MARQUES comments in response to the public consultation on the first suite of 5 new European Cooperation projects General Comments MARQUES recognises that the European Trade Mark and Design Network under the Office Strategic Plan 2011-2015 has paved the way for fostering further cooperation between the Office and the European IP Offices in the interest of European users. MARQUES agrees on the Office s evaluation that the tools and databases created as a result of the cooperation between the Office, the European IP Offices and the User Associations have proven very successful and therefore it is believed that there is reason to spend further resources in this area, i.e. to update and improve the existing common tools and databases with new functionalities and to create any new IP tools and databases that can further provide clear benefits for the users. Bearing this in mind, for any new cooperation to be effective in the future, the principle behind the various new programmes and projects shall continue to be user requirements. MARQUES notes that, all in all, the proposed first suite of the five new European Cooperation Projects appear to substantially match with the twin benefits of improved efficiencies to satisfy user experience and increased harmonisation amongst the European IP Offices, according to the central objective of intensifying network engagement and cooperation. However, it should also be noted that there are differences between those projects that evidently have an immediate benefit for all users, as they are aimed to enhance common tools and databases with new functionalities such as the inclusion of new rights and information in TMview - and to create and implement new IP tools and databases such as Search Image for Trade Marks and Search Image for Designs and other projects or sub-projects thereof that may be liable to be controversial or may have a high level of variability, such as, prima facie, the Integrated Multiple Assessment Solutions (IMAS) and Pre-Clearance tool or the Collaborative Network on language checks. Even though there does appear to be a recognition of the risks some projects face and plans to assess variability as part of the projects, it remains open whether those projects should immediately be re-framed within more reasonable boundaries or even kept on hold, until there can be any better assessment of their constraints - rather than taking the risk of having to make corrections along the way, with likely undesirable heavier burdens in terms of increased timing, budgeting and resource allocation. Moreover, most of the current draft project briefs are very technical in nature and mainly concern how the projects would be managed and risks dealt with, rather than dealing with concrete issues of what the project results will mean in practice for users and which are the required human resources and financial contributions that would have to be allocated to each of the proposed projects and sub-projects, that would enable to conduct a carefully considered cost-benefit assessment. MARQUES Ltd - Unit Q, Troon Way Business Centre, Humberstone Lane, Thurmaston, Leicester LE4 9HA United Kingdom Phone +44 116 274 7355 Fax +44 116 274 7365 Email: info@marques.org /aromeo@marques.org 1
Although there is little constructive input that can be given on the overall sustainability of the proposed projects and sub-projects at this stage, nonetheless, MARQUES would like to provide this initial contribution, with a genuine intent of representing the user s perspective as this can help any required review and streamlining of the intended projects and sub-projects into the right direction, fully in line with user requirements and expectations. MARQUES would expect that the User Associations will be given additional opportunity to comment on all projects, in the light of the consultation outcome and before these reached the final definition and launch phases to make sure that all final projects can be truly fit for use and fit for purpose, and furthermore, that User Associations will be allowed to actively participate in the creation and operation of all ECPs Working Groups, to ensure an efficient deployment of those final projects. Submitted this 23 rd day of March 2016 For and on behalf of MARQUES, the European Association of Trade Mark Owners and of the MARQUES European Trade Mark Law and Practice Team Alessandra Romeo, MARQUES External Relations Officer 2
Project ECP1 - Consolidating and Completing the Cooperation Fund Landscape Objectives: Extend the reach of the existing projects of SP 2011-2015 (Cooperation Fund Tools and Convergence projects) and support European Union IPOs in the implementation of the new EU Cooperation projects. Initial comments: In MARQUES views, the above objectives are reasonable, as the cooperation network between the Office and the European IPOs created and supported in the frame of the Cooperation Fund and the EUTMDN shall be improved and become fully functional. In terms of achievability, there should be a clear understanding of the intended purposes of ECP1 i.e. to facilitate the implementations of outstanding CF and CP projects, and to deliver improved and new tools under ECP2 and ECP3 - and of the corresponding obligations and responsibilities of the participating IPOs. In terms of measurable deliverables for users, MARQUES agrees that the tasks of ECP1 Team shall primarily be focused on