Issue 024
  December 2012
Contents:
 

Cooperation Fund takes off

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CTM e-filing improvements

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Seniority project grows

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8th Liaison Meeting report

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TM5 Barcelona report

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OHIM website & convergence programme

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MARQUES meets European Commission DGs

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Designs meeting update

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Colour trade marks – US and Europe

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WIPO and class headings

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New process for OHIM Guidelines

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MARQUES Media Roundup

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MARQUES Office opening times

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Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

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More Cooperation Fund projects go live

A suite of tools making up the Cooperation Fund were switched on last month. The Fund includes 17 projects in total. More than half of these are now operational, with further developments expected next year.
Read More >>

New goods and services in CTM e-filing

 

Seniority project grows

As of 15 October 2012, OHIM has introduced a new provisional feature in the section on goods and services in the electronic Community trade mark application form. The feature allows applicants, who have selected the Class Heading for a particular class, to tick a box indicating they wish to be covered for all the goods or services in the alphabetical list of the Nice Classification.   The National Office of Slovenia and the Benelux Office of Intellectual Property (BOIP) have become the fifth and sixth offices to implement the Cooperation Fund seniority project. They join Ireland, Hungary, Portugal and the Czech Republic in the implementation of this project.
Read More >>   Read More >>
Liaison Meeting on Trade Marks
MARQUES attended the Eighth Liaison Meeting on Trade Marks which was held in Alicante on 10 and 11 October 2012, represented by Diana Versteeg, first Vice-Chair of MARQUES Council and Alessandra Romeo, MARQUES External Relations Officer.
Read More >>
TM5 Meeting held in Barcelona
In its observer status at the OHIM Administrative Board and Budget Committee, MARQUES was invited by OHIM to attend the TM5 Meeting which took place in Barcelona on 30 and 31 October 2012. The MARQUES delegation was composed of Alessandra Romeo, MARQUES External Relations Officer, and Sebastian Fischoeder, a member of the MARQUES Designs Team.
Read More >>
New OHIM website project and Convergence Programme projects
Sofia Martinez, second Vice-Chair of MARQUES Trade Mark Law and Practice Team, attended the third and last meeting of the Working Group of the new OHIM website project held in Alicante on 4 October 2012.
Read More >>

MARQUES meets European Commission DGs

 

Liaison Meeting on Designs

On 15 October 2012, a MARQUES delegation led by Diana Versteeg, first Vice-Chair of MARQUES Council (pictured), and including Alessandra Romeo (MARQUES External Relations Officer), Massimo Sterpi (of MARQUES Council) and Ian Lowe (in the chair) from the MARQUES Regulatory and Anti-Counterfeiting and Parallel Trade Teams met with officials of DG TAXUD and DG TRADE as well as with members of Commissioner De Gucht’s Cabinet.   The Designs Liaison Meeting took place at OHIM last month. In addition to representatives of the member states (current and candidate), there were members of ECTA, FICPI and INTA. David Stone, Chair of the Designs Team (pictured), represented MARQUES.
Read More >>   Read More >>
What colour is your trade mark?
Recent European and US cases on colour trade marks are compared by members of the IP Outer Borders Team.
Read More >>
WIPO clarifies class headings practice
WIPO has issued a communication entitled: Indications that the Use of Class Headings of the Nice Classification in International Applications Is Intended to Cover all the Goods and Services Included in the Alphabetical Lists of the Classes Concerned.
Read More >>
New process for OHIM Guidelines
OHIM is to adopt a new process in 2013 which will see its manuals on trade mark and registered design practice replaced by a new set of Guidelines in all official EU languages.
Read More >>

MARQUES media roundup

 

MARQUES Office opening times

Catch up on the news and discussions from the MARQUES website and social media channels.

  Please note the MARQUES Office will close at 1700hrs on Friday 21 December and will reopen at 0900hrs on Wednesday 2 January 2013.  We would like to extend Seasonal Greetings to all our members and we wish you a peaceful and prosperous New Year.

 


Brands and Social Media - Beyond Enforcement
The IP Outer Borders Team has prepared a Best Practice Guide to Social Media, and presented a workshop on this topic at the Brussels team meetings in 2012. The Guide and the PowerPoint can be found on the Team webpage.

Recent posts on the Class 46 trade mark blog

Plain packaging and restricted trade mark use: a joint statement as sisters unite
Read the joint statement, signed by MARQUES and sister organisations APRAM, BMM, ECTA and UNION-IP, on proposed legislation to restrict trade mark use.

Poland: functionality and technical features of 3D signs
Bakoma sp. z o.o. from Warsaw requested the Polish Patent Office to invalidate in part in Classes 29 and 30 the right of protection for the 3D trade mark IR-700040 owned by Compagnie Gervais Danone ...

EU, OHIM make room for Croatia
The OHIM Manual's section on EU Enlargement has been revised. The revised section deals with examination and opposition/cancellation issues in its new, unified text. This section is also being relocated to Part A of the Manual ...

General Court: “Quality has [no] future" as a trademark
In case T-22/12, the OHIM examiner and 1st Board of Appeal had refused the CTM application “Qualität hat Zukunft” by Formanu AG for goods in Classes 9, 16 and 40. The General Court dismissed the Applicant’s appeal on the following grounds ...

Recent tweets from MARQUES (@marques_ip)
Mark your diaries: the CJEU gives judgment in ONEL/OMEL http://tinyurl.com/cg6nn67  on use of a CTM in just one country on Wednesday 19 December

Chinese asparagus conquers Europe; next stop, space! Will its GI status be affected, we wonder?

Impulso Creador v Impulso: General Ct reminds us that even attentive professionals can be confused. Don't we know it!

New discussions on MARQUES’ LinkedIn page
Goodwill protection of FULECO, new mascot for the 2014 World Cup in Brazil, by the FIFA.
Fuleco is the name of the WK mascot, Brasil 2014. FIFA has registered the name and the mascot logo as a trademark but not the design. Fifa also forgot to claim the domain names and the Facebook account.

Plain packaging and restrictions on trade mark use
MARQUES, together with various other organisations, has issued a well-reasoned and strongly-worded statement to Commissioner Barnier, explaining the importance of trade marks and seeking to highlight the error of using restrictions on their manner of use as a proxy for implementing European health policy.

Customs border control and confusingly similar trademarks
Regulation (EC) No 1383/2003 provides for customs action against goods suspected of infringing certain intellectual property rights, in particular counterfeit goods. On 24 May 2011, the European Commission proposed to widen the scope of the current border measures so that the Regulation would also cover trademark infringements (use of confusingly similar marks) other than counterfeiting.
Adoption of the new Regulation would, of course, lead to much stronger IPR protection. But do you see any downsides to this?

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