Liaison Meeting 23 rd April 2013 Convergence Programme Overview

Progress : General Indications of Nice Class Headings CP1. Harmonization of Classification of G&S Convergence Programme Progress Report Class Nice Class Heading individual term 6 Goods of common metal not included in other classes 7Machines and machine tools 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes 16 Paper, cardboard and goods made from these materials, not included in other classes 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes 18 Leather and imitations of leather, and goods made of these materials and not included in other classes 20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics 37Repair 37Installation services 40Treatment of materials 45 Personal and social services rendered by others to meet the needs of individuals 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 OBJECTIVE : reach a common answer as to which general indications of the Nice Class Headings are sufficiently clear and precise for classification. Initiative started June 2012 Envisaged for endorsement in AB meeting by May 2013 This initiative will lead to a harmonized approach in ETMD network

Envisaged endorsement in 2013 CP roll-out Plan Envisaged endorsement in 2014 Convergence Programme CP5. Relative Grounds - Likelihood of Confusion CP1. Harmonization of Classification – General indications CP2. Convergence of Class headings CP3. Absolute Grounds - Figurative Marks CP4. Scope of Protection B&W Marks CP1 Endorsement in projects running

Progress : Harmonized Database CP1. Harmonization of Classification of G&S Convergence Programme Progress Report Harmonized Offices 2011 GB, SE, IE, MT(EN), OHIM 2012 ES, IT, PT, MT(MT), EE, GR, DE 2013 BG, PL (complete) Pending: CZ, HR, SK, LT, BOIP Integrated in TMclass To-Date OHIM, IE, SE, GB, ES, MT, IT, PT, BG, EE, GR, PL PendingDE 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

Progress : Harmonization on Classification Practice CP1. Harmonization of Classification of G&S Convergence Programme Progress Report Common Communication: harmonized and synchronised communication on CP achievements Currently working on guidelines for common criteria acceptability for classification 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 2013Terminology Maintenance Console

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

Progress : Taxonomy CP2. Convergence of Class Headings Convergence Programme Progress Report 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 - Fits classification terms into a hierarchical structure based on the Nice Classification system; Allows for user-friendly searching of goods and services; Facilitates efficient and timely updates of term databases to better reflect the current economic market; Allows for adequate protection while filing shorter lists of goods and services. 04

Progress : Taxonomy CP2. Convergence of Class Headings Convergence Programme Progress Report Group Titles / class scopes translated and validated in all languages Preparation of Training / Communication Tailored to the different target groups Usability testing beginning of April Implementation of Taxonomy into TMclass for July video prototype Software development at advanced stage

Progress : Taxonomy CP2. Convergence of Class Headings Convergence Programme Progress Report Communication milestones Phases PHASE 1: PILOT PHASE 2: Operational Use ….. Milestones 1st July Taxonomy in TMClass 25th Nov Go-Live efiling; Website 22 Apr New Services 22 April User Group 2 May Common Com. IPT Case 21 May ABBC 4 May INTA 24 April Liaison 7 Nov Liaison 19 Nov ABBC 14 June Judges Training milestones 17 April DE SE EE On demand Video conference training for NOs 24 April PT LT BX GR BG IT July Webinar NOs to invite their users October 2 day taxonomy training for Classification Experts (NOs and OHIM)

1.Taxonomy in TMclass Technical implementation Taxonomy 3 Implementations in Parallel 2.Taxonomy in FSP efiling 3.Taxonomy in national efiling Via web services: Search term and validate Taxonomy Class scopes Office Envisaged tool for taxonomy integration Preliminar envisaged integration date ATOwn efilingend 2013 BGFSPend 2013 BXOwn efilingNot known yet CHOwn efilingNot known yet CYFSP2014 CZOwn efilingNot known yet DEOwn efilingAfter summer 2013 DKOwn efilingNot known yet EEFSPend 2013 ESOwn efilingNot known yet FIFSPend 2013 FROwn efilingNot known yet GRFSP2014 HUOwn efilingNot known yet IEFSPNot known yet ITFSPNot known yet LTFSPend 2013 LVFSPend 2013 MTFSPNot known yet PLFSPend 2013 PTOwn efilingAfter summer 2013 ROFSPNot known yet SEOwn efilingNot known yet SIFSPNot known yet SKFSPend 2013 Progress : Taxonomy

CP3. Absolute grounds – Figurative Trade marks Convergence Programme : 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. CP3. Absolute grounds – Figurative Trade marks

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

Criteria : Summary result of meeting held 16 October 2012 CP3. Absolute grounds – Figurative Trademarks Convergence Programme Progress Report With respect to the word elements in the mark: 1.Typeface and font 2.Combination with colours 3.Combination with punctuation marks and other symbols 4.Position (sideways, upside-down, etc.) With respect to the figurative elements in the mark: 1.Use of simple geometric shapes 2.The position and proportion (size) of the figurative element in relation to the word 3.The proportion (size) of the figurative element in relation to the word element 4.The figurative element is a representation of the goods and/or services Close to consensus To be further elaborated Typeface and font Combination with colours Position (sideways, upside-down, etc.) Combination with punctuation marks and other symbols Use of simple geometric shapes The position of the figurative element in relation to the word element

