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

Explore the implications of the EC's accession to the Madrid Protocol. Delve into advantages vs. risks for OHIM and industry, focusing on data capture, formalities, classification, publication, translation, renewal, and changes. Learn about cost savings, harmonization, and streamlined processes. Compare CTM Direct vs. Madrid Protocol routes, highlighting potential risks for industry.

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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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