For the avoidance of accidents, or worse?

Under the UK's Locomotive Act 1865, anyone driving a car in town
had to be led by a man who walked in front of the car,
carrying a red flag -- to prevent 'fatal accidents'

An interesting communication has come the IPKat's way. It seems to be about a rather delicate question -- do applicants for Community trade marks who are based outside the European Union really have to go to the trouble and expense of engaging a professional representative from within the EU? -- and it reads, in relevant part, like this:

"Proposed change of practice on professional representation

... the Office [for Harmonisation in the Internal Market] has proposed changing the existing practice with regard to the mandatory appointment of a professional representative within the EU for all Community trade mark applications coming from undertakings based outside the EU. ...

The Office has carefully reviewed the issue and has concluded that professional representation within the EU is only legally required if there need to be certain legal exchanges with the applicant. For example if there is some kind of deficiency, an Absolute Ground or class objection, an opposition or third party observation.

The Office proposed, therefore, to remove the routine check on this question at the examination stage, and instead to only ask for an EU representative (if none is indicated) when a legal exchange is required. We believe this is in line with the legal requirements, fairer to the client, and more efficient from our point of view.

However, on sharing this point of view with user associations, we found there were strong objections from some of them. In order to allow these objections to be fully considered, we have decided not to introduce this change of practice. Instead, we will be asking the European Commission to consider the question as part of the ongoing review of the functioning of the trade mark system in Europe ...".

The IPKat has a funny feeling that "users' associations" doesn't mean "associations of people who use trade marks", but rather "people who get paid by clients to represent them in matters concerning Community trade marks" but, since he doesn't know whether this is so, he couldn't possibly say. Merpel is absolutely certain, though, that there must be some incredibly important reason why non-EU-based Community trade mark applicants must be forced to instruct an EU professional representative -- possibly to protect them from fatal accidents -- and that the suggestion of "self-interest" must never be allowed to enter our thoughts.

If anyone has any information or comments on this issue, the Kats would love to learn more about it.

Why are CTM applications through the Madrid System less often opposed?

IPKat reader Alfred Strahlberg of Strahlberg & Partners, Switzerland, points to an interesting statistic: roughly 17% of all CTMs filed directly with the OHIM are opposed (see table above, click on it to enlarge - I know it's impossible to read). However, CTMs filed using the Madrid System - i.e. international marks seeking extension to the EU - are only opposed in about 8% of all cases (see table below).

The difference is quite large and definitely not due to chance. The IPKat thinks that one reason why "IR CTMs" are opposed less often is that the opponent may oppose the base registration instead and kill the IR mark once and for all ("central attack"). Only when that was not possible or seems unadvisable (home turf advantage for the registrant?) would he or she chose to oppose before the OHIM. This would mean that the combined rate of opposition - base registration and before OHIM - should be about the same for international marks as for directly filed CTMs; the IPKat lacks the empirical data to back this up, though (in Switzerland, roughly 5% of all national registrations were opposed in 2008; adding this figure to the 8% opposition rate for "IR CTMs" one arrives at a combined opposition rate of about 13% - still not quite 18%, but getting closer).

Do the IPKat readers have other explanations for the difference in opposition rates?

! is not a trade mark says the CFI

On Friday 30 September 2009 the Court of First Instance decided that two trade mark applications for exclamation mark symbols (as shown on the left) are not distinctive enough to qualify for Community trade mark registration, (cases T-75/08 and T-191/08).

So far the decisions are only available in German and French and this Kat will do her best to summarise.

In two related judgments of 30 September 2009, the The Court of First Instance (Seventh Chamber) decided that an exclamation mark cannot be registered as a trade mark, dismissing an appeal by the applicant. German fashion house JOOP! GmbH had applied to register two versions of the exclamation mark, one for a simple exclamation mark, the other contained within a rectangular frame. The applicant had filed its applications for "!" for goods in classes 14, 18 and 25 on 7 September 2006. OHIM's initial examiner and OHIM's Board of Appeal had refused registration of the applications raising distinctiveness objections under Article 7(1)(b) (T-75/08 and T-191/08).

