ECTA European Communities Trade Mark Association

Transcription

1 ECTA European Communities Trade Mark Association Minutes of the Law Committee London, UK, June 8, 2005 A total of 25 participants attended the meeting, namely: Dietrich C. Ohlgart Doris Bandín Pedro Alves Moreira Fabio Angellini Jean Bleyer Fabrizio de Benedetti Antonio Corte-Real Ingrid Desrois Bengt Eliasson Florent Gevers Petra Korejzova Christopher Morcom Maria Nyrell Max Oker-Blom (as President of ECTA) Helmut Pastor Helen Papaconstantinou Joao Pereira da Cruz Helmut Sonn Kristiane B. Vanborg Helmut Sonn David Tatham Dr. Christos A. Theodoulou Andreas W. Renck Jan Wrede Boudewijn van Vondelen (as guest) The agenda was as follows: 1.- Approval of the minutes of the Meeting of the Law Committee in Copenhaguen The minutes of the Law Committee Meeting held in Copenhaguen on 21 October 2004 at the Hotel Skt. Petri were approved. 2.- Review of the Refusal Procedure and the Safeguard Clause of the Madrid Protocol by the Ad hoc Working Group in Geneva, 4-8 July 2005 ECTA s Legal Coordinator, Sandrine Peters, would be attending the Meeting of the Standing Committee that would be held in Geneva from 4 July to 8 July The relevant document, which could be retrieved at reviewed the Refusal Procedure and the Safeguard Clause of the Madrid Protocol and anticipated possible amendments to the Common Regulations. This document had been commented on in ECTA Flash no. 7 and no. 11 of The conclusions of the Working Group would be reported to the Assembly of the Madrid Union in September 2005 and would provide a basis for the International Bureau to prepare specific proposals for adoption by the Assembly in September If required, the Working Group would be convened to meet again in the first

2 half of 2006 to consider the draft provisions prepared by the International Bureau before they were finalized for submission to the Assembly. Some Committee Members nevertheless held the view that the Protocol would probably continue to prevail for the next five years, if not longer. Committee member Ingrid Desrois had prepared some comments on the document, to be sent to Sue Van Looy, ECTA Secretary, with copy to Dietrich Ohlgart, for circulation among the members of our Committee seeking their urgent comments in view of the fast approaching 4 July deadline. 3.- Directive on the Enforcement of IP Rights. A status report as to the implementation in the different EU Member States Austria The subject was under political debate. The interested circles wanted to have the opinion of other countries. The matter was, therefore, at an early stage of development. Germany The German Justice Department wanted to issue a draft in July 2005 but the elections had forced a change of plans. It was possible that Germany would not implement the Directive by the due date of April Sweden Sweden had a draft, and it was possible that the Directive might be implemented by the due date. UK Nothing had been done so far, but no important changes were expected. Italy The subject was not under debate, and it was doubtful that the Directive would be implemented by the due date. Portugal Portugal had a first draft that would be published for discussion in the future. Finland Finland had set up at the relevant Ministry a Working Group for the implementation of the Directive but no important changes were expected. It was possible that the Directive might be implemented by the due date. Luxembourg Nothing had happened so far. It was possible that the Directive might not be implemented by the due date.

3 Belgium The implementation of the Directive implied major changes, though it might nevertheless be implemented by the due date. France It was possible that the Directive might not be implemented by the due date. Netherlands There was no draft as yet, and it did not look like the Directive would be implemented by the due date. Denmark There was no draft as yet. The provisions on damages in the Directive could make implementation difficult. Greece There was no draft as yet, though no important changes were expected. The provisions on damages, however, could prove to be an issue. Czech Republic There was no draft as yet, and no major changes were expected. The Directive could be implemented by the due date. Spain There was already a bill, which had been reported by the Ministry of Justice to the Council of Ministers, implementing the Community Directive which would bring about a series of changes in Spanish legislation, namely, to the Law on Civil Procedure, the Consolidated Text of the Law on Intellectual Property, the Patent Law, the Trademark Law and the Law on the Legal Protection of Industrial Designs. The amendments would basically refer to the scope of preliminary inquiries, securing evidence, interim relief and the actions that could be brought against the infringement of an intellectual and industrial property right. Suggestion It was suggested by our Chairman to ECTA s President Max Oker-Blom that ECTA follow these developments very closely, be it through our Committee or through another Committee. 4.- Up-date on the reduction of CTM fees ECTA had been very active on the subject and was pleased to see that some of its suggestions had been taken into account. The latest OHIM draft of 18 April 2005 further lowered the registration and renewal fees, specially when renewal were done by electronic means.

