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Annual Technical Report 2008 on Trademark Information Activities submitted by OHIM (SCIT/ATR/TM/2008/EM)

Where URLs are requested below, it is preferred that either URLs which are likely to remain stable over time (three years or more) are provided, or home (main) page URLs are provided with a short explanation of how to access the corresponding information.

I. Evolution of registration activities

Changes experienced in terms of application filings and registrations with respect to the previous year

In spite of the global financial crisis, during 2008 OHIM made progress on a number of fronts. The drive to do things better, quicker and more efficiently, while improving quality, did not falter and we registered record numbers of Community trade marks, and designs, even though trade mark applications were a little lower. In consequence productivity continued to grow and our income and surplus were higher.
We have already had a fee reduction in 2005 and the European Commission has proposed that in mid-2009 the cost of having a Community trade mark, currently €1 600-€1 700 will be brought down by a further 40%. This will mean that in less than fi ve years the cost of Community trade mark protection will have halved from just over €2 000 to less than €1 000. While we can always do more, that is a statistic to be proud of.

Trends or areas experiencing rapid changes with respect to the previous year

The turmoil in global markets resulted in reduced demand for the Community trade mark (CTM) in the second half of the year. However, a strong start to 2008 meant that the annual total only fell slightly. At the year end OHIM had received 87 000 CTM applications, down about a thousand (1%), compared with 2007. Of this total, around 16% came via the World Intellectual Property Organization. However, there was also cause to celebrate with the registration in December of the 500 000th CTM, which went to a small Italian company, Handy Dandy Design. The company, an SME, used e-filing and had the trade mark registered within 25 weeks of the initial application, more than meeting the OHIM Service Standard commitment.
By the end of the year the cumulated total number of CTMs registered for hundreds of thousands of undertakings from all over the world had passed 507 000. While the previous steady annual growth in demand paused in 2008 for the first time since the CTM was introduced in 1996, it is worth noting that OHIM still received 46% more applications than in 2004.
In spite of this increased volume, processing times have fallen steadily, with the average time to registration for straightforward applications falling by 50% from 16 months to eight months between 2004 and 2008.
During 2008, the CTM continued to be a popular international choice for IP protection in the EU. German companies were once again the most active with 15 500 CTM applications. While applications from the United States and the United Kingdom both fell, these countries continued to be the second and third most prolific applicants respectively. There was a total of 12 900 US applications and 8 500 UK applications.
Though timescales in most areas continued to improve during 2008, the problem with the CTM opposition backlog was not solved despite initiatives taken to simplify and speed up the process. The number of oppositions resolved was up by around 1 300 to 13 600 compared with 2007 but the number of oppositions received rose by even more (up 2 000 to 18 500). A special "Oppositions Taskforce" has been set up to tackle the backlog and it is hoped that this will improve timescales in this area. The first wave of four recruits in the taskforce started work in January 2009 and it is planned to progressively build a taskforce team of around 12 examiners to both take opposition decisions and assist in testing new working methods. At the end of 2008, the average time from reception to decision of oppositions was 11 months for files that had not undergone a suspension period.
During the year, around 700 applications were received to cancel Community trade marks. In total 600 cases were dealt with and a result around 240 CTMs were partially or totally cancelled. Maintaining quality in CTM and opposition decisions continued to be a major Office priority. In recent years increased efforts have been made to ensure that the measurement and improvement of the quality of decisions is more systematic and transparent both within the Office and to the outside world.
Since 2007 the Office has had a system to review decisions taken based on statistically significant random samples. The scope of the check covers not only opposition decisions but also the classification of lists of goods and services and decisions on absolute grounds for refusal (acceptances and refusals). The check is carried out weekly by a group consisting principally of legal advisors. OHIM publishes the target rate of error-free decisions and the standards to be applied under each heading, and posts the results on the website on a quarterly basis. Further information on our targets for accessibility, timeliness and quality (including the figures for correctness and consistency) is available in the OHIM Service Charter.

URLs of web pages of the Office’s website that provide statistics related to trademarks

http://oami.europa.eu/ows/rw/pages/OHIM/statistics.en.do

II. Matters concerning the generation, reproduction, and distribution of secondary sources of trademark information, i.e., trademark gazettes

Publishing, printing, copying techniques

Bulletin
http://oami.europa.eu/ows/rw/pages/CTM/CTMBulletin.en.do
Generate Certificates
Once the Bulletin has been disseminated, the examiner generates the certificates which are stored on the Internet server.

