Report on the 8 th Meeting of the OAMI Trade Mark Group Alicante, 25 November By Martin Sick Nielsen

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1 Report on the 8 th Meeting of the OAMI Trade Mark Group Alicante, 25 November 2002 By Martin Sick Nielsen Representatives of the following organisations were present: AIM, AIPPI, BEDA, CNIPA, ECTA, EFPIA, EURATEX, FICPI, ICC, ICSID, INTA, LES, MARQUES, UNICE and UNION. Current status of the activities of the Office The Office expects to receive approx applications in 2002, which covers over a stabilisation of the number of applications filed during the second half of the year. According to the information available to the Office this resembles the situation with the national offices within and outside the European Union. The new department structure is in place, ia. Mr B. MACHADO has been appointed as new president of the Boards of Appeal and Mr H. JACOBSEN has been appointed as new Head of Trademark Department. Some borderline issues of the area of responsibility of the new Trademark Department remain outstanding but are expected to be solved before the end of the year. It is envisaged as part of the CTM reform to provide for an Enlarged Board of Appeal (to decide in principal matters) and single member decisions (in straight forward matters). As the first market survey in the history of the Office the so called Yellow Window market survey was completed in August The full result and analysis of the market survey will be available on the website of the Office shortly. Of particular interest is the finding of the survey that the majority of the owners will renew their national trademark registrations irrespective of corresponding seniority claims. As possible reasons for this the participants stated that national offices does not keep records of lapsed national trademark registrations, owners believe that national trademark registrations are more easy to enforce before national courts than CTMs, in particular CTMs with seniority claims, and owners in general wishes to keep their national trademark registrations until the CTM system has become incontestable.

2 Format and membership of the OAMI Trade Mark Group Representatives of four new organisations, namely BEDA, EURATEX, ICSID and ICOGRADA, have joined the Group before this meeting. It was decided that the Group shall retain this format and deal also with issues relating to the Community Design (hereinafter referred to as CD ) in the future. For this purpose the Group was renamed to the OAMI User Group. The Office has no indication that the number of participants from the organisations will increase following the expected enlargement of the European Union. The Community Design The Administrative Board of the Office has decided that applications will be accepted from 1 January 2003 with a priority date of 1 April 2003 irrespective that not all preparatory acts have been completed. The CDIR has been adopted and is expected to be published shortly. The Fees Regulation is expected to be adopted and published before the end of the year. The fees will be as set out in the documents already published by the Office. The possibility of merging the CTMIR and the CDIR into one common Implementing Regulation in the future was discussed. The Office envisages one common Fees Regulation, however, irrespective that coherence between the two Implementing Regulations will be strived for it may not be possible to merge the two. The main reason for this lies in the core difference between the two systems where a rapid registration is important in the CD system and the examination is important in the CTM system. The Office has carried out a market survey saying that approx applications will be filed the first year. In particular with respect to the origin of the owners the Office expect the pattern to be different from that of the start of the CTM system, as a substantial number of applications are expected from Japanese and Korean owners. Ornamentation will be defined in the examination guidelines. The wrongful classification of the design will not have consequence that the design in considered invalid or not filed. The Office will make public available only the following bibliographical data of an unpublished design: the filing date, the filing number, name of the owner, name of the representative. Thus no information from which the design can be identified will be made available. 2

3 A fully searchable database of CD s will not be available from the outset, but will follow as soon as possible to make the system as user friendly and transparent as possible. The database will also include expired or refused designs for the purpose of conducting novelty searches. Dotted lines will be permitted in explaining the design within limits to be determined in the examination guidelines. Generally, the Office don t wish to implement very complex systems for representing and explaining the design such as in the US. It was suggested that EUROLOCARNO is enhanced by identifying each good by a number or by including links between the good in different languages. The Offices informed that it is presently considering to identify each good by a number, and urged the users to use EUROLOCARNO as much as possible and report any errors to the Office. Using EUROLOCARNO will cut the examination time by 1-2 months. The CD Bulletin will be published in electronic form only, online and on cd-rom. A simple e-filing system is expected to be available from mid January 2003 and will be enhanced over time. Explanatory notes to the application form have been finalised and will be published on the website of the Office shortly. Regarding fee calculation, a fee calculator will be made available on the website of the Office when the Fees Regulation has been adopted. Professional representation In accordance with Art. 78 CD there are three kinds of representation: legal practitioners representatives on the (trademark) list according to Art. 89 CTMR representatives on the (design) list according to Art. 78,1 (c) CDR The list of representatives in design matters is of subsidiary nature and the Office will refuse applications for entry on the special list of representatives in design matters coming from persons who are already on the list of representatives in trademark matters or who have the right to be entered on that list. 3

