ECTA Bulletin October 2015

ECTA takes great pleasure in inviting you to attend the 35th ECTA Annual Conference which will take place in Dubrovnik, Croatia from 22-25 June 2016.

Rogue Waves and Crosswinds: Trademarks in Motion

Save the date: 22-25 June 2016

ECTA BULLETIN

CONTENT INTRODUCTION. WELCOME TO THE SECOND EDITION OF THE ECTA E-BULLETIN!

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ECTA NEWS

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INTERVIEWS: Keith Havelock

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Interview with new ECTA members

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ARTICLES: European trade mark law reform: key changes for trade mark owners

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Luxembourg IP tax regime will follow the “Nexus approach”

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Significant Changes to Canadian Trade Mark Law

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Mediation in Europe: The OHIM Model

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Opposition system in Bulgaria - four years later

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POLAND – Letters of Consent – some good news for right holders

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3D printing: threat or opportunity?

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CASES: Recent developments in Austrian case law on bad faith: trade mark trolls!

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Enhanced level of protection for reputed trade marks in Hungary

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Smoke on the North Sea

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Danish Supreme Court on rims for cars - spareparts or enforceable design rights?

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CITY BROKER

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GOSSIP

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EDITORIAL BOARD

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ECTA Bulletin I 3

WELCOME TO THE SECOND EDITION OF THE ECTA E-BULLETIN! After the great success of the first edition of the e-bulletin at the Hamburg Conference in June 2015, we, the ECTA Publications Committee, created the second edition in a digital format. The aim of the ECTA e-bulletin is to keep readers and fellow ECTA members updated on relevant Intellectual Property issues from different jurisdictions. It also aims to encourage members to present various perspectives of their IP jurisdictions. This is coherent with the sentiment of the ECTA Association to refrain from taking a

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shared position on matters in which there is no common viewpoint, meaning that all standpoints shall be discussed. Thus, by its very nature the ECTA e-bulletin will present a multitude of opinions and information on trade mark, designs and other relevant IP matters. In this edition, a founding member of ECTA has been interviewed and discloses how ECTA began its London office. Furthermore, articles and cases explore different parts of the Intellectual Property rights, and lastly, personal matters regarding ECTA members will be exposed in the section called ECTA gossIP.

Hande Hançer

Introduction of the chair of the Publications Committee Aside from all members of the Publications Committee, I would like to express my gratitude to the Vice-chair of the ECTA Publications Committee, Craig A. Bailey, the Secretary of the ECTA Publications Committee, Alessandro Massetti, Peter Spies who took care of the articles section, Christian Bolduc, who managed the case law section, Firas Qumsieh, who managed the GossIP section, as well as Barbara Diaz Alaminos, ECTA’s Manager legal Affair, and Daniela Derksen, ECTA’s Legal Communicator, for their work on the completion of the second edition of the e-bulletin.

ECTA News We compiled some of the major ECTA news for you. You may find detailed information and may follow the developments via ECTA Newsletter.

1. NEW ECTA COPYRIGHT COMMITTEE ECTA is pleased to announce the creation of the ECTA Copyright Committee. The new ECTA Committee was approved during the ECTA 34th Annual Conference in Hamburg. Dr. Christian Freudenberg and Fabio Angelini will work together as Chair and ViceChair respectively. Further information is available on the ECTA WEBSITE.

2. 10 YEAR ANNIVERSARY OF IPKEY On 29 June 2015, the Ministry of Commerce of the People’s Republic of China, (MOFCOM), and DG Trade of the European Commission, celebrated the 10th anniversary of the EU-China IP dia-logue Mechanism with an event in Brussels. F. Peter Müller, ECTA President attended this meeting on behalf of ECTA.

1. Legal and International Working Group: - Olivier Vrins - Bárbara Díaz Alaminos 2. Economics and Statistics Working Group: - Marius Schneider -Bárbara Díaz Alaminos 3. Enforcement Working Group: - Annick Mottet -Bárbara Díaz Alaminos 4. Public Awareness Working Group: - Bárbara Díaz Alaminos - Daniela Derksen 5. IP in the Digital World Working Group: - Carina Gommers - Bárbara Díaz Alaminos

5. HAMBURG CONFERENCE SURVEY After the Hamburg Conference in June 2015, delegates were asked to rate the Hamburg Conference. The questionnaire form was filled out by 162 delegates and resulted to have a positive connotation for ECTA. For the question, if the conference topics had been interesting and useful, ECTA Conference got an average rating of 3.88 out of 5. And if delegates would be interested to participate in the next ECTA conference, 98% answered yes. Additionally for the question is they would recommend ECTA conferences to their colleagues, 97% answered yes.

A report is available to ECTA members HERE.

3. EU CUSTOMS– RIGHT HOLDERS AND STAKEHOLDERS MEETING On 10 July 2015, the right holders and stakeholders meeting on customs enforcement of Intellectual Property Rights was held by the European Commission DG Taxation and Customs Union (TAXUD). Joe Cohen, Chair of the Anti-Counterfeiting Committee attended this meeting on behalf of ECTA.

We would like to once again thank all delegates who participated in the survey, and carefully assess its conference services and shape its strategy for the year ahead.

6. ECTA WORKSHOPS ECTA will be holding the following workshops: (i) 26 October 2015, ECTA-WIPO Workshop: ‘Madrid Insights and Domain Name updates’, further information is available HERE.

The report is available for ECTA members under Anti-Counterfeiting Committee paper section, i.e. http://www.ecta.org/uploads/ association-reports/Report_for_ECTA_on_ Meeting_with_TAXUD_on_10_July_2015_ (00000002).pdf

(ii) 11 December 2015, ECTA Workshop in Munich on the EU Trade Mark Reform and its Implementing and Delegated ActsQuo Vadis.

4. OBSERVATORY MEETINGS

(iii) January 2015, ECTA Expert Exchange (EEE) Workshop/Webinar on Designs, further information will be available soon.

On 29 September to 1 October 2015 the European Observatory Working Groups were held in Brussels. The following ECTA members attended the Observatory Working Group meetings:

(iv) 15 March 2015, ECTA Expert Exchange (EEE) Workshop/ Webinar on Copyright Reform, further information will be available soon.

ECTA Bulletin I 5

ECTA Interviews INTERVIEW: Keith Havelock

Keith Havelock “The aim of ECTA is to have a collective view”. Keith Havelock is a founder member of ECTA and was a council member 1980-2015. He was chair of the Membership Committee 1980-1992 and of the former Internal Audit Committee. He was chair of the Professional Affairs Committee 1996-2001. From 2001-2011, Keith was Secretary General of the Association. As if all that was not enough, Keith edited numerous publications of the Association and spoke at two annual ECTA conferences. I have had the pleasure of knowing Keith in the UK Trade Mark profession since I started in 1982 and have sat on many ITMA Institute Council and other committee meetings with him. Indeed, apart from Keith’s distinguished career in ECTA, he was also ITMA President between 1979-1981. Keith was born in Surrey in 1940 and has been married for many years (Golden Anniversary last year) to Angela, who will also be known to a lot of ECTA members, as she has supported Keith and attended many annual meetings in June and also committee meetings in October around Europe.

