Issue 024
  December 2012
Contents:
 

Cooperation Fund takes off

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CTM e-filing improvements

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Seniority project grows

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8th Liaison Meeting report

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TM5 Barcelona report

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OHIM website & convergence programme

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MARQUES meets European Commission DGs

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Designs meeting update

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Colour trade marks – US and Europe

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WIPO and class headings

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New process for OHIM Guidelines

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MARQUES Media Roundup

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MARQUES Office opening times

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Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

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More Cooperation Fund projects go live

A suite of tools making up the Cooperation Fund were switched on last month. The Fund includes 17 projects in total. More than half of these are now operational, with further developments expected next year.
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New goods and services in CTM e-filing

 

Seniority project grows

As of 15 October 2012, OHIM has introduced a new provisional feature in the section on goods and services in the electronic Community trade mark application form. The feature allows applicants, who have selected the Class Heading for a particular class, to tick a box indicating they wish to be covered for all the goods or services in the alphabetical list of the Nice Classification.   The National Office of Slovenia and the Benelux Office of Intellectual Property (BOIP) have become the fifth and sixth offices to implement the Cooperation Fund seniority project. They join Ireland, Hungary, Portugal and the Czech Republic in the implementation of this project.
Read More >>   Read More >>
Liaison Meeting on Trade Marks
MARQUES attended the Eighth Liaison Meeting on Trade Marks which was held in Alicante on 10 and 11 October 2012, represented by Diana Versteeg, first Vice-Chair of MARQUES Council and Alessandra Romeo, MARQUES External Relations Officer.
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TM5 Meeting held in Barcelona
In its observer status at the OHIM Administrative Board and Budget Committee, MARQUES was invited by OHIM to attend the TM5 Meeting which took place in Barcelona on 30 and 31 October 2012. The MARQUES delegation was composed of Alessandra Romeo, MARQUES External Relations Officer, and Sebastian Fischoeder, a member of the MARQUES Designs Team.


The Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), OHIM, the State Administration for Industry and Commerce (SAIC) and the United States Patent and Trademark Office (USPTO) convened in Barcelona to hold their first TM5 Annual Meeting. The TM5 represents the evolution of the earlier Trilateral Meeting created by JPO, OHIM and the USPTO and it is expected that other national IP offices can join in the near future.

For the first time the Director General of WIPO, Francis Gurry, joined the five partners for part of the first day’s meeting. Three WIPO officials were also in attendance to participate in all sessions which were held on both trade marks and designs. Besides MARQUES, a number of other user associations were invited by the partners (ECTA and EPFIA invited by OHIM, INTA and AIPLA invited by the USPTO, JIPA, JTA and JPAA invited by the JPO, Gene Kim invited by KIPO), as the partners have agreed on the importance of ensuring the maximum consensus and participation from all of the relevant stakeholders.

Two statement documents for trademarks and designs were submitted by MARQUES to the TM5 Partners in support of the initiatives run by the partners within the TM5 Collaboration Projects, as MARQUES strongly believes that these can contribute to the enhancement of the trade mark and designs systems and can foster harmonisation and efficiency of practices and procedures.

The creation of common platforms of databases and e-business tools, the harmonisation and alignment of procedures and the fostering of convergence in practices are seen by MARQUES as three of the fundamentals towards an ideally balanced coexistence and true efficiency of existing national, regional and International trade mark and design systems.

At present the TM5 partners are cooperating on these projects:

  1. ID Project – led by the USPTO with the participating offices of JPO, KIPO, OHIM and SAIC.
  2. Common Statistical Indicators – led by the OHIM with the participating offices of JPO, KIPO, SAIC and USPTO.
  3. Common Status Descriptors – led by the USPTO, with the participating offices of JPO, KIPO, OHIM and SAIC.
  4. Continuation/Expansion of Bad Faith Project – led by the JPO with the participating offices of KIPO, OHIM, SAIC and the USPTO.
  5. Image Search – led by the JPO with the participating offices of KIPO, OHIIM, SAIC and the USPTO.
  6. Taxonomy and Euroclass link – led by OHIM with the participating offices of the JPO, KIPO and the USPTO.
  7. User-friendly access to trade mark information – led by OHIM with the participating offices of the JPO, KIPO and the USPTO.
  8. Website – led by KIPO with the participating offices of the JPO, KIPO, OHIM, SAIC and the USPTO
  9. Session with users – led by the host country with the participating offices of JPO, KIPO, OHIM, SAIC and USPTO

There are no specific projects on designs. JPO, KIPO, OHIM and the USPTO have agreed to collaborate on design matters and therefore will continue exchanging information about their respective procedures and practices, with a view to considering any possible simplification and alignment.

MARQUES supported the promotion of further projects within the TM5 frame, especially on designs, and expects that well-timed and representative user consultation is carried out, to ensure that the focus of any proposed new projects can stay on the users’ needs.

At the end of all sessions on both trade marks and designs OHIM, the USPTO, the JPO, KIPO and SAIC issued a Joint Statement, setting out the agreements reached by the partners in view of the continuation of all existing projects, which include the creation and development of a website aimed at raising the level of communication about the partners’ initiatives among all relevant stakeholders, and the expansion of the partners’ collaboration in the design area.

New OHIM website project and Convergence Programme projects
Sofia Martinez, second Vice-Chair of MARQUES Trade Mark Law and Practice Team, attended the third and last meeting of the Working Group of the new OHIM website project held in Alicante on 4 October 2012.
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MARQUES meets European Commission DGs

 

Liaison Meeting on Designs

On 15 October 2012, a MARQUES delegation led by Diana Versteeg, first Vice-Chair of MARQUES Council (pictured), and including Alessandra Romeo (MARQUES External Relations Officer), Massimo Sterpi (of MARQUES Council) and Ian Lowe (in the chair) from the MARQUES Regulatory and Anti-Counterfeiting and Parallel Trade Teams met with officials of DG TAXUD and DG TRADE as well as with members of Commissioner De Gucht’s Cabinet.   The Designs Liaison Meeting took place at OHIM last month. In addition to representatives of the member states (current and candidate), there were members of ECTA, FICPI and INTA. David Stone, Chair of the Designs Team (pictured), represented MARQUES.
Read More >>   Read More >>
What colour is your trade mark?
Recent European and US cases on colour trade marks are compared by members of the IP Outer Borders Team.
Read More >>
WIPO clarifies class headings practice
WIPO has issued a communication entitled: Indications that the Use of Class Headings of the Nice Classification in International Applications Is Intended to Cover all the Goods and Services Included in the Alphabetical Lists of the Classes Concerned.
Read More >>
New process for OHIM Guidelines
OHIM is to adopt a new process in 2013 which will see its manuals on trade mark and registered design practice replaced by a new set of Guidelines in all official EU languages.
Read More >>

MARQUES media roundup

 

MARQUES Office opening times

Catch up on the news and discussions from the MARQUES website and social media channels.

  Please note the MARQUES Office will close at 1700hrs on Friday 21 December and will reopen at 0900hrs on Wednesday 2 January 2013.  We would like to extend Seasonal Greetings to all our members and we wish you a peaceful and prosperous New Year.

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