‘Understand and explain': OHIM's new world view

OHIM is taking on more and more responsibility and developing its core practice. WIPR talks to office president António Campinos about how he's managing these challenges.

In October 2009, the UK Chartered Institute of Patent Attorneys (CIPA) applied for a UK trademark for its IP Translator program, referring to the headline terms in Class 41 of the Nice Classification system.

Those specify “Education; providing of training; entertainment; sporting and cultural activities”. The application was rejected by the UK Intellectual Property Office, which ruled that the class covered “translation services”, which rendered the mark descriptive and therefore unallowable.

CIPA appealed, and the case found its way to the Court Of Justice for The European Union (CJEU), after a referral from appointed person Geoffrey Hobbs QC. He referred three questions, aiming to clarify the question of what a trademark in a given class can be assumed to cover.

In the past, the Office for Harmonization in the Internal Market (OHIM) had effectively construed class headings as a catch-all for everything in the relevant class when dealing with Community Trademark (CTM) applications.

The CJEU’s ruling on June 19 on IP Translator seems to have brought some clarity to the issue, but while the court did say that trademark applications should be specific about what they cover with “sufficient clarity”, it stopped short of a hard and fast rule for understanding how class headings can be used.

Indeed, in requiring applicants to specify whether their applications are for trademarks covered by the alphabetical list of headings in the class or for a specified part of those goods, it muddied the waters somewhat.

In any event, it was clear that OHIM’s previous approach would have to change. The day after the CJEU’s judgment, OHIM released Communication 2/12, in which it said:

“An applicant for a trademark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trademark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.”

António Campinos, president of OHIM, says that while the communication was issued after the judgment in order to implement the court’s decision immediately, it has long been acknowledged that work needs to be done on class headings.

"We must recognise that there is still a divergence in practice on class headings between offices in the EU and what we need is a common approach."

“We must recognise that there is still a divergence in practice on class headings between offices in the EU and what we need is a common approach that everyone can accept,” he says, and while this situation hasn’t changed as a result of IP Translator, “it has certainly given some added urgency to the efforts already being made to create a new common practice”.

OHIM, national offices and user organisations have been working for more than a year under the Convergence Programme to find a more permanent solution, he says, and quite recently the working group reached agreement in principle on a new approach to be presented and endorsed by all national offices.

“This approach, using a new set of agreed general indications called ‘Class Scopes’ will be based on the taxonomy system created in the context of the Harmonisation of Classification project, which arises directly out of the work on EuroClass,” Campinos explains.

EuroClass helps with the classification of goods and services, allowing comparison of the classification databases of the participating offices. It provides a list of descriptions of goods and services that have been accepted by each office and, where no entry is found, it provides a list of similar terms in the classes searched.

EuroClass has 90,000 terms translated into 22 languages. It already comprises data from 25 offices including Switzerland and the US, with the Japan Patent Office about to follow.

Campinos explains that the taxonomy is a new hierarchical structure of goods and services under the Nice Classification, with broader terms on top and more specific terms below, which has been drawn up in order to facilitate data maintenance and improve users’ experience in finding the appropriate goods and services.

A Class Scope is a group of terms which, collectively, designate all known goods and services within a class at a specific point in time, and consists of the highest level of group titles that are acceptable for classification of the taxonomy structure, for a particular class.

It is broad enough to cover all classifiable terms in a class, while being specific enough for classification. There is agreement among national offices to use Class Scopes, but Campinos cautions that it may be some time before all offices have put it into practice.

A wider view

As demonstrated by the work on Class Scopes, OHIM under Campinos is an organisation with a clear idea of what it wants to achieve.

Several major projects are underway, aimed at creating what he calls “a true European trademark network” in which national offices and OHIM work together “to create, by agreement, a situation in which we all work together in an atmosphere of transparency and mutual respect, dealing with the issues facing IP at both the national and EU levels so that we have a fully joined up system”.

“Under the Convergence Programme we have five projects including the harmonisation of goods and services project and the class headings project which are currently making great progress in an area where some people thought that agreement was impossible. Agreement is possible. It is happening right now,” he says.