How Keith got involved in trade marks

Laws and Practices committee which put together evidence to the Mathys Committee, which began the steady process of updating UK trade mark law. I also reached the position of President, again at a relatively young age, with Maurice’s support”. “As I was President in 1979, this led directly into involvement with ECTA, and the involvement of Reg Lingwood of Kemps, who was one of my Vice Presidents in ITMA at the time, and who was also involved in the early discussions about forming ECTA - sadly he died prematurely before this took place”. Keith passed the UK qualifying Institute Trade Mark exam in 1961. He has been a member of ITMA Council since 1972 and was its permanent representative on the UK government’s Standing Advisory Committee on Industrial Property (SACIP) 1992-2001. Keith represented the Institute before UK parliamentary committees in 1982 and 1999. He is past chair of ITMA’s Laws and Practice Committee and was also editor of the ITMA newsletter (now known as the ITMA Review) for two periods. He was elected as Honorary Fellow of the Institute in 2001. Keith’s interest in Trade Marks and his close involvement in ITMA, naturally led him to be involved at the very beginning of the incorporation of ECTA in October 1980. “I confess to having always enjoyed being a member of a club both for the inherent interest and for the fellow members one meets”.

ist team of practitioners, representing each of the 10 Member States of the EU. Membership was open to all practitioners in the EU, originally at the princely sum of £40 per annum, or local currency equivalent. This was lowered to £30 subscription rate following the first council meeting. Applications for membership were invited and further information was to be obtained from the Secretary General, Florent Gevers, the chair of the Membership Committee (Keith Havelock) or other founding officers. The original incorporated officers of ECTA were located at 69 Cannon Street, London, where ITMA was at the time based and Roy Marshall was the secretary. By 1981, membership of ECTA was 268 members.

“I got involved in trade marks as a direct result of attending a talk at our church youth club by the original R G C Jenkins, who was the father of one of our members (a close friend of Angela’s). I was very intrigued by the profession he spoke about and, after discussions with him, eventually joined his firm (in 1959). The firm’s trade mark work was out-sourced at the time and I accompanied the outside agent (Will Richards of Joseph Harris & Co) to see clients, attend hearings and so on until it was felt that I had learned enough to attend to these matters on my own. Thus I had a lot of responsibility at a young age. I joined ITMA partly to put the firm’s existence on the trade mark map as it had had no contact with the Institute before I joined”. “When I moved to Reginald Barker, I worked initially under Maurice Rowland, who was a founder of the Institute, and he encouraged me to follow in his footsteps, which I did happily, always finding the work it undertook satisfying and interesting, to say nothing of the great characters I met and was able to work with as a result. I was invited to join the 6 I ECTA Bulletin

“I have always loved being involved in the trade mark profession in all its aspects, finding the work enjoyable and varied and the people involved congenial, friendly and humorous, and this has not changed much over the years. “All trade mark people enjoy a good party”. I have liked trying to help things along and being loyal to the organisations one had the pleasure of belonging to struck me as the best way of achieving the maximum both personally, for one’s firm and for the organisations themselves”. This clearly applies to both ITMA and ECTA.

The creation of ECTA “Seeing the profession progress and become more widely recognised and respected over time, has given me a lot of joy over the years, and being able (one hopes) to have assisted in that progression has been intensely satisfying”. At that time, there were just 9 Member States of the EU. How things have moved on! The original offices of ECTA were supported by a special-

The first meetings of ECTA were held in London and Brussels, with Keith in attendance. Apart from ITMA, the only other membership groups at the time were APRAM and BMM. According to Keith, ECTA membership grew originally via personal contacts. As new countries joined the Union, they were invited to participate in ECTA with the aim to split membership by private practice and industry, so as to represent the interests of all practitioners concerned. Keith recalls that originally members of ECTA were slow to lose nationalistic attitudes, perhaps not surprisingly, as the concept of the EU was still so new. This has now changed, as practitioners are used to dealing with, and working with, OHIM, the European Commission and European Courts and also WIPO. The Trade Mark picture is much bigger now. ECTA has always had good relations with the European Commission and OHIM. As Keith said, the aim of ECTA is for members to

ECTA Interviews have a collective view. He has always thought that ECTA attracted high calibre people from the profession, and this is the same today. David Tatham, a previous president of ECTA, has stated: “I have known Keith for over 30 years as a hardworking, industrious and highly competent Trade Mark attorney. Keith was an assiduous Secretary General of ECTA for several years, but this was subsequent to the time when I was president of the Association. However, we have worked together on a number of different projects, both for ECTA as well as other organisations. It was always a pleasure to see him – and his wife, Angela – at conferences”.

Activities in IP Keith started in his Trade Mark life at R G C Jenkins in the UK in 1959. At the age of 20 he had his first case in the UK Court of Appeal. He then moved to Reginald Barker and subsequently moved to D Young & Co., in 1983. He was a partner there 1983-2001 and was partnership chair in that firm’s centenary year in 1991. He was senior partner 2000-2001 and consultant 2001-2004. I am privileged also to have had Keith consult to my previous practice, Alexander Ramage Associates LLP, from 2012-April 2015, when my own practice moved across to Edwin Coe LLP.

Keith has also been active as an author and co-authored in the UK the Concise Trade Mark Law and Practice, Gower Press 1985 and contributed 1991-2001 to the UK Trade Mark Handbook, Longman 1991. He has contributed to the Community Trade Mark Handbook, Sweet & Maxwell, 2002-2007. As if all this was not enough to occupy him, he has lectured in the Certificate in IP Law Course at Queen Mary College, University of London 1986-1996. Keith is also a Freeman of the City of London. I still work with Keith on ITMA issues. He is currently a Trustee of the Institute of Trade Mark Attorneys Benevolent Fund (2010 to date) and is still involved generally on topical ITMA issues and involved in the ITMA Laws and Practices Committee. He has been so helpful when we require historical knowledge of various topics! Keith is also an Emeritus member of INTA and a director of Mays Innovations Limited, a start-up company involved in the development of new products.

