The Guidelines WP2 2014

The Guidelines WP2 2014

Webinar 04/09/2014

THE GUIDELINES REVISION PROCESS

Part A: General Rules

Sophia Bonne Knowledge Circle Proceedings

Webinar. 04/09/2014

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

THE REDTUBE JUDGMENT ( C-402/11 P)

Part A: Section 9Enlargement

Panayotis GeroulakosKnowledge Circle

Webinar. 04/09/2014

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

3. MAIN PRACTICE CHANGES

5. Amendments to the CTM Application

THE VORTEX JUDGMENT ( T-104/12)

Part B: ExaminationSection 3: Classification

C. Den DekkerKnowledge Circle G&S Issues

Webinar 04 September 2014

Practice changes

Part B.3: examination of classification

√ 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


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


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

New Classification Practice: WHEN?

CTM: 02 December 2013

Other changes- Structure

- More examples

- Correction of errors

Part B.3: examination of classification

New Classification Practice: WHEN?

IR: 01 October 2014

New Classification Practice: WHERE?

www.oami.europa.eu

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

Practice changes

Part B: Examination

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

Public policy and moralityArticle 7(1)(f)

Concept of ‘public policy’

→ further developed in the new text

Plant varieties (practice maintained)

Some examples have been fine-tuned

R 2124/2011-5 T-232/10

DeceptivenessArticle 7(1)(g)

Protected emblemsArticle 7(1)(h) and (i)

Concept of ‘heraldic imitation’

Analysis step-by-step

Alignment (h) and (i): Case T-3/12 ‘Member of Euro Experts’

Protected geographical indicationsArticle 7(1)(j) and (k)

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)

Collective

trademarks

Collective marks

→ Draft substantially maintained

→ Ownership

RevocationGeneric – Misleading - Invalidity

• 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

Part C: Opposition “Other” Relative Grounds for Refusal

Elisa ZAERAWEBINAR

04/09/2014

OUTLINE

Article 8(3) CTMRArticle 8(4) CTMRArticle 8(5) CTMR

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

OUTLINE


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

DIRECT RIGHT

STRUCTURAL MODIFICATION

NO CHANGE OF PRACTICE

TYPES OF RIGHTS

STRUCTURAL CHANGES- INTRODUCTION- PASSING-OFF

CHANGES OF PRACTICE- GEOGRAPHICAL INDICATIONS

TYPES OF RIGHTS: PGIs

1. WHICH PGIs 2. SUBSTANTIATION3. SCOPE OF PROTECTION

STANDARD OF PROOF

NO CHANGE OF PRACTICE

BURDEN OF PROOF: STILL WITH OPPONENT

TABLE WITH NATIONAL LEGISLATION

OUTLINE


MODIFICATIONS

IntroductionScope of applicabilityConditions • Earlier mark with reputation• Similarity of the signs• Link• Encroachment upon reputation: dilution • Use without due cause

PROOF OF DILUTION

CHANGE IN ECONOMIC BEHAVIOUR OF AVERAGE CONSUMER

HOW = ?

C-383/12P

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


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.

Part E Section 1, 2. Alteration

Acceptable alteration:

Unacceptable alteration:

1. Surrender


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



Brief Description

Chapter 1. Transfer


Chapter 2. Licences

Chapter 3. Rights in rem

Chapter 4. Levy of execution

Chapter 5. Insolvency

Part M: International marks


Webinar. 04/09/2014

Part M. International marks

Outline


Brief Description

Fast-track changes – Change in practice

Changes compared to the Manual

2.1.3.2. Basic mark


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


Outline

Part M International marks


Brief Description



3.3.3 Formalities examination3.3.3.4 Vague terms


• 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



Webinar. 04/09/2014


Outline


Brief Description


2.1.3.2. Basic mark


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


4. Conversion, Transformation, Replacement


Outline


Brief Description



3.3.3 Formalities examination3.3.3.4 Vague terms


• 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

Examination of Applications for RCD

Dimitris AndropoulousDesigns

Webinar. 04/09/2014

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

Renewal of RCD

Dimitris AndropoulousDesigns

Webinar. 04/09/2014

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

LATEST MODIFICATION

THANK YOU!

Thank You

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(+ 34) 965 131 344 (main fax)

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DRAFTStatus

Presentation

Revision history

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Webinar WP2 04/09/2014

The Guidelines WP2 2014

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