1. The OHIM
Sabina Rusconi, institutional affairs and external relations department, OHIM
Roving Seminar on the Conmunity Trade Mark System in China, March 2011

2. “Office for the Harmonisation in the Internal Market”
Presentation of the European Union office in charge of registering trade marks and designs rights, officially known as
“Office for the Harmonisation
in the Internal Market”
or “OHIM”

3. Where is Alicante ?
ALICANTE (03.00 AM)
PRC (09.00 AM)

4. What is the OHIM?
is a regulatory agency of the European Union, created by its Council of Ministers in 1993
has legal, administrative, technical and financial autonomy vis- à vis central European Institutions (e.g. it has its own budget); it is a fee funded organisation
grants trade mark & design titles of protection valid and enforceable throughout the whole European Union, known as “Community trade marks” and “Community designs”
located in Alicante, Spain
since 1996, it registers trade marks; since 2003, designs
it has no competence as regards PATENTS (the European Patent Office does) and UTILITY MODELS (there is no European utility model as such)

5. What are the Roles of the OHIM?
1. To manage the Community trade mark registration system:
it receives, examines and registers trade mark applications (similar to what the Chinese Trade Mark Office does)
it solves opposition and cancellation requests against trade marks (similar to what the Chinese Review and Adjudication Board within SAIC does)
2. To manage the Community design registration system:
it receives, examines and registers design applications (similar to what China’s State IP Office does)
it solves invalidation requests against designs (similar to what the Patent Review Board within SIPO does)

6. Trade mark and design applications. Trade mark oppositions.
Core tasks
Examining and issuing decisions on:
Trade mark and design applications.
Trade mark oppositions.
Trade mark and design requests for invalidity.
Appeals against decisions issued on any of the previous procedures.
Keeping public registers of Community Trade Marks (CTMs) and Registered Community Designs (RCDs) and providing consultation tools to ease access to the information therein.
Providing up-to-date and relevant information on the CTM and RCD systems to current and potential users.

7. Three routes
Three alternative routes allowing companies to obtain titles for protection of trade marks and designs within the EU
National route (trade mark office in each country)
International route (WIPO and offices in designated MS)
Community route (OHIM)

8. The National Route
An individual fee is payable to each National Office
File individual applications at each of the National PTO
Each protection title subject to the different national laws
Translation/Agent costs
Applications in each National Office

9. The International Route
A single fee paid to WIPO
An individual fee for designations
No single unitary right is granted – “bundle” of rights
Each trade mark is subject to the national law of each designated country
Translation/Agent costs
One fee - WIPO

10. The Community Route OHIM - Alicante
One registration procedure in one language
One registration office: OHIM
One title valid in 27 countries
One fee
OHIM - Alicante

11. Boards of Appeal can review all decisions affecting a party.
Review of Decisions
Boards of Appeal can review all decisions
affecting a party.
Further appeal to Court of First Instance and
Court of Justice.

12. What is NOT the Role of the OHIM?
To enforce trade marks or design rights:
OHIM cannot impose fines or order to stop the infringement of a trade mark or design
OHIM cannot order the seizure of counterfeited goods
OHIM cannot give orders to police or customs authorities
The enforcement of Community trade marks and designs is under the competence of the courts, the police, the customs and the administration of each country of the European Union

13. What are the resources of OHIM?
It is an office financed by fees paid by applicants
- Filing a trade mark: 900 € (around RMB)
- Filing a design: 350 € (around RMB)
It has over 700 well-qualified staff members, from different European Union countries

14. OHIM registers trade marks and designs on behalf of Chinese applicants
OHIM and the People’s Republic of China
OHIM holds cooperation with SAIC / CTMO /TRAB (for trade mark matters) and with SIPO (for designs)
OHIM participates in the implementation of the program “EU-CHINA PROJECT ON THE PROTECTION OF IPR (IPR2)”, together with SIPO and SAIC / CTMO / TRAB
OHIM registers trade marks and designs on behalf of Chinese applicants
OHIM has one staff member (Mr ROMERO) stationed at the EU Delegation in Beijing as “IP Officer for trade marks and designs” ( )

15. OHIM and the People’s Republic of China
Between April 1996 and December 2010: trade marks were filed before OHIM, of which:
5.153 filed by PRC applicants (0.56% of total)
4.948 filed by Hong Kong applicants (0.54% of total)
37 filed by Macao applicants
Other filers by country of origin:
US: 19% Germany: 17% UK: 11%
Spain: 8% Italy: 8% France: 7%
Japan: 3% Australia: 0.87% Korea: 0.30%
Singapore: 0.17% Brazil: 0.32%

16. OHIM and the People’s Republic of China
Between April 2003 and December 2010: designs were filed before OHIM, of which:
5.017 filed by PRC applicants (0.98% of total)
5.946 filed by Hong Kong applicants (1.16% of total)
1 filed by Macao applicants
Other filers by country of origin:
Germany: 24% Italy: 15% US: %
France: % UK: 7% Spain: %
Japan: % Korea: 0.99% Australia: 0.41%
Singapore: 0.10% Brazil: 0.16%

17. OHIM and the People’s Republic of China
Example of Community trade mark and designs
filed at OHIM by Chinese companies:
Hangzhou China Arts Industrial Corp., Ltd.
HANGZHOU XIN JIULONG KITCHEN TOOLS CO., LTD.
Registered Community Design
Filing date – 16/11/2009
Community trade mark
Filing date – 01/10/2009

18. OHIM and the People’s Republic of China
Some of the Chinese companies filing more trade marks before OHIM :

19. OHIM and the People’s Republic of China
Some of the Chinese companies filing more designs before OHIM :

20. Single application procedure
Main Features of the trade mark and design procedures
Single application procedure
Valid throughout the EU under a single registered right
Single legal framework adopted by the EU:
Community trade mark Regulation
Community designs Regulation
Reduced cost compared to accumulated national rights
Single language – reduced translation costs
Community trade mark court
system – simplified legal procedures if the right is infringed

21. How can TM& designs be protected in Europe?

22. A quick guide for SMEs

23. THANK YOU
FOR YOUR ATTENTION

24. Information:  (+ 34) 965 139 100 (switchboard)
 (+ 34) (e-business technical incidents)
 (+ 34) (main fax)  
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