ensuring achievements on major improvements to existing CF tools, the increase of knowledge of and accessibility to the Common Gateway which is not yet much known among users as it should be - and to develop and implement those new common tools that can prove beneficial to users, without prejudice. Project ECP2 - Major improvements to existing CF tools Concerned areas and proposed packages are: - Back office - Front office - Common Gateway - Quality suite - TMView and DesignView It is understood that EU IPOs may voluntarily take part to this project, as Pilot Offices, Participating Offices (with no practical responsibilities on the test/implementing phases) or merely as Observers. As the packages are 5, the project would be progressing and be deployed on a step-by-step basis, with an expected duration from June 2016 to December 2019. Initial comments: MARQUES believes that the ECP2 s objectives are all in all reasonable. The most user focused parts of ECP2 e.g. with an expected more immediate user-impact - concern the Front office and TMView and DesignView packages, with the objective of improving the existing functionalities of the TMview and DesignView tools, not only in terms of usability - with the aim of making the two tools as similar in their user experience as possible and performance with the integration with image recognition based on similar improvement used in the Office s e-search Plus system or speed and consistency - but also in order to broaden the scope of the IP rights and information included, provide integration with other central tools or, where also feasible, a possible future integration of TMView and DesignView into one. Certainly, there will also be an anticipated benefit for users by the achievement of those other major objectives outlined under the Common Gateway and Quality Suite packages, that are intended to improve the level of functionality, accessibility, and usability of 3
tools and of the Common Gateway as well as the quality management of IPOs services for users, with a view to enhance the user experience. With perhaps an exception for the Back Office package, to ensure an effective deployment of this multi-package project, the users involvement in all its stages will be fundamental, and MARQUES gladly notes that User Associations are encouraged to actively participate in the project with views, concerns, feedback and requirements and are expected to attend the meetings. However, MARQUES would like to receive clarification as to what is being meant when the project draft states that both IPOs and User Associations will have the opportunity to receive updated information on the project depending on the nature of the project and as the need arise and moreover, which would be the intended constituency and purpose of having an external advisory board formed by users representatives. Having already matured a substantive experience in the context of its participation to both CF and CP projects, MARQUES expresses its interest and commitment to participate as User Association to the relevant user oriented ECP2 project packages. ECP3 - New Tools Objectives: Develop and implement new common tools and standards, according to the following 5 sub-projects: - Search Image in TMView and DesignView Initial comments: MARQUES supports this project, as it represents the reasonable continuation of the CF Search Image project. As MARQUES participated to the CF Search Image project as a member of the Search Image WG, and was also involved in the several tests run of the Search Image Pilot tool, MARQUES expresses its interest and commitment to participate as User Association to this project in particular. - IP User Repository: In the light of Article 123 c of the new EUTM regulation, the IP User Repository project aims to resolve the entry duplication of owners and representatives in the systems used by participating IP offices and reduce scope for error as well as development of a central electronic solution allowing IP owners to manage their relation with representatives before IPOs. Initial comments: MARQUES supports the development of the proposed IP User Repository based on its objective to deal with and resolve all issues concerning inconsistencies or duplication of information regarding owner and representatives as reflected onto the official registers and thus currently also reflected in the searching tools. However, the project would also include the creation and deployment of a new central tool to allow IP owners to manage their relations with representatives before the IPOs, and by means of which IP owners would be able to indicate their representative and the extent of representation power in terms of permissions and time before an IPO. The introduction of an Electronic Power of Attorney would also be foreseen. 4
