the Commission will, on the basis of a thorough impact assessment of its potential costs and benefits, consider the feasibility of creating an efficient and transparent EU protection system. The purpose of the consultation is to collect views of all relevant stakeholders on the issues related to the existing legal protection of these products within the internal market; on the benefits and risk of EU action; on the available policy options, including the control and enforcement of a future EU-protection system; and on the potential impacts of these policy options. ECTA already contributed to the Inception Impact Assessment (IIA) last year and will also provide input to this consultation. The results will contribute to the decision on the best way forward.
EUROPEAN COMMISSION LAUNCHED A FURTHER OPEN CONSULTATION ON DESIGN PROTECTION
The European Commission launched a further public consultation to support the review of the Community Design Regulation and the Design Directive. The purpose is to serve as complement to the extensive public consultation on design protection already carried out. It aims at gathering (additional) views of all those affected by design protection in Europe on selected issues, potential options and their consequences for reform not specifically addressed previously. During the process of the EU Design legislation reform, ECTA submitted input several times, including input in joint papers with INTA and MARQUES, joint comments on the Inception Impact Assessment as well as a number of individual ECTA position papers and comments/contributions on designs. ECTA is also planning to submit a response to this consultation.
THIRD COUNTRY REPORT PUBLISHED BY THE EUROPEAN COMMISSION
The European Commission has just published the Third Country Report. The main objective of this Report is to identify third countries in which the state of IPR protection and enforcement gives rise to the greatest level of concern and establish an updated list of so called ‘priority countries’, split into three categories: Priority 1: China Priority 2: India, Indonesia, Russia, Turkey and Ukraine Priority 3: Argentina, Brazil, Ecuador, Malaysia, Nigeria, Saudi Arabia and Thailand China continues to be a Priority 1 country because of the dominant share of counterfeit and pirated goods arriving in the EU, in terms of both value and volume. More than 80% of the seizures of counterfeit and pirated goods by EU customs authorities originate from China and Hong Kong. In addition, the Report dedicates a section to some countries with which the EU has already concluded or is about to conclude free trade agreements and where there is a particular need to monitor the IP situation. This category includes Canada, South Korea, Mexico and Vietnam. The Commission will also closely monitor the situation in other countries where IP enforcement gives rise to concerns, such as Israel, Morocco, Paraguay, the Philippines, South Africa, Switzerland and the United Arab Emirates. Furthermore, the Report includes details of the different EU activities in the context of IPR, such as the EU Funded programmes.
Happy World IP Day! Join ECTA with 50% discount today only!
Happy World IP Day! This day is observed to highlight the role that IP rights play in encouraging innovation and creativity, as well as the importance of protecting intangible assets. ECTA, as one of the leading IP associations in the EU, is proud to represent our professional category, serve its members and actively strive for a balance of IP rights for over 40 years. To celebrate this day, ECTA offers a 50% discount on the applicable membership fee for all categories of members TODAY ONLY! This offer is only valid for those who have never been an ECTA member before and who submit a fully completed application form by the end of today, 26 April 2021! (Or click on 'Become a Member' in the ECTA front page)*Kindly note that late applicants cannot benefit from this opportunity. We are looking forward to welcoming you to the ECTA Family!
EUIPO – FEWER PAPER COMMUNICATIONS AS OF 15 MAY 2021
The EUIPO will gradually diminish paper consumption during proceedings as of 15 May 2021, to make communications more agile and reduce the impact on the environment. For future outgoing electronic communications, the Office will include links to download attachments from the EUIPO website, instead of providing them in its notifications. For communications currently sent by post, users will have to create a User Area account to download attachments from the links. When users need to submit documents already submitted in another proceeding, these should be sent in the form of a link rather than resent as attachments. In fact, the documents will already be available in the Office system via the User Area. The EUIPO will adopt a transition period of 6 months during which users will receive both printed attachments and links to attachments on the website through the User Area.
