Harmonised Database (HDB)
As many readers will know, the EUIPO worked together with all national EU offices to come up with the database of harmonised terms, which can be searched using TMClass. Attendees were told that there are currently more than 75,000 harmonised goods and services in this database.
The EUIPO has also been working with numerous other participating offices including WIPO to further align and harmonise terms from HDB with other databases such as Madrid Goods & Services Manager (MGS) and also the TM5 partner countries (China, Japan, South Korea and the US) among others.
The benefits to users of HDB include: guaranteed acceptance of terms that are HDB compliant in all EU offices; fast-track applications for specifications that are completely HDB compliant; translation of the term into 23 languages; and ability to use the terms for the Similarity tool.
Similarity is a search tool which may help to assess whether given goods or services are considered similar (and to what degree) or dissimilar according to those IP offices in the EU that participate in the project and feed in the database on a regular basis at their own responsibility. The goods and services that are compared are all part of the EU Harmonised Database. This is a shared list between EU offices and as such the translations have been made available in all the EU languages. The Similarity tool is available on the EUIPO databases home page. In the search criteria you can choose in which of the EU languages you would like to see the goods and services. While the tool endeavours to reflect the practice of these IP offices, however, the comparisons shown in the tool are not legally binding among the participating IP offices, as the similarity practice may differ from office to office significantly. Moreover, at this moment, only a limited number of IP offices publish their list of comparisons of goods and services.
The EUIPO has worked out that HDB now covers about 80% of expressions used so it is now working with the national offices to try and get the other 20% of expressions covered. To do this there are various initiatives under ‘Maximise HDB’ including: looking at the recurring lists that key users file to try and get those terms or similar versions of those terms harmonised and in the HDB, looking at the most frequently used terms by all users and most searched terms in TMClass not currently in the HDB and working to get them or similar terms into the HDB.
Particularly exciting from a corporate member/brand owner perspective is that the EUIPO is looking at ‘expert tandems’ where industry experts are invited to propose new terms for goods and services in areas such as pharmaceuticals, media, software so a terminology expert can come up with potential terms to try and get into the HDB. In order to determine if terms will get accepted into the HDB there is a regular vote by the various offices involved in the HDB.
If any corporate members, whether in the industries above or another industry, are interested in participating in the expert tandem initiative and proposing terms that are not currently covered in HDB for their industry, please contact: HDB@euipo.europa.eu.
The Goods and Services Builder tool
The attendees at the workshop were treated to a demo of the exciting new developments to the Goods and Services Builder tool which will launch early in 2017. This tool can be used to draft a specification by taking terms from the HDB and also adding in your own terms manually.
The tool will then tell you if those terms you added manually comply with HDB (so would be considered acceptable) or if not, it will usually give you suggestions of other terms you may like to consider instead unless the term you have entered is too vague for classification (it will also tell you this).
This tool essentially does a classification exam for you before you even file your application. It will also draft your class 35 and class 37 specifications for you if you are also filing to cover related goods, for example if you have drafted a long list of clothing items that you/your client manufacture in class 25 and you/your client sell the goods as well as manufacture them the tool will create your class 35 based on your class 25.
It doesn’t end there; this tool will also tell you if the specification complies with the Nice classification, Madrid Goods & Services Manager (MGS) and also the TM5 partner countries (China, Japan, South Korea and the US in addition to the EUIPO) so could be helpful for drafting specifications that work in numerous countries.
A related tool called Goods and Services Administrator will also launch next year (some months later) to allow you to save these specifications in a central account for your firm/company allowing somebody to draft the specification and save it for somebody else for them to file the application directly from these tools importing the specification into the e-filing application form.
The EUIPO is planning webinars in 2017 for the launch so watch this space as we will let members know when the webinar dates are announced.
By Sarah McPoland of Nestlé UK Ltd. Sarah is a member of the European Trade Mark Law & Practice Team
Issue 070
Start planning for the 2017 and 2018 Annual Conferences, and other MARQUES events
