Convergence Programme Convergence of Class Headings

1. Convergence Programme Convergence of Class Headings Alicante May 2012

2. Absolute Grounds – Figurative MarksProject Vision Project Vision “To achieve a compromise between the different interpretations of the scope of the class headings”

3. Convergence Programme team Programme Manager Dennis Scheirs Head of Institutional Relations Inge Buffolo Litigation Dimitris Botis Legal Affairs Ralph Pethke Classification expert Thom CLark Legal Affairs Julio Laporta Legal support Maria Baldares Legal Support Diana Bernabeu Classification expert Magnus Jaensson 3

4. Working Group 23 EU Offices (OHIM inc.) 2 non EU Offices observers (NO, CH) INTA / MARQUES observers WIPO 4

5. Convergence Programme Progress • Progress • Kick-off meeting was in July 2011. Agreement on: • Project methodology • Objectives • Project Scope • Timeline • Creation of WP1 and WP2 • WP 1 meeting in September 2011 • WP 2 meeting in December 2011 • Challenge in February – April 2012 • Survey results

6. Convergence Programme Next steps • Next steps • Work group meeting to validate WP1 and WP2 • IP translator • Launch WP3 and WP4 • Execute communication roadmap

7. Convergence of Class HeadingsTimeline

8. Convergence of Class HeadingsInitial survey Initial survey • Current practice • Terms in class heading that are too vague • Reasons for practice • Time of practice/ changes • Legislative constraints • Interpretation of CTMS with class heading

9. Convergence of Class HeadingsInitial survey • All 26 offices participated in the survey • 17 offices applies the ”means-what-it-says” approach • 9 offices consider “class-heading-covers-all” goods or services within the class

10. Convergence of Class HeadingsInitial survey • 12 offices consider terms in headings as being too vague • Of “covers-all” three offices consider one or more terms in heading as being too vague. • Of “means-what-it-say” 9 out of 17 offices consider one or more terms in heading as being too vague.

11. Convergence of Class HeadingsInitial survey Annex: Initial survey questions and answers

12. Convergence of Class HeadingsClass denominator survey Class denominator survey • Does the class number define the nature of the associated goods (and services)? • Does each specific term needs to be defined, or can this be a general definition at the end? • Reasons for practice

13. Convergence of Class HeadingsClass denominator survey

14. Convergence of Class HeadingsClass denominator survey Annex: Class denominator survey questions and answers Questions: Answers:

15. Convergence of Class Headings Proposal New Common Practice

16. Convergence of class headings Objective of working package 1 (New Common Practice): Develop a commonly acceptable set of comprehensive classification terms ideally covering all goods or services in a given class at a given time

17. Current classification practice Current structure Nice class 22 : Class 22 Class 22 Nice Heading: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials Term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term; term.

18. Taxonomy Hierarchical structure of a class in Taxonomy : Class Group title Group title Group title This group title is a parent of the children below Sub-Group title Sub-Group title Sub-Group title Sub-Group title These sub-groups are children of the parent on top • The taxonomy starts with the Group titles. • These Group titles can be broken down into Sub-Group titles. • Groups (and Sub-Groups) consist of “conceptually” similar, identifiable and classifiable products or services

19. New Common Practice Hierarchical structure of class 22: Class 22 Group title Group title Group title Raw textile fibers and substitutes Goods made of textile and fibers Padding and stuffing materials ok X ok Sub-Group title Sub-Group title Sub-Group title Sub-Group title Bags and sacks for packaging, storage and transport Tarpaulins, awnings and tents Sails Ropes, strings, bands and nets ok ok ok ok ok Acceptable (terms specific enough to be classified) X Not acceptable / too vague (terms that are too vague or general to be classified)

20. New Common Practice How to get the class scope for class 22: Class 22 Group title Group title Group title Raw textile fibers and substitutes Goods made of textile and fibers Padding and stuffing materials ok X ok Sub-Group title Sub-Group title Sub-Group title Sub-Group title Bags and sacks for packaging, storage and transport Tarpaulins, awnings and tents Sails Ropes, strings, bands and nets ok ok ok ok We drill down until we reach acceptable terms Class 22 Class Scope: Raw textile fibers and substitutes; Bags and sacks for packaging, storage and transport; Tarpaulins, awnings and tents; Sails; Ropes, strings, bands and nets ;Padding and stuffing material Class 22 Nice Heading: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials 20

21. Taxonomy evolves (example 1) Class 22 Group title Group title Group title Raw textile fibers and substitutes Goods made of textile and fibers Padding and stuffing materials Sub-Group title Sub-Group title Sub-Group title Sub-Group title Bags and sacks for packaging, storage and transport Tarpaulins, awnings and tents Sails Ropes, strings, bands and nets Space Sails If a new good or service fits within the meaning of an existing Group – there will be no change…

