"Sign of the Times": closing session

On Friday morning, Sophia Martinez-Almeida introduced the initial session of this last day in Athens with OHIM’s Mr Antonio Campinos (President) and Mr Ralph Pethke (Deputy Director International Cooperation and Legal Affairs Department), who provided an update on the Cooperation Fund and Converge Program projects.


Mr Campinos first mentioned the integration of the Observatory, which led to the creation of a new Department, supervised by Paul Mayer: the Academy and Observatory being now thus grouped together.

In spite of the economic downturn, OHIM received a record number of trade mark and design applications. Mr Campinos praised the increased speed of issuing decisions and mentioned revising Practice Manuals as a means to improve the predictability of its decisions.

OHIM is engaged on a revamp of its website, which will impact not just the structure and the content but also the on-line tools.

Implementation of the Observatory implies the setting up of specialised training programs, networking with public and private sectors representatives. The Observatory is to become a centre of information on IP and infringement of IP rights. Mr Campinos insisted on the need to obtain statistics on the impact of IP rights infringement. The Observatory will provide tools for users to upload information on their IPR, to be linked to TMView.

Beside legislative reforms project, the Convergence program covers the development of new tools and services. Some of them are to be released in November 2012, including for example the facilitating of symbol searches among databases of all participating Offices, or greater integration through a common gateway to manage all the tools and access all OHIM on line services.

OHIM is also assisting and paving the way for national Offices by providing tools for examiners in order to overview the examination process. OHIM will also provide national Offices with online filing tools software (such e-filing tools going through a test phase by November).

The similarity of products and services database is also among the projects to see the light in November. So far Germany and Poland have been providing a large amount of data in this regard. Additional information from National Offices is expected by then for the project to go live. Universities in Greece and Spain are working with OHIM to develop image search tools.

Seniority project 11 participating Offices.


Ralph Pethke then spoke about the taxonomy project, launched further to the IP Translator decision. Taxonomy is to be seen as a logical structure for a database, not to add something to the Nice Classification, but giving a tool to better navigate this Classification. The logical structure is based on hierarchical relations (Class > group title > subgroup title > …) where each of these items feature an indication whether the term is acceptable (specific enough to be classified) or too vague or general to be classified.

Taxonomy is supposed to go through constant revision. The first version is to be launched in November 2012. Finally, Mr Pethke indicated that one third of applications are based on class headings. 50% of oppositions have a class heading issue.


The Lewis Gaze Memorial scholarship then acknowledeged the quality of the work of MM Assimakis Konstantinos Alexopoulos and Yorgos Palitsas.


Latest case law of the European Court of Justice was discussed by Dr Tobias Cohen Jehoram and Dr Christian Rohnke, taking side for and against each of the mentioned decisions. This high calibre panel, led by Dr Martin Viefhues, gave the opportunity for additional interaction as the audience had the opportunity to side with or against the discussed decisions.

Such discussion started with the Redbull case (C-119/10, 14 April 2011) regarding the filling of cans by Winter and the notion of trade mark use in this regard. The ECJ considered that there was no trade mark use in this situation but only a mere technical part of production.


The inevitable IP Translator case (C-307/10, 19June 2012) came next. The discussion started with arguments criticizing the ECJ decision. 

In this perspective, one could consider that ECJ overstepped its boundaries and prescribed disregarding the Nice agreement. The Directive does not give any indication about requirements relating to description of goods and services, which leaves this aspect outside of European harmonization. Also, registration procedure (which should be understood as including the formulation of goods and services specifications) is even explicitly left to Member States (Cons 6). The Directive was not intended to derogate from the Nice Agreement but according to the ECJ, Member States should derogate to Nice treaty if descriptive. Thus with this case, the ECJ ignores (official) practice and could be violating article 17 of the European Charter of Fundamental Rights; for this reason, Trademark Offices, including OHIM should be liable for damages suffered by trade mark holders for loosing part of their rights due to the official practice of “class headings covers all” rule. Trade mark registrations cannot be changed (despite OHIM policy to ‘interpret’ old filings). As a result, ECJ invites too broad filings, congesting the register.


Arguments favourable to the decision followed, in order to sustain that the ECJ took a pragmatic and clear approach. The Nice agreement does not address this question, in particular it does not prevent signatories of the agreement from requiring further clarification (Art2). Some goods or services don’t fit easily in headings (such as retail services). Applicants were always free to include more specific descriptions. There is an important public interest in clear lists of goods and services, analogous to the requirement of clear definition of the sign protected by a trade mark registration. So finally, ECJ treats class headings as “words, just words”.


Vote from the public in favour or against the ECJ decision were about 50/50…


Finally, the recent publication of the opinion of Advocate General Sharpston on 5 July 2012 gave the occasion to mention the Onel case (C-149/11), dealing with the notion of genuine use of a CTM and the geographic scope thereof.


It was first sustained that actual use in one Member state is sufficient to characterize genuine use in the European Union. Genuine use is not token use, but about the real commercial intention of the trade mark holder (see Vitafruit). The Community Trademark system is clear: the system is about the territory of the European Union being one single market. The risk of having different trademark holders in different countries would harm the free flow of goods and would allow identical trade marks on the same European market, where the older trademark was used for commercial purpose (and thus genuine used).

If we consider export marks (art15.2.b): affixing a Community Trademark for export outside the European Union should be deemed as genuine use.

Arguments countering such view dealt with the notion of territory as being irrelevant. The ECJ should use this opportunity to raise bar for genuine use: genuine use requires a certain quantitative threshold, related to the goods and services actually concerned. The threshold should be higher for Community Trademarks than for national mark to correlate the greater territorial scope of protection. In practice, this will often mean a use in more than one Member State.


The audience vote showed again no clear majority.


The rendez-vous for next year conference is in Monte-Carlo.

Posted by: Frédéric Glaize @ 13.44

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