In its decisions the CFI now agreed with OHIM's assessment and took the view that JOOP!'s marks would not be seen as denoting trade origin of the goods covered, such as jewellery, clothing and fashion accessories. Consumers, including consumers having a high degree of attention, would regard a simple exclamation mark which did not contain any kind of stylisation and which did not differ from the standard type font (Times New Roman) as mere promotional message or as a mere eye-catcher ("Blickfang"). The fact that the marks had been designed by a graphic designer could not change the assessment, that consumers would not be in a position to infer the origin of the goods covered by relying on a mere exclamation mark. The court also stressed that it is was irrelevant whether similar signs had been registered by OHIM or by a national trade mark registry. The legality of a decision rendered by OHIM's Board of Appeal had to be assessed in the light of Council Regulation No. 40/94 [now 207/2009] as interpreted by the European Courts and not in the light of the registration practice of the OHIM Appeal Board (BioID C‑37/03, Deutsche SiSi-Werk, C‑173/04, PAPERLAB, T‑19/04). In addition the judges emphasised that it was established case law that the Community trade mark system was an autonomous system and independent from national trade mark laws (electronica, T‑32/00, Sykes Enterprises T‑130/01, LTJ Diffusion T‑346/04).

The court further decided that the rectangular frame used in one of the applications did not render that mark distinctive because the frame could not be regarded as a sufficiently distinctive element. The frame had to be considered as a subordinate element which made the mark appear like a label. Furthermore, placing the mark inside a rectangle was an established and common practice in the relevant industry.

Referring to the ECJ's decision in Nestlé (C‑353/03), the CFI acknowledged that both marks could (theoretically) have acquired distinctiveness through having been used as part of the applicant's "main" trade mark for "JOOP!" (shown to the right). However, the evidence furnished by the applicant only referred to the German market and not to the whole of the European Union. Also, the evidence merely consisted of three photographs showing jeans to which a piece of fabric, or a label, was attached showing an exclamation mark.

Overall, the evidence was regarded as insufficient to prove that the marks had been known to the consumers before the day of application (see ECOPY, T‑247/01).

Finally, the court stressed that additional evidence furnished by the applicant for the first time during the CFI proceedings, could not be taken into account, it was the court's task to asses the legality of OHIM's Board of Appeal decision and not to assess the facts of the case in the light of new evidence (DaimlerChrysler [Kühlergrill/Grill], T‑128/01).

This Kat thinks that these decisions do not come as much of a surprise but might serve as a reminder to applicants to furnish all possible evidence (of acquired distinctiveness) during the OHIM proceedings and not to leave it until it is too late. Hah, says Merpel, as if the lawyers did not know and as if they did not tell their clients over and over again: good evidence is simply very hard to obtain... for oh so many reasons.

The IPKat thanks Bart Goddyn and all the other readers that have alerted him to this decision.

OHIM: "discrepancies" in opposition figures? ... and a new watch service too

No, this is not another post concerning a potential OHIM scandal (see here). The IPKat's good friend Alfred Strahlberg has contacted the Kat with an interesting observation concerning the numbers of oppositions filed against "normal" Community Trade Mark applications (average 17.45%) and the significantly lower number of oppositions filed against European Community designations of international marks under the Madrid system (8.3%). Alfred has helpfully and with Swiss precision calculated the above percentage numbers for the Kat, who in turn apologises that the picture below is a little blurry. So what is the reason for the discrepancy in the numbers of oppositions filed against CTMs and IRs designating the EU? Alfred speculates that

"...one reason may be because the republication of an IR occurs six months prior to the opposition period and the end date of the opposition period is not indicated, making it hard to monitor. Also CTM Online as regards IRs is sometimes not updated when the opposition period is open."

This Kat too has noticed that there appear to be some general problems with the updating of information on CTM Online - but could this really affect the numbers of oppositions significantly? Fellow MARQUES Class 46 blogger Mark Schweizer has another plausible explanation:

"Could it also be that IR marks, as they need a basis registration/application, are less likely to be opposed at OHIM, but rather at the central level? At least if I have a choice as opponent - i.e., I also have a mark in the "home country" of the IR - I'd probably prefer to oppose the base registration and kill it once and for all."

