Liaison Meeting 23 rd April 2013 Convergence Programme Overview.

Liaison Meeting23rd April 2013

Convergence Programme Overview

Progress : General Indications of Nice Class Headings

CP1. Harmonization of Classification of G&S

Convergence Programme Progress Report

Class Nice Class Heading individual term

6Goods of common metal not included in other classes

7 Machines and machine tools

14

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes

16Paper, cardboard and goods made from these materials, not included in other classes

17

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes

18Leather and imitations of leather, and goods made of these materials and not included in other classes

20

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 materials, or of plastics

37 Repair37 Installation services40 Treatment of materials

45Personal and social services rendered by others to meet the needs of individuals

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

OBJECTIVE : reach a common answer as to which general indications of the Nice Class Headings are sufficiently clear and precise for classification.

Initiative started June 2012

Envisaged for endorsement in AB meeting by May 2013

This initiative will lead to a harmonized approach in ETMD network

Envisaged endorsement in 2013

CP roll-out Plan

Envisaged endorsement in 2014

Convergence Programme

CP5. Relative Grounds - Likelihood of Confusion

CP1. Harmonization of Classification – General indications

CP2. Convergence of Class headings

CP3. Absolute Grounds - Figurative Marks

CP4. Scope of Protection B&W Marks CP1

Endorsement in 2012

5projectsrunning

Progress : Harmonized Database



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

Integrated in TMclass

To-DateOHIM, IE, SE, GB, ES, MT, IT, PT, BG,

EE, GR, PL

Pending DE

“The Harmonization 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”

Progress : Harmonization on Classification Practice



Common Communication: harmonized and synchronised communication on CP achievements

Currently working on guidelines for common criteria acceptability for classification

010203 Scheduled for end of year to start working on common agreement on what terms to reject

04 TMC (Terminology Maintenance Console) will be the tool to provide administration to the Harmonized database – Scheduled for the end of 2013

https://secure.oami.europa.eu/tmc/login/login







Progress : Fill Up



The validation of these translations is a prerequisite for the Harmonization National Offices

Translation of the common Goods & Services database of National Offices into

the other 22 EU languages

English language as baseline for Harmonized Database

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 ManagerObjective 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

01020304050607

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 -

Fits classification terms into a hierarchical structure based on the Nice Classification system;

Allows for user-friendly searching of goods and services;

Facilitates efficient and timely updates of term databases to better reflect the current economic market;

0102

03Allows for adequate protection while filing shorter lists of goods and services.04

Progress : Taxonomy



Group Titles / class scopes translated and validated in all languages

Preparation of Training / CommunicationTailored to the different target groups

Usability testing beginning of April

Implementation of Taxonomy into TMclass for July

video prototype

Software development at advanced stage

Progress : Taxonomy



PHASE 1:PILOT

PHASE 2:Operational Use

…..

1st JulyTaxonomy in

TMClass

25th NovGo-Live efiling;

Website

22 AprNew Services

22 AprilUser Group

2 MayCommon

Com. IPT Case

21 MayABBC

4 May INTA

24 April Liaison

7 NovLiaison

19 NovABBC

14 JuneJudges

17 AprilDE SE EE

On demandVideo conference training for NOs

24 April PT LT BX GR BG IT

July Webinar

NOs to invite their users

October2 day taxonomy

training for Classification Experts

(NOs and OHIM)

1.Taxonomy in TMclass

Technical implementation Taxonomy

3 Implementations in Parallel

2.Taxonomy in FSP efiling

3.Taxonomy in national efiling

Via web services: •Search term and validate•Taxonomy•Class scopes

OfficeEnvisaged tool for

taxonomy integration

Preliminar envisaged integration date

AT Own efiling end 2013BG FSP end 2013BX Own efiling Not known yetCH Own efiling Not known yetCY FSP 2014CZ Own efiling Not known yetDE Own efiling After summer 2013DK Own efiling Not known yetEE FSP end 2013ES Own efiling Not known yetFI FSP end 2013FR Own efiling Not known yetGR FSP 2014HU Own efiling Not known yetIE FSP Not known yetIT FSP Not known yetLT FSP end 2013LV FSP end 2013MT FSP Not known yetPL FSP end 2013PT Own efiling After summer 2013RO FSP Not known yetSE Own efiling Not known yetSI FSP Not known yetSK FSP end 2013

Progress : Taxonomy

CP3. Absolute grounds – Figurative Trade marks

Convergence Programme : 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”.


Status



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

Work Package 1 Meeting 16 October 2012

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 font2. Combination with colours3. 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 shapes2. The position and proportion (size) of the figurative element in relation to the word3. The proportion (size) of the figurative element in relation to the word element 4. The figurative element is a representation of the goods and/or services

Close to consensus To be further elaborated

Typeface and fontCombination with colours

Position (sideways, upside-down, etc.)Combination with punctuation marks and other symbols

Use of simple geometric shapes The position of the figurative element in relation to the word element

Status



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

Convergence Programme : 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)”.

