Liaison Meeting 23 rd April 2013

1. Convergence Programme Overview Liaison Meeting 23rd April 2013

2. 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

3. 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

4. Convergence Programme Progress Report Progress : Harmonized Database CP1. Harmonization of Classification of G&S “The Harmonization of Classification project continues to make considerable headway in achieving a harmonised database reflective of the common classification practice of the whole EU IP network”

5. Convergence Programme Progress Report Progress : Harmonization on Classification Practice CP1. Harmonization of Classification of G&S 01 Common Communication: harmonized and synchronised communication on CP achievements 02 Currently working on guidelines for common criteria acceptability for classification 03 Scheduled for end of year to start working on common agreement on what terms to reject 04 TMC (Terminology Maintenance Console) will be the tool to provide administration to the Harmonized database – Scheduled for the end of 2013

6. Convergence Programme Progress Report Progress : Fill Up CP1. Harmonization of Classification of G&S 01 English language as baseline for Harmonized Database 02 Translation of the common Goods & Services database of National Offices into the other 22 EU languages 03 The validation of these translations is a prerequisite for the Harmonization National Offices 04 It allows to assess the acceptability of the terms according to the classification practice of a particular National Office 05 In a next step we can include the data of WIPO G&S Manager 06 Objective to have all languages with over 90% of the translations by July 2013 07 Objective to have all languages with 100% of the translations by November 2013

7. 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.

8. Convergence Programme Progress Report Progress : Taxonomy CP2. Convergence of Class Headings Preparation of Training / Communication Tailoredtothedifferent target groups GroupTitles / class scopes translated and validated in all languages Software development at advancedstage Usability testing beginning of April video prototype Implementation of Taxonomy into TMclass for July

9. 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

10. Technical implementation Taxonomy Progress : Taxonomy 3 Implementations in Parallel 1.Taxonomy in TMclass 2.Taxonomy in FSP efiling 3.Taxonomy in national efiling • Via web services: • Search term and validate • Taxonomy • Class scopes

11. 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”.

12. Scope : analysis of 8different criteria Progress has been made… Convergence Programme Progress Report Status CP3. Absolute grounds – Figurative Trade marks Work Package 1 Meeting 16 October 2012 4 of the criteria Close to consensus 4 of the criteria To be further elaborated

13. 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

14. Next steps: • Study based on EU, OHIM and national case law to find common assessment of the criteria • Study will be submitted to Working Group Convergence Programme Progress Report Status CP3. Absolute grounds – Figurative Trade marks Aiming at endorsement in AB meeting by November 2014

15. 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)”.

16. Convergence Programme : CP4. Scope of protection B&W marks Scope of the project CP4. Scope of protection B&W marks • This project will converge the practice regarding a trade mark • filed in B&W and/or greyscale, and • determine whether the same sign in colour is considered • identical with respect to: • Priority claims • Relative grounds for refusal • determine whether use of the same sign in colour is • considered use of the trade mark registered in B&W • (considering also trade marks registered in colour but used • in B&W) • Out of scope • The reverse question • The assessment of similarities between colours • Marks registered in black and white that have acquired • distinctiveness in a specific colour due to extensive use. • Colour marks per se.

17. 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 & Relative Grounds – considering ‘identity’ •Necessary to consider and agree upon a common concept of ‘identity’ before developing specific practices • Working group referred to CJEU’s judgement on C-291/00 LTJ Diffusion and GC’s judgement on T- 103/11 Justingfor definition of ‘identity’: “A sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer” (paragraph 54)

18. 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?

19. 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?

20. 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”.

21. 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 General Court Case T 378/11 considered identity between the following two marks in the context of a seniority claim: “Even though the objectives of Art. 8(1)(a) and Art. 34 are not the same, it is a condition for the application of both of them that the marks at issue must be identical... A concept which is used in different provisions of a legal measure must... be presumed to mean the same thing irrespective of the provision in which it appears.” (Paragraphs 40 and 41)

22. 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 Original common principal first proposed at October 2012 meeting: “A sign is identical with the registered trade mark where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer. A change from B&W to colour will normally be noticed by the average consumer. Most offices now 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.”

23. 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.”

24. 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 Next steps: • • Find final agreement • • Formalise in document on the Common Practice • • Create Communication Strategy • • CreateImplementation Plan Aiming at endorsement in AB meeting by November 2013

25. 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”.

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

27. Convergence Programme Progress Report Progress CP5. Relative grounds – likelihood of confusion OBJECTIVE 1 Define what trade marks are subject to assessment of distinctiveness Thelatertrade markand/or partsthereof? Theearliertrade markand/or partsthereof? • Elements of the earlier and the later trade mark should be taken into account. • All elements should be considered, prioritising on the common elements. • The distinctiveness of the earlier mark as a whole is assessed. • Explicitly or implicitly all elements of the later trade mark are assessed.

