Getting used to EU IPO

It is a whole month since the end of the community trademark and the rise of the EU TM.

Everything still works - but a tad slower perhaps but maybe thats just catch up. On filing applications I have discovered that if I want to be on the fast track I must forego the right to receive the search report of earlier European union marks. I am expecting that I will be able to see the search report online as there is still an obligation for the search to be carried out.

I have noted that I can still claim priority and seniority on the fast track if I provide the evidence.

There has been lots of excitement about the possibility of clarifying the class heading registrations using the Article 28(8) procedure. You can only do it between 23 March 2016 and 24 September 2016 inclusive. There is an online form or rather you use the existing online form choose Recordal then EUTM and then the big inviting button labelled "Declaration under Article 28(8) EUTMR"

Its not a complicated form just a box that invites you to provide your declaration, identifying your Goods and Services per class. There is no fee. Maybe it will be a hot topic of conversation at INTA in Orlando. I will be there. Sadly I suspect that having advised clients in the past to say what they mean, this is not a marketing opportunity that will be profitable. You cannot use Article 28(8) procedure

 If the specification includes specific terms plus the class heading then chances are you are okay anyway and dont need to use the service

 If the specification only includes part of the class heading then you cannot use the service

 If the specification includes the class heading with an exclusion then you cannot use the service

If the applications were applied for after 22 June 2012 then you cannot use the service

Corsearch have ingenuously offered to create a new report that identifies by owner name relevant registrations from the right period which include class headings that might need to be amended. I have not been paid to promote this product but Corsearch continue to support the newly Chartered Institute of Trade Mark Attornies evening lectures with canapes and wine.

Preparing for 23 March and the European Union Trade Mark

This name will disappear on 23 March 2016 so are we ready for the change? The page that the soon to be European Union Intellectual Property Office has created is here.

Although there is a new Harmonisation Directive the approach taken for our favourite CTMR 207/2009 is that it is amended so we need a consolidated version. I haven't found one yet. Will we still call it CTMR for old time's sake?

The simple things we need to do is change the name of OHIM  which becomes European Union Intellectual Property Office and community trade mark becomes European Union trade mark. What is the consensus for the abbreviations: EU IPO and EU TM is my choice. European Union TM is officially sanctioned in Art 1(2) of the amending regulation.

Not much will change about day to day filing except that you will have to decide whether you want to receive the search of earlier rights on the Community Trade Mark Register Register of EU Trade Marks . This is now known as an EU search report but it still only covers EU TMs. You can say you don't want it but they have to create it even if you don't want it because they are still sending out those pesky surveillance notices. We are now allowed to opt out of receiving them though and I shall be looking at how to do that, especially where I am the representative for one and two letter logos.

Graphic representation is now (well with effect from 1 October 2017 and we can expect the EU IPO to tell us what representations are acceptable)  not essential and there is plenty of hot air about the possibilities of registering non-traditional EU TMs. Forget it. They also amended Art 7(1)e so you cannot register:

‘(e) signs which consist exclusively of:
(i) the shape, or another characteristic, which results from the nature of the goods themselves;
(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;’

Now Arnold J had a go at the Taxi CTM not long back and at paragraph 215 of his judgement killed it under  the substantial value provision. The same has to be the case for the smell of perfumes. Even if the representation is not graphic it is still required to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. I don't know of any self-contained sound representations. Even a recording needs something to play it and the sound file also needs to be easily accessible and durable - quite a challenge. My best advice is stick with registration for traditional marks.

The amendments allow for Certification EU TMs but these points of the Regulation will not apply until 1 October 2017 so we have more time to prepare for those.

We have already seen the benefit of the reduced renewal fees when renewing EU TMs that were due to expire after 23 March.

Thinking of Brexit, the provisions on representation  Art 93(1)b now simply says

(b) professional representatives whose names appear on the list maintained for this purpose by the Office.

If UK representatives are on that list they will still be there after Brexit so the old campaigners should be able to continue to represent. The requirement for representation is also amended so that it is only applicants outside the European Economic Area who need representation as opposed to outside the Community. Its possible, but uncertain, that the UK will stay in the Economic Area. This is the area for free movement of people and that is a big issue for many LEAVE voters who might feel betrayed if we stayed in the EEA and were simply told what to do by Brussels without any say in the negotiations.

