A total of 18 participants attended the meeting. Those attending on behalf of the Law Committee were:

Transcription

1 MINUTES OF THE MEETING OF THE LAW COMMITTEE/OHIM LINK SUBCOMMITTEE IN THE DANUBIUS TERMAL HOTEL, MARGARET ISLAND, BUDAPEST, HUNGARY ON THURSDAY, 16 OCTOBER 2003, AT 10:00 HRS. A total of 18 participants attended the meeting. Those attending on behalf of the Law Committee were: Dietrich C. Ohlgart, Chairman Fabrizio de Benedetti Pedro Alves Moreira Michael Kiernan Maria Nyrell Helen Papaconstantinou Joao Pereira da Cruz Kristiane Vandborg Doris Bandín, Secretary Bengt Eliasson Christa Heubusch (por Helmut Sonn) Claire Lauga Max Oker-Blom Helmut Pastor David Tatham Jan Wrede Those attending on behalf of the OHIM Link Subcommittee were: Fabio Angelini Sandrine Peters Members of both the Law Committee and the OHIM Link Subcommittee in attendance were: Joao Pereira da Cruz, Chairman of the OHIM Link Sub-Committee Dietrich Ohlgart David Tatham The order of some of the items on the agenda was changed because some other matters had to be given priority. 1.- Opposition Guidelines Apparently, ECTA had not received the first OHIM letter requesting observations on the Opposition Guidelines. ECTA nevertheless had until 15 December 2003 to submit any observations. To facilitate the preparation of comments, the different subjects listed in the index were divided up among some of the participants who were entrusted with preparing the pertinent comments on the basis of their input and the related input they would receive from the other participants. The subjects were divided up as follow:

2 Part 0: Introduction Sandrine Peters Part 1: Procedural Matters - Sandrine Peters Part 2: Identity / Likelihood of Confusion (Art. 8(1) CTMR) - Kristiane Vandborg Part 3: Trade Mark filed by an agent (Art.8(3) CTMR) - David Tatham Part 4: Non registered rights (Art. 8(4) CTMR) - David Tatham Part 5: Trade marks with reputation (Art. 8(5) CTMR) - Fabio Angelini Part 6: Proof of use - Joao Pereira da Cruz Part 7: Transitional rules - Dietrich Ohlgart 2 The input provided by the other participants in regard to the respective subjects, which should consist of specific and not general comments, would be sent to the people mentioned above before 19 November Once all of the comments had been submitted, Sandrine Peters and Dietrich Ohlgart would then compile the same. Sandrine Peters and Dietrich Ohlgart would subsequently send these comments to the Chairman of the OHIM Link Sub-Committee, Joao Pereira da Cruz, before Monday, 1 December 2003, so that they could be discussed at the OHIM Link Sub-Committee meeting with the OHIM. 2.- European Parliament IP Forum A week before the Law Committee meeting Dietrich Ohlgart received a letter offering ECTA the possibility of participating in a European Parliament IP Forum in which members of the European Parliament and representatives from industry and from industrial property organizations would apparently take part. The Forum, which would meet five times a year, would have a secretariat and an executive committee, and the registration fee would be 6,000 euros. The purpose of the Forum would be to promote dialogue between the European industrial sector and the European Parliament in relation to the impact of legislation on industry. Dietrich Ohlgart would be seeking from the party who contacted him further information on the Forum for subsequent transmittal to the Law Committee. For the time being, this matter would simply be monitored and an attempt would be made to secure more information. 3.- EU Council Document on the Proposal for a Council Regulation amending Regulation (EC) No. 40/94 on the Community trade mark. Recital 4; Articles 8, 39, 78a, 130 y 131. It was stated that the members of the Law Committee should keep alert because this document would soon be undergoing some amendments.

3 3 The draft document dated 7 October 2003 established that Community searches would remain unchanged and that national searches would be optional and would hopefully improve in the future. This was in fact a suggestion put forward by ECTA. There nevertheless were some delegations that intended to maintain national searches and to standardize the search reports and others that were even considering doing away with Community searches altogether. The document likewise contained a proposal to amend article 8(5) by introducing therein well-known geographical indications, a proposal that went beyond TRIPS article 23. The adoption of the Council proposal had to be unanimous. Michael Kiernan agreed to secure more information in regard to the future amendments to the document. 4.- Commission proposal of a Directive to ensure the enforcement of IP rights 8COM(2003) 20 final of January 2003) Doris Bandín reported that after circulating among ECTA Council members the Position Paper on the Enforcement Directive that the Anti-Counterfeiting Committee had prepared, Kaj Henriksen, President of ECTA, sent the Position Paper to Madame Fourtou, the Rapporteur of the European Parliament. Madame Fourtou prepared a report reflecting the various suggestions put forward in ECTA s Position Paper and in others circulated by the interested sectors, which she made public on 19 September. On 1 October this report was discussed by the European Parliament s Committee for Legal Affairs during a first reading. This Committee would continue to read the report until the end of October when it would propose that Parliament adopt the final text before being subsequently transmitted to the Council for a final decision. For the time being there was not much purpose in making any more observations in relation to the text, it being considered best simply to follow the prosecution of the matter, particularly in light of the unlikelihood of any suggestions being taken into account. It was consequently decided that for the time being our working group would adopt a passive role while waiting for developments to unfold.

