The Guidelines WP2 2014 Webinar 04/09/2014. THE GUIDELINES REVISION PROCESS.
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Transcript of The Guidelines WP2 2014 Webinar 04/09/2014. THE GUIDELINES REVISION PROCESS.
OVERVIEW OVERVIEW
1. INTRODUCTION
2. PART A : GENERAL RULES
- HISTORY
- CONTENTS
- MAIN PRACTICE CHANGES
PART A : GENERAL RULES
1. HISTORY OF THIS PART OF THE GUIDELINES
2. CONTENTS
0 General overview of the registration process of a CTM1 Means of communication, time limits2 General Principles to be respected in the proceedings4 Language of Proceedings6 Revocation of decisions and cancellation of entries in the Register and correction of errors7 Revision8 Restitutio in integrum
3. MAIN PRACTICE CHANGES
6 Revocation of decisions and cancellation of entries in the Register and correction of errors
OUTLINE OF THE PRESENTATION
-Relevant provisions concerning the accession of new Member States to EU (Article 165 CTMR)
-Consequences for holders of CTMs.
ABSOLUTE GROUNDS
1. RULES CONCERNING EXAMINATION
1.1 Automatic extension of CTMs to new MS
1.2 Pending CTM Applications
RELATIVE GROUNDS
2. RULES CONCERNING OPPOSITION AND CANCELLATION
2.1 Rule A CTM application cannot be opposed or declared invalid on the basis of an earlier national right in a new MS prior to that MS’s accession date
RELATIVE GROUNDS
2. RULES CONCERNING OPPOSITION AND CANCELLATION
2.2 Transitional exception to the rule: a CTM application, filed within the six months preceding the accession date, may be challenged by an opposition based on a national right existing in a new MS, provided that this right has an earlier filing or priority date and was acquired in good faith.
2.3 The transitional exception does not include cancellations based on relative grounds
CHANGES IN PRACTICE
NUMBER OF COMMENTS PER GROUNDNUMBER OF COMMENTS PER GROUND
The chapter on Enlargement is a new addition to the Guidelines.
Part B: ExaminationSection 1: Proceedings
Sophia Bonne Knowledge Circle Proceedings
Webinar. 04/09/2014
PART B: EXAMINATION SECTION 1 : PROCEEDINGS
1. HISTORY OF THIS PART OF THE DRAFT GUIDELINES
2. CONTENTS
1 Introduction : General overview 2 Search3 General principles 4 Publication5 Amendments to the CTM Application
Part B: ExaminationSection 3: Classification
C. Den DekkerKnowledge Circle G&S Issues
Webinar 04 September 2014
√ IP Translator judgment
√ Convergence Programme 1: Harmonisation of classification practice
√ Common Communication II: 11 non-acceptable general indications
√ Common Communication III: common acceptability guidelines
New Classification Practice: HOW?
New Classification Practice – WHAT?
The general indications that were considered to lack the clarity and precision to specify the scope of protection are marked in bold in the following list:
Cl. 6 – Goods of common metal not included in other classes Cl. 7 – Machines and machine tools Cl. 14 – Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes Cl. 16 – Paper, cardboard and goods made from these materials [paper and cardboard], not included in other classes Cl. 17 – Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials [rubber, gutta-percha, gum, asbestos and mica] and not included in other classes Cl. 18 – Leather and imitations of leather, and goods made of these materials [leather and imitations of leather] and not included in other classes Cl. 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 Cl. 37 – Repair Cl. 37 – Installation services Cl. 40 – Treatment of materials Cl. 45 – Personal and social services rendered by others to meet the needs of individuals
New Classification Practice – WHAT?
Non-acceptable statements:
● All goods in class X ● All services in class X, ● All goods/services in this class ● All goods/services of the alphabetical list in this class or the like
● Clothing and all other goods (services) in this class● Clothing and all goods (services) of the alphabetical list in this class or the like
New Classification Practice – WHAT?
