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Wednesday, 30 September 2009

Money mountain: Famous Five plan the ascent of a financial Everest

Just over a year ago, the IPKat was raging about the fate of the vast mountain of money [now renamed "The Cooperation Fund"] held by OHIM, through over-high Community trade mark fees, which that organisation was not allowed to return to trade mark applicants (see earlier posts here and here).

Right: the fabled Mount Alicante: "there's gold in them thar hills ..."

Well, there's some better news to report. According to a letter sent to OHIM,

"The five Users’ Associations [AIM, BUSINESSEUROPE, ECTA, INTA and MARQUES, in alphabetical order] being Observers on OHIM’s Administrative Board have commonly developed a list of projects which we believe should be funded under the Cooperation Fund as a matter of first priority.

It is the confirmed target of the Cooperation Fund to contribute significantly to the optimisation of the functioning of trade mark systems across the EU as was laid down in the Initiation Note with a specific view towards users of the systems. The below projects being developed out of practical work do reflect certain needs of the users to be solved by the use of the Fund.

1. Ensure adequate computerisation [Good idea: See earlier IPKat rant here] of all EU NPTOs [=National Patent and Trade Mark Offices] which would include the below points.
2. Complete seniority databases to be established and maintained in all EU NPTOs, accessible free-of-charge to all Users whenever they search. These should contain all trade marks used in CTM seniority claims [This is not a mere convenience -- this can be so valuable for SMEs' business plans].
3. Development of common IT systems between all EU NTPOs [Would 'compatible' be sufficient? Never mind, this is still good].
4. User accessibility to all trade mark up-to-date databases, free-of-charge [Hear, hear!]
5. Option for e-filing, online access and e-renewal without requirements for additional documentation, with the option of payment by credit card, in all EU NPTOs [With no hidden charges, delayed charges and embarrassments for practitioners who, having invoiced clients for disbursements and been paid, suddenly find fresh charges emerging from the woodwork]
6. TMView showing full data including images of device marks, addresses, goods and services covered (etc.). and including data from all EU NPTOs supplied free-of-charge [device marks are only part of the problem; what about 3D marks?]
7. Pan-European harmonisation of classification within the appropriate international framework [This isn't just a matter of money -- it's a matter of some very obstinate people backing down too].
8. Development of a module and materials for NPTOs to use in CTM-related education so as to ensure commonality of messages [Hm. Hadn't thought of that one ...].

We understand that on the basis of the recommendations of the report drawn up by GARTNER, proposals on the allocation of the funds available under the Cooperation Fund will be made to the Administrative Board and Budget Committee. We would like to stress that the focus should be on the projects and that “the allocation of funds (to projects) should be driven by optimal contributions to users’ priorities” as stated in the Initiation Note as well as rigorous financial controls, sound financial management and transparency".
The rage is starting to abate ... but 50 million euros is a lot of money and the Kat is itching to get his paws on it. However, if OHIM takes a favourable view of at least some of these suggestions, he might agree to let them hang on to the money. Merpel says, I think we should say "well done" to the Famous Five users' associations for their constructive suggestions.

The other Famous Five here


Tove Graulund said...

Dear Kat,

3. For MARQUES this would include websites of national offices in not only their local language(s), but also in one (other) language of the OHIM, preferably English.
6. 3-D marks would obviously have to be included along with all the other data that is natural for cats like us.
7. To calm the Kat I can let you know that talks have been (finally!) initiated between OHIM and WIPO on joining forces.
9. Just to say that there are more ideas, but that these 8 are our first priorities.

I am glad that Merpel approves. The IP Kat, however, should be aware that OHIM have already taken the above points on board. The challenge is to get all member states to agree and participate as well. So the Kat should not be raging in Alicante, but in other selected localities in Europe.

Best whiskers,

Claire Lazenby said...

"2. Complete seniority databases to be established and maintained in all EU NPTOs, accessible free-of-charge to all Users whenever they search. These should contain all trade marks used in CTM seniority claims [This is not a mere convenience -- this can be so valuable for SMEs' business plans]":

Ah, does this mean – national trade mark registers at the moment do not cross-link to show that the national registration has been claimed in a CTM? If so, then yes, it would be useful to have an entry on the national trade mark registers to show that there is a CTM for the mark in question. But what would be EVEN MORE USEFUL is to retain on the national registers information about national trade mark registrations which have lapsed, because it is only on expiry that a claim to seniority is activated. A CTM can claim seniority from a national registration while that national registration is still alive, but a CTM only GETS seniority once the national registration is dead. So, knowing what marks are in use while a seniority claim is being made is not really that important, because it is after all only a claim – it does not actually give the CTM any earlier date in the country in which the mark is registered until the national registration of that mark expires.

Tove Graulund said...

Dear Claire,
The idea is precisely what you are getting at. Namely that when a national registration expires (no need to renew it thanks to the seniority claim) it should remain visible on the database and not simply be deleted. To put up a hyperlink to the CTM registration in question would be ideal.
Now all we need to do is get there ;-)

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