FICPI MEETING WITH OHIM IN ALICANTE

Transcription

1 29 September 2015 FICPI Representatives FICPI MEETING WITH OHIM IN ALICANTE Douglas Deeth - President Coleen Morrison - President of the Commission d Étude et de Travail (CET) Robert Watson - Vice President of the Commission d Étude et de Travail Elia Sugrañes - CET Special Reporter (Trade marks and Designs) OHIM Representatives António Campinos - President Fabrice Claireau - Head of Cabinet Pedro Duarte - Member of the Cabinet João Negrão - Director, International Cooperation and Legal Affairs Department, ICLAD Dimitris Botis - Deputy Director for Legal Affairs, ICLAD José Izquierdo - Deputy Director for International Cooperation, ICLAD Oscar Mondejar - Head of Legal Practice Service, ICLAD Kirsten Bauch - Head of Institutional Relations Service, ICLAD Natalie Pasinato - Designs Team 2, Operations Department Ines Garcia - Team Leader for Online Solutions, Customer Services Department Michal Kazimierczak - Chief Economist Team, Observatory Introductions The meeting began with about a twenty-five minute introduction from Mr Campinos, explaining the highlights of the Office s work. As they come to the end of the first Strategic Plan, many areas of their activity have improved. On the quality of services, timeliness is getting as close to best they can do, which has been accompanied by the various Fasttrack approaches developed. With a good level of cost effectiveness, predictability is now a key goal. This has been helped by the merger of the Guidelines and Manual into a single document (now reviewed annually, with OHIM, National Office and User Association input). Quality checking continues, with ex-post quality checking now covering almost all areas of work. They are beginning to move to ex-ante quality checking as well. With this change, they are looking to begin to involve both National Offices and User Associations in the ex-post checks. Under the next Strategic plan (to start in 2016), OHIM will start measuring quality and consistency of decisions on all converged practices across OHIM and National Offices. The cooperation and convergence projects have been a great success, with 19 projects implemented widely. OHIM are working as an agency of the European Commission outside the EU to expand the reach of these projects, which can be seen, for example, by Canada joining TMView and the USA joining DesignView. 29 September / 6

2 The last few years have seen the expansion of the competencies to include the work of the European Observatory. Their work goes from strength to strength with the gathering of knowledge, establishment of a network and their economic studies. Looking ahead, it has been hard to draft the new strategic plan for 2016, when their resources and the implementation timetable for the new regulation are unknown. Following this, Elia Sugrañes provided an overview of the delegation s areas of expertise, and moved quickly on to discuss the work FICPI has carried out on Project Orange (for patents). The possibility of collaboration with OHIM on extending this work was discussed later in the meeting (see below). Doug Deeth then provided the usual overview of recent activities, including thanking João Negrão for attending our World Congress and his valuable contributions. Emphasis was placed on our annual visits to the national and regional offices including those of the IP5/TM5/ID5, and our educational meetings which have a dedicated Trade Mark stream. We thanked the Office for the eventual changes made to the Guidelines on re-establishment of rights which followed the excellent and persistent work of Andrew Parkes. We mentioned that our work on Black & White marks continues. The next session of the meeting was a discussion based on topics proposed by FICPI. esearch Case Law Ines Garcia provided a useful overview of the current position, including pointing out a new tutorial available in 23 languages. All the OHIM Board of Appeal decisions are translated into English within 3 or 4 weeks of publication. The national court judgements are made available in the language of proceedings (and in translation if provided by courts). OHIM have been running a pilot project to look at machine translation as a possible tool. In addition to the existing method of compiling national decisions by National Patent Offices and Court Registrars, the Observatory has run a pilot project to compile key enforcement judgements (from 9 countries and CPVO). In response to our repeated offer to provide assistance in gathering decisions, to which Mr Campinos responded positively, we undertook to have CET Group 1 add this as a running list item with a view to regularly sending judgements for possible inclusion in the database to: information@oami.europa.eu. FICPI will place this possibility as an action on the running list CET group 2 (Designs) as well. Observatory report on Intellectual property rights and firm performance in Europe: an economic analysis OHIM volunteered information as to how the information in this report might be used in its planned work involving the value of the TM profession to the IP system, especially to SMEs. We noted that according to the study, a strong relationship has been demonstrated between increased revenue per employee and trade mark ownership when SMEs are considered. Since FICPI members represent many SMEs, we would like to assess in greater detail the economic value of the assistance of our members to SMEs as this seems a reasonable way to quantify our value to the system. 29 September / 6

