14th Meeting of the OAMI Users Group 9 March 2007 in Alicante, Spain. Report by MartinSick Nielsen, Chairman Q85

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1 14th Meeting of the OAMI Users Group 9 March 2007 in Alicante, Spain Report by MartinSick Nielsen, Chairman Q85 The OAMI Users Group meeting was held 9 March 2007 in Alicante. This report covers selected issues discussed at the meeting for information of the members of AIPPI. Official minutes of the meeting will be prepared by the Office and made available on the website of the Office at oami.europa.eu. Statistics The Office is experiencing an increase in the number of applications for CTM as well as RCD, a decrease in oppositions, and an increase in appeals as well as an increase in requests for information. User satisfaction The Office has undertaken its second user satisfaction survey. The results of the survey are available on the website of the Office, and do overall not show any significant change in the satisfaction with the Office as compared to the results of the survey conducted in To improve user satisfaction the Office is preparing a Service Charter, which set the level of service the users may expect from the Office, and an improved Quality Check System. The latter implies that the decisions of the Office are checked by the classification expert group and the legal advisors using a number of newly developed checklists. The Office will share the checklist with the users. The checklists may be used to ensure compliance with the requirements of the Office. E-business The Office presented the status of its pending projects, and its planned projects. Of particular interest is the improved e-filing system, which is expected to be launched in the 4 th quarter of 2007, and Euroregister (a search facility, which enables users to search in the CTM register and in the national trademark registers of the member states in one single search), which is expected to be launched in the 2 nd half of

2 The NGOs raised substantial criticism over the performance of a number of the e-business services of the Office, including in particular the e-filing system. The Office is aware of the problems and is striving to improve the performance. To ensure that the Office is notified of, records and addresses all problems with its e- business services, users where requested always to call the e-business helpdesk when the problem occurs or send a complaint by to customercareunit@oami.europa.eu. The e-business helpdesk is open for services form 7:30 am to 7:30 pm on all working days of the Office. Further, the Office is conducting e-business workshops in Alicante and in Brussels, and the NGO s were requested to make their members aware of these workshops. Revision of fees The Office is accumulating substantial cash reserves from its increasing profit, and to comply with the requirement of Art. 139 (2) CTMR for the budget of the Office to be balanced, the Commission has issued a communication (COM (2006) 865 of 22 December 2006) proposing a method of regular review of the fees based on the Office s financial perspectives and to manage the cash reserves in accordance with a predetermined formula. The Commission seems to be pushing the proposal forward and is current preparing a proposal for amendment of the Fees Regulation, which is expected to be presented in the spring The NGO s were generally in support of the proposal and of a reduction in the fees, but made reservations that the Office must keep sufficient cash reserves to continuously improve the quality of its services, including in particular the quality of its decisions, and to ensure that the fees will not fluctuate substantially over time. The representative of the Commission emphasized that changes in the fees will not become an issue until after the Office has made the investments deemed necessary to support its operations and improve its service. The Office further assured that it will conduct its operations to provide the best possible service, and not to generate a profit and reduce fees. If the proposal is adapted, it will in the short run mean a substantial reduction in fees, whereas once the budget has become balanced only minor adjustments are foreseen presumably on an annual basis at three months notice. 2

3 Further the representative of the Commission mentioned, that certain sectors within the member states (i.e. the national patent- and trademark offices) have shown resistance against the proposal, and urged the NGO s to communicate to the member states their support to the proposal. It was not mentioned during the meeting but is common knowledge that several of the national patent- and trademark offices wishes that the fees are maintained at their current level, and the accumulated cash reserves as well as the future profit of the Office is not returned to the users through reduced fees, but paid to the member states through the national patent- and trademark offices. Many NGO s have addressed and held strongly against this in their position papers. Implementation requires an amendment of the CTMR. The Community Trademark Search reports On 10 March 2008 searches will become optional. Currently 16 member states are performing searches, but it remains unclear which member states will perform services also after 10 March 2008, as well as what is going to be the fee for requesting searches. It is clear, however, that it will only be possible to request searches in all countries which are performing searches or none, and not on a country-to-country basis. Rule 5a CTMIR requires that a standard form is used for the search reports. The Office has prepared such draft form, but has not been approved by the member states performing searches. Guidelines Opposition guidelines, administrative guidelines and cancellation guidelines are expected to be approved by the administrative board in November 2007 for subsequent publication at the website of the Office. Cancellation guidelines may be published first in English only, as no current cancellation guidelines exist. Madrid Protocol guidelines are still open for comments by the NGO s. Designation of the EC in MP applications When receiving MP applications with the designation of the EC, the Offices correspond directly with the applicant (and not representative of the applicant through the International 3

4 Bureau), including sends search reports directly to the applicants. This practice does not meet with the expectations of the users. To solve this, the Office has prepared a document describing possible solutions, and the NGO s were invited to provide their comments in writing before the summer holidays. Classification The Office is in the process of updating its database according to the 9 th edition of the Nice Classification. There remain discussions of the Office practice to consider an application covering the class heading of a class, to cover all goods or services of the relevant class (according to the Nice Classification valid at the filing date). The Office maintains its position, and argues that the practice is designed to serve the applicant, which desires protection for all goods or services in a class, which would otherwise not have been possible as the Offices do not accept applications for all goods in class x. This argument leaves open a substantial room for discussion. Extending the cooling-off period The Office informed that there are neither more oppositions in the cooling-off period nor are each opposition on average longer in the cooling-off period following the introduction of the new practice for extending the cooling-off period. Article 8 (4) CTMR The Office generally accepts evidence of use of other signs during the last five years. Withdrawals The Office will issue a practice note on its implementation of the decision of the Grand Board of Appeal in Optima case (R 331/2006-G of 27 September 2006) according to which an application or opposition can be withdrawn during the appeal period with the consequence that no decision is rendered, irrespective of whether an appeal is actually filed or not. Previously the Office has required an appeal to be filed for the applicant or opponent to withdraw. 4

5 Accessibility of examiners It is not possible to contact examiners directly. Users who wish to contact an examiner by phone must use the general telephone number of the Office, and users who wish to contact an examiner by must send an to and a central service will then direct the call/ to the examiner and measure the performance of the Office. The Office generally promotes the use of communication with the examiners and promises an answer to any within two working days. The Community Design Effective as of 1 July 2007 RCD s will be published daily. Copenhagen, 12 March