28. Convergence Programme Progress Report Progress CP5. Relative grounds – likelihood of confusion OBJECTIVE 2 Determine the criteria to assess the distinctiveness of the trade mark (and/or parts thereof) • The criteria to assess the distinctiveness of the trade mark are: • Same criteria that are used in absolute grounds. • Degree of familiarity amongst consumers with the sign/colours/elements within the relevant sector. • Semantic content. • Relevant point in time.

29. Convergence Programme Progress Report Progress CP5. Relative grounds – likelihood of confusion OBJECTIVE 3 Determine the impact on LoCwhen the common components have a low degree of distinctiveness When marks only coincide in elements which have a low degree of distinctive character, LoC If… If… non-coinciding element(s) has/have at least a normal degreeof distinctive character and is not of insignificant visual impact. 1) the added element is of a lower (or equally low) degree of distinctiveness, and is of insignificant visual impact. 2) if there are no other elements, as long as the visual impact is highly similar.

30. Convergence Programme Progress Report Progress CP5. Relative grounds – likelihood of confusion OBJECTIVE 4 Determine the impact on LoCwhen the common components have no distinctiveness When marks only coincide in elements which have no distinctive character… when 1) non-coinciding element(s) has/have no or little distinctive character, and 2) provided that the overall impression of the signs is highly similar. LoC

31. Next steps: • Study based on EU, OHIM and national case law to find common assessment of the criteria • Study will be used to prepared a new survey • Send out this survey and analyse the results • Next meeting June 7 (TBC) Convergence Programme Progress Report Status CP5. Relative grounds – likelihood of confusion Aimed at endorsement in AB meeting by November 2014

32. Status: • TMC • Stage 1: November 2012: • To facilitate non-harmonized offices with an independent database (e.g. USPTO) to manage • their data online. • First trainings done, last issues being fixed • Stage 2: November 2013: • Harmonized offices can manage their data by means of a harmonized workflow • Adding terms in the harmonized database to even better represent the market • Stage 3: end 2014: • Common list of Goods and Services that are NOT acceptable for classification Convergence Programme Progress Report Maintenance of Practices – Terminology Maintenance Console

33. Convergence Programme Progress Report Background The European Trade Mark and Design Network - Central Team Maintenance of Practices - Convergence Central Team “Working towards a European Trade Mark and Design Network (ETMDN) of European Intellectual Property Offices (EU IP Offices)” “Extensive progress in harmonization of practices made by Convergence Programme (CP)” “The Convergence Central Team will serve as the coordinator of the administration of the endorsed common practices, among other responsibilities to preserve and advance the investments in convergence made by OHIM and EU IP Offices”

34. Convergence Programme Progress Report Vision Maintenance of Practices - Convergence Central Team The European Trade Mark and Design Network - Central Team 01 Will be an established unit in collaboration with EU IP Offices, User Associations, and International IP Organisations being the administrator of the growing number of adopted harmonized practices 02 Will be action-oriented following a work plan, composed of OHIM and EU IP Office representatives,in order to create streamlined processes for the harmonized IP practices 03 Will be a free-flowing two-way channel of communication between the Convergence Continuity Central Team and stakeholders, for the reception of ideas and suggestions of harmonization initiatives across the EU

35. Convergence Programme Progress Report Responsibilities (1/3) The European Trade Mark and Design Network - Central Team Maintenance of Practices - Convergence Central Team Creation of annual work plans of the central team Coordination of implementation of common practices Coordination of the training of the EU IP Office Representatives in practices Coordination of the provision of the training material for EU IP Offices Coordination of the communication flow between the EU IP Offices, OHIM, the Knowledge Circles (= extended KC) and any other stakeholder Coordination of the provision of promotional/marketing material for new practices and/or tools

36. Convergence Programme Progress Report Responsibilities (2/3) The European Trade Mark and Design Network - Central Team Maintenance of Practices - Convergence Continuity Central Team Coordination of surveys to National Offices and user satisfaction surveys on aspects of the common practices Coordination of clarifications of interpretations Coordination of translations on aspects of the common practices Monitor international and national activities relating to CP, special attention for opportunities to promote Coordination of continuity of common practices Coordination of Cost-Benefit Analysis, completed CP projects

37. Convergence Programme Progress Report Responsibilities (3/3) The European Trade Mark and Design Network - Central Team Maintenance of Practices - Convergence Central Team Liaise with EU IP Offices on behalf of OHIM dept., programmes, projects, if requested Coordination of incorporation of Nice Classification updates in the harmonized database Monitor implementation of endorsed practices Coordination with regards Manage Terminology Maintenance Console (TMC)/ translation quality

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

39. Convergence Programme Progress Report Maintenance of Practices - Convergence Continuity Central Team Central Team Timeline 2013

40. Convergence Programme Progress Report Workplan 2013 Maintenance of Practices - Convergence Central Team 01 Task 1: Central Team Set Up 02 Task 2: Support implementation of CP1 & CP2 03 Task 3: Create 2014 Work Plan 04 Task 4: Support implementation of CP4 (when endorsed) 05 Task 5: Manage TMC Maintenance Cycle 06 Task 6: Report progress to Liaison Meeting

41. 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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