The Convergence Programme in focus

The Convergence Programme is one of the Office for Harmonisation in the Internal Market’s (OHIM) largest undertakings within the framework of the European Trademark and Design Network, and its goals of harmonising practices throughout the European Union all focus firmly on users. The programme naturally complements the work carried out by OHIM’s Cooperation Fund. While the fund concentrates on developing IT tools and systems for EU national and regional offices – as well as for users – the Convergence Programme aims to harmonise practices across different offices in order to increase predictability and certainty for users at the national and EU levels. Like the fund, the programme relies on a spirit of collaboration and is designed to improve the European IP system for all users.

The programme links OHIM with national offices and user associations in an effort to find common ground in areas where IP offices have different practices. Each project within the programme is supported by a working group made up of experts from national and regional EU IP offices, non-EU IP offices (acting as observers), user associations and, in some cases, international organisations such as the World Intellectual Property Organisation (WIPO). The aim of each project is to develop a set of common guidelines for examiners and users, reflected in a common practice document.

After a working group agrees on a common practice, this goes to OHIM’s liaison meeting for acknowledgement and is then presented for endorsement to the Administrative Board, OHIM’s governing body. Following endorsement, a common communication is published simultaneously on the websites of all participating offices. Common communications include the common practice and identify the implementing offices. They are designed to ensure that consistent and accurate information is shared in a timely fashion. So far, four common communications have been published, with one more planned for the end of 2014. Participation in the Convergence Programme and implementation of its results are entirely voluntary.

A set of frequently asked questions is also distributed to supplement the common communications. The documents are based on questions received by EU national and regional IP offices from user associations, which are then forwarded to OHIM. The answers are drafted and approved by the project working group before being sent for translation and then for approval to the EU national and regional IP offices.

The Convergence Programme revolves around the principles of quality and usability, enabling effective and efficient access to the protection offered by both national and EU registration systems. It aims to promote legal certainty by improving the consistency of decisions made at both the national and EU level. In addition, the results of its projects offer savings in terms of quicker application processing times and reduced costs for both IP offices and applicants.

Projects are tackled collectively and the choice of projects is also an inclusive process. As projects come to a close, new projects are launched. The input of national and regional IP offices, as well as of user associations, is vital here: these organisations are most familiar with the practice landscape and best placed to identify key issues for users at the national level. After consultation with stakeholders, the programme expanded further this year with the addition of two new projects on designs.

The Convergence Programme currently comprises seven different projects, each devoted to harmonising practices across the European Trademark and Design Network.

The first two projects focus on the classification of goods and services: CP 1 – Harmonisation on Trademark Classification Practice of Goods and Services and CP 2 – Convergence on Class Headings.

These projects have three core objectives. The first is to harmonise the classification of goods and services so that national and regional EU IP offices use the same database of pre-approved goods and services – the Harmonised Database. This is now the largest trademark classification database in the world and the principal benefit is that users can trust that any goods and service selected from this database will be accepted by all participating offices.

The Harmonised Database currently has around 64,000 terms, which have been translated, checked and validated by the EU national and regional IP offices, and quality checked by OHIM’s team of linguists.

The Harmonised Database is a living set of terms, which is updated in an open and transparent way via the Terminology Maintenance Console. This allows harmonised offices to suggest terms that fit the needs of the market, as well as to highlight outdated terms which should be deleted. Users are encouraged to suggest terms for inclusion or deletion by corresponding with OHIM, as well as with national or regional offices. Harmonised offices then vote on the terms, with WIPO acting as the arbitrator. This allows the database to be kept as modern, fresh and comprehensive as possible.

Today the Harmonised Database is shared with nearly every EU national or regional IP office, with the remainder set to be included by the end of 2014. Work is underway to integrate all terms from the TM5 ID list, the list of pre-approved terms from the five largest trademark offices in the world – OHIM, the US Patent and Trademark Office, the Japan Patent Office, the Korean Intellectual Property Office and China’s State Administration of Industry and Commerce. This will make the database truly global, with the planned integration of the WIPO Madrid Goods and Services Manager another welcome addition to its international scope.

The second objective of these first two convergence projects is to develop a taxonomy – a hierarchical structure applied to the Harmonised Database, based on the Nice Classification – in order to allow intuitive searches for goods and services. WIPO, which was closely involved in developing this, has also enabled this unique system to be searched via alphabetical listings. The taxonomy has the advantage of being flexible, adaptive and highly responsive to the changing market – as new terms enter the marketplace, they can easily be reflected in the taxonomised hierarchy.

Finally, the third objective of the projects on goods and services classification is a common practice on Nice Classification heading general indications. The project working group examined 197 general indications of the Nice Classification headings with respect to the requirements of clarity and precision arising from IP TRANSLATOR. Of these, 11 were considered to lack sufficient clarity and precision to specify the scope of protection – consequently they could not be accepted without further specification.

The three remaining convergence programme projects which focus on trademarks are CP3 (ongoing), CP4 (endorsed) and CP5 (endorsed). While each focuses on a distinct area of practice, all required the dedication of and significant investment from participating offices.

CP3 – Absolute Grounds for Refusal for Figurative Trademarks with Purely Descriptive Words or Expressions came about because IP offices across Europe are divided on how figurative elements make a trademark distinctive. Consensus on this should result in more timely, reliable and consistent decisions from OHIM and EU IP offices.

Working group members have been examining the following criteria and determining thresholds for passing the absolute grounds of examination for each of them individually.