Acceptability guidelines:
i. A description of goods and services is sufficiently clear and precise when its scope of protection can be understand from its natural and usual meaning
ii. If this scope of protection cannot be understood, sufficient clarity and precision may be achieved by identifying factors such as characteristics, purpose and/or identifiable market sector
Other changes- Structure
- More examples
- Correction of errors
Part B.3: examination of classification
Part B: ExaminationSection 4: Absolute Grounds for Refusal
Part D: Section 2: Substantive provisions. Revocation
Oscar Mondejar Knowledge Circle Absolute Grounds
Webinar. 04/09/2014
Absolute grounds
Article 7(1)(f): public order and morality Article 7(1)(g): deceptivenessArticles 7(1)(h) and (i): protected emblemsArticle 7(1)(j) and (k): geographical indicationsCollective CTMs
RevocationTerm becoming genericTerm becoming misleadingAbsolute grounds for invalidity
Concept of ‘public policy’
→ further developed in the new text
Plant varieties (practice maintained)
Some examples have been fine-tuned
Concept of ‘heraldic imitation’
Analysis step-by-step
Alignment (h) and (i): Case T-3/12 ‘Member of Euro Experts’
Draft based on current Manual
More guidance on:
- Link between CTMR and EU Regulations on PDOs/PGIs- Relevant PDOs/PGIs- Situations covered (direct use, evocations…)- Products involved- Other PDOs (national, 3rd countries)
• Becoming a generic or a misleading term
Onus of proof (re-worded)
Relevant point in timeRelevant public (Bostongurka / Kornspitz)
• Absolute grounds for invalidity
Some parts reworded
MODIFICATIONS
Preliminary Remarks Entitlement of the OpponentScope of Application (origin earlier mark)Conditions • Relationship agent/proprietor (Nature of the relationship)• Application agent’s name• No consent by proprietor (T-537/10 and T-538/10
FAGUMIT)• No justification• No need for identity of signs / goods and services
MODIFICATIONS
IntroductionStructure of Article 8(4) CTMRConditions • Direct right conferred on the opponent• Types of rights (PGIs) • Use requirements• Earlier right• Scope of protection
Evidence and Standard of ProofAnnex: Table on national legislation
TYPES OF RIGHTS
STRUCTURAL CHANGES- INTRODUCTION- PASSING-OFF
CHANGES OF PRACTICE- GEOGRAPHICAL INDICATIONS
STANDARD OF PROOF
NO CHANGE OF PRACTICE
BURDEN OF PROOF: STILL WITH OPPONENT
TABLE WITH NATIONAL LEGISLATION
MODIFICATIONS
IntroductionScope of applicabilityConditions • Earlier mark with reputation• Similarity of the signs• Link• Encroachment upon reputation: dilution • Use without due cause
Part E. Register Operations
Kelly-Marie BENNETTKnowledge Circle Register and Other Issues
Webinar. 04/09/2014
Part E. Section 1. Changes in a registration
Outline
Part E. Section 3. CTMs as objects of property
Brief Description
Changes compared to Manual
Changes compared to Manual
Brief Description
Part E. Section 1. Changes in a registration
Outline
Part E. Section 3. CTMs as objects of property
Brief Description
Changes compared to Manual
Changes compared to Manual
Brief Description
Part E. Section 1. Changes in a registration
Outline
Part E. Section 3. CTMs as objects of property
Brief Description
Changes compared to Manual
Changes compared to Manual
Brief Description
1. Surrender
Part E Section 1 – Changes
2. Alteration
3. Changes of name and address
5. Division
6. Seniority
4. Changes in collective trade mark regulations
7. Replacement
Part E Section 1, 2. Alteration
Amendment – Article 43 CTMR
2. In other respects, a Community trade mark application may be amended, upon request of the applicant, only by correcting the name and address of the applicant, errors of wording or of copying, or obvious mistakes, provided that such correction doesnot substantially change the trade mark or extend the list of goods or services. Where the amendments affect the representation of the trade mark or the list of goods or services and are made after publication of the application, the trade mark application shall be published as amended.
Alteration – Article 48 CTMR
1. The Community trade mark shall not be altered in the Register during the period of registration or on renewal thereof.2. Nevertheless, where the Community trade mark includes the name and address of the proprietor, any alteration thereof not substantially affecting the identity of the trade mark as originally registered may be registered at the request of the proprietor.