In respect of these further objectives, MARQUES should raise concern as the scope of the project is liable to be controversial, account taken of the fact that IPOs may have to operate under a strict legal framework regarding acceptance of a power of attorney and the legal terms for granting, defining the scope and duration of a power of attorney may vary from jurisdiction to jurisdiction, and may not allow to define a common set of details that are required to be kept by IPOs for owners and representatives, based on applicable law and procedure in each jurisdiction. In fact, the preliminary analysis appears to indicate a number of anticipated high risks to the project s success. - Digital Case Law Repository: The purpose of this project is to deliver enhancements to the e- Search Case Law Portal, which is a searchable database containing decisions of the Office, Court of Justice and National Courts judgements related to EUTMs and RCDs, designed to provide the Office s staff and the IP community with the possibility to search for case law easily. The intention is to bring together the different efforts made to store case law by the Observatory, other departments of the Office and other IP Offices, in order to make all IP case law searchable. In particular the brief notes that first and second instance national decisions are important but the processes/mechanisms for collating and making such case law available to offices and users require improvement. Initial comments: Clearly the output of this project appear potentially beneficial for all and, MARQUES believes, relatively uncontroversial. Accordingly, MARQUES supports this project and would be pleased to help in achieving the project s success. - Decision Desktop for Examiners: A need to create a specific tool to support and facilitate decision drafting has been identified. Against the backdrop of Article 123 c) of the new EUTM Regulation, a Decision Desktop and new Central tools, decision takers will be able to take more informed, consistent and efficient decisions via a more centralised experience. This project will have two work streams: 1) improve the decision drafting process and 2) improve decision making process. Initial comments: MARQUES appreciates that this project may be interesting but also raises doubts as to if standardised templates will be used in all IPOs, as the way to draft end motivate decisions can vary significantly, on account of existing national guidelines and other possible mandatory legal requirements, which may also depend on cultural and linguistic reasons. Likewise, it is also doubted in principle that by increasing the level of automation and standardisation in decision drafting and decision making processes, there can really be any warrant that the quality of decisions, their timeliness, predictability and consistency would in turn be improved, by producing any measurable improvement in quality and user satisfaction as can be assessed externally. MARQUES would like to receive clarification as to which is the extent of the need that has been identified that would justify the creation of a specific Decision Desktop and new Central tools, to support and facilitate decision drafting and whether to identify this need any preemptive systematic assessment of the current status quo and a thorough risk analysis in respect of all possible variables that in case might not allow to achieve the project s objectives, has been conducted. Moreover, MARQUES would also enquire as to whether the intended purpose for this project, might be encompassed as a test and in a more uncontroversial manner - in the range of objectives laid down for the Academy E-Learning Portal sub-project, notably under the areas of activity described under the points d), e) and f). 5
- Academy E-Learning Portal: This project will provide a common framework for developing tailor made tutorials and e-learning content, targeting staff working in IPOS. The project intends to address the whole designs and trademarks cycle but also a number of general skills. Initial comments: MARQUES believes that this project has good and well focused purpose in the interest and benefit of all stakeholders, including end users. In view of its own specific experience in the training and educational areas, and having also participated to the CF E-Learning project, MARQUES expresses its interest and commitment to participate as User Association to this Academy E-Learning Portal project. - Integrated Multiple Assessment Solutions (IMAS), whose primary objective is the creation of an online tool for pre-assessment of a mark availability (Pre-Clearance), to facilitate appropriate and straightforward access to all available resources (tools and dictionaries) that can help in flagging up potential problems with a new trade mark, in order to support users in obtaining useful pre-clearance information when filing different proceedings online. Initial comments: At this stage, MARQUES feels unable to support this project, as this appears to be quite ill defined, very broad in its scope and objectives and unlikely to be achieved in whole, having to note that the risk analysis appears to indicate a number of high risks to the project s success, as it is admitted in the same draft project brief that given the reach of the project a milestone decision will need to be taken on whether this approach works, or whether eventual movement to a single-tool approach is best and moreover, that a major challenge is likely to be the integration of multiple tools into the different filing processes without inducing a significant slowdown, reducing the benefits of e-filing. ECP4 - Shared Services and Practices Objectives: Convergence area, to promote developments of common examination standards and practices in cooperation with the EU IPOs, according to the following 3 sub-projects: - EU Cooperation Administration Portal: it will be a set of online tools to manage in a transparent manner the cooperation agreements for new convergence projects; there