Hobbies outside of IP Outside of IP, Keith is a member of the Reform Club and Marylebone Cricket Club. He is also a jazz drummer and is particularly interested in visiting New Orleans to listen to music there at various festivals. I remember talking to Keith in New Orleans about the music on offer in Bour-

bon Street way back in the year when USTA became INTA in New Orleans! “I have loved jazz, particularly New Orleans or traditional jazz, since I was a teenager, hence my interest in visiting the city as often as is decently possible. My favourite musicians from the early days of jazz are Louis Armstrong, Jelly Roll Morton and drummer Baby Dodds. Latterly I admired the music of Ken Colyer and Acker Bilk, the latter becoming a personal friend. I always wished to play the drums and I bought a full drum kit and took a lot of lessons as soon as I retired from full time trade mark practice, in 2001. I don’t play in a regular band but there have been occasional gigs in the UK and I always get to play with a particular band on visits to New Orleans”. Keith has an active life in sport, playing badminton (a life Associate of Badminton England), and formerly association football (vice president of Charlton Athletic 1989-1992) and cricket (a member of Middlesex CCC and MCC). He is also involved in choral singing (president of Claygate Choral Society and member of Kingston Grammar School Choral Society). He acts as a service co-ordinator at his local Church of England church and shares a strong Christian faith with Angela. In his spare time (!) Keith has completed two round the world trips and visited 80 plus countries. He enjoys holidays travelling, particularly on cruises. If any time is left, he helps Angela in his garden at home in Claygate, Surrey. On the family side, Keith has two children, Paul (an engineer) and Faith (a teacher), and two grandchildren, Olivia (9) and Tom (7). He also has a delightful dog, Freckle. Keith has been immersed in Trade Mark matters for over 50 years and has helped both ITMA and ECTA enormously to grow and thrive in that time. Keith – thank you for all your hard work and companionship from ECTA and from me. Cheers!

By Maggie Ramage Partner | Intellectual Property | Trade Mark Attorney For Edwin Coe LLP [email protected] ECTA Bulletin I 7

ECTA Interviews

INTERVIEW WITH NEW ECTA MEMBERS ECTA continues welcoming our new members and the organization is thrilled with their contributions and, of course, their feedback on ECTA projects and conferences.

Mr. Roland De Meersman Mr.  Roland De Meersman of ABAC-BAAN (the Belgian anti-counterfeiting association) has to his credit more than two decades experience in Intellectual Property and has spent much of this time involved with anti-counterfeiting and related work. ECTA is certainly honored to have him on board. Mr. De Meersman was one of those extremely curious about the last annual conference in Hamburg, his first one, but we suspect that he loved and appreciated it since we have been told he will get soon more involved in ECTA’s activities and commitments, which is great!

Mr. Roland De Meersman

 New members are all invited to participate and give their contribution to ECTA’s activities. Some options include giving advice or suggestions to improve ECTA conferences, writing interesting articles to be published on ECTA’s Bulletin (in this regard you may of course contact the Editorial Board), participating in the specialized ECTA Committees (Anti-Counterfeiting, Advisory, Design, Geographical Indications, Harmonization, Internet, Law, Management, Membership and Disciplinary, OHIM Link, Professional Affairs, Publications, Copyright), attending ECTA’ seminars around the EU and other countries as well and etc.

Mr. Massimiliano Leone Patrini In this regard, a new member was particularly fascinated by ECTA’s Round Table, 3D Printing and IP rights - Update held in Brussels last March. This is the case of Mr. Massimiliano Leone Patrini of MLP Intellectual Property (Italy), another ‘convert’ to Intellectual Property and very recently to ECTA thanks, in both cases, to the help of and contact with ‘inspiring’ Intellectual Property professionals.

Mr. Massimiliano Leone Patrini

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The possibility, as Mr Patrini admitted, to have pleasant meetings and conversations and, consequently, “a constant and reciprocal updating”, the opportunity to learn about the most recent developments in European and other significant IP legislation, litigation and practice and participate in related discussions are just examples of the aims and benefits of being with ECTA.

ECTA Articles short “the Office”. And the President of the Office will become its Executive Director.

Author: Giles Corbally, Partner at BomhardIP [email protected]

European trade mark law reform: key changes for trade mark owners Introduction The Trade Mark Law reform process in the EU is nearing completion bringing about changes in nomenclature, fees, proceedings, and substantive law affecting both Community and national trade marks. The majority of changes affecting the CTM are expected to come into force during the second quarter of 2016 (90 days from publication of the new Regulation whilst those that require secondary legislation to be issued, will only come into force 18 months later).

„„The official filing fee for electronic filing will be 850 EUR for a single class filing, 900 EUR for a mark filed in two classes and 1,050 EUR in three classes. As per current practice each additional class will cost 150 EUR. Other fees are lowered by 10% while  renewal fees  go down significantly, namely, to  850 EUR  for renewal in one class. Additional classes cost the same as for filing (50 EUR second class, 150 EUR for every additional class beyond 2). „„Classification: Existing registrations filed before 22 June 2012 that cover full class headings in any given class  can be amended  to include goods or services that do not fall within the literal meaning of the class headings provided they are in the Alphabetical List. The time window for this is 6 months from entry into force of the new Regulation, i.e. until the third quarter of 2016. „„Priority claims must be made at the time of filing the application. * „„Legal certainty for intervening rights:  the owner of an earlier mark who cannot successfully request the cancellation of the junior EUTM (e.g. because of prior consent, acquiescence, or non-use of the earlier mark at the time of the application for the junior mark) cannot prohibit its use.

We have summarised a number of the most important changes below:

„„Goods in transit  are subject to customs enforcement measures. Only where the presumed infringer can prove that the trade mark will not be infringed at the final destination must the goods be released.

„„The CTM will become European Union Trade Mark (“EUTM”). OHIM will be re-named “European Union Intellectual Property Office” –

„„Use of the earlier mark as a company or trade name is expressly mentioned as a form of infringement.

Summarised changes

„„Request for transfer of a trade mark registered by an unfaithful agent:  proceedings can be initiated before the Cancelation Division of the Office, when previously this could only be done in court proceedings. „„Opposition proceedings have to be provided by Member States. Opponents can rely on more than one earlier right. Importantly, applicants can request proof of use within the opposition procedure rather than having to initiate cancellation proceedings. „„Administrative (PTO) proceedings for revocation or declaration of invalidity of national trade marks must be provided. Member States, however, have seven years from entry into force of the recast Directive for introducing this change. In a number of Member States, such claims currently have to be brought before the Courts The  recast Directive  (which concerns the  national trade mark systems)  needs to be transposed into the national trade mark laws of the Member States by early 2019 (or early 2023 for the introduction of administrative cancellation proceedings).

Verifier: Steven Jennings, Tade mark attorney Lewis Silkin LLP [email protected]

*this change only comes into force 21 months from publication of the new Regulation.

ECTA Bulletin I 9

ECTA Articles

Luxembourg IP tax regime will follow the “Nexus approach” Introduction Pierre Gramegna, current Luxembourg Minister of Finance, has recently announced, in his reply to a parliamentary question raised by the deputy Laurent Mosar regarding “patent boxes” that Luxembourg will amend the strongly anchored “Article 50bis Regime”, i.e. the favourable IP Tax Regime, in line with the so-called “modified Nexus approach”.

