User Group meeting 22 nd April 2013

1. Convergence Programme Overview User Group meeting 22nd April 2013

2. 5 projects running Convergence Programme CP roll-out Plan Endorsement in 2012 Envisaged endorsement in 2013 CP2. Convergence of Class headings Envisaged endorsement in 2014 CP1. Harmonization of Classification – General indications CP4. Scope of Protection B&W Marks CP1 CP3. Absolute Grounds - Figurative Marks CP5. Relative Grounds - Likelihood of Confusion

3. Convergence Programme Progress Report Progress : General Indications of Nice Class Headings CP1. Harmonization of Classification of G&S Initiative started June 2012 OBJECTIVE : reach a common answer as to which general indications of the Nice Class Headings are sufficiently clear and precise for classification. RESULT : a new common practice reached where 11 individual Nice Class heading terms are now commonly considered as being too vague for classification + common reasoning Envisaged for endorsement in AB meeting by May 2013 This initiative will lead to a harmonized approach in ETMD network

4. Convergence Programme Progress Report Progress : Harmonization on Classification Practice CP1. Harmonization of Classification of G&S 01 12 harmonizedoffices (OHIM, IE, SE, GB, ES, MT, IT, PT, BG, EE, GR, PL) 02 Common Communication: harmonized and synchronised communication on CP achievements 03 Guidelines for common criteria acceptability for classification 04 05 Common agreement on what terms to reject

5. Convergence Programme Progress Report Progress : Taxonomy CP2. Convergence of Class Headings Taxonomy - “ It is a hierarchical structure based on the Nice Classification system that groups terms with similar characteristics within each of the classes into a logical and intuitive tree structure”. Benefits - 01 Fits classification terms into a hierarchical structure based on the Nice Classification system; 02 Allows for user-friendly searching of goods and services; 03 Facilitates efficient and timely updates of term databases to better reflect the current economic market; 04 Allows for adequate protection while filing shorter lists of goods and services.

6. Convergence Programme Progress Report Progress : Taxonomy CP2. Convergence of Class Headings Phases PHASE 1: PILOT PHASE 2: Operational Use ….. Milestones 1st JulyTaxonomy in TMClass 25th NovGo-Live efiling; Website 22 AprNew Services Communication milestones 22 AprilUser Group 24 April Liaison 2 May Common Com. IPT Case 4 May INTA 21 May ABBC 14 June Judges 7 NovLiaison 19 NovABBC Training milestones October 2 day taxonomy training for Classification Experts (NOs and OHIM) 17 AprilDE SE EE 24 April PT LT BX GR BG IT On demand Video conference training for NOs July Webinar NOs to invite their users

7. Convergence Programme : CP3. Absolute grounds – Figurative Trade marks CP3. Absolute grounds – Figurative Trade marks CP3. Absolute grounds – Figurative Trade marks “Establish a common practice in relation to when a figurative mark, containing purely descriptive /non- distinctive words, passes the absolute grounds examination because the figurative element renders sufficient distinctive character”. Aiming at endorsement in AB meeting by November 2014

8. Convergence Programme Progress Report Criteria : Summary result of meeting held 16 October 2012 CP3. Absolute grounds – Figurative Trademarks • With respect to the word elements in the mark: • Typeface and font • Combination with colours • Combination with punctuation marks and other symbols   • Position (sideways, upside-down, etc.) • With respect to the figurative elements in the mark: • Use of simple geometric shapes • The position and proportion (size) of the figurative element in relation to the word • The proportion (size) of the figurative element in relation to the word element • The figurative element is a representation of the goods and/or services Typeface and font Combination with colours Combination with punctuation marks and other symbols   Position (sideways, upside-down, etc.) Use of simple geometric shapes   The position of the figurative element in relation to the word element Close to consensus To be further elaborated

9. Convergence Programme : CP4. Scope of protection B&W marks CP4. Scope of protection B&W marks “Harmonize the different interpretations of the scope of protection of trade marks exclusively in black, white and/or shades of grey (whether they cover any/all colours or not)”. Aiming at endorsement in AB meeting by November 2013

10. Convergence Programme Progress Report Status CP4. Scope of protection B&W marks Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims Priority claims At Meeting of 17 October 2012: “due to the administrative context the marks need to be the same in the strictest possible meaning” Most of the participating offices agree that: “a trade mark registered in B&W is not considered identical to the same sign in colour as regards priority claims. However, if the differences in colour are so insignificant that they may go unnoticed by the average consumer, the signs will be considered identical”.

11. Convergence Programme Progress Report Status CP4. Scope of protection B&W marks Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims What are ‘insignificant’ differences?

12. Convergence Programme Progress Report Status CP4. Scope of protection B&W marks Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims What are ‘significant’ differences?

13. Convergence Programme Progress Report Status CP4. Scope of protection B&W marks Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims Relative grounds for refusal Most offices agree with following phrasing: “A change from B&W to colour will be noticed by the average consumer. Only under exceptional circumstances, namely when the differences in colours in the signs viewed as a whole are so insignificant that they may go unnoticed by an average consumer, the signs will be considered identical.”

14. Convergence Programme Progress Report Status CP4. Scope of protection B&W marks Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims Proof of use Meeting of October 2012: “For the purposes of use, a change only in colour does not alter the distinctive character of the trade mark as long as: • The word/figurative elements coincide and are the main distinctive elements. • The contrast of shades is respected. • Colour or combination of colours does not have distinctive character in itself. • Colour is not one of the main contributors to the overall distinctiveness of the sign.”

15. Convergence Programme : CP3. Absolute grounds – Figurative Trade marks CP5. Relative grounds – likelihood of confusion “Harmonize the practice regarding non‐distinctive/weak components of trade marks for the purpose of assessing likelihood of confusion, assuming that the goods and/or services are identical”. Aimed at endorsement in AB meeting by November 2014

16. Convergence Programme : CP3. Absolute grounds – Figurative Trade marks CP5. Relative grounds – likelihood of confusion

17. Convergence Programme Progress Report Team Composition / Dependencies Maintenance of Practices - Convergence Central Team

18. Presentation TECH. LAISON. Meeting March 2013 Convergence Programme Status DRAFT / APPROVED Approved by owner - - - Authors - - - - - - Contributors - - - - - - Revision history Version Date Author Description 0.1 08/02/2013 PH - 1.0 10/02/2013 DS - -

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