4 4 5.- Proposed extension of TRIPS Art. 23 and establishment of a Register for Geographical Indications During the last Law Committee meeting a working group including Florent Gevers was formed to review the proposal to extend TRIPS article 23. Florent Gevers intended to report on the same but was unable to attend the Law Committee meeting. Nevertheless, he made a proposal that would be later mentioned. Negotiations were underway to set up a Register for Geographical Indications of all types, which could heighten the conflict with trademarks. INTA and Marques had already submitted Position Papers. ECTA had yet to do so. The suggestion put forward by INTA and Marques was for the Register to be organized like a Central Register, with applications being examined at the local level with a view to any possible opposition procedures. Florent Gevers had suggested that the Register be like that of the INN, though the participants in the Law Committee meeting considered it best to consider this suggestion at greater length. There was also the issue of who would administer the Register, WTO or WIPO. Under the circumstances, the working group made up by Florent Gevers, Dietrich Ohlgart and Ulla Wennermark would have to prepare within the following few months a report for circulation among Law Committee members whose subsequent comments would be taken into account when preparing a Position Paper. 6.- Recent trademark cases of the ECJ Mention was made of the ruling that the Court of Justice handed down on 9 September 2003 on case C-361/01 P, brought by Christina Kik in relation to the rule in force governing languages at the OHIM, with a plea of illegality and the principle of non-discrimination. In this regard, the OHIM could find itself in a situation where the applicant might choose a first language that might not be the language of the Office, as a result of which the language of the proceedings in the event of, for example, any objections based on the absolute grounds for refusal would be that of the unofficial first language. See Sections 45 and 46 of the above ruling.

5 5 7.- Scope of protection of 3D trademark granted by national courts (recent decision of the German Supreme Court) Dietrich Ohlgart commented on the judgment handed down by the German Supreme Court, which seemed to limit the scope of protection of three-dimensional marks for in its ruling the German Supreme Court had attached more importance to word elements than to the purely device elements. 8.- Opinion of the Advocate General Jacobs of 10 July 2003 in the case Adidas Salomon AG vs. Fitnessworld Trading Ltd. (case no. C-408/01) During its meeting the Law Committee discussed the opinion of Advocate General Jacobs, whose conclusions are transcribed below: (1) Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is not correctly implemented unless the proprietor of a trade mark with a reputation in the Member State concerned is entitled to oppose the use of the mark or a similar sign, in the manner and circumstances described in the provision, not only in relation to goods or services which are not similar but also in relation to goods or services which are identical or similar to those for which the trade mark is registered. (2) The notion of similarity between a mark and a sign for the purpose of Article 5(2) of Directive 89/104 is to be assessed on the basis of the degree of sensory or conceptual similarity between them. (3) The protection conferred by Article 5(2) of Directive 89/104 does not require the existence of a likelihood of confusion between the mark and the sign. (4) It is a condition of the application of Article 5(2) of Directive 89/104 that the allegedly infringing sign is used as a trade mark, that is to say for the purpose of distinguishing goods or services. That will not be case where that sign is viewed purely as a decoration by the relevant section of the public. The Committee expressed some concern, especially in regard to point 4, which referred to a sign being perceived merely as a decorative element on the part of the relevant section of the public, for this would open the door to a dangerous situation should certain infringing device marks be considered merely decorative elements, as a result of which not only would it not be possible to exercise rights against them, for such actions would not meet with success, but the distinctive nature and any reputation of the lawfully registered trademark could be impaired.

6 6 9.- Any other business a).- The following year the members of our Committee would be reelected, and there would have to be at least three members from the nine new EU member states. The members of the Law Committee were asked to suggest some names, with attention first being drawn to existing associate members. Before the end of the year Max Oker-Blom would circulate a list of the new members so that they, too, could be taken into account. b).- The question was raised as to the possibility of making the OHIM Link Sub-Committee and independent committee or of simply allowing things to remain the same, at least over the following 24 months, as suggested by the Law Committee Chairman. The Chairman of the OHIM Link Sub-Committee was not in agreement, as a result of which it was concluded that this matter should be submitted to the Council during its next meeting. Doris Bandín Secretary of the Law Committee October 2003 I:\YSD\ecta law committee final doc