will be a network of financial experts to cover the budgeting issues for the efficiency of the cooperation system. - Convergence Analysis project: it will be an electronic IP practice tool in order to create a methodology to map the state of play in the different IPOs, to detect existing areas of harmonisation or of lack of harmonisation and to update the common practices by means of an administrative tool. Initial comments: MARQUES fully supports the above two sub-projects and their objectives, as both represent a reasonable continuation of the earlier Convergence projects and activities. We think that the achievement of the Convergence Analysis project with the creation of an IP Practice Platform is indeed the right first step toward detecting those areas where harmonisation does not yet exist and by this identifying the needs of any new convergence efforts on specific topics, in an effective and efficient manner. 6
Having already matured a substantive experience in the context of its participation to both CF and CP projects, MARQUES expresses its interest and commitment to participate as User Association to these two sub-projects, and particularly to the Convergence Analysis project. - Collaborative Network: it will focus on AG examination, in case a trademark has any meaning in any EU languages, language checks will be performed in all 23 languages at the network level, with a view to improve language checks efficiency for both the Examiners and the users. Initial comments: MARQUES appreciates that the achievement of the proposed externalised Language Check evaluation may have been proposed primarily to ensure that any language check made by examiners of EU IPO in any of the 23 EU languages in order to examine for absolute grounds for refusal should not exceed the threshold of those standards and criteria that would be adopted by any native-speaker examiners in their respective languages and IP Offices. Though this objective may have clear value, however, MARQUES would reserve to express an opinion on this project, and a possible support also in terms of it active participation to it, as it feels that further clarification would first be required as to which is the intended usability of the proposed Language Check tool by examiners other than those of the EU IPO, and whether it could really be feasible to externalise the language check tasks at the network level, i.e. 1) in a standardised way, i.e. according to a set of common standards that should apply in all languages to avoid inequality, if it must be admitted that languages evolve in a very rapid manner, however differently from country to country, on account of various reasons, including important cultural, political or social changes that may influence the linguistic changes, however in the light of variable public perception and behaviour aspects, and account taken of the fact, as the same project draft reports, that in some IP Offices, it has already occurred that trade marks were granted with linguistic conflicts, and 2) in real time, as the operational needs of EU IPO may require, to avoid delays in examination, having noted of the project constraints (in terms of required timing of project finalisation and required human resources to finalise the project in a timely manner) that the project draft has already identified. ECP5 Supporting the Network (EUIPN) Objectives: IT-Improvements, Certification, Management standards, to support the Network and increase organisational excellence and operational efficiency in EU IPOs and provide users with better services, according to the following 4 sub-projects: - capture and store of Historical Files for both TMs and Designs: digitalization, document tagging support of historical archives and modernisation of archives, to modernize the participating offices transfer from paper to digital files to create a paperless working environment - deployed project managers and Technical support - project management certifications for IPOs - support to management systems of IPOs Initial comments: The most user oriented part of the project is the sub-project Capture and Store Historical Files, as users would reasonably benefit from having access to documentation related to trade marks and designs, to which they previously did not have access to. However, in MARQUES opinion, whether the aim of this sub-project and the vision underpinning that aim could be achieved with success, it greatly depends on a number of variables that in turn 7
can be different from IPO to IPO, i.e. based on the number of files and dossiers affected in each IPO and the ability of each IPO in terms of available financial resources to outsource the digitalisation work, in the lack of which it seems very unlikely that sufficient work hours of existing internal staff could be allocated as required to accomplish the digitalisation tasks without anticipated time delays. The other two sub-projects are clearly more focused on supporting the Cooperation Network from the side of the Technical Cooperation with IPOs. Though these sub-projects might not stray from the central objective of intensifying network engagement and cooperation, it raises doubts as to whether the sub-projects concerning Project Management Certification for IPOs or Support to Management systems in IPOs which refer to the certification of IPOs staff and management systems could prove overreaching in any case. 8