A lot more of  the changes are less likely to affect our daily lives, but there are a lot of them so we might be surprised.

European Case Law Review 2014

Guy Heath

One of the most valuable sessions in San Diego was the European case law review, a swift canter through the key cases of 2014. Clearly a huge amount of work had gone into the final selection so it was dissapointing not to have any handouts for further perusal on the plane home. This year the INTA app promised handouts and a discussion capability, but it delivered a sparse selection of speaker bios instead. Nevertheless INTA has published in its Reporter a valuable digest which you can download here. I reccommend you do so as its beautifully organised by topic and provides national cases as well. No trademark agent should be without it.  Thanks Guy. We would love to have the slides too.

Thank You @Oamitweets for 2014

It is the season for writing thank you letters so now that the holiday season is drawing to a close, I was thinking of writing a SOLO thank you letter to OHIM for the challenge of their new website.
It was a great idea. We applaud the concept of electronic business. Some of us may have dusted off the fax machines and given up the unequal struggle of finding the right button to press to record or pay or limit or surrender our client's marks. Nevertheless there are some smart error trapping reasons behind all those buttons. You cannot oppose an International mark too soon  or partially surrender a pending application. You can now submit your Grounds of Appeal and taking over representation is simplicity itself. So for the result we thank you.

I am sorry that despite the long holiday period from 24 to 31 December announced in 2013 and today 1 January 2015 more recently announced,  that someone or something was still working. Over the dies non I have received alerts, search reports, renewal confirmations, notices of advertisement and the dreaded surveillance notices. None at least on 25 December so at least some holiday may have been observed.

I am surprised that there are still bugs lingering but OHIM website weekend works still seem to be a regular occurrence with the last advertised for 20 December 2014

It would be nice if 2015 saw some stability so we can get to grips with using it without things changing under our fingertips.

One of the bugs that annoys me is this. I want to edit the name or address of one of my owners and that helpful little message comes up that I have circled. It says "Please note: if you have provided a correspondence address you may also want to update it" but does it let you? No. Sucks boo, the correspondence address stays greyed out as does the Country of your address, whichever address that might be. Its been frustrating me for a while now but its not something I want to phone the customer support line about. I just leave the correspondence address. Its a bit of a legacy anyway now that the applicant is using e-comms and a representative.

It is fairly unusual for a company to want to use an address in another country, but it can. Since we have a European Union you might expect a company occassionally to want to run its business from elsewhere in the Union. While in the UK, our law requires a company to have a registered office address within the country of incorporation, the trademark does not need to use that address. I suggest to my clients that they do, but some prefer to use their business address instead. 

Or maybe a Scottish company might want Scotland to be there as their country. After all for a Scottish company that is where its registered office needs to be.

It seems that OHIM regard a change of country as a transfer but of course the transfer department do not see it that way and will not record a change of address on a transfer request. So sorry to bore those of you who have never had a client who wants to trade from another country, but this seems to be the most convenient way of  raising my concern.

Maybe "Owners" is one of the areas that the IT team are still working on. Mysteriously the number of Owners now in my User Area is much depleted. Ah you see OHIM loves to keep us on our toes. Lets just hope they keep moving in the right direction during 2015.

Happy New Year!

Is a Fax Machine Essential ?

It appears that my co-blogger is planning to move office and to that end she has been busy working out what needs to be done. I am hoping that she will share with us some of the useful information she gathers in this exciting process.

She asked OHIM whether it was still necessary for representatives to provide a valid fax number for communications. She reports that they said No.

Today I had rather late instructions to file an appeal. It should have been the simplest task to enrich OHIM with 800€ from my deposit account and say that the grounds would follow later. Barely 5 minutes work really. OHIM even provide a very detailed note of how it is supposed to work. Sadly that is not how it does work, due to the delights of the OHIM website.

I really mean it

Once upon a time if you logged into your dashboard and selected a mark, it would be opened in a new tab after asking that infuriating question about whether you wanted to be told that ever again. I have lost count of how many times I have said I don't want to see that message again. That's not the bug I am concerned with.

The bug is that having arrived  in my new tab the header says I am logged in but the record says I am not. The bug seems to be temperamental as its sometimes there and sometimes not. Maybe this is due to the time I have been logged in? To me it seems just to appear to annoy me when I am trying to achieve something.

