Convergence Programme Overview. Liaison Meeting 23 rd April 2013

Transcription

1 Convergence Programme Overview Liaison Meeting 23 rd April 2013

2 CP roll-out Plan 5 projects running Endorsement in 2012 Envisaged endorsement in 2013 Convergence Programme CP2. Convergence of Class headings CP1. Harmonization of Classification General indications Envisaged endorsement in 2014 CP4. Scope of Protection B&W Marks CP1 CP3. Absolute Grounds - Figurative Marks CP5. Relative Grounds - Likelihood of Confusion

3 Progress : General Indications of Nice Class Headings CP1. Harmonization of Classification of G&S Initiative started June 2012 OBJECTIVE : reach a common answer as to which general indications of the Nice Class Headings are sufficiently clear and precise for classification. RESULT : a new common practice reached where 11 individual Nice Class heading terms are now commonly considered as being too vague for classification + common reasoning Envisaged for endorsement in AB meeting by May 2013 This initiative will lead to a harmonized approach in ETMD network Class Nice Class Heading individual term Goods of common metal not included in other 6 classes 7 Machines and machine tools Precious metals and their alloys and goods in precious metals or coated therewith, not 14 included in other classes Paper, cardboard and goods made from these 16 materials, not included in other classes Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not 17 included in other classes Leather and imitations of leather, and goods made of these materials and not included in 18 other classes Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these 20 materials, or of plastics 37 Repair 37 Installation services 40 Treatment of materials 45 Personal and social services rendered by others to meet the needs of individuals

4 Progress : Harmonized Database CP1. Harmonization of Classification of G&S The Harmonisation of Classification project continues to make considerable headway in achieving a harmonised database reflective of the common classification practice of the whole EU IP network Harmonized Offices 2011 GB, SE, IE, MT(EN), OHIM 2012 ES, IT, PT, MT(MT), EE, GR, DE 2013 BG, PL (complete) Pending: CZ, HR, SK, LT, BOIP To-Date Pending Integrated in TMclass OHIM, IE, SE, GB, ES, MT, IT, PT, BG, EE, GR DE

5 Progress : Harmonisation on Classification Practice CP1. Harmonization of Classification of G&S 01 Common Communication: harmonised and synchronised communication on CP achievements 02 Currently working on guidelines for common criteria acceptability for classification Scheduled for end of year to start working on common agreement on what terms to reject TMC (Terminology Maintenance Console) will be the tool to provide administration to the Harmonized database Scheduled for the end of 2013

6 Progress : Fill Up CP1. Harmonization of Classification of G&S English language as baseline for Harmonized Database Language % Language % Translation of the common Goods & Services database of National Offices into the other 22 EU languages The validation of these translations is a prerequisite for the Harmonisation National Offices It allows to assess the acceptability of the terms according to the classification practice of a particular National Office In a next step we can include the data of WIPO G&S Manager Objective to have all languages with over 90% of the translations by July 2013 Objective to have all languages with 100% of the translations by November 2013 * Latest figures will be given at the liaison meeting

7 Progress : Taxonomy CP2. Convergence of Class Headings Taxonomy - It is a hierarchical structure based on the Nice Classification system that groups terms with similar characteristics within each of the classes into a logical and intuitive tree structure. Benefits - 01 Fits classification terms into a hierarchical structure based on the Nice Classification system; 02 Allows for user-friendly searching of goods and services; Facilitates efficient and timely updates of term databases to better reflect the current economic market; Allows for adequate protection while filing shorter lists of goods and services.

8 Progress : Taxonomy CP2. Convergence of Class Headings Group Titles / class scopes translated and validated in all languages Software development at advanced stage Usability testing beginning of April Preparation of Training / Communication - implementation strategy - Webinar - Power Point - FAQ - Video Tutorials Tailored to the different target groups video prototype Implementation of Taxonomy into TMclass for July

9 Technical implementation Taxonomy 3 Implementations in Parallel 1.Taxonomy in TMclass 2.Taxonomy in FSP efiling 3.Taxonomy in national efiling Via web services: Search term and validate Taxonomy Class scopes Office Envisaged tool for taxonomy integration Preliminar envisaged integration date AT Own efiling end 2013 BG FSP end 2013 BX Own efiling Not known yet CH Own efiling Not known yet CY FSP 2014 CZ Own efiling Not known yet DE Own efiling After summer 2013 DK Own efiling Not known yet EE FSP end 2013 ES Own efiling Not known yet FI FSP end 2013 FR Own efiling Not known yet GR FSP 2014 HU Own efiling Not known yet IE FSP Not known yet IT FSP Not known yet LT FSP end 2013 LV FSP end 2013 MT FSP Not known yet PL FSP end 2013 PT Own efiling After summer 2013 RO FSP Not known yet SE Own efiling Not known yet SI FSP Not known yet SK FSP end 2013

10 Convergence Programme : CP3. Absolute grounds Figurative Trade marks CP3. Absolute grounds Figurative Trade marks CP3. Absolute grounds Figurative Trade marks Establish a common practice in relation to when a figurative mark, containing purely descriptive /non- distinctive words, passes the absolute grounds examination because the figurative element renders sufficient distinctive character.