Status CP3. Absolute grounds – Figurative Trade marks Convergence Programme Progress Report 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 Aiming at endorsement in AB meeting by November 2014

Convergence Programme : 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). CP4. Scope of protection B&W marks

Convergence Programme : CP4. Scope of protection B&W marks 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 (a)determine whether the same sign in colour is considered identical with respect to: i.Priority claims ii.Relative grounds for refusal (b)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. Scope of the project

Status CP4. Scope of protection B&W marks Convergence Programme Progress Report Priority Claims & Relative Grounds – considering identity 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 Necessary to consider and agree upon a common concept of identity before developing specific practices Working group referred to CJEUs judgement on C-291/00 LTJ Diffusion and GCs judgement on T- 103/11 Justing for 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)

Status CP4. Scope of protection B&W marks Convergence Programme Progress Report What are insignificant differences? 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

Status CP4. Scope of protection B&W marks Convergence Programme Progress Report What are significant differences? 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

Status CP4. Scope of protection B&W marks Convergence Programme Progress Report Priority claims 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 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.

Status CP4. Scope of protection B&W marks Convergence Programme Progress Report Priority claims 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 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)

Status CP4. Scope of protection B&W marks Convergence Programme Progress Report 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. 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

Status CP4. Scope of protection B&W marks Convergence Programme Progress Report 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. 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

Status CP4. Scope of protection B&W marks Convergence Programme Progress Report Next steps: Aiming at endorsement in AB meeting by November 2013 Find final agreement Formalise in document on the Common Practice Create Communication Strategy Create Implementation Plan 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

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

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

Progress CP5. Relative grounds – likelihood of confusion Convergence Programme Progress Report OBJECTIVE 1 Define what trade marks are subject to assessment of distinctiveness The earlier trade mark and/or parts thereof? The later trade mark and/or parts thereof? 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.

Progress CP5. Relative grounds – likelihood of confusion Convergence Programme Progress Report 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.

Progress CP5. Relative grounds – likelihood of confusion Convergence Programme Progress Report OBJECTIVE 3 Determine the impact on LoC when the common components have a low degree of distinctiveness When marks only coincide in elements which have a low degree of distinctive character, non-coinciding element(s) has/have at least a normal degree of 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. LoC 2) if there are no other elements, as long as the visual impact is highly similar. If…

Progress CP5. Relative grounds – likelihood of confusion Convergence Programme Progress Report OBJECTIVE 4 Determine the impact on LoC when 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

Status CP5. Relative grounds – likelihood of confusion Convergence Programme Progress Report Aimed at endorsement in AB meeting by November 2014 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)

Maintenance of Practices – Terminology Maintenance Console Convergence Programme Progress Report 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

The European Trade Mark and Design Network - Central Team Convergence Programme Progress Report Working towards a European Trade Mark and Design Network (ETMDN) of European Intellectual Property Offices (EU IP Offices) Background 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 Maintenance of Practices - Convergence Central Team

The European Trade Mark and Design Network - Central Team Convergence Programme Progress Report Vision 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 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 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 Maintenance of Practices - Convergence Central Team

The European Trade Mark and Design Network - Central Team Convergence Programme Progress Report Responsibilities (1/3) 1.Creation of annual work plans of the central team 2.Coordination of implementation of common practices 3.Coordination of the training of the EU IP Office Representatives in practices 4.Coordination of the provision of the training material for EU IP Offices 5.Coordination of the communication flow between the EU IP Offices, OHIM, the Knowledge Circles (= extended KC) and any other stakeholder 6.Coordination of the provision of promotional/marketing material for new practices and/or tools Maintenance of Practices - Convergence Central Team

The European Trade Mark and Design Network - Central Team Convergence Programme Progress Report Responsibilities (2/3) 7.Coordination of surveys to National Offices and user satisfaction surveys on aspects of the common practices 8.Coordination of clarifications of interpretations 9.Coordination of translations on aspects of the common practices 11.Monitor international and national activities relating to CP, special attention for opportunities to promote Coordination of continuity of common practices 12.Coordination of Cost-Benefit Analysis, completed CP projects Maintenance of Practices - Convergence Continuity Central Team

The European Trade Mark and Design Network - Central Team Convergence Programme Progress Report Responsibilities (3/3) 11.Liaise with EU IP Offices on behalf of OHIM dept., programmes, projects, if requested 12.Coordination of incorporation of Nice Classification updates in the harmonized database 13.Monitor implementation of endorsed practices 14.Coordination with regards Manage Terminology Maintenance Console (TMC)/ translation quality Maintenance of Practices - Convergence Central Team

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

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

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

Contributors Authors Approved by owner DRAFT / APPROVED Status Presentation Revision history 08/02/ DescriptionAuthorDate Version PH /02/ DS- - TECH. LAISON. Meeting March 2013 Convergence Programme

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