User Group meeting 22 nd April 2013 Convergence Programme Overview.

User Group meeting22nd April 2013

Convergence Programme Overview

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 : 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

18

Leather 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

Progress : Harmonization on Classification Practice

CP1. Harmonization of Classification of G&S


Guidelines for common criteria acceptability for classification

010203

Common agreement on what terms to reject

0405

12 harmonized offices (OHIM, IE, SE, GB, ES, MT, IT, PT, BG, EE, GR, PL)

Common Communication: harmonized and synchronised communication on CP achievements

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

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

CP2. Convergence of Class Headings


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)

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”.

CP3. Absolute grounds – Figurative Trade marks

Aiming at endorsement in AB meeting by November 2014

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

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

Aiming at endorsement in AB meeting by November 2013

Status



Priority claims

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

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



What are ‘insignificant’ differences?


claims

Status



What are ‘significant’ differences?


claims

Status



Relative grounds for refusal

Most offices 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


“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

Aimed at endorsement in AB meeting by November 2014


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


Team Composition / Dependencies

Maintenance of Practices - Convergence Central Team

Contributors

Authors

Approved by owner

DRAFT / APPROVEDStatus

Presentation

Revision history

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TECH. LAISON. Meeting March 2013 Convergence Programme

Thank You

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(+ 34) 965 131 344 (main fax)

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US:

User Group meeting 22 nd April 2013 Convergence Programme Overview.

Documents

convergence programme

figurative elements

word element slide

nice classification

goods of common metal

classification practice

ohim slide

individual nice class