Now having got to my record there is a button to appeal but it wants me to upload the form. I am a smart bunny, I know where OHIM have hidden the link to the forms at the very bottom of the home page. You can also find a link in that very detailed note. If you are reading this because you have work to do (and a typewriter) here is the link to the Appeal Form.

OK you have the form and you download it and fill it in in Acrobat Reader. Oh no of course you cannot save it, but you can print it and scan it. Now it would be easier just to fax it but I have not got a printer and a fax to hand at the moment. I do however have a full licensed copy of Adobe Acrobat  so that should be simples. I can fill the form and save it and then attach it to the e-communication. No. I fill it and save it but when I attach it, its blank except for my signature. No information on the deposit account I want to take the fees from, no indications of the appellant and the decision. All just blank. Why? It looks just fine on my PC. I try to print it using a pdf printer but the security defeats me again and generates an error message as if I was trying to print a picture of some currency rather than spend it.

All I am doing is a standard obvious action that OHIM should have tested many times. It is months after the website was launched. They tell me how to do it in their tutorial but it does not work that way unless you are prepared to use a typewriter or a fax machine or scanner.

So Sally I am sorry they misled you but I strongly recommend you get yourself a little USB fax modem from Maplin so you can send faxes from your PC. This is the one I have and its a bit of a bore to plug it in instead of the phone but it should work (I hope) or this appeal ain't going to be filed. Just as well I don't leave things to the last day but even so post wouldn't work either.

So come on OHIM its bad enough that I must appeal but at least take my money without quite so much pain. I may cry.

The Secret World of CTMR Article 82

As an OHIM professional representative, you will be familiar with the rather handy piece of the CTMR which provides for a get out of jail card (not free, but €400) in case you have overlooked some but not all time limits and spot the problem within two months. Its called Continuation of Proceedings (and sometimes Further Processing)  and unlike the fancier titled "Restitutio in Integrum" of Article 81 requires no confessions to be made or excuses given.

Its use was explained by a Communication of the President 6/05 in September 2005 soon after it became available as Article 78a in July 2005. The Manual Part A Section 1 has been updated with the right references since.  The strange thing about this provision is that OHIM have determined to keep its availability secret.  No hint is ever dropped that this might be a good idea. In many ways this is fair enough but I have recently encountered a situation where for the second time, this secrecy has made me look like a scammer. Let me explain.

OHIM will accept an application from an applicant who is required to be represented and they will take and keep their fee. However the first thing such an applicant gets is a notification that they must appoint a representative within two months. When OHIM introduced this practice in 2010 I posted an offer to help out anyone in this difficult position. As a result a (very very) small number of intrepid cash strapped applicants come my way from outside Europe. I usually act promptly so all is well, but if it takes them a while to find me or it took a while for the communication to reach them, I may be late. Now having put my name on the register and checked the communications I may discover I am late. Usually the suppliant does not send me the fax they have from OHIM. When I find out, I tell the  applicant that it is going to need a fee of €400 to get the application back on the road. Sometimes I may just mention a few other problems with the specification or representation that may make it more desirable to file again.

Coincidentally the sum I mention is probably a similar sum to what he may have been quoted by less generous representatives in his earlier attempts to get a representative on the cheap. Ah ha he thinks just another money maker. He can check the register online and he sees the application now has a representative and is happily shown as pending. All must be well. I have nothing from OHIM to say they are unhappy. That's the secret bit. They simply wait two months and a bit and click it over to refused. They are €900 to the good for one fax. This is a great way of funding the Observatory.

Now you can't blame the applicant for thinking I am a rip-off merchant. He has maybe already had some directory offers  and even OHIM warn you about unsolicited invoices. I have nothing to send to the applicant to justify my position and show that the source is official. Since I am not being paid, I do not have much of an incentive to do anything more than explain the position to the hapless applicant and leave him to decide how to proceed.

Is this fair, what do you think? With so many out of Europe applicants and their representatives attending #INTA14 in Hong Kong, perhaps some of them may raise this issue and why they need representation once they have filed.

Frankly I think OHIM were right in 2010 when they opined that CTMR Art 92(1) in permitting the filing of the application without a representative,  meant that a representative was only needed if there was something for that representative to do.





 

Does The OHIM Board of Appeal have a Backlog?