The user in PUB selects to generate the registration certificates for the items included in an already published bulletin B. The PUB module extracts all the data to be included in the Certificate from the first entry in the Registry (the registration of the application).

The data to be included in the Certificate are:

• All the data recorded in the first entry in the Registry. If Publication in part B of the Bulletin has not been done yet, the respective field (i.e. the date of the Publication in part B of the Bulletin) shall not be shown in the Certificate.
• The Registration Date
• The PUB module generates an XML file containing all the information for the Certificate.
The PUB module converts the XML format Certificate to PDF format. Once the Certificate is in PDF format, the PUB module stores a copy of it at M:\ shared folder, keeping the structure of one folder per week.

The PUB module also generates the letter L-304 to accompany the Certificate and store it in the same folder.

The issuance of the Certificate and L-304 shall be done by an external company, the external company shall gather the Certificates and standard letters from the shared folder, print them and send them to the corresponding person.

ActivitiesdescriptionCTMBulletin - Activities description

Main types of announcements of the Office in the field of trademark information

VADEMECUM
http://oami.europa.eu/bulletin/ctm/ctm_bulletin_en.htm

URLs of web pages of the Office’s website that provide access to online trademark gazettes and to other sources of trademark information, including download of bulk trademark data

CTM Bulletin
http://oami.europa.eu/ows/rw/pages/CTM/CTMBulletin.en.do

CTM-ONLINE
http://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic?

TMview (still on construction)
TMview is an online consultation tool allowing any Internet user to search, free of charge, the trade marks of all participating official trade mark Offices. It is multilingual and easy-to-use, and gives access to trade mark applications and registrations of the participating official trade mark offices in a single place.
http://www.tmview.europa.eu/tmview/welcome.html

III. Matters concerning classifying, reclassifying and indexing of trademark information

Classification and reclassification activities; Classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification (please indicate whether goods and services for the registration of marks and whether the figurative elements of marks are classified by your Office and, if so, which classification(s) is (are) used)

Classification systems: Nice Classification and Vienna Classification

Use of electronic classification systems to check the classification symbols furnished by an applicant and which are contained in the lists of goods and/or services

EUROACE is a database with descriptions of goods and services which will be immediately accepted by OHIM if used in a CTM application. In this way applicants can be sure that the Office will raise no objections.
EuroClass is a classification tool that helps you with the classification of goods and services.
http://oami.europa.eu/euroace/euroaceservlet?action=search&langid=en

EURONICE is a translation database for the description of goods and services. The EURONICE online search tool contains translations of the most frequently used expressions by Community trade mark applicants to describe the goods and services covered by their marks. This database currently contains about 17,000 expressions represented in the 22 official languages of the EU.
http://oami.europa.eu/search/euronice/la/en_en_expressionscreen.cfm


Obligation for applicants to use pre-defined terms of the classification applied

Goods & Services
It is mandatory to indicate for which goods and/or services the applicant wishes to register the trade mark. Goods and services are divided into different classes according to the International Classification of Goods and Services under the Nice Agreement (the "Nice Classification"). There are presently 34 classes of goods and 11 classes of services, at least one of which must be selected.

The applicant can select Goods & Services by the following means:

Import the Goods & Services of an existing CTM application
Import the Goods & Services from our databases (EuroAce or EuroClass)
Insert the Goods & Services manually

The applicant can insert the classes manually in the Goods & Services list of his new CTM. The applicant selects the number of the class he wants to add and fill manually the terms in the class. Please note that when the applicant selects a class to add in the list of Goods & Services, the standard Nice Classification header is displayed by default.

Import the Goods & Services of an existing CTM application

The applicant may use the Goods & Services of a previous CTM application as a template to indicate the Goods & Services claimed by his new CTM application. The applicant can adapt the previous classes, modifying only the necessary terms, without having to fill in the entire class wordings.

Import Application

The applicant can obtain the Goods & Services from a previous CTM application if he already know the CTM ID of the application. The applicant enters the CTM ID in the text box and select "Import".

Search CTM

The applicant may obtain a previous CTM application by searching in our database.

Import the Goods & Services from our databases (Euroace or Euroclass)

The applicant may import terms that are already approved by the OHIM into the Goods & Services list of his CTM Application. Click on the respective "EuroClass" or "EuroAce" buttons in order to search and import existing class terms.

The applicant must complete the list of goods and services in the first application language, as selected in the Languages section. If he has selected the option "I will provide translation of Disclaimer, Description and List of Goods & Services in the 2nd language", the applicant must also complete the list of goods and services in the second application language, providing his own translation.