1. Surrender
Part E Section 1 – Changes
2. Alteration
3. Changes of name and address
5. Division
6. Seniority
4. Changes in collective trade mark regulations
7. Replacement
Part E. Section 1. Changes in a registration
Outline
Part E. Section 3. CTMs as objects of property
Brief Description
Changes compared to Manual
Changes compared to Manual
Brief Description
Part E. Section 1. Changes in a registration
Outline
Part E. Section 3. CTMs as objects of property
Brief Description
Changes compared to Manual
Changes compared to Manual
Brief Description
Chapter 1. Transfer
Part E Section 3 – Changes
Chapter 2. Licences
Chapter 3. Rights in rem
Chapter 4. Levy of execution
Chapter 5. Insolvency
Part M: International marks
Kelly-Marie BENNETTKnowledge Circle Register and Other Issues
Webinar. 04/09/2014
Part M. International marks
Outline
Changes compared to Manual
Brief Description
Fast-track changes – Change in practice
Part M. International marks
Outline
Changes compared to Manual
Brief Description
Fast-track changes – Change in practice
Part M. International marks
Outline
Changes compared to Manual
Brief Description
Fast-track changes – Change in practice
2.1.3.2. Basic mark
Changes compared to the Manual
2.2 Subsequent designations2.4 Forwarding of changes affecting the international mark
3.3.3.3. Seniority claims
1. Introduction
2. OHIM as Office of Origin
3.6.6. Representation of the IR holder
3.8. Limitations of the list of goods and services
3. OHIM as Designated Office
4. Conversion, Transformation, Replacement
Part M. International marks
Outline
Part M International marks
Changes compared to Manual
Brief Description
Fast-track changes – Change in practice
Fast-track changes – Change in practice
3.3.3 Formalities examination3.3.3.4 Vague terms
3. OHIM as Designated Office
• Provisional refusals will now be issued for terms considered to be too broad or too vague or that lack clarity and precision.
• A representative must be appointed if communicating directly with the OHIM• Refusla may also be overcome by limiting the specification• Enters into force 01/10/2014• More information: Track change version of the Guidelines published 01/09/2014
News item on website published 01/09/2014
Part M. International marks
Kelly-Marie BENNETTKnowledge Circle Register and Other Issues
Webinar. 04/09/2014
Part M. International marks
Outline
Changes compared to Manual
Brief Description
Fast-track changes – Change in practice
Part M. International marks
Outline
Changes compared to Manual
Brief Description
Fast-track changes – Change in practice
Part M. International marks
Outline
Changes compared to Manual
Brief Description
Fast-track changes – Change in practice
2.1.3.2. Basic mark
Changes compared to the Manual
2.2 Subsequent designations2.4 Forwarding of changes affecting the international mark
3.3.3.3. Seniority claims
1. Introduction
2. OHIM as Office of Origin
3.6.6. Representation of the IR holder
3.8. Limitations of the list of goods and services
3. OHIM as Designated Office
4. Conversion, Transformation, Replacement
Part M. International marks
Outline
Changes compared to Manual
Brief Description
Fast-track changes – Change in practice
Fast-track changes – Change in practice
3.3.3 Formalities examination3.3.3.4 Vague terms
3. OHIM as Designated Office
• Provisional refusals will now be issued for terms considered to be too broad or too vague or that lack clarity and precision.
• A representative must be appointed if communicating directly with the OHIM• Refusla may also be overcome by limiting the specification• Enters into force 01/10/2014• More information: Track change version of the Guidelines published 01/09/2014
News item on website published 01/09/2014
1. Priority documents: No internet search by the design examiner
2. Non-EU applicants: Obligation for appointing an EU representative
Change of practice
In accordance with Article 2 of the Decision No EX-03-5 of the President of the Office of 20 January 2003 concerning the formal requirements of a priority or seniority claim, the evidence to be provided by the applicant for a Community design shall consist of a certified copy of the previous application or registration, issued by the authority which received the previous application. The copy must contain the following elements or it must be accompanied by a certificate including such elements:- the file number of the previous application- the filing date of the previous application
Priority documents
Art. 77(2)CDR
…natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office in accordance with Article 78(1) CDR in all proceedings before the Office established by this Regulation, other than in filing an application for a registered Community design…
Non EU applicants
A natural or legal person whose domicile, principal place of business, or real and effective industrial or commercial establishment is in the European Union may act before the Office through an employee. Employees of such a legal person may also represent another legal person having neither its domicile nor its principal place of business nor a real and effective industrial or commercial establishment within the European Union, provided there exist economic connections between the two legal persons (Article 77(3) CDR). The Office may request evidence in this respect. Employees acting on behalf of natural or legal persons pursuant to Article 77(3) CDR must submit a signed authorisation for insertion in the file (Article 62(2) CDIR).
Employee representatives
Section 5.1 Persons who may submit a request for renewal If the Office receives fees from two different sources, the owner will be contacted in order to know which person is authorised to file the renewal request. Where no reply is received from the owner, the Office will validate the payment that reached the Office first. Section 5.4 Fees When the payment is made by transfer or payment to an Office bank account, the date on which payment is deemed to have been made is the date on which the amount is credited to the bank account of the Office.
RCD renewals
Thank You
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