All courts and tribunals have a period between the closure of the case (whether it be the end of the trial or the closure of a file of written submissions as at the OHIM Board of Appeals) and the date of the decision. In the case of the OHIM Boards of Appeal the published service standard is 8 months. As you can see from the results which were updated on 1 April 2014 with the 2013 4th quarter outcome, the inter partes Appeal  results rose from a dismal 58% in the third quarter to 80%. For ex-parte decisions they hit 96%.

A Backlog of paperless files can be denied

This would seem to suggest that any backlog has been dealt with, or does it?

These are figures for cases where decisions have been issued within 8 months - not exactly a short time compared with the UK IPO or Courts. Therefore a stunning result can be achieved by taking the recent cases and issuing quick decisions. There are a lot of simple decisions to be taken too, where the Appeal is ill-founded for want of grounds or some such. These decisions are commonly caused by an Appeal being filed to achieve a settlement, but they still generate quick and easy decisions to keep down the averages.

My perception is that there is a backlog is based on one observation of a decision awaited since the file was closed on 31 July 2012. The timeliness standards had given me the impression I was not alone, but apparently I am.

The President of the Boards Of Appeal who attended the Mediation event in London on 31 March 2014 told me there was no problem. The existence of a backlog was denied again by Christoph BARTOS,  member of the Board during the OHIM webinar on 9 April 2014 on Decisions of the Trimester.

ESearch reports that there are 884 appeals pending - these are the Opposition and Absolute Grounds Appeals. 280 filed in 2014, 503 are 2013 appeals but it also confirms that 60 of those appeals have 2012 Appeal Numbers but some of those are already with the CFI and some could be suspended so they are not all part of the non-existent backlog. There are 33 2011 Appeals pending and 7 from 2010 leaving only 1 earlier Appeal except there were 3 in 2009 so something does not add up. Ah, there can be more than one appeal number on a file. 

So what about Cancellations which don't get given an Appeal pending status but a Registration Cancellation pending status. There are 87 with 2014 Appeal Numbers, 239 from 2013, 117  from 2012,  96 from 2011, 37 from 2010, 20 from 2009,  23 from 2008, 14 from 2007.

Now this is perhaps not a backlog, because we cannot expect OHIM to take responsibility for the European Court and its delays or the desire of parties to suspend their cases. Nonetheless I suspect there might be a case to answer on Cancellations. These inter-partes issues are often more challenging legally but also more important commercially. Can you help me establish if there is a problem in the Cancellation corner?

Pause for Thought: Unlawful Trade Mark Examination

It's often the case that, having filed a UK trade mark application, an applicant is in two minds as to

Pondering whether to Proceed with his Trademark

whether it is prudent to allow a notification to go to an owner of an earlier right. Depending on how close the trade mark is or whether the owner of the earlier right is still in business and indeed possibly a close competitor, it might be a good idea to let him know so that the invitation to oppose from the UK IPO (which is what it feels like, even though it isn't) does not come out of the blue. For this reason, the UK IPO have decided that the application should wait for two months before they go ahead with the advertisement. During that time the applicant can respond and push the application ahead straight away -- or he can ponder.

Things aren't quite the same with OHIM. There, they are very competitive and love to be able to advertise that applications are published within hours or, at the very least, days. I think this race to register began with the dot-com boom and the need to have a trade mark to get into the sunrise period for new top-level domains. Such joys have now passed. Efficiency is good -- but should it be in disregard of the law? In the summer, the IPKat drew attention to the fact that OHIM are regularly publishing applications less than a month after they have sent out the search report. This contravenes Article 38(7) of the Community Trade Mark Regulation (CTMR), which was designed to give applicants an opportunity to ponder their search results by delaying the publication for a month from delivery of the search report.

One of the improvements OHIM have offered in their new website (see post below) is an opportunity to do a search at the point of filing, so you can decide whether to pay your fee. This looks very promising -- though I haven't had an opportunity to try it (being small and not impacted by new websites (sob!)). So I asked the OHIM team whether they were going to continue ignoring Article 38(7). The question was well understood -- but it wasn't answered.

Efficiency! Speed! Those are the objectives, and they can be measured. No doubt the revision of the CTMR, if and when it happens, can be made to remove this embarrassing provision. However, it hasn't happened -- and it doesn't bode well for the rule of law if European institutions are able to boast about disregarding burdensome provisions while asking the CJEU in great ceremony to interpret others less inconvenient.