While writing this post, the IPKat noticed a message on the OHIM's website concerning a new "CTM watch service" which as of today's date could potentially help with monitoring the progress of any type of application:

"Users of MyPage, the password-protected platform making it easier to do business with OHIM, will have access to a new feature allowing them to track the progress of CTM applications as well as international applications from 1 October. [IPKat: should this read "European Community designations of international trade mark registrations"...? OHIM's explanatory leaflet refers to "International Registrations".]

Using the CTM Watch service, users will be able to select any CTM application or international application and receive an e-mail alert when the application status changes. For example, a user can ask to be informed when a CTM/IR is published or registered. For more information on CTM Watch see our leaflet."

Image from "cat-behavior-explained.com"

This particular Kat is very interested in the new watch service and rather optimistically hopes it will be fed with up date data. Mark's explanation above makes a lot of sense and he certainly describes a preferred strategy within the first 5 years of the IR's life. However, could there be more obscure reasons for the discrepancy in opposition figures? If so, what other reasons could there be? Have any of our readers experienced problems with inaccurate data on CTM Online and so perhaps miscalculated or even missed an opposition deadline? While we would all contact the Office to seek clarification, sometimes there just is not enough time...

This Kat is interested in our readers' views, experiences and theories.

Another OHIM scandal -- the IPKat names the culprit

The IPKat is filled with reforming zeal this morning, since he has identified a dreadful blot on the escutcheon of that fairest of jewels in the European Union's crown, OHIM. He wants to see an end to the tiresome and carbon-costly naming of the place that deals with Community trade marks and designs as the "Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)", which is how it is always referred to on the European Court of Justice's Curia website, or as the "Trade Marks and Designs Registration Office of the European Union", which is how it is designated on the English version of its website (click here for the French and German versions). Apart from the fact that it wastes print cartridges and consumes space on the page, it's also a dreadful mouthful to say and increases the risk of repetitive strain injury (if that condition exists) among typists. In short, it's an ugly affront to the fabled European skills of design and style-creation.

To this end, the IPKat is running a poll (see the sidebar on the left) to choose the name from which the office, European legislation permitting, should preferably be known from 1 January 2010. Your choices are as follows:

* Retain Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on the basis that at least we know what it is, thanks to distinctiveness acquired through years of use [If you use Twitter, beware: this name consumes 80 out of your 140 available characters];
* opt for Trade Marks and Designs Registration Office of the European Union, which does at least have the virtue of describing some of the things done there, along with oppositions, cancellations and very, very rarely, short lunch breaks and restitutio in integrum [Twitter factor, 65];
* Throw national pride to the wind and go for OAMI, the office's suave, slightly seductive Spanish acronym;
* Find something quite funky and in-yer-face like The Brand and Design Factory;
* Follow the admirable example of Australia and choose IP Europe.

After much thought, the IPKat decided not to add Shangri-La or its close and not inappropriate neighbour Shangri-Law, notwithstanding the paradisaic conditions in Alicante, lest the decision should ever be taken to move the office to some less attractive location.

If you don't like any of the above -- or even if you do, but you have a better idea -- email your own suggestion to the IPKat here and let him know. If there are any really good suggestions, he'll organise another poll in which the best new ideas will be run off against whichever name tops this poll.

This poll is emphatically open to employees of the European Commission and its various organs, whose creativity is welcome.

Last minute reprieve for passing off

An Art.8(4) case from the CFI: Joined Cases T-114/07 and 115/07 Last Minute Network v OHIM - Last Minute Tour. Last Minute Tours registered a word and device mark containing the words Last Minute Tours as a CTM for Class 16 and Classes 39 and 42. Last Minute Network applied for the mark to be invalidated, citing an earlier right protected by passing off in the sign lastminute.com under Art.8(4). The OHIM Second Board of Appeal rejected the application for invalidity citing a lack of confusion.

