1. Overview of the Industrial Property protection in the EU
The Community Trade Mark (CTM) System
The Community Design (CD) System
Etienne Sanz de Acedo
General Affairs & External Relations Department

2. 1. Overview

3. The Community Trade Mark (CTM) and Community Design
The European Union currently has 450 million inhabitants

4. What is the Office for Harmonization in the Internal Market?
(OHIM)
EU Agency: Decentralised
Legal personality
Financial autonomy
Tasks: Community Trade Mark
(in operation since 1 April 1996)
Community Design
(in operation since 1 April 2003)
SPAIN
Alicante

5. Financial
Controller
Administrative Board
Budget Committee

6. There are currently around 650 people working at OHIM
Staff are recruited from all 25 Member States of the European Union
Nationals of new member states are being recruited
specific qualifications
All staff are proficient in at least 2 languages of the European Union

7. OHIM
Figures
Enlargment
Madrid Protocol

8. CTM APPLICATIONS

9. RCD APPLICATIONS

10. ENLARGEMENT
10 new member states
New recruitments,
Impact on language regime,
Impact on searches,
Legal implications arts. 142 (a) CTMR and 110 (a) CDR.

11. MADRID PROTOCOL
Preparatory work (communications, forms, new process, publications ..)
Entry into force 1st October 2004

12. CONCLUSIONS
High No of CTM & RCD applications
Users satisfied
Self financing since 1997.

13. Better reply to clients’ needs
OBJECTIVES FOR
Better reply to clients’ needs
performance
deadlines
productivity
Harmonisation of practices & decisions
Play an active role in the IP field.

14. OHMI
Productivity
Web services
Customer Care
Harmonization
Managing our resources
IP reference

15. PRODUCTIVITY
Creation of Task Forces
Backlogs reduction
Change of processes
Increase speed of registration procedures

16. PRODUCTIVITY
CLASSIFICATION

17. PRODUCTIVITY ABSOLUTE GROUNDS EXAMINATION

18. PRODUCTIVITY OPPOSITIONS

19. Designs: deadline between reception and publication
2003
2004
92 jours (3 mois)

20. WEB SERVICES (SERVICES WEB)
1 Click – multiple services
Security
Customized services
Complete and updated info
E-communication
Interactive services

21. E-BUSINESS 1st Phase 2nd Phase 3rd Phase Improvement of e-filing RCD
CTM on-line 2004
MY PAGE
Designs on-line
CTM files on-line
E-filing opposition
Search on-line
Integration of Madrid Protocol data within CTM on-line
E-renewal
Opposition on-line
Appeal on-line
Improvement of e-filing RCD
Payment on-line

22. CUSTOMER CARE
Customer Satisfaction Measurement
Quality Standards
CCU
Feedback from clients
Fee reduction proposal from EU Commission

23. RELATIONS WITH NATIONAL OFFICES
Liaison meetings
Harmonization of practices
Co-operation policies(Trilateral OHIM-USPTO-JPO)
Commun Interfaces & platforms

24. RESSOURCES MANAGEMENT
New technologies
Benchmarking
Quality Management
Teleworking
Training

25. 2. The Community Trade Mark (CTM) System

26. The Legal Framework
Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark  
Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark  
Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)  
Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) Amendments to the Community Trade Mark Regulation

27. What is a Community Trade Mark (CTM)?
A CTM is a sign for identifying and distinguishing goods or services valid across the European Community, registered with the OHIM in accordance with the conditions specified in the CTMR.

28. Which kind of signs may be registered as CTM?
A CTM may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings (Art. 4 CTMR)
Namely word marks including letters, numbers or combination of letters, numbers and words; figurative marks, three-dimensional marks; sound marks.

29. Words and numbers
CTM “Mozart”
Figurative elements
Others

30. Which kind of signs may not be registered as CTM?
Absolute grounds for refusal (Art 7 CTMR)
Relative grounds for refusal (Art 8 CTMR)

31. Advantages of the Community Trade Mark (CTM) :
1º Unitary nature and protection of exclusive rights
The Community trade mark is unitary in nature , i.e. it is valid everywhere in the European Community, and gives proprietors exclusive rights enabling them to prohibit any third parties from using the sign in their commercial or industrial activities.
2º Simplified formalities and management
a single application;
a single language of procedure;
a single administrative centre;
a single file to be managed.