CP4. Scope of protection B&W marks

Convergence Programme : 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 claimsii.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.

Scope of the project

NABRA

Considerations of colour use in the context of acquired distinctiveness (where mark was filed in B&W) would get us too close to Specsavers territory, as so we have avoided it.

Status



Priority Claims & Relative Grounds – considering ‘identity’

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

• Necessary to consider and agree upon a common concept of ‘identity’ before developing specific practices

• Working group referred to CJEU’s judgement on C-291/00 LTJ Diffusion and GC’s judgement on T- 103/11 Justing for definition of ‘identity’:

“A sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer” (paragraph 54)

Status



What are ‘insignificant’ differences?


claims

Status



What are ‘significant’ differences?


claims

Status



Priority claims


claims

At Meeting of 17 October 2012:

“due to the administrative context the marks need to be the same in the strictest possible meaning”

Most of the participating offices agree 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”.

Status



Priority claims


claims

General Court Case T 378/11 considered identity between the following two marks in the context of a seniority claim:

“Even though the objectives of Art. 8(1)(a) and Art. 34 are not the same, it is a condition for the application of both of them that the marks at issue must be identical... A concept which is used in different provisions of a legal measure must... be presumed to mean the same thing irrespective of the provision in which it appears.” (Paragraphs 40 and 41)

Status



Relative grounds for refusal

Original common principal first proposed at October 2012 meeting:

“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 now 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.”


claims

Status



Proof of useMeeting of October 2012: “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.”


claims

Status



Next steps:

Aiming at endorsement in AB meeting by November 2013

• Find final agreement

• Formalise in document on the Common Practice

• Create Communication Strategy

• Create Implementation Plan


claims


“Harmonize 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”.

CP5. Relative grounds – likelihood of confusion



Survey CP5‐Relative Grounds – likelihood of confusion.

The earlier trademark and/or

parts thereof?

The later trademark and/or

parts thereof?

OBJECTIVE 1Define what trade marks are

subject to assessment of distinctiveness

OBJECTIVE 2Determine the criteria to assess the distinctiveness

of the trade mark (and/or parts thereof)

OBJECTIVE 3Determine the impact on LoC when the common components have a low degree of distinctiveness

OBJECTIVE 4Determine the impact on LoC when the common

components have no distinctiveness

WORKPLAN

Progress



OBJECTIVE 1Define what trade marks are

subject to assessment of distinctiveness

The earlier trade mark and/or

parts thereof?

The later trademark 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.

Progress



OBJECTIVE 2Determine 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.

Progress



OBJECTIVE 3Determine 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,

non-coinciding element(s) has/have at least a normal degree of distinctive character

andis not of insignificant visual impact.

1) the added element is of a lower (or equally low) degree of distinctiveness, and is of insignificant visual impact.

LoC

2) if there are no other elements, as long as the visual impact is highly similar.

If… If…

Progress



OBJECTIVE 4Determine the impact on LoC when the common components

have no distinctiveness

When marks only coincide in elements which have no distinctive character…

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.

LoC

Status



Aimed at endorsement in AB meeting by November 2014

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)

Maintenance of Practices – Terminology Maintenance Console


Status:• TMC

• Stage 1: November 2012: To facilitate non-harmonized offices with an independent database (e.g. USPTO) to

manage their data online. First trainings done, last issues being fixed

• Stage 2: November 2013: Harmonized offices can manage their data by means of a harmonized workflow Adding terms in the harmonized database to even better represent the market

• Stage 3: end 2014: Common list of Goods and Services that are NOT acceptable for classification

The European Trade Mark and Design Network - Central Team


“Working towards a European Trade Mark and Design Network (ETMDN) of European Intellectual Property Offices (EU IP Offices)”

Background

“Extensive progress in harmonization of practices made by Convergence Programme (CP)”

“The Convergence 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”

Maintenance of Practices - Convergence Central Team



Vision

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

01

02

03




Responsibilities (1/3)

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





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

Maintenance of Practices - Convergence Continuity Central 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



Team Composition / Dependencies


Central Team Timeline 2013


Maintenance of Practices - Convergence Continuity Central Team



Task 1: Central Team Set Up

Task 2: Support implementation of CP1 & CP2

Task 3: Create 2014 Work Plan

010203

Task 4: Support implementation of CP4 (when endorsed)04Task 5: Manage TMC Maintenance Cycle05Task 6: Report progress to Liaison Meeting06

Workplan 2013

Contributors

Authors

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TECH. LAISON. Meeting March 2013 Convergence Programme

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Liaison Meeting 23 rd April 2013 Convergence Programme Overview.

Documents

common classification

classification practice

convergence programme

nice classification

goods of common metal

individual nice class

harmonized database

common answer