Many professional trade mark attorneys use a deposit account. The rules of deposit accounts require the the fee is not deducted until one month after the filing date. This fits nicely with the anticipated delay before publication, and these applications don't seem to be fast-tracked as they can withdraw during this period of grace and recover their Euro. However, it seems that the credit card users pay their money straight away so their applications are advertised faster. In many cases, it may be the credit card users who are best advised to ponder.

I don't like to criticise OHIM. Mostly speed is good but maybe the Oppositions and Appeals process could get the benefit of acceleration while the applications comply with the law.

Are you ready for the New OHIM Communication Revolution

This will soon be the face of OHIM

Will OHIM's new website come as a shock to you on Monday 25 November 2013? If you are a big firm you would have been offered a home visit and you might even have been part of the user group that tested the new user interface. Two were in London I am told, but I have not seen anything from ITMA on this topic. However if you missed the UK_IPO announced workshops that took place yesterday and today, you may be in for a shock when you come to do an on line filing on Monday 25th.

MY Page log ins are being migrated so you will be able to log in to the glitzy new User Area but its going to feel strange.  Remember its intuitive, so engage the inner child. You can still send a paper application by fax but there is no pdf form on the website anymore so get accustomed by going in and trying it.

If you want to do anything significant you will need to Sign Up - top right. However if you are not quite solo log in credentials can be shared and multiple log ins are allowed. If you have a deposit account the balance will be accessible from the User Area.

There are many good things. όλα είναι διαθέσιμα σε 23 γλώσσες. OK you can have it in any of the 23 European languages.

The Search looks promising but I am betting my carefully garnered direct links into CTM-Online are all going to be redundant, which is sad. Better access to the documents on the file (Sign Up now needed as OHIM think they need to know who is inspecting files) and a weird new Time line may be compensation. Cute is the idea that you can re-arrange the sections drag and drop style. Tabs have appeared too.

The Mailbox is new and allows bigger attachments for some actions. If you open a communication you can save the pdf or email it on to someone else. For Solo practitioners the new Communications look much improved and I think at last I can see what I am sending. Not sure, because there was no hands on access at yesterday's workshop.

One sad loss is that existing watches are all going to be scrapped and burned. Instead you can set them all up again in an eAlert system that integrates with the eSearch so you can be notified of any new results to your sophisticated query. The basic watch with RSI inducing boxes to tick for a specific mark is also available.

For the main online filing, we now have a form for transfers and a host of other recordals - very clever and it will make it much easier to do some of those that need several bits of information. There is also some handy integration with TMClass and TMView. As part of filling in your applicaiton form you can do a search that uses a similarity algorithm to give you an idea of problems ahead. Methinks this may be the same as the one those quick of the mark search examiners at OHIM use. It makes a useful tool to identify any imminent disaster areas that might cause you to abort a filing.

IPTranslator has left its mark here too. Gone is the tick box to put everything in the alphabetical list into your specification. You are encouraged to use the taxonomy but you are warned that using a group heading term does not necessarily cover everything underneath it. Just depends how a business man would understand it. Manual goods insertion is possible too, but you may have to look carefully. Priority informaiton can be imported from TMView (seniority too perhaps?)

If you can't wait head over to the IPO of Finland where it is alleged the online filing tool has already been implemented.

If you need to Be More Prepared I suppose we have to beg from one of those big firms that are part of the Beta. I have asked to join and if they let me in, you are very welcome to come and have a preview here in my basement.

Merging, Converging or Diverging -: the concept of Complementary Goods and Services

Add caption

This started off as an idea for a post by Sally Cooper to illustrate the theory that services can be complementary to goods and so confusingly similar. Everything is a service in the world of converging technologies but in the old world we mostly just had goods.

Even so, the goods we buy do provide us with services. I love Sally's example which illustrates how different parts of the relevant public perceive the same good:

Whilst putting this note together, I keep thinking of coats (as in coats you wear – rather than coats of paint). As a young person, you buy a coat because it looks good / the price is right / it suits you. As an old person, you buy a coat because it looks good / the price is right / it's likely to last for a long time. In youth, the item is definitely " goods ". In maturity, the item is more "service " than "goods". So perhaps "complementarity " (and I claim credit if I've invented that word) is (in some form) always with us ? And (in the trade mark context) maybe we need Decisions to prompt thinking on whether "Merging" is still moving down the line – or has moved so far down the line that we've arrived at "Merged" ?