Article 50bis Regime Luxembourg has established a business-friendly tax regime encouraging the exploitation of intellectual property rights. On 1 January 2008, with the Law of 31 December 2007 adding Article 50bis to the Income Tax Act 1967, Luxembourg introduced a favourable tax regime for incomes derived from certain Intellectual Property rights. Article 50bis provides that Luxembourg companies and Luxembourg-based branches of foreign companies can benefit from an 80% exemption on net income (royalties) derived from certain IP rights and on capital gains resulting from the disposal of such IP rights, limited to copyrights on software, patents, trade marks, domain names, designs and models, acquired or constituted after 31 December 2007.

Discussions regarding the criteria Yet both at the European level and at the Organisation for Economic Co-operation and Development (“OECD”) level, discussions regarding the criteria which must be satisfied to avoid classification as a harmful tax regime, were on-going. A progress report was published in September 2014 on “Countering Harmful Tax Practices More Effectively, Taking into Account 10 I ECTA Bulletin

Transparency and Substance” under the OECD’s project “Base Erosion and Profit Shifting” (BEPS) Action Plan. A key part of the report focuses on strengthening the substantial activity requirement used to assess preferential regimes. One of the considered approaches was the “nexus approach”, which only allows a taxpayer to benefit from an IP regime to the extent that it can be shown that the taxpayer incurred expenditures such as research and development.

Author: Claire Leonelli Partner MOLITOR Avocats à la Cour, Luxembourg [email protected]

A joint proposal, based on the “nexus approach”, was put forward by Germany and the United Kingdom. A final consensus, built on that joint proposal, was agreed by all OECD and G20 countries, with the adoption of the “Action 5: Agreement on Modified Nexus Approach for IP Regimes”. Provisions of this agreement include the following: „„An uplift of qualifying expenditure: the expenditures that a taxpayer incurs on IP and which can be taken into account in the nexus approach calculation can, in limited circumstances, be increased by 30%; „„Closure to new entrants: the current regimes will be closed to new entrants as from 30 June 2016; „„A grandfathering period: the phasing out of current existing IP tax regimes may last until 30 June 2021. On 26 February 2015, the Luxembourg Minister of Finance, replying to a parliamentary question, said that the Article 50bis Regime will be amended in order to be in line with the agreed nexus approach. The legislative procedure replacing the current regime should start sometime in 2015.

Author: Claire Denoual Associate MOLITOR Avocats à la Cour, Luxembourg [email protected]

Author: Dominique Charlotte Crassaerts Distinctive, Luxembourg [email protected]

ECTA Articles

Author: Philip Lapin, Partner Barrister and Solicitor Patent and Trade mark Agent Smart & Biggar/Fetherstonhaugh [email protected]

Significant Changes to Canadian Trade Mark Law Introduction Canadian trade mark law and practice are about to change significantly. Among other amendments, Canada will become a member of the Madrid Protocol, the Singapore Treaty and the Nice Agreement. However, the changes go well beyond those required to adopt the treaties. Some of the significant changes are outlined below.

Changes to Trade Mark Use Requirements Canada has always been a use-based jurisdiction, and will remain so insofar as rights between competing parties are concerned. However, for the purpose of obtaining a trade mark registration, it will no longer be necessary for an applicant to state whether or not the mark has been used in Canada. As a related issue, there will no longer be a requirement for filing a Declaration of Use at the end of the application process. This will result in a faster and less expensive process. However, this change also opens the door to squatters and pirates who have no intention of using a mark in Canada. As a result, there will be a significant advantage to being first to file an application to register a mark in Canada. Unlike today, it will no longer be possible to simply look at a trade mark application or registra-

tion and determine when the owner first used its mark in Canada. As a result, more investigations will likely be required to determine who has prior rights. It will likely become increasingly important for trade mark owners to monitor the Canadian Trade Marks Journal for potential oppositions. As well, there will likely be more Section 45 (summary cancellation) proceedings, which require the owner of a registration to provide evidence of use of its mark in Canada within the preceding three years.

More Non-Traditional Marks Can be Registered Canada currently only allows for the registration of a very limited range of non-traditional marks such three-dimensional trade marks, sound marks and colour marks (but only in cases where colour is tied to a particular shape). The new law will allow for the registration of additional non-traditional marks, including tastes, textures, holograms, moving images and colour that is not tied to a particular form. However, to register these non-traditional marks, it will be necessary to provide evidence of distinctiveness (secondary meaning) as of the Canadian filing date. Interestingly, it is currently possible to register a sound mark without having to file any evidence of acquired distinctiveness. Accordingly, there is a benefit to obtaining sound mark

registrations prior to the date when the new law is enacted.

Madrid Protocol While the new law does not implement the Madrid Protocol, new regulations will be implemented that will allow for the adoption of the protocol. It is anticipated that the regulations implementing the protocol will come into force at the same time as the new law.

Timing Although no one knows for certain, it is anticipated that the new law will come into force in 2017.

Verifier: Hung Nguyen Partner | Deeth Williams Wall LLP [email protected]

ECTA Bulletin I 11

ECTA Articles

Author: Carmela Rotundo Zocco Metroconsult S.r.l. , Milano, Italy [email protected]

Mediation in Europe: The OHIM Model Mediation service at OHIM The Office for Harmonization in the Internal Market (OHIM) offers a mediation service for inter partes proceedings during the appeal phase, thus allowing the parties to reach an amicable settlement. The role of the mediator consists of assisting the parties in finding common grounds to settle their dispute. “Mediation” means a structured process whereby two or more parties to a dispute attempt by themselves, on a voluntary basis, to reach an agreement on the settlement of their dispute with the assistance of a mediator. If the parties wish to commence mediation they shall submit a joint request to the Boards of Appeal via the Registry indicating that they agree to seek an amicable settlement of their case with the assistance of a mediator. The request for mediation proceedings may be presented at any time following the lodging of an appeal. Once the mediator is appointed, the parties shall communicate with the Office through the mediator. Provided that the subject-matter of the dispute falls within the framework established by the Decision on Mediation, the statement of grounds has been filed, and, where applicable, that the administration charges have been paid to the Office, the Registrar of the Boards of Appeal shall suspend the appeal proceedings and inform the competent Board accordingly. 12 I ECTA Bulletin

The mediator

Termination of mediation

The mediator’s role is to assist the parties in reaching a voluntary and mutually satisfactory settlement. It is not the role of the mediator to give legal advice or to represent any party.

Mediation shall be terminated: a) by signing a settlement agreement covering the issues in dispute (either partially or totally) between the parties b) by the decision of the mediator if, despite undertaking efforts, mediation is unlikely to lead to an amicable settlement of the dispute; c) by a written declaration from any party who may opt-out at any time after the commencement of the mediation and before signing any settlement agreement.

The mediator shall guide the mediation process. He/she may give progress reports after each stage of mediation to facilitate communication between the parties and help them to have an overall view of the situation of the pending proceedings.

Phases of Mediation The Mediation phases may be summarized as follows: „„Preparation: The mediator contacts the parties; „„Opening: Brief joint session; „„Exploration: Exploration of the parties’ interests through individual sessions with each party (caucusing); „„Bargaining: Search for solutions through individual or joint sessions; „„Concluding: If the mediation leads to a positive outcome then the guidelines for a settlement agreement may be drafted. The discussions and negotiations conducted within the framework of mediation shall be confidential.