32. Advantages of the Community Trade Mark (CTM) :
3º Reduced costs
Filing a Community trade mark application is not expensive: EURO 975 for three classes of goods and services. The registration fee of EURO 1100 only needs to be paid once no obstacles remain to the trade mark being granted.
4º Option of claiming the seniority of national trade marks
If applicants or proprietors of a Community trade mark already hold a prior identical national trade mark for identical goods and services they may claim the seniority of that mark. This allows them to preserve their prior rights even if they surrender their national trade mark or do not renew it.

33. Advantages of the Community Trade Mark (CTM) :
5º Right of priority
The filing date accorded to a Community trade mark is recognised as constituting a date of priority for both national and international trade marks. This applies equally where applicants decide to convert their application or registered Community trade mark into national applications.
6º Obligation of use which is easy to meet
A Community trade mark may be maintained in all the countries of the European Union by using it effectively and genuinely in a single Member State.

34. Advantages of the Community Trade Mark (CTM) :
7º Broadened legal protection which is accessible to all
Infringement proceedings may be brought before the Community trade mark courts, which are national courts designated by the Member States to have jurisdiction in respect of Community trade marks. Decisions have effect throughout the EU.
8º An extended range of options for exercising rights under the trade mark
The option to transfer and assign Community trade marks is essential for the management of companies. A Community trade mark may be transferred, licensed, right in rem …

35. Advantages of the Community Trade Mark (CTM) :
9º Community trade marks as prior rights in all the countries of the European Union
Community trade marks constitute prior rights in relation to all subsequent trade marks and other conflicting rights in all Member States.
10º The prospect of enlargement
The enlargement of the European Union by 10 new Member States (1 May 2004) resulted in a European Union of 25 Member States. The Community trade mark therefore is not only a gateway to the existing single market but also to a market in the process of expansion.  

36. Does the CTM prevail over national trade marks?
The CTM system leaves the national trade mark systems of Member States & the Benelux Trade Mark system unaffected.
However, earlier national trade marks constitute earlier rights against a CTM, and vice versa.

37. Capacity and entitlement to register a Community Trade Mark (CTM)
Any person or business entity may apply for a CTM. (new Art. 5)
But for non European applicants, an European representative must be appointed (Art. 88 CTMR)
The appointed representative can be a OHIM professional representative or legal practitioner

38. Where and how to file a CTM application
Through National Offices
Directly at OHIM
Personally
Fax
Mail
E-filing

39. The Community Trade Mark Procedure
Filing
Formalities examination
12 months
Absolute grounds examination
Search and translation
Publication
30 months
Opposition (inter partes proceeding)
Third parties observations
Registration
Partial and total refusal

40. PUBLICATION NOTICE OF OPPOSITION ADMISSIBILITY EXAMINATION
START OF WRITTEN PROCEDURE (observations from parties, proof of use, etc.)
NOTIFICATION TO APPLICANT
COOLING OFF PERIOD
EXAMINATION AND DECISION ON OPPOSITION, COSTS AND APPLICATION FOR A CTM
APPEAL

41. Rights conferred by a Community Trade Mark
Exclusive use of the trade mark;
Prevention of reproduction or imitation of a trade mark;
Transfer the trade mark;
Grant licenses for some of all of the goods or services in part or for the whole of the community;
Oppose/Request the invalidity of the registration of similar community or national trade marks which could cause confusion to the consumer.
In the whole territory of the European Union

42. 1st May Enlargement

43. Legal Implications of enlargement
Art 142 (a) CTMR: 3 Rules
Automatic extension
Grandfathering of CTMs
Respect of acquired rights in new Member States

44. Legal Implications of enlargement: Practical Issues
Automatic extension
The main legal consequence for holders of CTMs filed
before the date of accession (irrespective of whether
they have also already been registered or not) is that
their protection will be automatically extended to the
territories of the new Member States.

