2012 05 22 Circular updatepractice rules .pdf
À propos / Télécharger Aperçu
Ce document au format PDF 1.4 a été généré par Acrobat PDFMaker 8.1 for Word / Acrobat Distiller 8.3.1 (Windows), et a été envoyé sur fichier-pdf.fr le 08/06/2012 à 15:37, depuis l'adresse IP 193.251.x.x.
La présente page de téléchargement du fichier a été vue 802 fois.
Taille du document: 294 Ko (9 pages).
Confidentialité: fichier public
Aperçu du document
OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Alicante, 18 May 2012
008‐2012‐03‐10‐N‐ICLAD‐LP‐Consultation Users Manual‐JL.doc
Note for the attention of the EU National IP Offices and the users’ associations
Subject: The process for updating the OHIM’s trade marks and designs practice
1. VISION
Currently, the practice of the Office is reflected in the Manual on Trade Mark Practice and
the Manual on Registered Designs practice. These manuals are working documents, two
dynamically changing practical guides which are revised on a regular basis.
The Office also has its Guidelines. However these texts have not been revised on a regular
basis. They were last updated in 2007 (trade marks) and 2008 (designs). This was due to a
fairly cumbersome process for adopting them.
The Office wants to merge these two documents and provide them in all the official
languages of the European Union while implementing a cyclical and agile process which
takes into consideration the feedback of our internal and external stakeholders, particularly,
the users and the EU national offices.
The goal, as spelled out in the Office’s strategic plan, is to improve the consistency of OHIM’s
decisions, in particular, between the first instance and appeal decisions (Key Initiative 23). In
order to achieve consistency, the prevailing practice of the Boards of Appeal has to be
included in the Manuals/Guidelines. To do so we will be looking at the Boards’ and the
Court’s case‐law on a regular yearly basis ‐ a shorter time span would neither ensure the
necessary continuity in practice nor give a complete picture of developing trends.
Avenida de Europa, 4 • E - 03008 Alicante • Spain
Tel. +34 96 513 9100 • Fax +34 96 513 9327
www.oami.europa.eu • information@oami.europa.eu
2. THE CYCLE
The cycle has been designed with a view to updating the Office’s practice on a yearly basis
by looking at the case‐law of the preceding year.
This cycle has three major phases some of which have several steps:
‐
‐
‐
The first phase is the
triggering of the update by
stakeholders’ feedback.
The second is the
preparation of the draft
Guidelines by the Office.
This phase produces the
draft Guidelines after a
three‐step internal process
(ANALYSE, DRAFT and DISCUSS).
OHIM
President
Users
Final
Guidelines
OHIM
Analyze
AB
IP NOs
Users
Draft
OHIM
draft
Guidelines
The third phase leads to the
OHIM
Translate
discuss
adoption of the Guidelines
in four steps: TRANSLATE,
CONSULT (the users associations, the EU National IP Offices and the Office’s Administrative
Board) and ADOPT, where the President of the Office adopts the new Guidelines.
The figure on the right illustrates these phases and steps.
As new issues constantly emerge from case‐law regarding operational or stakeholder needs,
the process for revising the Guidelines re‐starts immediately after their adoption.
In order to balance the work evenly over the year, we have divided the Office’s practice into
two working packages (see table in Annex 1):
•
the process for reviewing practice items included in work package 1 (WP1) starts
every January with a view to having (partially) updated Guidelines by December of
the same year;
•
the process for reviewing items in work package 2 (WP2) starts every July in order to
have (partially) updated Guidelines by June of the following year.
Since these work packages will be known to all our stakeholders and, in particular, to our
users, they can arrange well in advance to submit their feedback and/or comments to the
Office in order to have their issues dealt with during the revision process.
2
3. THE PHASES IN DETAIL
Users
OHIM
President
Users
Final
Guidelines
OHIM
Analyze
AB
IP NOs
Users
OHIM
draft
Draft
Guidelines
3.1. Phase one: User’s feedback
Translate
OHIM
discuss
As outlined above, the Office will inform our users of the plan to revise our practice by
making public (a) the subject of future revisions (i.e. the two work packages in Annex 1) and
(b) the timing (i.e. by indicating that WP1 will be revised as of January and WP2 as of July).
The Office will thus invite its external stakeholders to send us their comments or feedback
before January (for WP1) and July (for WP2) respectively. Even if the comments or feedback
are not received “on time” (before January/July respectively), they will still be taken on
board in the next cycle.
In fact, users’ comments and feedback are welcome at any moment without being subject to
any time constraints because this is a cyclical process. Regardless of when the comments
reach us, we will take them on board in the next iteration.
Further, regular exchanges of views between the Office and the users’ associations over the
year will ensure that users’ positions are fed into process on a regular basis but without
unnecessary time constraints.