The CFI found that the Board had erred in a number of respects:

1. The Board had looked at the average consumers of the goods in question, whereas under passing off the relevant public is the earlier user's customers;
2. The Board had wrongly addopted the approach that because the term 'last minute' had a generic meaning, no party could be granted a 'monopoly' in it. This was wrong in the light of the Camel Hair Belting case (Reddaway v Banham [I896]. A. C.. I99);
3. In establishing misrepresentation, the Board had conducted a mark for sign comparison of the two indicia, focusing on their aural, visual and conceputal aspects, as would be appropriate under Art.8(1)(b). Passing off would include a onsideration of other factors such as, in this case, the circumstances in which the goods or services are offered in the United Kingdom under the sign LAST MINUTE TOUR on the date on which the application for the Community trade mark was filed. The Board had also failed to take into account the reputation of lastminute.com in establishing passing off, and the possiblity that its reputation would lead to confusion as to the origin of services which just used the 'last minute' element.

The decision was thus annulled at sent back to OHIM for adjudication.

The IPKat notes that this case demonstrates something that is sometimes easy to forget - that the confusion required for trade mark infringement and misrepresentation under passing off don't necessarily lead to the same result. Once again though, the IPKat feels rather sorry for OHIM, having to apply the assorted unfair competition rules and other laws of 27 Member States under Art.8(4).

OHIM-IPO class heading conflict case

The IPKat reports on Daimler v Sany [2009] EWHC 1003 (Ch), a request for summary judgment, which was refused on 14 May by Mr Geoffrey Hobbs QC, sitting as a Deputy High Court judge.

Daimler sued Sany for trade mark infringement, claiming that Sany's device mark caused confusion with and took unfair advantage of, or caused detriment to the well-known Mercedes Benz figurative mark. The Mercedes mark was registered in Classes 7 and 12 and Sany had applied to register its mark in Classes 7 and 12, together with a statement supporting the application saying that Sany had been using the mark, or had an intention that it would be so used.

Sany counter-claimed for part-cancellation of Daimler's mark. Daimler had specified the goods for which the mark was registered by giving the class headings for Classes 7 and 12 in the Nice Classification.

Mr Hobbs QC noted that there was an inconsistency in approach between OHIM and the IPO - the former allowing class headings as clams to all goods and services within a particular class, the latter objecting to wide and vague specifications, and also taking a literal approach to what is covered by class headings (e.g. Class 15 is entitled musical instruments, so specification adopting the class heading would only cover instruments and not, for example, music stands, which are included in the class). The Deputy Judge noted that he did not think that there was room for such a divergence to co-exist in the European trade mark system, and for these purposes led to a real issue that could not be decided via a summary judgment.

Daimler couldn't sidestep the issue by seeking to rely on those goods for which it had clearly used the mark, and which were clearly included in Sany's specification. There were issues concerning the goods for which Daimler's mark should remain registered and these would impact on the question of similarity of goods, which would impact on the question of confusion. It was also an open question whether the marks were similar enough to cause confusion.

The IPKat isn't too sure what could be done at trial that would resolve the conflict between OHIM and the IPO. Is a reference to the ECJ in the offing, he wonders...?

Mercedes the Cat here

Thursday Tweaks

The IPKat has been contacted by a concerned reader, who is asking: "Has anyone else noticed that OHIM appears to be quietly abolishing the Community Trade Mark registration fee from 1st May 2009"?

If any of our readers require more information on the imminent Community trade mark fee changes, then the following links should clarify matters:

• An OHIM press release of 31 March 2009 can be retrieved here (PDF).
• A press release by the European Commission can be retrieved here.
• A speech by Commissioner Charlie McCreevy concerning the fee cuts can be accessed by clicking here. (PDF)

In the words of the OHIM, the main elements of the fee cut package are as follows:

"The fee system will be simplified with the registration fee set at zero. In addition to the new single fee of €900 for an electronically filed CTM, the fee for a CTM applied for by fax or paper goes down to €1050, and it will cost €870 for an application filed via the Madrid Protocol."

Please check the attached table (compiled by the OHIM) for detailed information on the transition regime and details of fee changes. Further information can also be found on the Class 46 weblog here.