4 In the future persons on the list of representatives in trademark matters may at their option use the term European Trade Mark and Design Attorney and persons entered on the list of design representatives may use the term European Design Attorney. Examination Philips/Remington and Companyline-cases The Office referred to the decisions of the ECJ of 18 June 2002 in case C-299/99 Philips/Remington and case C-104/00 Companyline and their effect on the practice of the Office as set out in its doc. TMG/02/II/6. The decision in the Philips/Remington-case was considered in line with the current practice of the Office and the decision in the Companyline-case was considered important for making clear that the further appeal to the ECJ is limited to questions of law. The participants urged the Office to also in future to identify and analyse the important decisions of the Courts with respect to their effect on the practice of the Office and communicate the results of such analysis to the users. It was argued by the EC that the decision in the Philips/Remington-case may have an effect on the interpretation of the CDR, however, the Office took the view that this remains to early to say. Registrability of geographical names On the basis of the decisions in the SPA- and Sudan-cases the practice of the Office on registrability of geographical names was discussed. The Office is dealing with each case on its merits, however, a practice note has been drawn up saying that a geographical name will not be registrable if the relevant public would perceive a connection between the goods and/or services and the geographical name or such reputation of the geographical name is in the process of being established. Presently the only decision of the Courts is the decision of ECJ in joined cases C /97 Chiemsee which is somewhat broader, however, a decision on the trademark OLDENBURGER is on its way. Further, there is an ongoing reform of the two regulations on geographical indications. In the regulations are by way of the so called conflict rule (eg. Art. 14 in Regulation 20/81), implemented a balance between geographical indications and trademark rights, however, there seems to be a tendency to balance out the trademark rights in the reform under cover of ensuring compliance with TRIPS after Doha. 4

5 The EC confirmed its position that geographical indications require international protection but that the balance with trademark rights is necessary. The Office confirmed that the conflict rule is applied in examination procedure in the same way as wine and spirits designations according to Art. 7.1 (j) CTMR, and the Offices do not expect the balance to change. Discussions were closed by the Office promising to publish its practice note on geographical names before the end of this year. Acknowledgement of receipt of statements made by applicants The Office confirmed that if the Office rejects an application due to non-registrability and the applicant submits a statement in support of the application, it is normal practice by the Office to issue an acknowledgement saying either that the Office disagree and maintain the rejection or that the Office agree and that the application will be further processed on this basis. The Office will ensure that such acknowledgements are issued in all matters in the future. CTM reform and improvement The EC provided the following update: Regarding revision of the CTMR the EC has had other priorities but now expect to submit a draft before the end of the year. So far the EC has not considered the consequential revision of the CTMIR. Regarding the search system the EC will prepare a suggestions taking into consideration the comments received. Regarding the issue of professional representation the EC did first make a more ambitious proposal, but it was said that not too much should be expected. The system works and there is no imminent reason to amend it. Regarding the link between the CTM system and the MP, the issue has been reassumed by the EC. Taking into consideration the US accession to the MP the timing seems right and the EC hopes to be in a position to provide positive news at the next meeting of the Group. 5

6 Implementing Regulation The Office referring to its doc. TMG/02/II/7 setting out a list of items which could be included in a proposal for amendment of the CTMIR. The process of amending the CTMIR must be completed before the end of 2003, i.e. the Office should submit a text proposal of the EC in the beginning of 2003, with the view of adoption before enlargement. On this basis the Office requested the written comments of the organisations for an amendment of the CTMIR before the end of Februar Enlargement The Office informed that the possible enlargement has been postponed until 1 May 2004 which retain the possibility of the new member states of participating in the EP elections in The drafting exercise of the Accession Treaty is on its way. On a discussion of costs the Office informed that to recover the expected increase in costs for publication, translation and searches the application fee should increase by 632 (approx. 70%) Irrespective of the expected income from renewal fees from 2006 and onwards, and given an expected stabilisation in the number of applications, the Office only see the possibility of either increasing the application fee or economising. At the next meeting of the Group, the Office hopes to be able to represent proposals for how to cut costs in particular regarding translation. The Office expressed that giving up searches most likely will retain the balance and eliminate the need for increases in the application fees. There was agreement to call for a 3 rd meeting of the OAMI Enlargement Working Group to be hosted by UNICE in Brussels. Guidelines The guidelines on Art. 8 (4) have been submitted to the Administrative Board and will be approved by the President subject to some minor amendments. The other substantive opposition guidelines have been drafted and will be made available for public comments early next year. 6

7 The draft for the renewal guidelines have been amended to take into consideration the comments received from the interested parties. E-filing system The Office demonstrated its e-filing system which should bee seen not only as another way of filing an application but as the start of something bigger. Presently the Office is actively considering e-payment, and ask the participants to consider which other steps in direction of e-business that the Office should take. Next Meeting Will be called for before the summer Copenhagen, 28 November