IV. Trademark manual search file establishment and upkeep

The Ohim does not maintain a manual search file.

V. Activities in the field of computerized trademark search systems

In-house systems (online/offline)

The OHIM uses for internal searches two systems not available to the public: EUROMARC and QFMAN.

External databases

Searching the Community trade mark database: CTM-ONLINE
http://oami.europa.eu/ows/rw/pages/QPLUS/databases/searchCTM.en.do
Goods and Services: Nice Classification - EUROACE - EURONICE
http://oami.europa.eu/ows/rw/pages/QPLUS/databases/euroace.en.do
Representative consultation service
http://oami.europa.eu/FRP/RequestManager?transition=start&source=Log-in.html&language=en&application=FRP

VI. Administration of trademark information products and services available to the public (relating to facilities, e.g., for lodging applications, registering trademarks, assisting clients with search procedures, obtaining official publications and registry extracts)

Information services available to the public (including computerized services and search files contained in libraries remote from your Office and trademark information posted by your Office on the World Wide Web)

E-filing is a service provided by OHIM, which enables users to apply for a Community trade mark online.
OHIM provides a business-to-business solution for its larger clients where, based on an agreed transfer mechanism across the Internet, our clients can send their CTM applications directly from their own back-office systems directly to OHIM.
http://oami.europa.eu/ows/rw/pages/QPLUS/forms/electronic/fileApplicationCTM.en.do

E-renewal is a service provided by OHIM in order to enable users to renew a CTM online.
http://oami.europa.eu/ows/rw/pages/QPLUS/forms/electronic/fileRenewalCTM.en.do

E-opposition is a service provided by OHIM in order to allow users to file an opposition online.
http://oami.europa.eu/ows/rw/pages/QPLUS/forms/electronic/fileOpposition.en.do

URLs of web pages of the Office's website for electronic filing of trademark applications

http://oami.europa.eu/ows/rw/pages/QPLUS/forms/electronic/fileApplicationCTM.en.do

URLs of web pages of the Office’s website that provide information on business procedures such as: filing, publication, examination and registration procedures related to trademarks; opposition and appeal procedures related to trademarks; etc.

http://oami.europa.eu/ows/rw/pages/CTM/regProcess/regProcess.en.do

URLs of web pages of the Office’s website that provide a description of information products and services offered by the Office (e.g., trademark search service(s) and trademark databases), as well as information on how to access and utilize them

E-filing continues to grow in popularity and is now the preferred route for many users. At present, around 83% of CTM applications, excluding those that come via the World Intellectual Property Organization, use the online route.
The move towards e-filing is strongly supported by OHIM through continued investment in our electronic services. All the OHIM databases, such as CTM Online, RCD Online, and Online Access to CTM Files, can be accessed free of charge by anyone with an Internet connection.
http://oami.europa.eu/ows/rw/pages/index.en.do

VII. Matters concerning mutual exchange of trademark documentation and information

OHIM continued to take part in a wide range of cooperation activities with the national trade marks and designs offices of EU member states during 2008. These activities included technical cooperation, training, the organisation of seminars, and work on common databases designed to make searching for trade marks and classifications easier. An important underlying thread for many of these activities was the desire to harmonize practice in order to make things easier for users.

The meeting of the Administrative Board and Budget Committee held in Brussels in September, which laid the foundations for a 40% cut in Community trade mark fees in 2009, also agreed the establishment of a Cooperation Fund aimed at the national IP offices of the EU Member States. A budget of €50m and a share of future trade mark renewal fees was allocated, which will provide substantially increased funding for cooperation activities in future years. The purpose of the Cooperation Fund is to enable the national offices to modernise and carry out projects benefiting users. Activities will be related to harmonization and protection, promotion and/or enforcement of trade marks and designs both at the national and Community level. The Cooperation Fund will, once in place, supersede the Cooperation Agreements between OHIM and the National Offices on Promotion and Information Services on the CTM and RCD systems.

The Office received technical cooperation proposals from 19 national offices in 2008 - two more than the previous year. This was the third year of the current cooperation agreement framework. Activities ranged from promotion and information services, cooperative databases, seconded staff, training, seminars for judges, liaison meetings and visits from national offices and represented a total investment by the Office of more than €5m.