The IPKat would like to add some comments to his earlier post "Kein Patent auf Schwein" about a mysterious notice concerning patent and pigs published on the EPO's website. As some of our readers have already pointed out, the EPO's notice has be to seen in a wider political context and in the light of an ongoing political debate in Germany on the issue of genetic engineering. This fact might explain why the EPO's notice was only available in German.

Ironically in Germany, pigs are symbols of good fortune and luck (right)

Earlier this week, German Federal Agriculture Minister Ilse Aigner had already announced a ban on a strain of genetically modified maize sold by Monsanto (see the BBC's coverage here). Today, 16 April 2009, marks the deadline for filing a notice of opposition against patent EP 1651777 B1, which has been dubbed "Super Pig Patent" by the German media. Protesters decided to mark this date by organising demonstrations yesterday against this patent on the trait selection of pigs in Munich (where the EPO is based) and Wiesbaden. Interestingly enough, the 'pig patent' in question was originally filed in the name of Monsanto Technology LLC (the company selling the banned maize) but is now in the name of Newsham Choice Genetics, LLC.

To read more on this topic, please click here to read German IP blogger Alex Horns' view and here to read a summary of the issues at stake by German magazine Der Spiegel (in English).

Council Regulation (EC) No 207/2009 - all change?

Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, which codifies (and repeals) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark and its amendments, entered into force on Monday 13 April 2009.

This cat has just reviewed the changes to the Council Regulation

So, what has changed? The good news is that there is no change in the numbers of Articles 1 - 36, which means that all references to Article 7 (examination) and Article 8 (oppositions) are unaffected. However, oppositions are affected in other Articles. Furthermore, Articles referring to cancellations and appeals have changed as well as references to Articles 37 - 160.

If this sounds slightly confusing: the OHIM has published some helpful documentation which can be accessed via the links set out below.

• Correlation table listing changes to Article numbers
• Annotated version of Implementing Regulation
• Council Regulation (EC) No 207/2009 on the Community trade mark

Merpel just can't help wondering why the numbers of Articles had to change at all...

OHIM system delays: the world waits

The IPKat has been receiving emails from readers -- some irate, others just annoyed and others again who are merely curious -- concerning this notice, posted on the website of the Office for Harmonisation in the Internal Market on Monday 9 March and headed "Service delays continue". 

Right: installation of new software seems to have involved a greater degree of disruption than was anticipated

The notice reads:

"Service delays due to the installation of essential improvements to OHIM's back office services are expected to continue during the week starting 9 March.

The delays affect the updating of some of our e-Business services, namely: RCD Online, Online Access to Files and CTM Online. Account Online, which allows users to view the latest status fo their OHIM current accounts, is also currently unavailable. While transactions such as transfers and debits continue to be handled as normal the information displayed online is not being updated.

OHIM apologies for the inconvenience caused to users and we will provide further information about the status of these services as soon as possible".

Given that the CTM-ONLINE database is now nearly a month out of date, user of the system have a justifiable basis for their observation that the present situation is far from satisfactory. One correspondent says, with masterly understatement, "They probably owe users more information than they are giving". 

Admirer of OHIM that he is, the IPKat is entirely in sympathy with his correspondents and hopes that their plight -- which is actually the plight of their clients, struggling to trade efficiently in the grips of the worst recession the popular press can recall -- will soon be alleviated.  Merpel is fascinated about the reference in the notice to "improvements to OHIM's back office services". It makes one wonder, she says, whether by the back office they mean the one that doesn't have a sea view.

News from the OHIM: new CTM e-filing system on 2 February 2009

Readers of the OHIM's newsletter Alicante News may have already noticed that there is a new CTM e-filing system on its way. The IPKat has today received the following news from the OHIM concerning the planned new CTM e-filing system, which could be of interest to many of our readers. The new system will already be introduced on 2 February 2009, announces the OHIM:

"The new CTM e-filing system will be officially launched on Monday 2 February. The system, developed as a result of user feedback, has been designed to be both quicker and simpler to use. It incorporates important features requested by users such as the ability to save and restore draft CTM applications. There is also a faster submission process with immediate confirmation including the CTM application number and the generation of a receipt that you can print or save.