11 Status CP3. Absolute grounds Figurative Trade marks Work Package 1 Meeting 16 October 2012 Scope : analysis of 8 different criteria Progress has been made 4 of the criteria Close to consensus 4 of the criteria To be further elaborated

12 Criteria : Summary result of meeting held 16 October 2012 CP3. Absolute grounds Figurative Trademarks With respect to the word elements in the mark: 1. Typeface and font 2. Combination with colours 3. Combination with punctuation marks and other symbols 4. Position (sideways, upside-down, etc.) With respect to the figurative elements in the mark: 1. Use of simple geometric shapes 2. The position and proportion (size) of the figurative element in relation to the word element 3. The figurative element is a representation of the goods and/or services or merely reinforces the message conveyed by the word element 4. The figurative element is commonly used in trade in relation to the G&S applied for Close to consensus To be further elaborated

13 Status CP3. Absolute grounds Figurative Trade marks Next steps: Study based on EU, OHIM and national case law to find common assessment of the criteria Study will be submitted to Working Group Aiming at endorsement in AB meeting by November 2014

14 Convergence Programme : CP4. Scope of protection B&W marks CP4. Scope of protection B&W marks Harmonize the different interpretations of the scope of protection of trade marks exclusively in black, white and/or shades of grey (whether they cover any/all colours or not).

15 Convergence Programme : CP4. Scope of protection B&W marks Scope of the project CP4. Scope of protection B&W marks This project will converge the practice regarding a trade mark filed in B&W and/or greyscale, and (a) determine whether the same sign in colour is considered identical with respect to: i. Priority claims ii. Relative grounds for refusal (b) determine whether use of the same sign in colour is considered use of the trade mark registered in B&W (considering also trade marks registered in colour but used in B&W) Out of scope The reverse question The assessment of similarities between colours Marks registered in black and white that have acquired distinctiveness in a specific colour due to extensive use. Colour marks per se.

16 Status CP4. Scope of protection B&W marks Work Package 1 Meeting 17 October 2012 Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims Priority claims Meeting October: due to the administrative context the marks need to be the same in the strictest possible meaning Most of the offices coincide that: a trade mark registered in B&W is not considered identical to the same sign in colour as regards priority claims. However, if the differences in colour are so insignificant that they may go unnoticed by the average consumer, the signs will be considered identical.

17 Status CP4. Scope of protection B&W marks Relative grounds for refusal Meeting October: A sign is identical with the registered trade mark where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer. A change from B&W to colour will normally be noticed by the average consumer. Most offices agree with following phrasing: A change from B&W to colour will be noticed by the average consumer. Only under exceptional circumstances, namely when the differences in colours in the signs viewed as a whole are so insignificant that they may go unnoticed by an average consumer, the signs will be considered identical.

18 Status CP4. Scope of protection B&W marks USE Meeting October: For the purposes of USE, a change only in colour does not alter the distinctive character of the trade mark as long as: The word/figurative elements coincide and are the main distinctive elements. The contrast of shades is respected. Colour or combination of colours does not have distinctive character in itself. Colour is not one of the main contributors to the overall distinctiveness of the sign.

19 Status CP4. Scope of protection B&W marks Next steps: Find final agreement Formalise in document on the Common Practice Create Communication Strategy Create Implementation Plan Aiming at endorsement in AB meeting by November 2013

20 Convergence Programme : CP3. Absolute grounds Figurative Trade marks CP5. Relative grounds likelihood of confusion Harmonise the practice regarding non distinctive/weak components of trade marks for the purpose of assessing likelihood of confusion, assuming that the goods and/or services are identical.

21 Convergence Programme : CP3. Absolute grounds Figurative Trade marks CP5. Relative grounds likelihood of confusion WORKPLAN Survey CP5 Relative Grounds likelihood of confusion. The earlier trade mark and/or parts thereof? OBJECTIVE 1 Define what trade marks are subject to assessment of distinctiveness The later trade mark and/or parts thereof? OBJECTIVE 2 Determine the criteria to assess the distinctiveness of the trade mark (and/or parts thereof) OBJECTIVE 3 Determine the impact on LoC when the common components have a low degree of distinctiveness OBJECTIVE 4 Determine the impact on LoC when the common components have no distinctiveness

22 Progress CP5. Relative grounds likelihood of confusion The earlier trade mark and/or parts thereof? OBJECTIVE 1 Define what trade marks are subject to assessment of distinctiveness The later trade mark and/or parts thereof? Elements of the earlier and the later trade mark should be taken into account. All elements should be considered, prioritising on the common elements. The distinctiveness of the earlier mark as a whole is assessed. Explicitly or implicitly all elements of the later trade mark are assessed.