With respect to the word elements in a mark, the following criteria are all relevant:

• typeface and font,
• how the mark is combined with colours,
• how the mark is combined with punctuation marks and other symbols; and
• the mark’s position (eg, sideways or upside-down)

With respect to the figurative elements in a mark, the following criteria are all relevant:

• the use of simple geometric shapes;
• the position and proportion (size) of the figurative element in relation to the word element;
• whether the figurative element represents the goods and/or services or merely reinforces the message conveyed by the word element; and
• whether the figurative element is commonly used in trade in relation to the applied-for goods and services.

Further, the working group members have determined the thresholds for combinations of these criteria. They have also determined that language issues (ie, word elements are considered fully descriptive in any language) and the interpretation of disclaimers and acquired distinctiveness through the use of the trademark fall outside the scope of this project.

CP3 is a collaborative effort between OHIM, 23 EU IP offices, user associations (including the European Communities Trademark Association and the European Brands Association), and four non-EU IP offices. The project is nearing completion, with the resulting common practice envisaged as being ready to present to OHIM’s Administrative Board in May 2015.

One of the key outputs for the Convergence Programme during 2014 has been CP4 – Scope of Protection of Trademarks Exclusively in Black, White and/or Shades of Grey. Throughout the project, OHIM and the implementing IP offices agreed on a common practice with regard to black-and-white (B&W) or greyscale marks as compared to colour versions of the same mark. The participating offices analysed three questions essential to handling trademarks in B&W and/or greyscale:

• Is a trademark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?
• Is an earlier trademark in B&W and/or greyscale identical to the same mark in colour when assessing relative grounds?
• Is the use of a colour version of a trademark registered in B&W/greyscale (or vice versa) acceptable for the purpose of establishing genuine use?

On April 15 2014 the participating offices published a common practice document on all of their websites, outlining the answers to those questions. In terms of changes to practices with regards to priorities, in three participating offices (Cyprus, Ireland and Portugal) the previous practice was more lenient, while in 10 (Bulgaria, Estonia, Spain, Greece, Hungary, Lithuania, Latvia, OHIM, Slovakia and Turkey) the previous practice was more strict. Nine offices (Austria, Benelux, the Czech Republic, Germany, Malta, Poland, Romania, Slovenia and the United Kingdom) will see no change from the previous practice.

In terms of identity when assessing relative grounds, in two participating offices the previous practice was more lenient (Cyprus and Greece), in three the previous practice was more strict (Bulgaria, Estonia and Latvia), while 17 offices will see no change from the previous practice (Austria, Benelux, the Czech Republic, Germany, Spain, Hungary, Ireland, Latvia, Malta, OHIM, Poland, Portugal, Romania, Slovenia, Slovakia, Turkey and the United Kingdom). The common practice defines when such trademarks can be considered identical. However, even if marks are not identical, there could still be a likelihood of confusion if the marks are considered similar. No office changed its existing practice with regards to use.

CP 5 – Relative Grounds and Likelihood of Confusion (the impact of non-distinctive/weak components) – was initiatived because only a minority of the offices among OHIM, the Benelux Office for Intellectual Property and the national EU IP offices had guidelines on the assessment and consequences of dealing with non-distinctive/weak components of trademarks in the examination of relative grounds for refusal (likelihood of confusion). The project has four objectives:

• Define what trademarks are subject to assessments of distinctiveness (ie, the earlier trademark and/or parts thereof or the later trademark and/or parts thereof);
• Determine the criteria for assessing the distinctiveness of the trademark (and/or parts thereof);
• Determine the impact on likelihood of confusion when the common components have a low degree of distinctiveness; and
• Determine the impact on likelihood of confusion when the common components have no distinctiveness

Until earlier this year, the Convergence Programme concentrated on converging practices with regard to trademarks. However, given the importance of designs to the EU economy and the vital contribution that design-intensive industries make to economic growth and job creation, OHIM and EU national and regional offices decided to launch two projects – CP6 and CP7 – based on design issues. It is hoped that having common design practices among offices will simplify the filing and examination of design applications.

CP6 aims to define common guidelines for the graphic representation of designs by establishing guidelines for legal certainty and creating a flexible system of design registration for small and medium-sized enterprises. Neutral background, disclaimers, types of views and format of views will all be part of the scope of this, with endorsement expected in November 2015.

CP7 mirrors CP1 somewhat in the desire to create a common harmonised database, although in this case of product indications. Many of the best practices from CP1 will be applied to create a search tool for the harmonised product indication database and common practice document on product indications. The first-phase project deliverables are foreseen by November 2015.

The Convergence Programme’s work does not end on a project’s endorsement. In order to continually support and update the work achieved, a Convergence Central Team has been set up. Although based at OHIM, the team has links all across the European Trademark and Design Network.

The team is made up of OHIM staff and seconded national experts from EU trademark and design offices, who work side by side at OHIM’s Alicante headquarters. The team is charged with the overview and management of the Terminology Maintenance Console, performing quality checks of translations and working at the heart of the yearly cycle for updating the taxonomy structure. In the complex terrain that the Convergence Programme inhabits, language and quality translations are crucial.

Since its founding in 2011, the Convergence Programme has grown and developed considerably. The emergence of two new design-related projects marks an expansion for the programme, moving it beyond its original trademark-related scope. Within just three years, it has produced solid outputs on which users can rely, such as the creation and maintenance of the Harmonised Database. At the core of the Convergence Programme, though, is the principle of consensus and cooperation. Its achievements are firmly joint ones – carried out in collaboration with partners through the European Trademark and Design Network.