VIII. Matters concerning education and training, including technical assistance to developing countries (please indicate URLs of web pages of the Office’s website wherever appropriate)

Relations with IP users.
Listening to users and taking action on their feedback is one of the most important priorities for OHIM.
The process of “listening” takes a variety of forms ranging from working with user groups, carrying out surveys, visiting key users, and carefully analysing both complaints and information requests.
OHIM staff participated in a variety of conferences, seminars and exhibitions which allowed informal exchanges with users and colleagues from other IP offices in an effort to improve standards. We also welcomed a wide range of visitors during 2008 including groups of users from different countries.

Promotional activities (seminars, exhibitions, visits, advertising, etc.)

OHIM was present at the following events 2008:
http://oami.europa.eu/ows/rw/pages/OHIM/news/eventsArchive2008.en.do

Training courses for national and foreign participants

The Office for Harmonization in the Internal Market (OHIM) maintains close links with all interested parties in order to ensure cooperation and harmonization across Europe as well as to ensure the best possible delivery of its services.

http://oami.europa.eu/ows/rw/pages/QPLUS/networks/networks.en.do

Assistance to developing countries (sending consultants and experts, receiving trainees from developing countries, etc.)

Cooperation with China.
In 2008, China unveiled a new National IP Strategy, the key reference document for understanding where the Chinese intend to go and their priority areas for cooperation. One of the priorities is to enhance the administration of trademarks by improving the efficiency of trademark examination, reducing the time for examination and improving the quality of examination. During 2008, OHIM focused on:
- Promoting the Community trade mark and design among the Chinese user community, with a view to bring them into the “mainstream” of users.
- Analysing procedures in order to learn more about each other and putting OHIM’s experience in developing electronic business services at their disposal in an effort to help deal with high volumes of applications.
The Office is the primary provider of trade mark and design expertise in the framework of the EU- China project on the protection of IPR (IPR2). The aim of this project is to assist the Chinese authorities in the strengthening of their IP systems, notably their enforcement. The project is a multi- annual one and is funded by the European Commission and the Chinese authorities. OHIM has the leading role as provider of expertise in trade marks and designs, and a total of 20 activities were implemented in 2008 under IPR2. As part of OHIM’s commitment to cooperation with China, a trade mark expert from the Office was seconded to the EU Delegation in Beijing during the latter part of the year. Activities included providing advice on IP matters to European businesses based in China, and to visiting senior officials from the EU. The Office also maintained bilateral contacts with the responsible trade mark and design agencies (CTMO and SIPO), hosted a Chinese trainee, and welcomed a visiting Chinese delegation to Alicante.

IX. Other general information related to the Office that is available on the Internet -- URLs of web pages of the Office’s website that:

provide information on legislation related to trademarks

http://oami.europa.eu/ows/rw/pages/CTM/legalReferences/legalReferences.en.do

contain the Annual Report of the Office

http://oami.europa.eu/ows/rw/pages/OHIM/OHIMPublications.en.do

2008_OAMIannual_report_en - PDF format

if necessary, provide further information related to the topics referred to in the current ATR

OHIM User Satisfaction Survey
The objective of the User Satisfaction Survey is to identify areas of improvement and to enable the Office to set appropriate priorities to enhance its services and to measure overall satisfaction.

http://oami.europa.eu/ows/rw/pages/QPLUS/USS.en.do

OHIM Service Charter
In order to fulfil its role of managing the Community trade mark and design systems, OHIM needs to be a quality-focused, highly productive, user-friendly, and cost-effective organisation.
The OHIM Service Charter defines these objectives in terms of what users can expect, by setting out concrete and measurable standards in three key areas – accessibility, timeliness and quality of decisions - which guide the service policy of the Office:


http://oami.europa.eu/ows/rw/pages/QPLUS/serviceCharter/serviceCharter.en.do

provide open source codes related to trademark information systems

A Trade Mark XML Open Standard Initiative
http://www.tm-xml.org/

TMview is an online consultation tool allowing any Internet user to search, free of charge, the trade marks of all participating official trade mark Offices. It is multilingual and easy-to-use, and gives access to trade mark applications and registrations of the participating official trade mark offices in a single place.
http://www.tmview.europa.eu/tmview/about.html

EuroClass is a classification tool that will help you in the classification of Goods and Services, and allow you to compare the classification databases of each participating office.
http://oami.europa.eu/euroclass/actions/main.do

contain trademark-related news regarding the Office

ALICANTE NEWS is a newsletter, edited by the Office for Harmonization in the Internal Market and published on the second last Wednesday of every month.

http://oami.europa.eu/ows/rw/pages/OHIM/OHIMPublications/newsletter.en.do

X. Other relevant matters