23 Progress CP5. Relative grounds likelihood of confusion OBJECTIVE 2 Determine the criteria to assess the distinctiveness of the trade mark (and/or parts thereof) The criteria to assess the distinctiveness of the trade mark are: Same criteria that are used in absolute grounds. Degree of familiarity amongst consumers with the sign/colours/elements within the relevant sector. Semantic content. Relevant point in time.

24 Progress CP5. Relative grounds likelihood of confusion OBJECTIVE 3 Determine the impact on LoC when the common components have a low degree of distinctiveness When marks only coincide in elements which have a low degree of distinctive character, LoC If non-coinciding element(s) has/have at least a normal degree of distinctive character and is not of insignificant visual impact. If 1) the added element is of a lower (or equally low) degree of distinctiveness, and is of insignificant visual impact. 2) if there are no other elements, as long as the visual impact is highly similar.

25 Progress CP5. Relative grounds likelihood of confusion OBJECTIVE 4 Determine the impact on LoC when the common components have no distinctiveness When marks only coincide in elements which have no distinctive character LoC when 1) non-coinciding element(s) has/have no or little distinctive character, and 2) provided that the overall impression of the signs is highly similar.

26 Status CP5. Relative grounds likelihood of confusion Next steps: Study based on EU, OHIM and national case law to find common assessment of the criteria Study will be used to prepared a new survey Send out this survey and analyse the results Next meeting June 7 (TBC) Aimed at endorsement in AB meeting by November 2014

27 Maintenance of Practices Terminology Maintenance Console Status: TMC Stage 1: November 2012: To facilitate non-harmonised offices with an independent database (e.g. USPTO) to manage their data online. First trainings done, last issues being fixed Stage 2: November 2013: Harmonised offices can manage their data by means of a harmonised workflow Adding terms in the harmonised database to even better represent the market Stage 3: end 2014: Common list of Goods and Services that are NOT acceptable for classification

28 Background The Maintenance European Trade of Practices Mark and - Convergence Design Network Continuity - Central Central Team Team Working towards a European Trade Mark and Design Network (ETMDN) of European Intellectual Property Offices (EU IP Offices) Extensive progress in harmonization of practices made by Convergence Programme (CP) The Convergence Continuity Central Team will serve as the coordinator of the administration of the endorsed common practices, among other responsibilities to preserve and advance the investments in convergence made by OHIM and EU IP Offices

29 Vision The Maintenance European Trade of Practices Mark and - Convergence Design Network Continuity - Central Central Team Team Will be an established unit in collaboration with EU IP Offices, User Associations, and International IP Organisations being the administrator of the growing number of adopted harmonized practices Will be action-oriented following a work plan, composed of OHIM and EU IP Office representatives, in order to create streamlined processes for the harmonized IP practices Will be a free-flowing two-way channel of communication between the Convergence Continuity Central Team and stakeholders, for the reception of ideas and suggestions of harmonization initiatives across the EU

30 Responsibilities (1/3) The Maintenance European Trade of Practices Mark and - Convergence Design Network Continuity - Central Central Team Team 1. Creation of annual work plans of the central team 2. Coordination of implementation of common practices 3. Coordination of the training of the EU IP Office Representatives in practices 4. Coordination of the provision of the training material for EU IP Offices 5. Coordination of the communication flow between the EU IP Offices, OHIM, the Knowledge Circles (= extended KC) and any other stakeholder 6. Coordination of the provision of promotional/marketing material for new practices and/or tools

31 Responsibilities (2/3) The Maintenance European Trade of Practices Mark and - Convergence Design Network Continuity - Central Central Team Team 7. Coordination of surveys to National Offices and user satisfaction surveys on aspects of the common practices 8. Coordination of clarifications of interpretations 9. Coordination of translations on aspects of the common practices 11. Monitor international and national activities relating to CP, special attention for opportunities to promote Coordination of continuity of common practices 12. Coordination of Cost-Benefit Analysis, completed CP projects

32 Responsibilities (3/3) The Maintenance European Trade of Practices Mark and - Convergence Design Network Continuity - Central Central Team Team 11. Liaise with EU IP Offices on behalf of OHIM dept., programmes, projects, if requested 12. Coordination of incorporation of Nice Classification updates in the harmonized database 13. Monitor implementation of endorsed practices 14. Coordination with regards Manage Terminology Maintenance Console (TMC)/ translation quality

33 Team Composition / Dependencies Maintenance of Practices - Convergence Continuity Central Team

34 Central Maintenance Team Timeline of Practices Convergence Continuity Central Team

35 Workplan 2013 Maintenance of Practices - Convergence Continuity Central Team 01 Task 1: Central Team Set Up Task 2: Support implementation of CP1 & CP2 Task 3: Create 2014 Work Plan Task 4: Support implementation of CP4 (when endorsed) Task 5: Manage TMC Maintenance Cycle Task 6: Report progress to Liaison Meeting

36 Presentation Status TECH. LAISON. Meeting March 2013 Convergence Programme DRAFT / APPROVED Approved by owner Authors Contributors Version Date Author Revision history Description /02/2013 PH /02/2013 DS - -

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