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The Community Trade Mark Seminar on Trademarks and Designs Warsaw, 28. November 2006

The Community Trade Mark Seminar on Trademarks and Designs Warsaw, 28. November 2006 Dr. Jörg Weberndörfer. First - OHIM: an EU Agency. Office for Harmonization of the Internal Market. - Created through Community trade mark Regulation (CTMR) - Decentralized agency of the EU

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The Community Trade Mark Seminar on Trademarks and Designs Warsaw, 28. November 2006

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  1. The Community Trade Mark Seminar on Trademarks and Designs Warsaw, 28. November 2006 Dr. Jörg Weberndörfer

  2. First - OHIM: an EU Agency

  3. Office for Harmonization of the Internal Market • - Created through Community trade mark Regulation (CTMR) • - Decentralized agency of the EU • - Around 700 staff from soon 27 Member States • - Self-financed through fees

  4. Bilbao FRANCE SPAIN PORTUGAL Barcelona Madrid Valencia Sevilla ALICANTE OHIM The Seat of OHIM

  5. WHAT IS A COMMUNITY TRADE MARK (CTM)? • A sign that identifies and distinguishes goods and services • Valid in the whole territory of the European Union • Has unitary character • Registered by the OHIM in accordance with the CTM Regulation

  6. COMMUNITY WIDE TRADE MARK PROTECTION Since 1996: The Community trade mark

  7. MAIN ADVANTAGES • Reduced administrative burden: • Only one Office to deal with • One single application • One legal system • One single language (out of 20 to choose) • One single file to be dealt with • One single fee system • Obligation to use easy to be met • Uniform protection throughout the EU.

  8. Czech Danish Dutch English Estonian Finnish French German Greek Hungarian English French German Italian Spanish LANGUAGES EU OHIM • Italian • Latvian • Lithuanian • Maltese • Polish • Portuguese • Slovak • Slovenian • Spanish • Swedish

  9. WHO CAN BE CTM OWNER? • Accessible for everybody! • Anyone from any country in the world may be the owner of a CTM. • Any applicant without a seat or real and effective establishment within the EU needs to be represented by: • A legal practitioner • A professional representative authorised to act before the OHIM • An employee

  10. HOW MUCH DOES IT COST? Reduced fees since 22/10/2005! • Application fee • 900 EUR incl. 3 classes of goods/services in case of paper filing • 750 EUR incl. 3 classes of goods/services in case of e-filing • 150 EUR for each additional class • Registration fee • 850 EUR incl. 3 classes of goods/services • 150 EUR for each additional class

  11. DURATION OF REGISTRATION • Duration: • 10 years from the date of filing • Renewal: • Every 10 years, provided that the renewal fees are paid (indefinitely possible!) • Renewal fees: • 1.500 EUR paper renewal • 1.350 EUR e-renewal

  12. WHICH SIGNS MAY BE COMMUNITY TRADE MARKS? • Two conditions • Signs which distinguish the goods or services of one enterprise from those of another • Signs which can be represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging

  13. What can be a Community Trade Mark? WORDS (word marks) Adidas Starbucks Whirlpool Nestlé Volkswagen Sony Harley Davidson Philips Just Do It Orange Siemens Lays Red Bull Java Vodafone JVC Gatorade Coca Cola Shell Ford Apple Levis Rolex Microsoft PepsiCo RayBan Zippo Bic MGM Petronor Herbalife EMI Sellotape Pfeizer

  14. What can be a Community Trade Mark? LOGOS (figurative marks)

  15. What can be a Community Trade Mark? OBJECTS (3-D marks)

  16. What can be a Community Trade Mark? SOUNDS (sound marks)       (Tarzan yell) (Popping) (Sound of tennis balls being hit)

  17. What can be a Community Trade Mark? COLOURS OR COMBINATIONS (colour marks)

  18. What can be a Community Trade Mark? OTHERS ? • Olfactory Marks (smells) • Movement Marks • Holograms • Though acceptable in principle, graphic representation is problematic with such marks. • Smell marks have already been ruled out by EU courts

  19. EXAMINATION OF THE APPLICATION Filing Classification, Formalities examination 10-12 months Absolute grounds examination Search and translation Publication 18-20 months Opposition (inter partes proceeding) Third parties observations Registration Partial and total refusal

  20. ABSOLUTE GROUNDS EXAMINATION • “absolute grounds” relating to the sign itself • Examined ex officio for all applications • Grounds based on the interest of the consumers • Prohibition of illicit signs (deceiving or contrary to public order and morality) • Grounds in the sake of a free competition • Refusal of signs which are not distinctive, descriptive or generic.

