Liaison Meeting 23 rd April 2013 Convergence Programme Overview.
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Transcript of 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
CP1. Harmonization of Classification of G&S
Convergence Programme Progress Report
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
CP1. Harmonization of Classification of G&S
Convergence Programme Progress Report
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
Progress : Fill Up
CP1. Harmonization of Classification of G&S
Convergence Programme Progress Report
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
Convergence Programme Progress Report
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
Convergence Programme Progress Report
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
CP2. Convergence of Class Headings
Convergence Programme Progress Report
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”.
CP3. Absolute grounds – Figurative Trade marks
Status
CP3. Absolute grounds – Figurative Trade marks
Convergence Programme Progress Report
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
Convergence Programme Progress Report
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
CP3. Absolute grounds – Figurative Trade marks
Convergence Programme Progress Report
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
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
Status
CP4. Scope of protection B&W marks
Convergence Programme Progress Report
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
CP4. Scope of protection B&W marks
Convergence Programme Progress Report
What are ‘insignificant’ differences?
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
Status
CP4. Scope of protection B&W marks
Convergence Programme Progress Report
What are ‘significant’ differences?
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
Status
CP4. Scope of protection B&W marks
Convergence Programme Progress Report
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
CP4. Scope of protection B&W marks
Convergence Programme Progress Report
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
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
CP4. Scope of protection B&W marks
Convergence Programme Progress Report
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.”
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
Status
CP4. Scope of protection B&W marks
Convergence Programme Progress Report
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.”
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
Status
CP4. Scope of protection B&W marks
Convergence Programme Progress Report
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
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
Convergence Programme : CP3. Absolute grounds – Figurative Trade marks
“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
Convergence Programme : CP3. Absolute grounds – Figurative Trade marks
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
CP5. Relative grounds – likelihood of confusion
Convergence Programme Progress Report
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
CP5. Relative grounds – likelihood of confusion
Convergence Programme Progress Report
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
CP5. Relative grounds – likelihood of confusion
Convergence Programme Progress Report
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
CP5. Relative grounds – likelihood of confusion
Convergence Programme Progress Report
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
CP5. Relative grounds – likelihood of confusion
Convergence Programme Progress Report
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
Convergence Programme Progress Report
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
Convergence Programme Progress Report
“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
The European Trade Mark and Design Network - Central Team
Convergence Programme Progress Report
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
Maintenance of Practices - Convergence Central Team
The European Trade Mark and Design Network - Central Team
Convergence Programme Progress Report
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
Maintenance of Practices - Convergence Central Team
The European Trade Mark and Design Network - Central Team
Convergence Programme Progress Report
Responsibilities (2/3)
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
The European Trade Mark and Design Network - Central Team
Convergence Programme Progress Report
Responsibilities (3/3)
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
Maintenance of Practices - Convergence Central Team
Convergence Programme Progress Report
Team Composition / Dependencies
Maintenance of Practices - Convergence Central Team
Central Team Timeline 2013
Convergence Programme Progress Report
Maintenance of Practices - Convergence Continuity Central Team
Maintenance of Practices - Convergence Central Team
Convergence Programme Progress Report
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
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DRAFT / APPROVEDStatus
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TECH. LAISON. Meeting March 2013 Convergence Programme
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