Conference on the Accession of the
European Community to the
Madrid Protocol
The Accession of the European Community to the Madrid
Protocol
- the long and winding road
Part II
- Council Regulation No 1992/2003 of 27.10.2003
(Amendment CTMR)
- Council Decision No 793/2003 of 27.10.2003
(Approving the Accession)
- Commission Regulation No 781/2004 of 26.4.2004
(Amending the fees)
- Commission Regulation No 782/2004 of 26.4.2004
(Amending the Implementing Rules)
- Council Regulation No 1992/2003 of 27.10.2003
(Amendment CTMR)
- Council Decision No 793/2003 of 27.10.2003
(Approving the Accession)
- Commission Regulation No 781/2004 of 26.4.2004
(Amending the fees)
- Commission Regulation No 782/2004 of 26.4.2004
(Amending the Implementing Rules)
Talking about perspectives
• Advantages vs. Risks
• For OHIM and for Industry
Advantages for the OHIM
(Madrid route, compared to direct route)
Madrid route compared to direct route
1. Data capture
Data capture:
Physical receipt of application documents
- Entry of data in our database (key-in)
- Mail dispatch
Replaced by:
• Receipt of electronic data by WIPO
Advantage for OHIM:
Less cost
Less time
Less error (key-in errors)
Advantages for the OHIM
2. Formalities
Formalities
- filing date check
- filing fee check
- Names, addresses, signature
- Proper representation of mark
- Priority documents
Replaced by
• Receipt of electronic data
• Automatic parsing of second language
Still required:
seniority examination
intervention if second language is missing
check Regulations of use for collective marks
Advantages for the OHIM:
3. Classification
Classification:
- Done by WIPO
- Accepted by OHIM
- Uniform approach to class headings, retail services, “vagueness”
Replaced by
• Internal quality checks to secure harmony between OHIM
practice and WIPO practice
4. Publication, translation
Publication and translation
- Full publication of mark incl. list of goods and services
- Full translation of list of goods and services into 18/19 other languages
Replaced by
• Republication of bibliographic data + class numbers
• without actual goods + services, so no translation
• Integration into CTM-Online with link to WIPO publication
Advantages for OHIM
Translation costs
5. Renewal,
changes of name of owner
Renewal, Changes of name
- Renewal procedure: request+fee
- Name changes: requests, correction of data
Replaced by
• Centralized renewal by WIPO
• Centralized keeping of register by WIPO
Still required
Record of OHIM representatives and changes
Certain acts concerning transfers and licensing
(Albeit limited)
Summary of savings for OHIM
1. Data capture
2. Formalities
3. Classification
4. Publication, translation
5. Renewal, changes
Advantages for industry:
1. Data capture:
- Avoid multiple data entry+reentry
- One single data set across countries
- Fewer data capture mistakes
Advantages for Industry
2. Formalities
- One single set of formality requirements
around the world
- Less objections … less cost
Advantages for industry:
3. Classification
- One single examination
- Forces designated Offices towards
harmonised practice
- Less objections… less cost
Advantages for industry
4. Publication, translation:
- Publication advantages less apparent
(mix between WIPO Gazette and OHIM
Bulletin)
- Makes Madrid route cheaper
(200 € discount)
- Reduces languages
(3 at WIPO)
Advantages for industry
5. Renewal, changes
- Allows centralized TM portfolio strategy
- Less risk for loss of rights
(inadvertent non-renewal, lack of registration
of transfers)
- 200 € discount for renewal at OHIM
Advantages for industry:
6. Summary of cost advantages
- Discount for individual fee
- 200 € for filing
- 200 € for renewal
- Representative at OHIM only in case of
incidence
(refusal, opposition)
- No OHIM representative for renewals and
changes
Comparison CTM Direct vs.
via Madrid Protocol Risks for industry:
- Basic mark still required
(in “country of origin”)
- Central attack
- In particular, regarding US
- US classification practice
- Advantages may vanish if designated offices
keep their own approach
- (OHIM does not want to do that)
Conference on the Accession of the
European Community to the
Madrid Protocol
THANK YOU!!!