3 There are plans to look further at the spread of IP in SMEs, particularly looking at different size companies in more detail. Mr Campinos was keen to look into whether the databases could be opened up, and there was a discussion of how the data might be used in further work on the value of the IP profession. It was mentioned that the SME scoreboard work has shown the IP profession to be a large source of information on the IP system. Experience of the Hague Agreement FICPI welcomed the recent expansion of the Hague Agreement as signalling an increasing consideration of the issues relating to the global filing and prosecution of designs. However, we observed that the lack of even formal harmonisation (as in the proposed Design Law Treaty worked on at the SCT at WIPO) makes the practical use of the Hague Agreement very difficult for applicants. OHIM promised to look into providing data on the number of objections they are raising to Hague applications, and to consider making available more data on the effect the Hague system is having on filings. For example, there has been a 50% decrease in direct RCD applications from Korean applications since South Korea acceded to the Hague system. Practice and Procedures We asked how they are planning for the new CTM Regulation what do they expect, and how will then consult users? Dimitris Botris (who is running the project) explained that the European Parliament vote is expected to occur on 15 December, and that the regulation and directive will be published shortly after that. Within 20 days of publication, the revised Directive will enter into force (with 3 years for transposition into National Law). 90 days after publication the majority of the substantive changes in the Regulation will enter into force, which some changes waiting for 18 months before becoming effective (such as the creation of EU certification marks). The initial work on the new Guidelines has just been finished, and the concepts will be presented at the Liaison meeting next month. They expect consultation on texts with Users to begin in late December, and to last about 6 weeks, so that the new Guidelines will be ready for when the substantive changes take effect. The Guidelines will then move back into the regular Working Package revision process. Seniority We had a brief discussion of the unpredictability of decisions at national level involving seniority established through national registrations and incorporated into Community registrations, and the work carried under CF114 to resolve the linking issue between OHIM and National Office registers. Five offices have not yet expressed an intention to implement this project: Austria, Cyprus, Germany, Denmark and Finland. We advised OHIM that we would ask our CET Group 1 members to attempt to ascertain when principles of seniority rights were not being respected in a particular jurisdiction, and add this issue to the CET Group 1 running list. In addition, FICPI also undertook to seek feedback from members asking them to 29 September / 6

4 report on any known instances wherein seniority rights were not being respected in a particular jurisdiction. Trade Agreements We observed the rise in the use of Trade Agreements as a tool for driving changes in intellectual property laws and explained our early appreciation of the change from multilateral to bilateral and plurilateral discussions. We further noted the inability of the IP profession and apparently even IP offices, to influence the process as negotiations are generally done in secret. Although OHIM has no direct involvement in EU discussions (these are led by DG Trade), they says they have some indirect involvement. OHIM confirmed they did not have direct involvement and that this was handled through DG Trade. Resolution EXCO/ZA15/RES-003 We thanked OHIM for its efforts to include FICPI in TM5 User discussions and introduced the resolution made in Cape Town (EXCO/ZA15/RES-003), that FICPI should continue its involvement in User Consultations by the TM5 and ID5. We explained we bring a broader range of user perspectives to the table than do other organisations. OHIM reported that they will raise a higher level of website information at next TM5 meeting (in December) and press for full user involvement in the ID5. User Meetings We welcome the improved approach to User Meetings in recent times, including the initiative to hold meetings in Brussels. We said we looked forward to the continuation of this constructive approach moving forward. After a coffee break, we moved onto a discussion based on the questions posed in advance by OHIM (coming from the Knowledge Circles) and focussing on the new CTM regulation. The questions as posed by OHIM are in italics. KC Relative Grounds: The new Article 8(4a) means that there will no longer be a requirement to prove use of more than local significance for filing oppositions on the basis of protected designation of origin or geographical indications. Do you think that this is likely to lead to a significant increase in oppositions based on these rights or would you rather be of the opinion that it is not likely that there will be a real interest to defend DOs/GIs that are not in fact much used or not used at all? Answer: We commented that it is rare to encounter an issue with a PDO/GI. PDO s/gi s by their very nature demand that there be use in a particular location, and such use may be limited, subject to the defining characteristics of the PDO/GI. The exception would thus provide much needed flexibility to enforce. It will not lead to a stampede for PDO s/gi s given their very nature and we can t imagine it will result in unintended effects i.e. disadvantage to an applicant. Under National law there is no 29 September / 6

