TRADE MARKS AND DESIGNS: THE INTERNATIONAL DIMENSION
This article originally appeared in the Alicante News, a newsletter edited by the Office for Harmonization in the Internal Market (OHIM) and is reprinted with permission. The aim of Alicante News is to provide up-to-date information on OHIM-related matters, as well as on other general IP issues, to the users of the Community trade mark and design registration systems. The newsletter is available free of charge, to anyone who wishes to subscribe at .
Above: Wubbo de Boer, President of OHIM
Globalisation means that companies are increasingly interested in obtaining international protection for their intellectual property rights. This month's Alicante News looks at how OHIM is forging closer links with the main trade mark and design offices in the US, Japan, and China.
International businesses naturally seek to safeguard their trade marks and designs in the most comprehensive manner possible. This can mean dealing with a number of different registration bodies, all of them with potentially different approaches to this important issue.
For a number of years OHIM has been exchanging information with the US Patent and Trademark Office and the Japan Patent Office in order to try and minimise these differences. Last month, the Chinese Trade Mark Office took part as observers in the sixth annual trilateral meeting, held in Tokyo, and an agreement was made to hold annual workshops in China, and share information on IT and business practices.
So what is the motivation for this type of international contact, and can it really lead to tangible benefits for the business community? OHIM President Wubbo de Boer believes that the major trade mark and design offices have a duty to try to make their approaches as consistent as possible.
"The users who come to OHIM for trade mark and design protection in the 27 countries in the EU are people who deal with offices all over the world. They have a right to expect that we do not confront them with unnecessary differences in practice," says de Boer.
In fact, many of the problems faced by the international trade mark and design offices are similar, as are the solutions being implemented. Processes are being simplified, bureaucracy reduced, and there is a move towards more electronic filing and better online information.
These similarities have led to an agreement to draw up a list of common benchmarks so that the performance on issues such as timescales for registration or the introduction of teleworking, for example, can be compared.
The harmonisation of trade mark classifications is also moving forward. There is currently a common classification database with 7 000 terms in it. This is only a fraction of the number needed if businesses are to have confidence that a classification agreed with the US or Japanese offices will be accepted by OHIM, and vice versa. Work is continuing to expand the database by adding new terms on a monthly basis.
"We are making progress, perhaps not as fast as some would like, but here at OHIM we are trying to focus on the most frequently-used terms, and also on seeing if we can expand the international acceptance of the common list. For the moment we are three, but Australia and Canada are also showing a lot of interest," says de Boer.
The OHIM is the official authority carrying out the intellectual property rights procedures for the Community trade marks since 1996 and for the Community registered design since 2003. These intellectual property rights are valid in all the countries of the EU. A uniform law applies to trade marks and designs, thereby providing strong and unique protection throughout the European Union. The uniformity means that formalities and management can be simplified and carried out in a single administrative centre - the OHIM. The simplification results in considerably reduced costs as compared with the overall costs of national registration in all countries of the European Union. OHIM has been an Affiliate Member of Icograda since 2003.
For any questions or remarks relating to Community trade marks and designs, the activities of the Office, or the contents of this article, e-mail