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The Accession of the European Community to the Madrid Protocol - the long and winding road Part II

The Accession of the European Community to the Madrid Protocol - the long and winding road Part II. - Council Regulation No 1992/2003 of 27.10.2003 (Amendment CTMR) Council Decision No 793/2003 of 27.10.2003 (Approving the Accession)

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The Accession of the European Community to the Madrid Protocol - the long and winding road Part II

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  1. The Accession of the European Community to the Madrid Protocol- the long and winding roadPart II

  2. - 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)

  3. 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)

  4. Talking about perspectives • Advantages vs. Risks • For OHIM and for Industry

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

  6. Madrid route compared to direct route 1. Data capture

  7. 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)

  8. Advantages for the OHIM 2. Formalities

  9. 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

  10. Advantages for the OHIM: 3. Classification

  11. 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

  12. 4. Publication, translation

  13. 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

  14. 5. Renewal, changes of name of owner

  15. 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)

  16. Summary of savings for OHIM 1. Data capture 2. Formalities 3. Classification 4. Publication, translation 5. Renewal, changes

  17. Advantages for industry: • Data capture: - Avoid multiple data entry+reentry • One single data set across countries • Fewer data capture mistakes

  18. Advantages for Industry 2. Formalities • One single set of formality requirements around the world • Less objections … less cost

  19. Advantages for industry: 3. Classification • One single examination • Forces designated Offices towards harmonised practice • Less objections… less cost

  20. 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)

  21. 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

  22. 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

  23. 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)

  24. THANK YOU!!!

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