If mediation is held in Alicante it will be free of charge. However, in case mediation takes place in the Office premises in Brussels, a one-off fee of EUR 750 is charged. The mediation agreement can also be cross-border, thus allowing to extend the agreement to different countries.

Verifier: Gian Antonio Pancot Sisvel S.p.A.

ECTA Articles Opposition system in Bulgaria - four years later filed by the holder of an earlier mark, exclusive licensees of earlier marks, owners of non-registered marks used in commercial activity within Bulgaria (but already applied for registration) or holders of marks applied for by an agent or representative of the holder.

Author: Ivan Ivanov European & Bulgarian Trade mark Attorney Managing partner IP Consulting Ltd. [email protected]

Author: Aglika Ivanova European & Bulgarian Trade mark Attorney Executive secretary of the Association on trade mark owners in Bulgaria [email protected]

Implementation of opposition procedure Since 2011 the trade mark registration system in Bulgaria has changed through the implementation of the opposition procedure. The amendments of the Law on Marks and Geographical Indications came into force on 10 March 2011 while the Ordinance for the implementation of the opposition procedure was adopted two months later on 30 May 2011.

Oppositions against national applications may be filed within three months following the publication of the trade mark in the official bulletin of the Bulgarian patent office. Oppositions against international applications, designating Bulgaria may be filed between the 6th and the 9th month after the publication of the international registration in the official bulletin of the Patent Office. The official bulletin of the BPO is issued once monthly on the last working day of the month. The decision of the opposition department does not concern costs - so each party undertakes its own costs for participating in the procedure no matter the outcome, which is a difference between the oppositions in Bulgaria and before the OHIM. When an opposition is filed, the BPO informs the trade mark applicant but does not provide a copy of the opposition itself until the formal examination is completed, which is also different from the procedure followed by the OHIM where the applicant is notified for the filed opposition and is presented a copy of the opposition. That difference is sometimes crucial as the examination on formal grounds and requirements before the BPO may last months and during that period the applicant does not know why the opposition was filed and on what grounds.

Cooling-off period Another difference between the procedures before the BPO and the OHIM is that the cooling-off period lasts 3 months in Bulgaria as opposed to 2 months according to the CTMR. The cooling-off period can be extended twice upon submitting a request filed by both parties and is subject of payment of fee for a maximum term of 9 months. The decision of the Opposition department can be appealed within three months after the notification before the Disputes department. The decision of the Disputes department can be appealed before the Sofia Administrative Court in three months term. The decision of the Sofia Administrative Court can be appealed before The Supreme Administrative Court in fourteen days. The decisions of the opposition and the dispute department are not public and cannot be accessed by third parties. (On the contrary, the decisions of the administrative and Supreme Court after that are public and freely accessible). This is a situation that continues to be evaluated going forward.

Verifier: Elena Bojinova Miller Bojinov & Bojinov [email protected]

With the implementation of the opposition system the Bulgarian patent office (BPO) waived the ex-officio examination of trade marks on relative grounds. The Bulgarian patent office does not inform the owners of earlier registered trade marks for possible conflicting applications as it is done by the OHIM.

Oppositions According to the Bulgarian Law on Marks and Geographical Indications, oppositions may be

ECTA Bulletin I 13

ECTA Articles POLAND – Letters of Consent – some good news for right holders

Author: Anna Pasiut Patent & Trade mark Attorney Sulima – Grabowska - Sierzputowska [email protected]

Letters of consent in Polish Patent Office (PPO) Pursuant to the current practice of the Polish Patent Office “Letters of Consent” are not accepted, even if issued by an economically, organisationally and/or legally linked enterprise. According to the Office, consent of the owner of an earlier trade mark does not eliminate potential risk of confusion as to the origin of goods caused by the existence of similar trade marks registered in the name of different companies. The PPO applies a very narrow interpretation of the term “source of origin”.

Current Practice Adoption by the PPO of its current practice in relation to letters of consent has its basis in the fact that the Polish Industrial Property Law (IPL) does not contain any provision directly pertaining to the use of letters of consent in case of a conflict with a prior trade mark being in force. Therefore, from a legal point of view, written consent of the owner of an earlier trade mark does not create an obligation on the part of the PPO to register later similar mark. The above interpretation of provisions of our IPL was adopted in the judgement of the Supreme Administrative Court of December 20, 2007, in the Case No.: II GSK 279/07, in which the Court stated that there was no provision in our IPL constituting a basis for acceptance of letters of consent by the PPO in case of conflict 14 I ECTA Bulletin

with prior valid trade marks and that. Despite the aforementioned, the provisions of the Polish IPL were not in conflict with article 4(5) of the Trade Mark Directive No. 89/104 (replaced by art. 4(5) of the Directive No. 2008/95) according to which the Member States may (but are not obliged to) permit that registration need not be refused where the proprietor of the earlier right consents to the registration of the later mark. The current practice of the PPO as regards letters of consent has become a problem especially for companies with big trade mark portfolios which have to incur additional costs to defend their “own” trade marks in Poland now, e.g. by assigning cited prior marks to one company. Fortunately there is a good news for the right holders.

Polish Parliament implementing new law

er trade mark or the owner of an earlier personal or proprietary right expresses written consent for registration of the later trade mark”. The new Law will come into force on November 30, 2015, and as of that date letters of consent shall be accepted again in Poland.

Closing remarks Introduction of the new art. 133.1 into the Polish Industrial Property Law constitutes a very positive and long awaited change and will help further harmonisation of trade mark examination practices across the European Union. The new art. 133.1 of IPL will be also in line with the new EU trade mark law. The wording of art. 5.5 of the New EU Trade Mark Directive (draft of 0806-2015) provides for obligatory acceptance of letters of consent.

On July 24, 2015, following efforts and remarks filed by the Chamber of the Polish Patent Attorneys, our Parliament adopted a new law: Law on amendments to the Industrial Property Law and some other Acts, which contains a provision directly pertaining to consent of the owner of an earlier right in the trade mark related matters. New art. 133.1 of the IPL reads as follows: “Provisions of art. 131.1.1., 132.1.1&2 and 132.2, 5&6 shall not be applicable if the owner of an earlier trade mark application, the owner of an earli-

Verifier: Jarosław Kulikowski, Managing partner Kulikowska&Kulikowski [email protected]

ECTA Articles

Author: Ernst-Jan Louwers, attorney-at-law Louwers IP|Technology Advocaten [email protected]

3D printing: threat or opportunity? Introducing 3D printing 3D printing is seen as iconic for the so-called Third Industrial Revolution. Apart from interesting opportunities, these disruptive technologies may introduce new legal challenges. These include counterfeit, piracy, (product) liability issues and enforcement. The risk of infringement is accelerated by the ease of dissemination of illegal copies and the fact that 3D scanners and printers are available  at affordable prices. 3D printing is an additive process where successive layers of material are laid down in different shapes, as opposed to traditional techniques which mostly rely on removal of material by methods such as cutting or drilling (subtractive processes). This not only covers printing 3-dimensional output from polymer or plastic material but also for instance

all kinds of metal ‘sintering’ or melting. The technologies is being applied in many areas such as consumer products, dresses, toys, gadgets, dental implants, medical prosthesis, chocolates and even parts of machines and airplanes.

