A new vision for trademarks in Europe

May 15, 2011

In his first interview as OHIM President, António Campinos tells James Nurton about his plans for the Office and the future of trademarks in Europe.

OHIM President António Campinos has pledged to use the Office’s surplus to enhance its services and improve cooperation with other offices in Europe. Speaking to the INTA Daily News shortly after his five-year strategic plan was approved by OHIM’s Administrative Board on May 4, he said the Office would work with national offices in Europe to develop common “tools, practices and law.” He added: “There is an opportunity over the next five years to create a European trademark and design network.”

For example, said Campions, common databases such as TMview and Designview as well as common classification systems would be enhanced. Four European national offices are already signed up to a classification system covering 100,000 goods and services. The OHIM President stressed that this harmonization could be extended internationally, with the database growing as new terms are added: “We also need a system to agree on new product terms and, if there is not agreement, then for WIPO to arbitrate.”

Campinos also signalled an expanded role for the office, which at present handles the registration of Community trade marks and registered Community designs, and issues decisions in contested matters. The European Commission is expected to suggest this week that the Office, based in Alicante (Spain), takes on the administration of the EU Counterfeiting Observatory and it may also be asked to manage a database of non-food geographical indications. Campinos said it would happily take on the extra responsibilities, and become “the true IP office for Europe” covering all IP rights apart from patents.

The strategic plan has already come into effect and is summarized in a 10-minute video on OHIM’s website. It comes six months after Campinos took over as President from Wubbo de Boer, and results from consultation with staff, users and other offices as well as four external audits. It has six themes and envisages an expanded role for the Office, with improvements to IT, a new wing added to the existing building and the establishment of an IP Academy, which would enhance the Office’s existing training activities.

In total, the plan sets out 33 initiatives, covering human resources, the OHIM 3.0 information system, an improved working environment, thought leadership, holistic quality and a European network. Campinos said that while the Office has made big steps in improving timeliness in recent years, there remains room to improve the quality and consistency of decisions. One means of improving quality, as set out in the plan, is to simplify OHIM’s IT systems which now comprise 84 IT systems and 57 databases.

The plan will also result in all of OHIM’s nearly 1000 permanent and temporary staff being housed under one roof, in redeveloped offices, which will cost ?70 million. This will make a dent in the Office’s accumulated surplus, which is believed to exceed ?400 million, but Campinos stressed it would benefit staff morale, saying there had been “many disconnections” between staff and management in recent years.

But the surplus remains one of his biggest challenges—it grew by another ?26 million last year, and is likely to grow further this year as applications continue to soar (the 1 millionth CTM is expected to be registered by September this year). In 2008, the Office and member states agreed a deal that would see OHIM devote ?50 million to cooperation projects with European national IP offices as well as a fee reduction for CTMs. These have both been implemented, and the cooperation fund is now working on 23 projects. A further aspect, the distribution of 50% of CTM renewal fees, will be put into action once the CTM Fees Regulation has been amended, which is expected later this year.

But Campinos, who chaired OHIM’s Administrative Board at the time of the agreement, stressed that there were other aspects to it too, including a commitment to review OHIM’s budget every two years. He said his aim is that the budget be balanced by 2014-2015 and that the reserve should cover just one year’s expenditure. “We are looking for good ways to use the surplus,” he added, but rejected a proposal by his predecessor that fees should be refunded to users. “I would be delighted to do that if all the other offices would do the same. But there is no question of this—and it is legally not feasible. Modernizing our services is a way of giving money back to users.”

Campinos took office as OHIM President last October, following a period in charge of the Portuguese national IP office. His first year in office coincides with a major review of the trademark system in the EU by the European Commission, which is expected to lead to legislative reforms later this year or early next. As part of this, the Max Planck Institute published a report with recommendations on reform in February. This addressed issues including the supposed cluttering of the register, what constitutes genuine use of CTMs and the relationship between CTMs and national marks.

Campinos said he welcomed the report, which represented “lots of work done by very good people.” But he added that any changes made to the laws governing the trademark system should aim to “simplify and modernize”, implicitly rejecting the Institute’s recommendation of a coexistence system for trademarks where the CTM has not been used throughout the EU during a period of 15 years. “Let’s not revisit the arguments of the past. Let’s not revisit genuine use,” said Campinos. “Instead, let’s improve what needs to be improved and put forward strong harmonization of legislation in member states and OHIM, while retaining differences where appropriate.”

Campinos stressed that he believes there remains a role for complementary national, regional and international trademark systems: “Then you will have a system that works and industry can make decisions based on strategies and not on differences in law and practice.” He said he has a “good relationship” with all the member states’ representatives, and pointed out that there are already 25 bilateral agreements on cooperation.

He also emphasised that he is “very good friends” with European Patent Office President Benoît Battistelli, who recently visited Alicante where the two men made a joint statement.