Europe aims to harmonize trademark practice
On Friday, the European Trade Mark and Design Network (TMDN) published its first Common Communication, setting out the differences between European trademark offices in how they interpret class headings.
The TMDN was established recently as a means for OHIM and national trademark offices in the EU to work together to harmonize tools and practices. The Common Communication was spurred by last year’s ruling by the Court of Justice of the EU in the IP Translator case, which concerned the goods and services that are covered by trademarks that just use a class heading in their application.
The importance of the issue was made clear in yesterday’s CTM and RCD Users’ Meeting, which was heavily branded as a TMDN presentation, rather than OHIM. An Italian attorney described a recent case where her client had an opposition to a CTM application partially rejected. The CTM and the client’s national Italian mark were identical and both cited a class heading for the goods and services covered. But OHIM ruled that the Italian mark should be interpreted to cover just the items in the heading, while the CTM covered everything in the class under that heading. “It seems completely unfair to me—my client lost some of its rights because of different practices,” said the attorney.
In response Dmitris Botis, Head of the Litigation Service at OHIM, highlighted the Common Communication, saying that this should prevent different interpretations by the same trademark office. OHIM should also, he said, recognize the same goods and services for a national mark as that attributed to it by the national office. But this does not solve the problem of the existing variations between offices. Julio Laporta Insa, Head of the Legal Practice Service at OHIM, could only say that OHIM was “conducting meetings and having many discussions” with national offices.
The reaction to the IP Translator case also highlighted how OHIM is changing its practice on updating the office’s guidelines. Previously it came up with proposals, put them out for public consultation and then edited and published them. OHIM has now added two initial steps to the process: suggestions from users and analysis from Knowledge Circles. The Circles are groups composed of lawyers, examiners and judges that are each tasked with following a particular area of practice, such as absolute grounds. They study the case law, identify trends, and suggest changes to the official guidelines based on those trends. The first new draft guidelines using this process will be available in June. They will be translated over the summer and discussed at OHIM’s Liaison Meeting in the first week of October. An expedited version of this process was used to change the guidelines following IP Translator.
“The important things here are the extra steps and the fact that the process is never-ending,” said Laporta Insa. “Practice never stops changing so our process cannot either. It is a circle, and next year we will begin revising everything all over again.”
Elsewhere, OHIM reported some impressive performance statistics, with most of its targets for pendency being met. Even oppositions—which had the most room for improvement—had 85% of decisions made within the target of 10 weeks. Next year it is bringing its targets down further, with cancellations aimed to be decided in 10 weeks instead of 16, for example.
90% - Average for OHIM meeting its pendency targets
10 weeks - New target for cancellation actions, down from 16
84% - Customer satisfaction with OHIM examinations
26,500 - People to be surveyed by Observatory on attitudes to IP
5% - Projected increase in CTM applications this year