ECTA MEMBERS’ VOICE: HALLOUMI VS BBQLOUMI CASE
By Ozlem Futman, ECTA Geographical Indications Committee Member, Ofo Ventura (TR) Verifier: Sozos-Christos Theodoulou, ECTA Past President, Advisory and International Trade Committee Member, The Law Offices of Dr. Christos A. Theodoulou LLC (CY) In Case T 328/17 RENV, on January 20, 2021, the Second Chamber of the General Court (GC) granted its decision on EU figurative mark BBQLOUMI. Background to the dispute M. J. Dairies EOOD filed an application on 9 July 2014 for the registration of an EU trade mark for the sign BBQLOUMI for the following goods and services: Class 29: Dairy products and dairy substitutes; cheese; processed cheese; cheese products; cheese dips; meat extracts; prepared dishes consisting wholly or substantially wholly of meat or dairy products; Class 30: Sandwiches; crackers flavoured with cheese; condiments; sauces; cheese sauce; foodstuffs made from cereals; Class 43: Restaurant services; fast food restaurant services; cafeterias; catering. The Foundation for the Protection of the Traditional Cheese of Cyprus Named Halloumi (‘the Foundation’), opposed it entirely based particularly on the earlier EU collective word mark HALLOUMI, registered under number 1082965, designating goods in Class 29 for ‘cheese’. The grounds of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001). The Opposition Division of EUIPO rejected the opposition and the Foundation Appealed. EUIPO’s Fourth Board of Appeal The Board rejected the Appeal by stating that, notwithstanding its status as a collective mark, the opponent’s mark was weak because ‘halloumi’ designated a particular type of cheese produced in a certain way in Cyprus and having particular characteristics associated with its composition and taste, in the sense that there was longstanding use of that term as a generic name. While evaluating the case in terms of global assessment of likelihood of confusion, the Board concluded that the evidence submitted by the applicant demonstrated, at the very most, that the term ‘halloumi’ was used throughout the EU as a generic name for a specialty cheese from Cyprus, and that such evidence was insufficient to establish intensive use as a trade mark designating cheese, where that finding applied with respect to use in both Cyprus and Greece, as the applicant did not submit any evidence of the actual perception of the mark HALLOUMI, other than as a type of cheese. The Board found no likelihood of confusion between the signs, by considering the marks phonetically and conceptually dissimilar, and visually similar to a low degree. Regarding the goods and services, the Board considered that the opposition was relevant only for the goods in Class 29, with the exception of ‘meat extracts’, and for goods in Class 30; yet not for services in Class 43 since they were different from cheese. The Board also found that the opponent did not manage to prove that the opposed mark would have taken unfair advantage of the distinctiveness or the repute of the earlier mark or that it was detrimental to it. General Court The Foundation brought the issue to the attention of the General Court (GC) by criticising the EUIPO: 1) for erroneously characterising the meaning and effect of EU collective marks, by following the reasoning of the General Court in the judgments of 13 June 2012, Organismos Kypriakis Galaktokomikis Viomichanias v OHIM – Garmo (HELLIM) (T 534/10, EU:T:2012:292), and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T 292/14 and T 293/14, EU:T:2015:752); 2) for misconstruing Articles 66 to 68 of Regulation 207/209 (now artic. 74 to 76 of Regulation 2017/1001) since, by their nature, collective marks do not serve to distinguish a single commercial origin, but could, in any event, indicate geographical origin; 3) for wrongly considering the opponent’s mark generic, thus depriving it of any distinctiveness; 4) for wrongly considering that the differences between the marks were sufficient to avoid a likelihood of confusion, by finding the opponent’s collective mark’s lack of distinctiveness; Through its unpublished judgment in 2018, the GC dismissed the action, in essence, by concluding that the EUIPO did neither err in its assessment of the characteristics and nature of EU collective marks, nor about the distinctiveness of the earlier mark in dispute. The GC shared the EUIPO’s opinion that the average EU consumers would perceive the word ‘halloumi’ to denote a particular type of cheese produced according to certain features and had done so for a long time, but not to its belonging to anyone who marketed the product in question to a special association of producers or traders. The GC also found that, even though the opponent’s mark was a collective mark, the degree of its distinctiveness was low. Although the word element of a mark, in principle, is more distinctive than its figurative element, in the present case, said the GC, the relevant public’s attention would be drawn to both the word element ‘bbqloumi’ and the figurative element in the mark, thus the EUIPO did not make any error in finding that those two elements dominated the overall impression in the opposed mark, plus in terms of the word element more weight had to be given to its initial part, ‘bbq’, than to its final part, ‘loumi’. Meanwhile, visual similarity between the signs was deemed weak because the element ‘loumi’ did not occupy a separate position in them. Yet for the GC, the EUIPO had made two errors in its decision: 1) by finding the marks phonetically and conceptually different, instead of stating that they were similar to a low degree; 2) by finding no likelihood of confusion, if there was a low degree of similarity between the signs. THE CJEU When the Foundation appealed the original judgment before the Court of Justice of the EU (CJEU), it alleged infringement of the EU collective marks regime, then misinterpretation of the case-law and infringement of Articles 8(1) (b) and 65(2). The CJEU, by its judgment of 5 March 2020, set aside the original judgment and referred the case back to the GC. The Court underlined some general points as: - For collective marks the likelihood of confusion had to be understood as being the risk that the public might believe that the goods or services covered by the earlier mark and those covered by the mark applied for all originate from members of the association, which is the proprietor of the earlier mark or, where appropriate, from undertakings economically linked to those members or to that association. - Since there is no provision on the contrary and pursuant