Automatic error checking helps ensure that users put in the correct data, and there are improved facilities to help with the introduction of goods and services. More information will be available shortly on a special CTM e-filing web page, and video "How-to" guides introducing the system step by step, are available for immediate viewing. Keep watching the OHIM website news service for further updates over the next few days.

Link: E-Business How-to videos
http://oami.europa.eu/ows/rw/pages/OHIM/multimedia/OHIME-Business.en.do"

If the link to the "How-to" videos is not yet active, please try again later today. The information will also be published on the OHIM's website later today.

What do our readers hope the new e-filing system should do (or not do)?

This Kat certainly hopes for more stability when submitting the application, so she does not have to phone the OHIM to check whether the application was submitted or not.

Are you satisfied now?

A very observant and highly valued informant of the IPKat has drawn his attention to the existence of a forthcoming Staff Satisfaction Survey, to see how people who work at the Office for Harmonisation in the Internal Market feel about themselves.

Right: scenes from OHIM -- security guards manning the barriers seek to fend off eager examiners who are demanding to be able to come in especially early on their day off in order to spend extra time weighing up those absolute grounds ...

The tender document, which you can read on the Tenders Electronic Daily website here, gives a short description of the job:

"To design, prepare and carry out a staff satisfaction survey along with relevant activities regarding communication, interpretation and analysis of results. To carry out a further survey 2 years later, should the contract be renewed".

The total final value of contract is a paltry EUR 85,415 -- not a vast sum for the economic operator to whom the contract has been awarded: ISR, Albany House, Petty France, London SW1H 9EA, United Kingdom. From ISR's website it looks a pretty dynamic organisation. According to its home page:

"No matter where you are in the world, Towers Perrin-ISR can help your organization improve its performance. We enable you to gain and apply insight from your managers and employees through customized employee surveys and research-based solutions".

Wow, says the IPKat, isn't that marvellous! To be able to achieve so much, for so little cost. The obvious solution is to disband the entire OHIM management and replace it with experts from ISR. Don't be daft, says Merpel, don't you know? It's only when you're not actually doing the job that you're an expert in how to do it.

Satisfaction here

Something missing?

The Office of Harmonisation in the Internal Market (OHIM) has issued a press release to commemorate the grant of its 500,000th Community trade mark. According to the text, in relevant part:

"The European trade marks and designs registration office, OHIM, has registered the 500,000th Community trade mark after enjoying more than a decade of unprecedented demand for Europe-wide protection of intellectual property. ...

The news that the “half a million mark” has been passed follows confirmation by Internal Market Commissioner Charlie McCreevy that the financial success of the Community trade mark means that the cost can be brought down sharply in a move designed to help SMEs in particular.

OHIM President Wubbo de Boer says: “We are in the fortunate position of offering a service that is very popular with both large and small businesses and which, in general, has seen growing demand.

“Registering our half a millionth Community trade marks is a very important milestone. I would pay tribute both to the vision of those who saw the need for Europe-wide IP protection and to the European and global customers who have put their confidence in us over the years.

“The cost of trade mark protection is a major concern for SMEs in particular, and I am particularly glad that we will be able, by mid-way through next year after the Commission brings forward its proposals, to cut the cost of having a Community trade mark by about 40% to around €1 000.”

Since 1996, OHIM has registered trade marks ranging from global brand-names to the logos used by small SMEs drawn from most countries in the world. Community trade marks include colours, words, pictures and even sounds".

The IPKat feels there's something missing from this exciting press release, but he can't quite work out what. Merpel says, you fool -- can't you see what's missing? The press release DOESN'T SAY WHAT THE 500,000TH COMMUNITY TRADE MARK IS!!!!!!! Can someone please put these impatient kittens out of their misery and tell them? And can someone please tell the Kats why OHIM might have imagined that anyone would be interested in publishing the news of its 500,000th CTM when the juiciest bit of information was left out? It's vaguely reminiscent of the uninformative and detail-free news items you hear on the BBC Radio ("Last night a person was found dead near at the outskirts of a park in the North of England. A weapon was found near the scene of the incident. A man is helping police with their inquiries ...").