Finally, as the draft Guidelines will also be submitted to the Administrative Board, users can
also present their positions at the Administrative Board.
Draft Guidelines
OHIM
President
Users
Users
Final
Guidelines
OHIM
Analyze
AB
IP NOs
Users
OHIM
draft
Draft
Guidelines
3.2. Phase two: preparation of the draft Guidelines
Translate
OHIM
discuss
The process for updating the Office’s practice starts each year in January and July with WP1
and WP2 respectively. Feedback and comments received from the users submitted in
advance will be considered.
Every January (for WP1 items) and July (for WP2 items), OHIM’s cross‐departmental teams
(the so‐called Knowledge Circles) will produce the new draft Guidelines.
In order to make that possible, different steps must be completed in a timely manner, these
are: ANALYSE, DRAFT and DISCUSS.
In the first phase, ANALYSE, the Knowledge Circles will extract trends from the case‐law of the
General Court, the Court of Justice and the Boards of Appeal of the previous years, analyse
the results of the convergence projects between OHIM and the EU IP Offices and consider
any feedback or comments received from our users and internal stakeholders.
3
On the basis of this analysis, we will launch the second phase, DRAFT, where the Knowledge
Circles will produce a number of updated sections of the Guidelines. Normally, these two
phases, ANALYSE and DRAFT, should be completed in eight weeks.
The third phase, DISCUSS, is an internal discussion: the new texts will be sent for consultation
between the different units and departments affected by the updates. Meetings and
presentations will be held and discussions will take place. The goal is that any department
affected by the update expresses its views. As a consequence of these discussions, the
original texts will usually be revised and, sometimes, even sent for an additional round of
discussions. This may take up to eight additional weeks.
At the end of this process, the Knowledge Circles will have produced new draft Guidelines by
June (for WP1 items) and December (for WP2 items) these draft Guidelines will be published
on the Office’s website.
OHIM
President
Users
Guidelines
adopted
Final
Guidelines
OHIM
Analyze
AB
IP NOs
Users
OHIM
draft
Draft
Guidelines
3.3. Phase three: adoption of the updated Guidelines
Translate
OHIM
discuss
The draft Guidelines will then be sent for translation into the five languages of the Office.
Once the translations are ready, they will be circulated amongst the user associations, the
EU IP offices and the BOIP with a view to getting their feedback for the next meeting of the
Administrative Board (AB). After consulting the AB, the President will adopt the updated
Guidelines.
Once the final Guidelines text is adopted, they will be translated into the remaining official
languages of the EU with a view to having the entire Guidelines in all the official languages of
the EU.
It is worth noting that once the AB has been consulted, the Office will start in parallel the
implementation phase, the moment where if necessary the examiners are trained and the
tools (for example, the templates) are adapted to the new practices.
When the implementation phase is completed, the updated Guidelines will enter into force.
Since this is a cyclical process, only the parts of the texts that are revised from one cycle to
the next need to be translated and submitted for comments to the AB. The Office will
provide all the internal and external stakeholders with the means to clearly identify:
(a) which are the practice items that have changed from one cycle to the next
(b) and which are those that are in the review process.
4
4. EXCEPTIONAL AND TRANSITIONAL MEASURES
4.1. Exceptional measures: fast‐track changes
It may be that some practice changes must enter into force without delay. These will be
triggered normally by leading cases from the Court or by the Office’s operational needs. In
such cases, the practice changes will enter into force prior to their adoption in the
Guidelines. The Office will always communicate these changes prior to their entry into force
and identify them as “fast‐track‐changes”. They will, in any case, be open for comments
within the next revision cycle.
4.2. Overall structure of the future Guidelines
The Office is revising the current structure of the Guidelines. Some existing sections have
never been used and some others are linked in such a way that it might be advisable to
merge them. The Office will define the future structure of the Guidelines before the end of
2012.
4.3. First updated Guidelines as regards WP1 items
In January 2012 the Office started to update most of the items in WP1.
By June and July this year, the new texts will be made available externally because, as
expressed in the Office’s Strategic Plan (KI 24), in order to be more predictable the Office
adheres to the principle that all tools (including its manuals) developed for use by its
examiners will also be made available to our users.
These new texts will enter into force by one month after their publication.
These new parts of the manuals will be revised again as of January 2013. We invite our
stakeholders to comment on the new set of documents which will be made public in the first
half of 2012 with a view to integrating any feedback in the revision that will take place in
2013.
4.4. First updated Guidelines as regards WP2 items
As regards WP2, the Office will start its revision in July 2012. We invite our users to send us
their comments and feedback before July.
5
4.5. First full cycle
The first full cycle will start in January 2013 as regards WP1 items (to have Guidelines
adopted by December 2013) and July 2013 as regards WP2 items (to have Guidelines
adopted by June 2014).
The table in Annex 2 contains a detailed calendar for 2012‐2015.
