Trademarks electronic filing Jean-Marie Putz IT Manager 15 june 2006

What I will not tell you about electronic filing of trademarks… I have often made presentations about electronic filing, and I understand some topics are rather boring…

Boring figures

Boring technology BMBConnect is available as A web form A client A module in vendor’s programs A new version will be available soon In Java

What I will tell you about electronic filing of trademarks… I have often made presentations about electronic filing, and I understand some topics are rather boring…

The world of Trademarks

Trademarks filing Seen from the office point of view Mission Tasks Receive trademark demands Register trademarks Publish trademarks Tasks Check formalities Apply legal prescriptions Apply agreed standards (e.g. Nice Classification) (uniformization of publication) To make their life easier, Trademark Offices invented forms. To reduce their workload, they want applicants fill in the Office database…

Trademarks filing Seen from the applicant point of view This is Bob, the painter… Mission Run his business Tasks Find customers Do his job Registering a trademark is not an easy administrative process Trademark standards are not common language Trademark registering is not a natural phenomenon… … but we believe it should be

Trademarks filing The partners The office Bob Requests a form Sends a form Tries to fill in the form Requests help and advice Applies for registration of a trademark Provides help, but no advice Gets angry In reality it is not that easy… Sends the form … (or not)

Trademarks filing The partners (2) The office Bob The agent The agent helps with formalities (because the procedure is not easy) The agent provides good advice

Electronic filing The electronic partners The office Bob Form is available on Internet Form provides help Form avoids input errors… …Form is easy to use, but Form does not provide advice… The agent provides good advice

The real world

In the real world… Bob is painting Bob is living in Schengen, Luxemburg …and he is aware of the importance of having a registered trademark

If Benelux was an island Schengen But Benelux is not an island…

Schengen

Bob is a good painter… He wants to extend his business to France and Germany… He has several possibilities: Register directly in France and in Germany Register in Benelux, and extend through Madrid system Register at OHIM

And so on… The traditional way (1) Registering in France and Germany Tries to fill in the forms Requests a form Sends a form Requests help and advice

The traditional way (2) Applies for a trademark and asks for international extension WIPO Germany France

The traditional way (3) OHIM Applies for an European TM Which is not easier than applying for a national trademark…

European trademark Applying for an European trademark, Bob will get protection in the whole European community. Question: did he really want this ? Does he really need this… ?

The ideal world

In an ideal situation…. Indicates the countries he is interessed in Applies for a trademark Computer lets him choose the desired procedure Computer sends the application form to the desired office(s)

Is this possible?… Requirements Standards A common electronic filing platform A common will to cooperate A kind of harmonization between trademarks offices Standards Existing TM-XML (will be Wipo standard ST66)…

Bringing the worlds together Let’s protect trademarks…

Thank you for your attention Discussion