  21. OPPOSITION PROCEDURE PUBLICATION NOTICE OF OPPOSITION (OPPONENT) NOTIFICATION TO APPLICANT ADMISSIBILITY EXAMINATION COOLING OFF PERIOD START OF WRITTEN PROCEDURE (observations from parties, proof of use, etc.) EXAMINATION AND DECISION ON OPPOSITION, COSTS AND APPLICATION FOR A CTM

  22. RELATIVE GROUNDS EXAMINATION (EXTRACT) • „Relative grounds for refusal“ = conflicts with earlier rights of third parties • Not examined ex officio by the office • Only if an opposition is lodged by the owner of the earlier right • Delay: 3 months as from the publication of the application

  23. REGISTRATION If no opposition or if opposition rejected: • CTM proceeds to Registration • Request for payment sent to applicant/representative • Published again as registered CTM in CTM Bulletin (Part B) • Certificate sent out

  24. AND NOW? • Congratulations… You are the owner of a CTM! • Put the CTM to use in at least one Member State (within 5 years) • Observe the market and defend your right against subsequent conflicting applications!

  25. LINKS BETWEEN NATIONAL AND COMMUNITY SYSTEMS

  26. Different ways to protect trade marks within the EU • National system • Internationalsystem • Trade Marks: Madrid system and/or Madrid Protocol for trade marks (Designs: Hague Agreement) • Community systems Or a combination of these systems (at the free choice of the applicant)

  27. (1) The national route File individual applications at each of the national TM offices ALWAYS: Translation Costs Lawyers Fees Each protection title subject to the different national laws

  28. (2) The international route A home application/registration is needed Request in EN, FR or ES - basic fee to be paid Individual fees are payable to the national TM offices In case of problems: Translation Costs Lawyers fees No single unitary right is granted - ‘bundle’ of rights’ - subject to national law of each country

  29. (3) The Community route • EU as a single territory • 1 application, 1 file, 1 fee • 1 unitary right • Single legislation - interpreted by the same Courts • publication in 20 (22) languages (translations to other 19 (21) needed)

  30. Inclusion of OHIM in the international route The international Trade Mark route is based on the Madrid Agreement/Protocol: OHIM joined the Madrid Protocol on 10/2004 The international Design route is based on the Hague Agreement: It is assumed that OHIM will join it in the second half of 2007 Result: OHIM can be either the office of origin or the office of designation

  31. EQUIVALENCE COMMUNITY FILING / NATIONAL FILING Filing of a CTM application  regular filing in each Member State  effect of 23 (soon 25) national applications filed simultaneously • CTM application may impede subsequent registrations at national /international level in the EU • National applications in the EU may impede subsequent registrations at Community level

  32. Allows proprietors of national trade marks to group them into the CTM Links between national and CTM system: 1. SENIORITY Requirement: Triple Identity of trade mark, goods/ services and owner Goal: Simplification of administration and reduction of costs of the trade mark portfolio

  33. AT: International trade mark as from 29.7.52 BX: International trade mark as from 29.7.52 DE: International trade mark as from 29.7.52 DK: National trade mark as from 30.3.07 ES: International trade mark as from 29.7.52 SENIORITY SUCHARD

  34. Community trade mark as from 01.04.96 SENIORITY SUCHARDCTM: 31294

  35. Conversion Links between national and CTM system: 2. CONVERSION • national(s) trade mark(s) application(s) • national(s) trade mark(s) application(s) CTM application: withdrawal or refusal Registered CTM: Surrender, revocation, invalidity, non-renewal Goal: Maintaining the filing/priority date of the CTM

  36. THE EU ENLARGEMENT: Legal Implications? Art 142 (a) CTMR: 3 Rules • Automatic extension for free! • Grandfathering of CTMs • Respect of acquired rights in new Member States via possibility of protection against the use of acquired CTMs in the national territory

  37. European Court of Justice Court of First Instance OHIM Boards of Appeal Trade Marks Department Admin. of TM & Designs Designs Department Department APPEAL PROCEEDINGS LUXEMBOURG ALICANTE

  38. CTM COURTS • Competent for infringement actions (full details Art. 92 CTMR) • Designated by the respective countries • List of competent courts: http://oami.eu.int/en/mark/aspects/default.htm

  39. Community Trade Mark Statistics General Statistics Executed at 15/11/2006

  40. Accumulated CTM Applications

  41. Accumulated CTM Registrations

  42. Oppositions Filed Against CTM Applications

  43. Cancellation Applications Filed

  44. Community Trade Marks Cancelled

  45. Top Ten CTM Filing Countries

  46. Type of Marks Filed

  47. Top Ten CTM Owners

  48. Top Ten CTM Representatives

  49. Community Trade Mark Statistics CTM Statistics for POLAND

  50. CTM Applications from Poland

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