5 requirement to support a PDO/GI with use of more than mere local significance for the purposes of opposition/cancellation and the change to OHIM s procedures reflects the current status quo. As an aside, the rights afforded to the owner of the PDO/GI are, in many cases, broader than the owner of a trade mark application/registration as the law allows for the raising of an objection where the later mark/sign amongst other things evokes the PDO/GI. Thus it is not simply the case of assessing similarity. KC AG: The legal reform introduces some amendments to Article 7(1)(e) of the Regulation. In the future, not only trade marks which exclusively consist of the "shape" of the goods but also "another characteristic" of the sign may trigger the application of this ground for refusal if such characteristic results from the nature of the goods or is necessary to obtain a technical result or gives substantial value to the goods. In other words, the absolute ground for refusal will be application to any kind of sign, like colours, smells or sounds. OHIM will be interested in knowing your views on the practical consequences of this change. In particular, it would be interested in gathering any relevant experience that you may have in other jurisdictions and their approach to functional signs. Answer: We don t think this will have a big impact it is hard to think of examples that would be rejected under descriptive/non-distinctive criteria. Coleen Morrison commented that in respect of other jurisdictions functionality is considered very differently between different jurisdictions and that it is one of the least harmonized areas of trade mark law. KC Proceedings: As regards searches, the legal reform introduces a system of opt-in for receiving the EU trade mark search reports (similar to the one existing for national trade marks search reports) and of opt-out for receiving surveillance letters. Do you think that search reports are useful in practice for practitioners or do you rather rely on your own searches or those provided by private databases? What about surveillance letters, do you find them a useful reminder? Answer: When we looked at this issue in the context of the MPI study, FICPI felt that the CTM search report should be retained but the quality improved. Whilst it seems unlikely that our clients would choose, at this time, to opt in to receive national reports where these are available (beyond the CTM search), clients do look to the CTM report as it can have a deterrent effect (if their mark is cited and notified) and is informative where no due diligence has been carried out in advance. The search and notify system does continue to result in oppositions. Removal would be to the detriment of the system (as a safeguard) and in particular SMEs who may rely upon it. KC G&S: The Legal Reform foresees a new and temporary provision in its Article 28(8) that will allow holders of marks filed prior to the Communication of the President following IP Translator and registered before the entry into force of the new regulation that seek protection for a class heading to specify the goods and services not already covered by the literal meaning of the class heading that it intended to cover by that class heading. Given the limited scope of protection granted to those goods and services specified under Article 28(8), how do you think that this can be done in practice and what advice is being given to users? In your view, will users make use of Article 28(8) or, as promoted in online newsletters by user associations and law firms, do you think users will make any claims under Article 50 prior to the entry into force of the new regulation? 29 September / 6

6 Answer: Attorneys tend to have anticipated this before it happened and advised client s to make post registration amendments where possible to capture the exact goods/services of interest by making a small sacrificial surrender from a specification (such as salt from Class 30). OHIM responded that we were the only user group consulted who were not very concerned about this change. FICPI commented that this might be attributable to our unique perspective of representing a disproportionate share of SMEs. KC Designs: Which are in your view the procedural changes brought by the legal reform of the Community trade mark regime that might be useful in the Designs legal reform? Answer: We don t think there are many changes from the current reform of the Community trade mark regime which we would be applicable to Designs legal reform. However, there are some issues worth considering: The option for filing Community Designs via National Offices should not be removed, as this the only viable approach for failures in the online filing system (fax filing not appropriate for designs) Removing the 7 figure limit on representations (noteworthy given the planned changes to the RCD filing engine to allow non-protected views and uploading of CADs) OHIM is out of step with most EU countries and with the Hague Agreement Amendment of the Unregistered Design to remove the need to disclosure in the geographical EU first to obtain the right (see EXCO/AU08/RES-001). The event finished with the traditional OHIM family photo and then a lunch with Mr Campinos and senior staff, where the topics of conversation were very varied. Robert Watson Vice-President CET [End of document] 29 September / 6