22. Taxonomy evolves (example 2) Class 22 Group title Group title Group title Group title Future Good Raw textile fibers and substitutes Goods made of textile and fibers Padding and stuffing materials Sub-Group title Sub-Group title Sub-Group title Sub-Group title Bags and sacks for packaging, storage and transport Tarpaulins, awnings and tents Sails Ropes, strings, bands and nets If a new product or service does not fit within the meaning of a Group -> a new Group can added at the correct level – and as a result – the Class Scope will change… Updated Class 22 Class Scope: Raw textile fibers and substitutes; Bags and sacks for packaging, storage and transport; Tarpaulins, awnings and tents; Sails; Ropes, strings, bands and nets; Padding and stuffing material ; Future Good

23. Advantages • Nice Class Headings • Semi-Static • Imperfect top-down approach • Nice Class headings not all perceived as comprehensive • Class Scopes • Dynamic • Bottom-up approach -> higher level really covers lower levels • Class scopes are comprehensive and acceptable for classification • Taxonomy is more clear than means-what-it-says

24. New common practice • Proposal New Common Practice: • National Offices, OHIM and WIPO • Common interpretation of the Class Scopes • Means what it says • Covers a given class at a given moment in time • Acceptable for classification • Common interpretation of Nice Class Headings • Nice Class Heading terms are treated the same as any other term • Common strategy on the translations • Common strategy on the continuity of the practice

25. Convergence of Class Headings Communication strategy

26. Convergence of Class HeadingsCommunication Objective Communication Objective “The communication should aim at Securing the commitments of the National Offices Building awareness of this project between the User Associations, and the Applicants/ Representatives. The implementation of the Common Practice should be so user friendly that its application is straight forward for any involved audience (also the ones not mentioned so far, such as the Judges). ” Determine audience, barriers, messages, channels. This leads into a communication roadmap

27. Convergence of Class HeadingsTarget audiences / messages / carriers National offices Message • New common practice brings: • consistency and legal certainty • increased efficiency • facilitates the classification work of the national offices Barriers • Information not always spread well • Working group members not always • decision maker

28. Convergence of Class HeadingsTarget audiences / messages / carriers National offices Message • New common practice brings: • consistency and legal certainty • increased efficiency • facilitates the classification work of the national offices Barriers • Information not always spread well • Working group members not always • decision maker

29. Convergence of Class HeadingsTarget audiences / messages / carriers Applicants / representatives / user associations Message • New common practice brings: • Easier and more efficient protection • substantial cost savings • increased legal certainty and consistency Barriers • Not easy to reach and inform everyone • User associations working group members do • not always spread information

30. Convergence of Class HeadingsTarget audiences / messages / carriers Custom officials / Economic police Message • New common practice: • Interpretation of class scopes is easy and transparent • Facilitates their task: it is not needed to know the Nice classification Barriers • No special classification knowledge • They have their own classification

31. Convergence of Class HeadingsTarget audiences / messages / carriers Judges Message • New common practice brings: • Interpretation of class scopes meaning-what-it-says • Facilitates their task: it is not needed to know the Nice classification Barriers • No special classification knowledge • They are independent and take decisions case by case

32. Convergence of Class Headings Impact IP Translator

33. IP Translator • Impact IP Translator: • AG opinion published on 29 November 2011. It was discussed in WP2. • New common practice covers for requirement for more specifity: Group titles will be clear and unambiguous. • Therefore the only possible impact of IP translator is on WP 4 (analysis of the past). • Paragraphs 74 and 75 are especially encouraging, since it shows the proposal of this new practice goes in the right direction. • The difficulty is that it leaves the question open what is sufficient specific.

34. Convergence of Class Headings Next steps: Work package 3 and 4

35. Convergence of Class HeadingsNext steps: work package 3 and 4 Work package 3: implementation strategy • Propose the first stable version of the Class Scopes, based on the taxonomy structure • Organise the translations of these Class Scopes • Creation of the action and timeline to implement the common practice (working procedures, IT systems,…) Work package 4: analysis of the past • should actions be undertaken? • Possible approaches, implementation efforts, estimated timeline and risks.

36. Convergence of Class Headings Project outcomes

37. Convergence of class headings outcomes Outcomes • Document on Common Practice, in all EU languages • Implementation / Adherence Plan • Communication Strategy • Analysis of the past

38. Information: (+ 34) 965 139 100 (switchboard)(+ 34) 965 139 400 (e-business technical incidents)(+ 34) 965 131 344 (main fax)information@oami.europa.eue-businesshelp@oami.europa.eutwitter/oamitweetsyoutube/oamitubes

39. THANK YOU!