In a recent opposition decision - that would have been fast-track had we had them already (Ms Al Skilton – the Hearing Officer - is designated to hear all early Fast-Track Oppositions) - Sally was successful in persuading the hearing officer that software programming and design services were similar to computer software. If you turn to paragraph 39 of that decision you find the very reasonable assessment:

"Dealing first with the applicant's computer software, software is the end result of software design and/or programming service. Such a relationship, which is complementary, is likely to be one where the average consumer regards the same undertaking as being the provider of both the goods and services."

Looking back in the decision, I see that the Hearing Officer very properly reminded herself about the European case law on the subject of complementary goods and even quotes from El Corte Inglés v OHIM Case T-420/03,
“96(sic -its paragraph 98)...goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (Case T-169/03 Sergio Rossi v OHIM-Sissi Rossi [2005] ECR II-685).”

However we see that this idea of complementary goods has diverged in European jurisprudence from the broad relationship that Sally envisions. The concept seems to be carefully limited so in another El Corte Inglés case T-39/10 (under appeal)  we find "By definition, goods intended for different publics cannot be complementary."

Nevertheless we can confirm that the jolly similarity tool  from OHIM does say that 'computer programs' in class 9 are similar to 'design and development of computer hardware and software' as having the same purpose and public and being complementary (factor 4 from the famous early Canon decision - not that you got much guidance about what it meant in 1998 its just a word in paragraph 23 ) On the other hand wine glasses are not similar to wine, however much they may complement each other. So complementarity is never enough alone.

Sally recalls that it was some twenty years ago (so 1993) that a conference in Manchester (directed at "entertainment") brought Cd's (new technology – before DVDs) to the attention of those attending. Cd's were head-lined as the music-carriers of the future. But the company that stole the headlines at the conference was not a music company – it was OCEAN (wikipedia : "one of the biggest video game developers / publishers of the 1980s and 1990s"). The music people had not thought things through – CD-content was not limited to music. This "technologies are merging " awareness played out through many years afterwards, and (inevitably) the law followed (or did it - says the Duck). Some fifteen years later, in the trade mark context, the Decision I was looking for on "technologies" went on record, being the Decision of the First Board of Appeal at OHIM in 2009 [ Case R 1215/2008-1 ]. The marks were identical CLIMAX. The Applicant's goods in Class 38 (simply "broadcasting services") and in Class 41 ( "(amongst other things) television programming services; production of television programmes ") came up against opposition from a barrage of " (electronic) games " goods in Class 9 and related "(electronic) games" services in Classes 41 and 42. The gem from this decision is : " a product covering essentially the same subject-matter will be complementary to the rendering of the service, particularly where it is offered by the same undertakings to the same consumers " [ paragraph 20 ]. The Opponent's " games [ goods and services ] " prevailed (in context) against the Applicant's " broadcasting / television " services. Product and service were complementary.

The jolly similarity tool is still (just) on side accepting that games software has a low degree of similarity with entertainment.

How far do you think this complementarity should go?

A visit to London from Alicante: OHIM British Day Postcard

Westminster Abbey on 5 June 2013 with commonwealth flags

The flags were still flying outside Westminster Abbey in honour of the 60th anniversary of the Coronation as members of the UK profession gathered to meet OHIM and UK officials  at 1 Victoria Street ( the well-appointed BIS Westminster Conference center)   nearby to share the hospitality of OHIM at OHIM British Day. We were honoured by the presence of President, António Campinos as well as the exuberant Inge Buffalo and Dimitros Botos. On the UK side John Alty as Comptroller was there with Sean Dennehey who is now responsible for both patent and trade mark operations within the UK office. It seems that a visit with the Minister may have been responsible for the delayed start and late arrival of the leaders.

Now that the UK IPO and OHIM are using the same IT engine (in the UK its called TM10)  for managing their trade mark databases, can we expect even greater convergence? 
OHIM continues to emphasise timeliness as the core of its Quality metric and there is no doubt that, in some areas, it is impressive with designs being registered within a matter of hours. I did take the opportunity to express concern that the Board of Appeals and subsequent appeals were often not timely at all and where this resulted in enforcement delays as with cancellation actions, that was not the quality brand owners needed. However that was perhaps the only *meanness* (their word) shown to the OHIM delegation at least in the public morning session. I cannot say whether the private afternoon session with ITMA and other representatives of the interests was more contentious.