45. Legal Implications of enlargement: Practical Issues
Grandfathering of CTMs
For examination on absolute grounds and cancellation
actions on such grounds, only the situation existing
prior to enlargement will be taken into account
Absolute grounds for refusal/invalidity which become applicable
merely because of accession will not be taken into account
(irrespective of when the examination or the cancellation action
actually takes place).

46. Legal Implications of enlargement: Practical Issues
Grandfathering of CTMs
Equally, a CTM filed before enlargement will not be subject to an
opposition proceeding (except as explained hereafter) or subject
to an invalidity proceeding if it is in conflict with an earlier national
right registered, applied for or acquired in a newMember State
prior to the date of accession.

47. Legal Implications of enlargement: Practical Issues
Respect of acquired rights in new Member States
To safeguard the rights of owners of national rights in the new
Member States, it was decided that they can prohibit the use of
the extended CTMs in the territory covered by the right.
The extended CTM would be valid and enforceable in the entire
EU, including the new Member State, but not against an earlier
conflicting national right.
The extended CTM would thus not only not be enforceable
against an earlier national right, but the holder of such a right can
prohibit the use of the extended CTM in his territory.

48. CTM APPLICATIONS

49. CTM APPLICATIONS

50. REGISTERED CTM

51. REGISTERED CTM

52. TOP 10 TRADEMARKS

53. 3. The Community Design System

54. Commission Regulation (EC) nº2245/2002
The legal framework
Council Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs
(OJEC N° L3 of , p 1)
Commission Regulation (EC) nº2245/2002
of 21 October 2002 implementing Council
Regulation (EC) No 6/2002 on Community
designs
(OJEC N° L341 of , p 28)

55. Commission Regulation (EC) nº 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) in respect of the registration of Community designs
(OJEC N° L341 of , p 54)

56. Entry into Force
6 March 2002
Administrative Board of O.H.I.M. decided on 18 November 2002: first Filing date 01/04/2003, applications received as from 01/01/2003

57. lines colours shape texture contours materials
What is a design?
“design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the ...
lines
colours
shape
texture
contours
materials
ornamentation

58. Excluded: computer programs
What is a Product ?
“Product”: any industrial or handicraft item, including inter alia
Parts intended to be assembled into a complex product
Packaging
Get-up
Graphic symbols
Typographic typefaces
Excluded: computer programs

59. Protection Requirements: Novelty (Art. 5)
If no identical design has been made available to the public
before the UCD has first been made available to the public
before the filing or priority date of the RCD
Designs are deemed to be identical if their features differ only in immaterial details

60. Protection Requirements: Individual character (Art. 6)
If the overall impression produced on the informed user differs from the overall impression of designs made available to the public earlier
The degree of freedom of the designer in developing the design will be taken into consideration

61. Exclusion of protection
Non visible parts in normal use
Features of appearance of a product which are solely dictated by the technical function of the design
Interconnections
(Art 4 (2))
(Art 8 (1))
(Art 8 (2))

62. The Community Design : a two tier protection system
The Unregistered Community Design (UCD)
The Registered Community Design (RCD)

63. Beginning of protection for UCDs
The UCD has been a reality since the 6th of March 2002
All new creations disclosed for the first time in the EU since this date are protected by that right throughout the European Union

64. Beginning of protection for RCDs
The RCD has been a reality since the 1st of April 2003
Administrative Board of O.H.I.M. decided on 18 November 2002: first Filing date 01/04/2003, applications received as from 01/01/2003

65. Registered or Unregistered Community Design
Common elements
Unitary character
(equal effect throughout the Community)
Definitions
(design, product, complex product)
Protection requirements
(novelty, individual character)

66. Registered or Unregistered Community Design
Common elements
Exclusion of protection
(non visible parts, technical functions, interconnections, against public policy or morality)

67. Registered or Unregistered Community Design
Differences
Birth of right
RCD  application for registration
UCD  making available to the public within the Community
Term of protection
RCD  5 years renewable 4 times
UCD  3 years from disclosure
Max. 25 years