to Article 66(3) of the Regulation 2017/1001, the same criteria for likelihood of confusion in terms of Article 8(1) (b) are also applicable to EU collective marks. - When an association applies for registration of an EU collective mark, which may designate a geographical origin, it is incumbent to ensure that sign has elements which enables the consumer to distinguish the goods or services of its members from those of other undertakings. Accordingly, the degree of distinctiveness of that mark is a relevant factor for the purposes of assessing likelihood of confusion. Going back to the present dispute, the CJEU shared the GC’s opinion, which had found the degree of distinctiveness of the opponent’s mark to be weak. Yet, for the CJEU, the GC made an error where it relied on the premise that, if the earlier mark has weak distinctiveness, then the existence of a likelihood of confusion had to be ruled out because the weak distinctiveness of the earlier mark would not permit such a likelihood. So, the CJEU referred the case back to the GC by indicating that the GC should have made a global assessment to see whether the low degree of similarity of the marks at issue was offset by the higher degree of similarity, or even identity, of the goods covered by those marks, according to criteria established by the case-law relating to article 8(1)(b) of the Regulation. General Court’s Decision The GC first ruled that since the CJEU did not declare its assessments unfounded about the characteristics and scope of EU collective marks and the distinctiveness of the earlier mark, it would only focus on likelihood of confusion in terms of article 8(1) (b) of the Regulation and the case-law relating to it. The GC determined the relevant territory as the European Union and the relevant public as being the general public whose level of attention is average when purchasing the goods in question. As regards the comparison of the goods and services, it stuck to its view in its original judgment, namely finding the goods in the opposed mark identical in part and similar in part to some degree with cheese in the Foundation’s earlier mark, but not finding any similarity to services in Class 43 or to ‘meat extracts’ in Class 29. The Foundation particularly criticised the EUIPO for not having taken into consideration the figurative element (depicting grilled cheese on a barbecue) in the opposed mark and thus making an assessment that there was no conceptual similarity between the marks. According to the Foundation, consumers, particularly in the UK, associated halloumi cheese with cooking on a barbecue. That finding, supported by the Mediterranean context to which the graphic representation composing the mark applied for refers, should lead to a finding of similarity between the signs and, therefore, of a likelihood of confusion having regard to the identity or similarity of the goods and services which the marks at issue designated. Moreover, the Foundation insisted that the word ‘bbqloumi’ should be considered as a ‘portmanteau mark’, namely a mark consisting of two very easily recognisable word elements. It argued that the ‘bbq’ part in the opposed mark lacked any distinctiveness, yet the common part in both marks ‘loumi’ had a certain degree of distinctiveness. Indeed, in parts of the EU ‘bbq’ is a synonym of ‘barbecue’ whereas ‘loumi’ had no meaning other than being the abbreviation of the term ‘halloumi’, thus the marks were similar with respect to the only distinctive element available. The GC, while making its global assessment, first focused on the common part in both words, namely the component ‘loumi’ and concluded that this part gave a low degree of visual, phonetic and conceptual similarity. It agreed that to some extent the large part of the relevant public may perceive the grilled food in the figurative element as being halloumi cheese, yet ruled that, when consumers saw the word element of the mark in dispute, their attention would be drawn more to the initial part of the word element ‘bbq’ rather than the last part ‘loumi’. The GC did not deny the fact that the figurative element in the mark supported to some extent the concept conveyed by the word element, namely that the halloumi cheese is cooked or grilled on the barbecue. Nevertheless, the GC found the figurative element more related to the concept of barbecue than to the halloumi cheese produced in a Mediterranean environment, because it was not possible to state categorically that the goods represented were pieces of halloumi cheese. The GC also pointed out that the figurative element in the mark applied for played a differentiating role because the Foundation’s mark was a word mark without any figurative element. For the GC the ‘loumi’ element contributed very little to the distinctiveness of the mark applied for because ‘bbq’ catches the relevant public’s attention the most and because the Foundation’s mark had a weak degree of inherent distinctiveness. By referring to case-law, the GC acknowledged that just because the earlier mark had weak distinctiveness, this per se did not automatically mean that there would not be a likelihood of confusion. Yet, the GC said, in the present case, the component that both parties’ marks share, ‘loumi’, itself had weak inherent distinctiveness and this impacted negatively on the global assessment for similarity in terms of likelihood of confusion. The GC focused its analysis on the weak degree of inherent distinctiveness of the opponent’s mark because it shared the EUIPO’s assessment that the evidence submitted by the Foundation did not allow a finding that consumers, confronted with the earlier mark, would associate it with something other than halloumi cheese. As to the Foundation’s argument about the message that the applied mark conveyed when the figurative element and the analysis about the word element were considered together, the GC ruled that did not differ significantly from the relevant factors relied on in the global assessment of the likelihood of confusion. So, the whole action was dismissed. Post Scriptum: On 24 March 2021, the GC dismissed another action (T-282/19) brought by the Foundation against a Greek company producing cheese under the figurative sign ‘Halloumi Vermion’, following a similar line of thinking to the above analysed judgment. However, a few days later, on 29 March 2021, the EU Commission unanimously approved the registration of halloumi as a Cypriot Protected Designation of Origin (PDO), a new fact which is expected to bring ground-breaking modifications as to the legal protection of halloumi.