OHIM's president, António Campinos, talks to WIPR about modernising the European trademark system and his office's 2011-2015 plan of action.
The financial difficulties of the last few years are not going away. The US has raised its debt ceiling, and in Europe, Greece has received two financial bailouts, while Ireland and Portugal have each had one. European powerhouses Italy and Spain are mooted as being next.
But António Campinos, president of the Office of Harmonization for the Internal Market (OHIM) since October 1, 2010, says:“While Community trademark and design applications are rising, that background of economic problems has helped focus our minds on what we need to put in our strategic plan for 2011-2015.”
While OHIM puts the finishing touches to its strategic plan, it has announced changes to its organisational structure that it says will help to deliver operational excellence and foster international co-operation when it executes its plan. OHIM has created five departments and five horizontal services.
"WHILE OHIM CAN IMPLEMENT ITS OWN PLANS FOR IMPROVING ITS OPERATIONS FOR THE BENEFIT OF TRADEMARK OWNERS, IT IS UP TO EUROPE'S HIGHEST POWERS TO MAKE NECESSARY BUT FUNDAMENTAL CHANGES TO THE CONTINENT'S TRADEMARK LAWS."
These departments will handle examinations, logistics and fees, co-operation programmes and institutional relations, information technology, and OHIM finances and human resources. The five horizontal services report to Campinos and are responsible for the IP academy, which will handle all OHIM staff training. They will also be responsible for communication, economics and statistics, internal auditing, and portfolio and quality management.
While OHIM can implement its own plans for improving its operations for the benefit of trademark owners, it is up to Europe’s highest powers to make necessary but fundamental changes to the continent’s trademark laws.
Campinos says: “[Europe’s trademark system] needs to be simplified and made more coherent. There are a number of areas, some minor and some major, where small and medium-sized enterprises (SMEs) and larger companies would be able to make substantial cost savings if the various IP registration systems converged.
"I’m [talking] about things such as different approaches to class headings or relative grounds examinations and completely different opposition and cancellation procedures—some of which are dealt with by the offices and some by courts.”
The European Commission launched a review of the European trademark system in 2009 and will present proposals to revise both the Community Trade Mark Regulation and the Trade Mark Directive at the end of 2011. It aims to “modernise the system both at EU and national levels by making it more effective, efficient and consistent as a whole”.
Campinos says that as the trademark and design systems are implemented by 24 national offices, a regional office (Benelux) and an EU office, each office has had to come up with different solutions to common trademark and design problems, although “there was a harmonising directive that was intended to bring about an initial convergence”.
He adds: “That push towards convergence may have been adequate for the needs of 1989, but it is clearly no longer adequate for 2011 and beyond.
The system remains fragmented in terms of tools, practices and laws. The process of legislative change led by the European Commission is one of the things that could help reignite the push towards further convergence. We welcome the fact that the European Commission has decided to address the revision of both the CTM Regulation and the Trade Mark Directive at the same time.”
Putting its house in order
OHIM received more than 98,000 CTM applications in 2010, and it expects to receive its millionth application this year. This shows that its customers are keen to invest in intellectual property despite the financial climate. It is up to OHIM to ensure that its customers receive the best value for money from the services that it provides.
“[When] compared with other offices, [OHIM is] rated as one of the best,” Campinos says. “That doesn’t mean that we are above criticism and that we don’t need to improve. The problem is, when an organisation starts to achieve close to 100 percent on certain quality standards, [it] stops being a very reliable guide to further improvement.”
OHIM will not be such an office, according to Campinos. It is taking a “holistic look at quality in all its dimensions”—including consistency and predictability—revisiting the Manual of Trade Mark practice and revising the ex-post quality checks. “[OHIM is] also involving users, where possible, in this process, and I think this approach will pay dividends,” he adds.
"THAT PUSH TOWARDS CONVERGENCE MAY HAVE BEEN ADEQUATE FOR THE NEEDS OF 1989, BUT IT iS CLEARLY NO LONGER ADEQUATE FOR 2011 AND BEYOND."
In light of cases such as Edwin v OHIM, Elio Fiorucci—which highlighted the difficulties OHIM faces when balancing the requirements of European law with national laws—and ONEL v OMEL—a case in which the Court of Justice of the EU clarified the territorial extent of genuine use within the EU—OHIM continues to be impeded by unresolved European case law, some 15 years after it was established.
“I don’t think it is useful to talk about specific cases,” Campinos says. “[B]ut if there are areas in which our practices are consistently at odds with decisions in the appeals instances then we have a process of reviewing our manual. Let’s be clear, there is no need for CTM owners to make any presumption about changes at this stage.”
Count us in
As a European office, OHIM has a bird’s eye view of the continent’s complicated IP framework, enabling it to learn and implement for the benefit of its European customers, without detriment to national ones.
Campinos wants OHIM and national trademark offices to co-operate better as a means of harmonising and creating commonality in European trademark practice.
He says: “We see the need for a three-pronged approach. First, we are working with national offices and user organisations to build a common set of IT tools via the Cooperation Fund. However, we know that having the same tools is not enough, so this has led to a second initiative, the Convergence Programme, under which offices can voluntarily come together on practice where no legal changes are required.”
“This work on tools, voluntary convergence of practice and the European Commission-led legislative process will together pave the way for the creation of the collaborative EU Trade Mark and Design Network envisaged in our strategic plan. This network will be the framework within which OHIM and national offices will work together to harmonise practices: providing added-value to users and reinforcing the co-existence of IP systems within the EU.”
The European Commission wants to include OHIM in European anti-counterfeiting efforts, expanding on the office’s traditional remit, by making OHIM responsible for the EU Observatory on Piracy and Counterfeiting.
The observatory acts as a central resource for gathering, monitoring and reporting infringement information and data, and as a platform for co-operation. A recent EU parliament resolution and a study have called for the observatory’s capacity for IP research to increase, prompting the European Commission’s calls for it to be handed over to an office that is experienced in IP and capable of shouldering added costs.
“Traditionally, OHIM’s involvement in anticounterfeiting has been limited to some training and communication activities, and the database tools that we have been building with national offices, such as TMview, are also a useful source of information for enforcement colleagues,” Campinos explains.
“We are already working closely with the observatory and the European Commission has proposed a wider involvement in the future. Let’s be clear, it is up to the European Commission to propose and the European Council and the Parliament to decide what our role should be. When they decide, we are ready to play our part.”
Europe’s trademark and designs office is a good example of what Europeans wish to achieve with harmonisation, as long as the opinions of the system’s users are taken on board and those in charge can be given a fair crack of the whip. Campinos is being given the time and the backing to make a contribution to a system that he seems to understand.
This article was first published on 01 October 2011 in World IP Review
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