68. Registered or Unregistered Community Design
Differences
Rights conferred:
(Art 19)
RCD - exclusive right to use and prevent: making, offering, putting on the market, importing, exporting, using or stocking for such purposes, products incorporating the design
UCD - right to prevent only if use results from copying

69. Unitary character CD has equal effect throughout the EU
(Art 1 (3))
CD has equal effect throughout the EU
Registration, transfer, surrender, invalidity, prohibited use always for the entire EU

70. Unitary character & enlargement of the EU
New Article 110a CDR
Automatic extension of RCD’s and UCD’s (as from 1/5/2004)
Grand’fathering of earlier CD’s (invalidity and examination on new grounds)
Holder of earlier national rights in new Member States can prohibit use
If first disclosure outside EU, no UCD

71. Weaknesses of the UCD
If first disclosure in non EU country, UCD not available because no grace period
Uncertainty as to disclosure and therefore existence of right
Problems of proof (date, extent, first disclosure, etc)
Right only against “copies”
Limited term of 3 years

72. Advantages of the RCD
A strong right with a unitary character in the entire EU
Easy, fast and cheap filing and registration procedure (one language, one application, one fee system; multiple applications, deferred publication)
Community exhaustion
Grace period (12 months)
Long term of protection (up to 25 years)

73. The Registered Community Design and OHIM

74. How to obtain a registration of your design at the OHIM

75. Who can file
Any natural or legal person without any restrictions as to nationality or state of incorporation
Who has the right
Right vests in the designer or his successor in title
Joint ownership
Designs developed by employees

76. Where to file
National Offices
OHIM
Personally
Mail
Fax
E-filing

77. 3 MONTHS Community Design Workflow Mail Room Mail Dispatch Examination
Registration
Publication
Deferment

78. Examination Mainly formalities elements provided in application
(Art 45)
Mainly formalities
elements provided in application
priorities
professional representative
Grounds for non-acceptance
not a design application
against public policy and morality

79. X _____________________________ Examination No examination on :
verification of protection requirements
relative grounds
whether spare part or not
whether the applicant is entitled X
Procedure should be fast and user-friendly
_____________________________

80. Multiple Applications
(Art 37)
Multiple designs allowed in one application, provided products are in the same class (except ornamentation)
Features
No upper limit for number of designs
Saves costs for applicant
In case of multiple classes, invitation to divide
Each design included will have its own independent life (deferred or not, invalidity, surrender, renewal, etc …)

81. A multiple application (class 06)

82. Not a multiple application

83. Deferred publication To be requested when application is filed
(Art 50)
To be requested when application is filed
Maximum 30 months as from filing or priority date
Deferment may be interrupted at any time by the applicant
May file a specimen if it is a two dimensional design
Except for very limited information, the designs remain secret until holder decides to publish

84. Publication of a deferred design

85. RCD APPLICATIONS

86. TOP 10 RCD

87. Figures
Classification
Classes

88. Industries class 09 : Packaging class 12 : Transport or hoisting
class 06 : Furnishing
class 07 : Household goods
class 14 : Recording and communication equipment

89. average number of designs in a multiple application = 6,15
Figures
average number of designs in a multiple application = 6,15

90. Some examples of designs already registered by OHIM since 1 April 2003 Source: OHIM’s CD Bulletin

91. First RCD published 000000013-0001 Casio Computer Company
Filed, registered and published on 01/04/2003

92. Filed, registered and published on 01/04/2003
DaimlerChrysler AG
Filed, registered and published on 01/04/2003

93. Design 1128-7, registered for
First RCDs published
Design 393-1, registered for
KOIPE CORPORACIÓN, S.L.
Design , registered for
SILHOUETTE International Schmied AG

94. Design 1029-1, registered for
AUTOBAR PACKAGING SPAIN, S.A.
Barbera del Valles
Design 989-4, registered for Intel Corporation

95. Table of Fees

96. 350 € 270 € Examples: Application with immediate publication (1 CD)
Application with deferment publication
(1 CD)
270 €