3D copies You buy one  unit of  a certain product  (for instance a vase or toy rabbit), make a 3D scan of the product, process the scanned design in processing software and print multiple, identical copies. Printing can take place at home or at distributed print locations and shops.  To make things even worse, the resulting CAD or STL file can be disseminated by internet to enable others to print true copies.

Sharing and enforcement The developments are particularly challenging because of the ease of sharing and the difficulty of enforcement in the online environment. A comparison can be made to the struggle of the music industry and publishers with online music and e-books. Product design Product designs can be protected by design rights, patents, copyright or trade mark (and maybe also as trade secret). There have only been a few public conflicts involving 3D printing. For instance Fernando Sosa’s 3D printed Iron Throne iPhone dock in the shape of the throne of swords from the Game of Thrones. HBO acted against this product and the parties settled. Nonetheless, more cases can be expected to emerge with 3D printing becoming mainstream. Customization and mindset But there is more. Consumers  or professional consumers (‘prosumers’) create or adapt existing

product designs, which are becoming tailor-made and demand-driven. Some manufacturers offer the possibility to personalize products, like Nike. So who will be the owner of IP rights? Furthermore, younger generations are less concerned about protection and may expect manufacturers to ease their proprietary restriction to enable sharing, remixing and creating mashups. Such mind shifts put pressure on brand owners to rethink their IP policies. Liability New supply chains and business models appear. Service providers emerge as facilitators. Could a 3D print shop be liable for IP infringement? A striking parallel can be drawn with Pirate Bay and eBay.

Closing remarks 3D printing may cause shifts to supply chains and commercial and legal relationships. Certain manufacturers can use 3D printing to enable on-demand supply of personalized products and spare parts. Brand owners may need to consider turning threats into opportunities.

Verifier: Michael Zoebisch Partner rwzh Rechtsanwälte Wachinger Zoebisch Partnerschaft [email protected]

ECTA Bulletin I 15

ECTA Cases Recent developments in Austrian case law on bad faith: trade mark trolls! other form of bad faith developed by a plaintiff acting as a genuine trade mark troll using ambush trade marks.

Author: Emanuel Boesch Partner and attorney at law (Rechtsanwalt) Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH [email protected]

Trade Mark trolls Most practitioners will be familiar with the phenomenon of patent trolls. Recent Austrian case law has shown that similar business models have also been developed in the field of trade marks. So far, bad faith decisions in Austria mainly dealt with trade marks applied for in an infringement of loyalty obligations or with applications filed with the intention to prevent others already using the respective signs from further use in business.

Case Feeling/Feel II In a recent judgement of 17 September 2014, case 4 Ob 98/14m [Feeling/Feel II] the Austrian Supreme Court for the first time dealt with an-

Plaintiff, a trade mark and advertising agency domiciled in Bulgaria with a managing director residing in Austria, tried to prevent the Austrian distribution partner of Volvo from using the word FEEL in an advertising campaign from 2006 for the Volvo C70 model based on an Austrian trade mark and a Community trade mark, both for the word FEELING and with a priority of December 2005. In essence, defendant argued that its use of the sign FEEL would not amount to trade mark use of FEELING, that the sign FEEL used would merely be descriptive and that there would be no danger of confusion. Moreover, defendant raised a bad faith defence. Plaintiff could indeed not demonstrate any serious business model for actually using or exploiting/licensing its trade marks in business. Until 2010, plaintiff, its managing director and related companies had already filed more than 3000 Austrian trade marks and more than 450 Community trade marks, but in the end, only 120 trade marks became registered. This is a very low ratio bearing in mind that usually only 12 to 15% of trade mark applications fail to get registered. Plaintiff applied for trade marks and repeatedly filed for extensions to delay payment of application fees as long as possible. At the same time, plaintiff looked for targets using his trade marks or similar signs in business and sent warning

letters to and filed infringement actions against such persons/companies; as for the majority of the trade mark applications, plaintiff withdrew the applications to avoid fees. The reported decision confirmed that trade mark applications can under certain circumstances be considered to be filed in bad faith, even if, at the time of filing, no third parties had used the signs applied for yet. The decision also clarified that an intention to prevent a specific competitor from using a sign in business shall be no requirement for assuming bad faith.

Similar applications in Germany Similar speculative applications had occurred in Germany: the reported case mentioned three German second instance decisions confirming comparable bad faith activities of the same plaintiff and its managing director (Higher Regional Court of Düsseldorf, case I-20 U 199/09; Higher Regional Court of Frankfurt/Main, cases 6 U 126/12 and 6 U 9/13). In a more recent Austrian second instance decision again concerning the same plaintiff (Higher Regional Court of Vienna of 13 November 2014, case 34  R  1127/14 – RUSH), reference is being made to the reported case law. On this occasion the second instance clarified that assignees also acquire bad faith from the initial applicant. Assigning a trade mark filed in bad faith will therefore not help to avoid the bad faith defence.

Concluding remarks The reported Feeling/Feel II case from Austria concerns a quite drastic form of bad faith with rather special circumstances. However, the case demonstrates that, given a defendant with the necessary financial means, it is possible to successfully defend a case by pleading bad faith and to eradicate business models based on ambush trade marks.

Verifier: Ursula Leber Sonn & Partner Patentanwälte [email protected] 16 I ECTA Bulletin

ECTA Cases Enhanced level of protection for reputed trade marks in Hungary

Author: Dr. Tamás Gödölle Partner with Bogsch & Partners, Budapest [email protected]

element itself is of sufficient distinctiveness. The Court shared the opinion of the HIPO regarding both the reputation of the trade marks “O2” and “The O2” as well as the association with the cited earlier trade marks by the average consumer.

Decision on reputed trade marks Requesting the registration of emO2 An optician company filed a national trade mark application with the Hungarian Intellectual Property Office (HIPO) requesting the registration of the following emO2, word+device mark in classes 5, 9 and 44.

A major telecommunication company filed an opposition on the grounds of Section 4(1)b1 and 4(1)c2 of the Hungarian Trade Mark Act. The opponent requested the rejection of the trade mark application based both on confusing similarity and exploitation of the repute of its earlier community trade marks The O2, O2, COMFORT O2 and O2 HEALTH. The referred trade marks were registered among others also in similar and identical classes for partially similar and identical goods/services.