It seems there will be a new OHIM website going live at the end of the year. Its services will be piloted with the biggest users - so not you and me. I spoke to two representatives of said biggest users over the lavish refreshments and learned that despite the volume of business they do with OHIM they do not yet use MyPage. Maybe they need to take some consultancy from solos like us on how to be efficient in a paperless way.

We heard about the tools being created under the Co-operation Fund  programme under the auspices of the European Trademarks and Design Network (ETDN) .That link will take you to their new page and the interesting tools they are working on. Some like the similarity tool you can play with and there are plans to integrate them with the mainstream in due course. Classification and its convergence has attracted a lot of post IP TRANSLATOR interest, not all of it now hostile. There seems to be a new recognition that clarity of specifications without the wild land grabs made possible by class headings in three classes is desirable. Nevertheless the imperatives of translation have led to an assessment that only 11 sub parts of the WIPO class headings are in fact insufficiently clear leaving 186 phrases you can use following a report made in May 2013. Meanwhile, if you need real IP translating the translate button in Euroclass now renamed TMClass as it is not limited to Europe, works miracles of high quality translation of specification terms useful for your global portfolio.

The Observatory also had its own presentation and is set to become an important policy setter. Its principle immediate objective is to complete research on mapping the landscape of IP enforcement  and that means understanding citizens' perceptions of it and they do mean copyright as well as patents and trade marks. The US has reported that 27.7% of jobs are IP related and 34.8% of US GDP is IP related. We should soon have comparable figures for Europe and they are not expected to be uniform across the region. Once we know, expect to see IP campaigns coming to a cinema screen near you. The IP toolkit will give you an idea of the messages you are likely to hear.

OHIM intend to *Keep Walking* towards a more efficient future and we hope to be by their side in this journey which we all hope will benefit European jobs and economies.

Free Community Trademark Representation

This post was provoked by the IPkat post on the OHIM decision to defer allowing community trademark applicants from outside the EU to use their services without the aid of a professional representative. The current rule is that the non-European applicant needs to be represented even if his application has no issues that require the intervention of a representative.

Anyone regardless of nationality can apply for a CTM and its not difficult to do online. It can be expensive if you get it wrong and professional advice can help you avoid mistakes and add considerable value, but for those entrepreneurs with confidence why should they not flash their credit card. The difficulty as I see it is that the European entrepreneur does not have a similar privilege to do the same in the rest of the world. If WIPO thinks its worth taking up, then compulsory representation for out-of-territory applicants could become a thing of the past but, until then, I do not see why OHIM should go unilateral.

There is a suggestion that professional bodies object to the removal of the restriction because it denies them work. For that reason I am prepared to represent an out of state applicant who needs a representative for free. This is not costless and it is an invitation to treat. The claimant of such free services must:

• provide sufficient information about themselves and the application so I can identify them for regulatory purposes
• agree to my terms of trade which contain a fair hourly rate for any professional services that may be needed, though there will be no fees if the CTM registers without any intervention on my part except the the taking over of representation, and a limitation of liability
• be prepared to sign an authorisation promptly if requested
• stay in touch for the next 10 years so I can forward any correspondence that arises such as a third party cancellation action.

In return I shall

• notify OHIM that I am your representative
• enter details of your trademark application into my docketing system
• forward correspondence by email only

Any other OHIM representatives offering similar free services to out of state DIY applicants is invited to add their offer in a comment.

I have already done this. A recent requester declined to provide any further information to identify himself and that is essential.

Many European trademark professionals would like advising on trademarks to  be a reserved legal activity, but at present it is not. It is therefore important for applicants seeking assistance to have some way of checking that a representative conforms to some code of conduct. You can only do that on a state by state basis and the UK regulator  IPReg does not pull its weight at the moment by providing a list of regulated firms so you might do better to choose a solicitor whose status you can check. For more information on representation see the OHIM page.

OHIM Website Discussion July 3rd

I hope you've visited the new calm blue OHIM website. This little image on their front page takes you to a discussion forum where they are going to answer your questions live tomorrow. It looks rather promising.