There is also OHIM’s Cooperation Fund, set up in 2010 to promote harmonisation through specific one-off projects to deliver concrete benefits. Campinos explains that there are currently 18 projects active under the fund “related to building common tools ranging from e-filing to quality, e-learning, seniority and common databases such as EuroClass and TMview”. Both the latter two are “really taking off”, as Campinos puts it.

TMview allows users to search, free of charge, the trademarks of all official trademark offices which are participating at national, international and EU level. It is available in 22 languages, and currently has 20 participating trademark offices, with nearly 7 million trademarks in total.

Campinos says: “Our goal is to have all the EU offices integrated by the end of this year. The priority is to finalise the participation of all EU offices in both EuroClass and TMview. We are confident that this will be attained in the coming months. Of course, we would be delighted if the US Patent and Trademark Office (USPTO) were to take part in TMview, as it has already joined EuroClass.

"We would also like the other major world IP offices to participate. In fact, we have Memorandums of Understanding with a number of other offices outside the EU under which integration into TMview is one of the common objectives.”

Tackling the fakers

These days, OHIM is more than just a trademark office. It has also taken on responsibility for the European Observatory on Infringements of Intellectual Property Rights, which provides a platform to share best practice dealing with infringement. It has been responsible since June 5, 2012, and Campinos reports that progress has been good.

“We have been working with the European Commission to ensure a smooth handover of responsibility for a number of the Observatory’s ongoing projects related to public awareness, tools for supporting enforcement activities, developing IP competencies for enforcement authorities, and the sharing of best practices in IP enforcement strategies.”

"OHIM is more than just a trademark office. It has also taken on responsibility for the European Observatory on infringement of IP rights."

But it is not just a question of continuing what the Observatory is already doing. “The first thing we did after being formally entrusted with the Observatory was launch a consultation on what the future tasks and priorities for the Observatory should be,” Campinos says. “This was in order to make sure that everyone—with no exceptions—who has a view on these issues has a chance to be heard.”

That consultation resulted in more than 80 contributions from different organisations, some represented on the Observatory and some not. “

We are still analysing the results of this exercise, but from member state representatives there was an emphasis on the need to raise public awareness and enhance enforcement capability,” Campinos says, “while the private sector responses stressed the need to understand the dynamics in society in response to technology, and to provide policy recommendations based on tangible facts, while at the same time evaluating the effectiveness of existing legislation.”

He adds that one of the reasons such an approach is necessary is to tackle the “information gap” about the role of IP in the EU economy compared with, for example, the situation in the US. A study from the US Department of Commerce and USPTO showed IP-intensive industries support, directly or indirectly, more than 40 million jobs—almost 28 percent of the total.

These same IP-intensive industries accounted for $5 trillion in value added in 2010. That’s more than one-third of US gross domestic product. “Contrast that with the EU—we don’t have any credible, independent or complete picture,” he says.

In general, the consultation has confirmed that a similar project-based methodology as that used for the Cooperation Fund and Convergence Programme should be applied to the Observatory’s activities. It has also backed the approach of understanding the issues before moving to action, and indicated the priority areas for the Observatory’s work.

Campinos says: “In line with Commissioner Barnier’s comments when he visited the Office in February, the priorities with regards to dealing with IP infringements must be to ‘understand and explain’ and only then to ‘act’. We think our focus, in the first instance at least, should be the ‘understand and explain’ part. If EU policy in this area is to be coherent we believe there is a need for a true think-tank on IP dealing with research, communication and certain enforcement-related tasks.”

That said, Campinos is conscious that the responsibilities of the Observatory do not end with research and communication. Counterfeiting and piracy are important as well, because “IP value and infringement are the two sides of the coin”.

The time frame for all this is pretty tight. The first Observatory plenary meeting in scheduled at the Office for September; a full draft work programme will be presented to the administrative board and budget committee in November, and formally adopted in December. If everything goes as planned, the first projects in the EU Observatory’s work programme will kick off in March 2013.

By any measure, it’s on the road to becoming one of the most influential IP institutions in the world.