Assessing the trade marks “O2” and “The O2” The HIPO accepted the evidences and assessed the cited trade marks “O2” and “The O2” as having a reputation and rejected the application in its entirety. In its decision the HIPO also concluded, that due to the common dominant element “O2” there is such a high level of visual, phonetical and conceptual similarity between the opposed mark and the reputed earlier marks that an informed, reasonably careful and alert customer recalls in his/her mind the reputed trade marks of the opponent. Consequently, the HIPO stated that granting protection to the TM application would confer unfair market advantages to the applicant as customers would purchase the applicant’s goods or use the applicant’s services because of the well-known and reputed name of the opponent.

Following an appeal the Budapest Appeal Court upheld the decision of the first instance Court and established that if a cited earlier mark has reputation, the similarity of the opposed mark and the reputed mark should not even reach the level of likelihood of confusion, as in such cases even a similarity of lesser degree is sufficient to be an obstacle to registration. In the concerned specific case the similarity was in fact well beyond being minor, however, the final decision pointed out further that being CTMs extensively used and advertised in other Member States of the EU for a 10-year long period and reaching there indeed a reputation, the cited CTMs deserve the reputed status and protection for covering all classes of goods/services also for Hungary, even if local use or reputation may not be established. So the opposed Hungarian trade mark was rejected for all classes.

The Metropolitan Court The Metropolitan Court – rejecting the request to overturn the HIPO decision – established additionally that the scope of relevant customers is twofold (opticians and ophthalmologists as well as everyday contact lens users), so the O2

1 Section 4(1)b – A sign may not be granted trade mark protection if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services there is a likelihood of confusion on the part of the public. 2 Section 4(1)c – A sign may not be granted trade mark protection with respect to dissimilar goods or services if the sign with the later date of priority is identical with or similar to an earlier trade mark having a reputation in the country where the use without due cause of the later sign would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trade mark.

Verifier: Dr. Marcell Kereszty Gödölle, Kékes, Mészáros & Szabó Patent and Trademark Attorneys E-mail: [email protected]

ECTA Bulletin I 17

ECTA Cases Smoke on the North Sea Comment on the judgment of March 3, 2015 of the president of the Antwerp Commercial Court (Tabacofina and British American Tobacco v Torrekens and Landewyck)

Background case When an established brand is phased out, can third parties take advantage of its goodwill to create a new, similar brand? No, says the Antwerp Commercial Court. BELGA was Belgium’s oldest and most famous cigarette brand, whose packaging featured a distinct color combination of red and yellow/black and gold. The packaging is protected by several word and device mark registrations owned by Tabacofina and British American Tobacco (“BAT”).

Author: Philippe Péters Partner NautaDutilh [email protected]

Author: Pierre-Yves Thoumsin Associate NautaDutilh [email protected]

those marks, within the meaning of the CJUE’s Interflora decision (C-323/09) on Google Adwords. The court dismissed this argument, on the ground that the present case does not concern marks competing on the basis of their own merits but rather an attempt by a newcomer to ride on the coattails of older, famous marks. The court also upheld the claim based on unfair trade practices, due to the deliberate use by the new mark of the same “look and feel” as the famous BELGA cigarette brand. In 2014, the decision was taken to replace the BELGA brand by BAT’s LUCKY STRIKE brand. A six-month migration period was organized in order to inform consumers of the change, and the last BELGA cigarettes were put on the market in late November 2014.

The court found the signs similar due to their use of the same color combination and of symbols referring to Belgium (the word BELGA, the letter B and the crown). The court stressed that the signs were intended to be similar, according to the defendants’ own statements.

At the end of October 2014, the Belgian tobacco manufacturers Torrekens and Landewyck launched a new brand of cigarettes, whose packaging features the colors of the Belgian flag, the letter B, and a picture of a crown symbolizing the Belgian monarchy. In the press, Torrekens expressed its intention to launch a product that would replace the last brand of Belgian cigarettes, which had just disappeared from the market.

The court upheld the claim based on likelihood of confusion, noting that the average consumer of tobacco products may not have followed the migration process and may thus not be aware of the fact that the BELGA brand has disappeared.

Tabacofina and BAT suing Torrekens and Landewyck

In addition, it was obvious to the court that the defendants were trying to take unfair advantage of the reputed BELGA trade marks, through association with these reputed marks.

Tabacofina and BAT sued Torrekens and Landewyck for trade mark infringement and unfair trade practices.

The defendants argued, on the other hand, that they were using a sign similar to the BELGA marks in order to propose an alternative to

18 I ECTA Bulletin

The defendants were thus ordered to cease using the disputed packaging and to recall and destroy all products they had placed on the market. With this clear judgment, the Antwerp Commercial Court addresses an unusual issue and grants “posthumous” trade mark protection.

Verifier: Lidy-Anne Jeswiet Head of Trade mark Practice GEVERS European Intellectual Property Architecs

ECTA Cases Danish Supreme Court on rims for cars spareparts or enforceable design rights?

Dispute on rims sold by East Scandic In a decision from March 2015, the parties East Scandic A/S (East Scandic) and Bayerische Motoren Werke Aktiengesellschaft (BMW) were disputing whether four different rims sold by East Scandic infringed corresponding design registrations owned by BMW. This included questions on validity in terms of individual character, the possibility of reviewing a final OHIM decision on validity between the same parties and designs, the question of similarity of the designs, and whether design registrations of rims are enforceable in view of Article 110 of Council Regulation on Community Designs No 6/2002 of 12 December 2001 (CDI) or are to be seen as non-enforceable spareparts.

Reference to Supreme Court As OHIM had already made a final decision in a dispute between the parties on the individual character of BMW’s designs, the Supreme Court referred to Article 86 (5) CDI and dismissed the claim from East Scandic to review this decision. Thus, the legal basis for the Court was valid design registrations for BMW with individual character.

The Supreme Court found that the design of a car is not restrictingthe design of rims and that rims, unlike spareparts, are produced and used in order to provide the car with a different and typically smarter look. The Court held that rims with different designs can be used on the same car model and that the same rim design can be used on different car models. Thus, the use of rims is normally not for the restoration of the original design, but to upgrade the overall look of a car. With this reasoning, the Court rejected that rims should be covered by Article 110 CDI and made clear that BMW may seek to enforce their design rights to the rims in question.

Concluding remarks

Concerning the disputed rims, the Supreme Court found that they amounted to slavish imitations and infringed the design rights of BMW. The Court further found for infringement of the Danish Marketing Practices Act and the Regulation No 207/2009 on Community Trade Marks as regards references and use of the BMW trade mark.

The decision underlines that Article 110 CDI must be given a restricted scope and seen in conjunction with the CDI preamble recital 13 on component parts of a complex product. Thus, the decision highlights the claim that the component part must fit or be necessary as part of the complex product in order for Article 110 CDI to apply and to refuse design protection.