4 All things considered, our Committee decided that no further comments should be made on the subject. The Law Committee, however, was worried about the impact that the reduction in fees could have on the services offered by the Office. A certain decrease in the quality of the services had been observed, and the suggestion was made to send Joao Pereira Da Cruz, as head of the OHIM-Link Committee, specific examples relating to the quality issue for submission at the next meeting that this Committee would hold with the OHIM on 19 September. 5.- Report on the expert consultation on security interests in IP rights held in Geneva 9 May 2005 The relevant documents for this Meeting were published by WIPO/IM/SEC/05/INF/1- Prov. Sandrine Peters represented ECTA at that Meeting of the Standing Committee. The Meeting was highly controversial, and the discussions focused to a great extent on the content of the United Nations Convention on the assignment of receivables in international trade. It was not expected that much progress would be made on the subject in the near future. It was in any case highlighted during our Committee Meeting that trademarks as property were becoming a very important issue both legally and commercially and that this development should be taken into account in future legislation. 6. Report on the Session of the SCT and proposals for topics to be discussed at the 15 th Session of the SCT, 29 Nov.-2 Dec The TLT was currently under revision and the main changes referred to the introduction of electronic communication, provisions concerning the recording of licenses and the creation of an assembly that would be able to proceed with further changes to the Regulations under the TLT without convening a Diplomatic Conference. ECTA Flashes no. 7 and no. 8 of 2005 had dealt with this subject. The Diplomatic Conference, scheduled to meet in March 2006, had to adapt the proposed changes. Moreover, the proposals for topics to be discussed at the 15 th Session of the SCT, 29 Nov.-2 Dec should be sent to WIPO by July The Members of the Law Committee had therefore been invited to send proposals in this regard to ECTA Legal Coordinator, Sandrine Peters, as soon as possible considering the impending deadline. 7. Future work at the Law Committee The Law Committee will continue to review and discuss new pieces of draft legislation and OHIM Guidelines and render observations on these drafts.

5 a) Draft Guidelines The OHIM had provided ECTA with copies of the draft guidelines concerning proceedings before the Office for Harmonization, i.e.: - Part A - General provisions and proceedings before the Office; and - Part E, Section 3 Changes in application or registration. The documents could be found on ECTA s website under: ECTA had been asked to submit its observations to OHIM by 1 September It was established during our meeting that Committee members should send comments on this draft to our member Andreas Renck, who would be the reporter, with copy to Dietrich Ohlgart and Sandrine Peters, by 15 July The draft paper would be circulated by the reporter among the members of our Committee in order to finalize the work by August. b) WIPO Geographic Indications Meeting ECTA would be represented at the WIPO Geographic Indications Meeting that would take place in Parma on June Law Committee Member Fabrizio de Benedetti stated that someone from his firm would attend that Meeting on behalf of the Law Committee. 8. Any other business The Chairman of our Committee asked for volunteers to represent ECTA at various Conferences or Organizations, such as the Standing Committee of WIPO. Committee Members Doris Bandin, Kristiane B. Vanborg and Florent Gevers volunteered. Lastly, it was suggested that members report to the Law Committee any official points of view from the governments of the respective EC Member States. 9. Luncheon Meeting with Mr. Ernesto Rubio, Assistant Director General of WIPO After the regular Law Committee meeting, the members of the Committee had a luncheon meeting with Ernesto Rubio, Assistant Director General of WIPO, in which he explained WIPO s proposal on a possible amendment of the Madrid Protocol regarding the Refusal Procedure and the "Safeguard Clause". Doris Bandín Secretary of the Law Committee 29 June 2005