António Campinos
6
Annex 1: work plan
Work package 1 (WP1)
Work package 2 (WP2)
Community Trade Marks
A: General Provision: Part A: General Provisions (Sections 1
– 4)
A: General Provisions: Part A, Section 5: Professional
Representation
B: Examination: B2. Formalities
B: Examination: B3. Classification
B: Examination: B4. AG
C: Opposition: Part 1: Procedural Matters
C: Opposition: Part 2, Chapter 1: Identity
C: Opposition: Part 2, Chapter 2: A. General remarks
C: Opposition: Part 2, Chapter 2: B. Similarity of Goods and
Services
C: Opposition: Part 2, Chapter 2: C. Similarity of signs
C: Opposition: Part 2, Chapter 2: D. Global Assessment
C: Opposition: Part 4: Non‐registered rights
C: Opposition: Part 6: Proof of Use
D: Cancellation: Part D, Section 1: will be cancellation
proceedings
E: Register: Part E, Section 2: Conversion
E: Register: Part E, Section 6: Renewal
E: Register: Part E, Section 7: Inspection of Files
Registered Community Designs
Guidelines for the Proceedings relating to a declaration of
invalidity of a registered Community Design
Timing
User’s feedback should be sent before January.
January to May: OHIM revises practice based on the user’s
feedback and on case‐law trends and adapts and trains
examiners accordingly.
June: text is approved.
July: text is sent for translation.
Autumn: translated text is sent to IP offices and users.
Autumn: AB is consulted.
December: President adopts new guidelines.
Community Trade Marks
A: General Provisions: Part A: General Provisions (Sections 1
– 4)
A: General Provisions: Part A, Section 6: Restitutio in
Integrum
B: Examination: B1. Proceedings
B: Examination: B4. AG
C: Opposition: Part 0: Introduction
C: Opposition: Part 3: Trade mark filed by an Agent
C: Opposition: Annex to 8(4)
C: Opposition: Part 5: Trade mark with reputation
C: Opposition: Part 7: Transitional Rules relating to
Enlargement
D: Cancellation: Part D, Section 2: Cancellation substantive
provisions
E: Register: Part E, Section 3: Changes in an application or
registration
E: Register: Part E, Section 4: Transfer
E: Register: Part E, Section 5: Licenses
E: Register: Part E, Section 8: Interlocutory Revision
M: Madrid: Part M: International Marks
Registered Community Designs
Examination Guidelines Community Design
Renewal of a registered Community design
Timing
User’s feedback should be sent before July.
July to November: OHIM revises practice based on the
user’s feedback and on the case‐law trends and adapts and
trains examiners accordingly.
December: text is approved.
January (following year): text is sent for translation.
Spring: translated text is sent to IP offices and users.
Spring: AB is consulted.
June: President adopts new guidelines.
7
Annex 2: calendar 2012 ‐ 2015
2012
Jun‐12
Jul‐12
Aug‐12
Sep‐12
Oct‐12
Nov‐12
Dec‐12
WP 1
closed
Begin work
WP 2
Jun‐13
>‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Work on WP 2‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Æ
WP 2
closed
Jul‐13
Aug‐13
Sep‐13
Oct‐13
Nov‐13
Dec‐13
WP 1
closed
WP 1 for
translation
WP 1 to IP
offices
WP 1 to AB
WP 1
Guidelines
adopted
2013
Jan‐13
WP 1
reopened
Feb‐13
Mar‐13
Apr‐13
May‐13
>‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Work on WP 1‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Æ
WP 2
reopened
Jan‐13
Feb‐13
Mar‐13
Apr‐13
May‐13
Jun‐13
Jul‐13
WP 1
closed
WP 1 for
translation
>‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Work on WP 2‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Æ
WP 2
closed
Aug‐13
Sep‐13
Nov‐13
Dec‐13
WP 1 to IP
offices
WP 1
Guidelines
adopted
2014
WP 1
reopened
>‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Work on WP 1‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Æ
WP 2 for
translation
WP 2 to IP
offices
WP 2 to AB
WP 2
Guidelines
adopted
WP 2
reopened
Jan‐13
Feb‐13
Mar‐13
Apr‐13
May‐13
Jun‐13
Jul‐13
Oct‐13
WP 1 to AB
>‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Work on WP 2‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Æ
WP 2
closed
Aug‐13
Dec‐13
2015
8
Sep‐13
Oct‐13
Nov‐13
WP 1
reopened
WP 2 for
translation
>‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Work on WP 1‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Æ
WP 2 to IP
offices
WP 2 to AB
WP 1
closed
WP 1 for
translation
WP 2
Guidelines
adopted
WP 2
reopened
9
WP 1 to IP
offices
WP 1 to AB
>‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Work on WP 2‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐Æ
WP 1
Guidelines
adopted
WP 2
closed