Author: Anette Rasmussen Attorney at Law, Team Manager Legal Team with Awapatent A/S, Denmark. Managing Partner of Awa Law Advokater ApS, Denmark. [email protected]

Concerning Article 110 CDI, East Scandic argued that in the event of enforceable designs, the market would be monopolised in favour of car manufacturers. In support hereof, East Scandic argued that rims should be seen as spareparts with the purpose of repairing the original product to restore its original appearance and further that rims must fit a specific car model and tire and therefore must fulfill a number of technical claims.

Verifier: Christina Type Jardorf Director, Attorney at Law, Head of IP Prosecution, Accura Advokatpartnerselskab, Denmark. ECTA Bulletin I 19

ECTA Cases

Author: Izabella Dudek-Urbanowicz Patent and Trade Mark Attorney Head of Trade Mark and Design Department Patpol - European and Polish Patent and Trade Mark Attorneys [email protected]

CITY BROKER Key role for trade marks having dominant and distinctive elements Until now, the Polish case law as a rule set out that when comparing trade marks the key and crucial role is played by the most dominant and distinctive elements. The case presented below shows that a modification is taking place in the Polish courts approach.

Change in approach in Polish courts The issue concerns the trade mark CITY BROKER no R-195246, protected in Poland since December 1, 2005 in class 36 for „insurance brokerage, insurance consultancy, real estate brokerage.”   A group of companies associated within Citigroup Inc. raised an allegation of similarity of the aforesaid mark to the following earlier trade marks: CITIGROUP no R-131558, CITIFINANCIAL no R-150729,  CITIINSURANCE no R-163106, CITICAPITAL no CTM 00186837 and CITY no R-138423 destined generally for insurance services, financial affairs, banking, investment services and credit card services.

Cancelling the right of protection for CITY BROKER The Judicative Board of the Polish Patent Office (PPO), by virtue of a decision of 21 October 20 I ECTA Bulletin

2011, case no Sp. 535/09, shared the opponent’s point of view and cancelled the right of protection for the trade mark CITY BROKER (word-figurative) no R-195246. The Board found indirect confusing similarity between the marks concerned, based on a possibility of evoking associations. In the course of comparing the subject trade marks at visual level, the Patent Office decided that the graphic setup of the questioned trade mark is poor and plays secondary role. Moreover, according to the Patent Office, the most dominant and crucial for finding similarity between the questioned trade mark and the cited trade marks are the word elements “citi” and “city”, while the remaining word elements appearing in the marks, namely “group”, “financial”, “insurance” and “capital” as well as “broker” in the questioned mark, shall be classified as non-distinctive, as they are only descriptive and indicate the kind of services marked therewith. The graphic elements in the questioned mark, namely fanciful letters “C” and “B”,  from the point of view of the Patent Office, were not crucial.

the subject mark and returned the case to the Patent Office for re-examination, claiming that the comparison of the marks in question made by PPO was unilateral, having ignored the additional elements (words and graphics) of the questioned word-figurative trade mark. Besides, the Court found that it is not correct to assess trade mark similarity only according to some elements appearing in the marks, even though these were the most distinctive elements, without an earlier analysis of the mark as a whole. The owners of the earlier marks disagreed with the judgment of the District Administrative Court and filed a cassation complaint to the Supreme Administrative Court, however the Supreme Court shared the standpoint of the District Court and eventually dismissed the complaint.

City Broker filing a complaint The company City Broker disagreed with the above decision and filed a complaint to the District Administrative Court. The Court, in response to the above mentioned complaint, by virtue of a judgment of 21 November 2012, case file No. VI SA/Wa 1191/12, annulled the earlier decision of the Patent Office on cancellation of

Verifier: Jarosław Kulikowski, Managing partner Kulikowska&Kulikowski [email protected]

ECTA GossIP Collection item

Attorney- at- Law joining Muller

The birth of Theo Schumacher

If you meet Ari Pekke-Launne (Kolster OY, Finland) you might come away a little richer or a little poorer, depending on what you have in your wallet that day. This is because Ari is an avid coin collector who has interest in even the newest of Euro coins.

It has been shared to the ECTA office, that Karin Lochner, Attorney-at-Law who used to work for for Grünecker Patent-und Rechtsanwälte and Kuhnen & Wacker, joined the Müller Schupfner & Partner office on 1 July, 2015.

Jan Schumacher (Taylor Wessing, Germany) missed our annual meeting in Hamburg, but with a solid excuse. Jan was getting ready to become a Father!

Ari started his hobby in 1977 while living abroad with his family. He was intrigued by all these different currencies and it was a hobby embraced by many of the students at the international schools he would attend.

Karin Lochner studied law in the Universities of Regensburg, Germany, and Trieste, Italy. And obtained her clerkship in Nürnberg, Regensburg and San Diego (USA).

As time passed the collection grew larger and a curious new trend began; some of the countries these coins came from ceased to exist. The biggest change, of course, was the appearance of Euro, which replaced many currencies. With so many different coins minted over the years you have to decide the rules of the collection. Ari decided to put aside those that look different and tell a story. Used coins passing through many hands eventually finding their way to his collection all carry a special meaning. He also has some longtime friends who occasionally make exchanges with him.

Theo Schumacher was born on 13 June 2015 weighing 3.7 kilo. While clearly a proud papa, Jan has noticed a significant loss of sleep the past few months and will clearly be happy when Theo starts sleeping through the night.

We wish her all the best at the Müller Schupfner & Partner office!

Festivity in Jordan! Finally, our own Firas Qumsieh of NJQ & Associates (who didn’t want to toot his own horn so we took the liberty of adding it ourself) was married in July to Dima Goussous. A number of our IP colleagues were in attendance (see picture). Indications are it was one of the social events of the year in Jordan and we wish them a fairytale “Happily ever after”.

Currently the special mint 2 € coins are of interest for many collectors and Ari is no exception. Finland issues at least one every year, and Ari is happy to change these with friends having a similar interest, so come to the conference prepared!

Do you have news you would like to see published in a future bulletin? Please contact our GossIP Editor Mr. Firas Qumsieh at [email protected] with details and just maybe your announcement can go out to all our ECTA community! ECTA Bulletin I 21

Editorial Board PREPARED BY ECTA PUBLICATIONS COMMITTEE

INTERVIEWS

Chair Hande Hançer GÜN & PARTNERS [email protected] Vice Chair Craig A. Bailey Corsearch Europe | Wolters Kluwer Corporate Legal Services [email protected] Secretary Alessandro Massetti AKRAN [email protected]

GossIP Firas Qumsieh NJQ & Associates [email protected]

ECTA MANAGER LEGAL AFFAIRS Bárbara Díaz Alaminos [email protected]

ARTICLES Peter Spies DINEFF TRADEMARK LAW LIMITED [email protected]

ECTA LEGAL COMMUNICATOR Daniela Derksen [email protected]

CASE LAW Christian Bolduc Smart & Biggar/Fetherstonhaugh [email protected]

22 I ECTA Bulletin

Craig A. Bailey Corsearch Europe | Wolters Kluwer Corporate Legal Services [email protected]

ECTA Bulletin October 2015