Conference on the Accession of the European Community to the Madrid Protocol The Accession of the...

Conference on the Accession of theConference on the Accession of the European Community to the European Community to the

Madrid Protocol Madrid Protocol

The Accession of the European Community to the Madrid The Accession of the European Community to the Madrid ProtocolProtocol

- the long and winding road- the long and winding road

Part IIPart II

- Council Regulation No 1992/2003 of 27.10.2003(Amendment CTMR)

- Council Decision No 793/2003 of 27.10.2003(Approving the Accession)

- Commission Regulation No 781/2004 of 26.4.2004(Amending the fees)

- Commission Regulation No 782/2004 of 26.4.2004(Amending the Implementing Rules)

- Council Regulation No 1992/2003 of 27.10.2003 (Amendment CTMR)

- Council Decision No 793/2003 of 27.10.2003(Approving the Accession)

- Commission Regulation No 781/2004 of 26.4.2004(Amending the fees)

- Commission Regulation No 782/2004 of 26.4.2004(Amending the Implementing Rules)

Talking about perspectives

• Advantages vs. Risks• For OHIM and for Industry

Advantages for the OHIM(Madrid route, compared to direct route)

Madrid route compared to direct route

1. Data capture

Data capture:Physical receipt of application documents- Entry of data in our database (key-in)- Mail dispatch

Replaced by:• Receipt of electronic data by WIPO

Advantage for OHIM: Less cost Less time Less error (key-in errors)

Advantages for the OHIM

2. Formalities

Formalities- filing date check- filing fee check- Names, addresses, signature- Proper representation of mark- Priority documents

Replaced by• Receipt of electronic data• Automatic parsing of second language

Still required: seniority examination intervention if second language is missing check Regulations of use for collective marks

Advantages for the OHIM:

3. Classification

Classification:

- Done by WIPO

- Accepted by OHIM

- Uniform approach to class headings, retail services, “vagueness”

Replaced by

• Internal quality checks to secure harmony between OHIM practice and WIPO practice

4. Publication, translation

Publication and translation

- Full publication of mark incl. list of goods and services- Full translation of list of goods and services into 18/19 other languages

Replaced by

• Republication of bibliographic data + class numbers• without actual goods + services, so no translation• Integration into CTM-Online with link to WIPO publication

Advantages for OHIM

Translation costs

5. Renewal, changes of name of owner

Renewal, Changes of name- Renewal procedure: request+fee- Name changes: requests, correction of data

Replaced by• Centralized renewal by WIPO• Centralized keeping of register by WIPO

Still required Record of OHIM representatives and changes Certain acts concerning transfers and licensing

(Albeit limited)

Summary of savings for OHIM1. Data capture2. Formalities3. Classification4. Publication, translation5. Renewal, changes

Advantages for industry:

1. Data capture:- Avoid multiple data entry+reentry- One single data set across countries- Fewer data capture mistakes

Advantages for Industry

2. Formalities- One single set of formality requirements

around the world- Less objections … less cost

Advantages for industry:

3. Classification- One single examination- Forces designated Offices towards

harmonised practice- Less objections… less cost

Advantages for industry

4. Publication, translation:- Publication advantages less apparent

(mix between WIPO Gazette and OHIM Bulletin)

- Makes Madrid route cheaper (200 € discount)

- Reduces languages (3 at WIPO)

Advantages for industry

5. Renewal, changes- Allows centralized TM portfolio strategy- Less risk for loss of rights

(inadvertent non-renewal, lack of registration of transfers)

- 200 € discount for renewal at OHIM

Advantages for industry:

6. Summary of cost advantages- Discount for individual fee

- 200 € for filing- 200 € for renewal

- Representative at OHIM only in case of incidence(refusal, opposition)

- No OHIM representative for renewals and changes

Comparison CTM Direct vs. via Madrid Protocol Risks for industry:

- Basic mark still required(in “country of origin”)

- Central attack- In particular, regarding US- US classification practice- Advantages may vanish if designated offices

keep their own approach- (OHIM does not want to do that)

Conference on the Accession of theConference on the Accession of the European Community to the European Community to the

Madrid Protocol Madrid Protocol

THANK YOU!!!THANK YOU!!!