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Navigating through the paperless world of OHIM
World Patent Information 22 (2000) 135±141
www.elsevier.com/locate/worpatin
Navigating through the paperless world of OHIM Gordon Humphreys * Legal Department, Oce for Harmonisation in the Internal Market (Trade Marks and Designs), Avenida de Aguilera, 20, E-03080 Alicante, Spain
Abstract The current and planned extent of realisation of OHIMÕs objective of a totally paperless working environment is described. Those areas where paper copies are still needed ± e.g., the Ocial Journal (in ®ve languages), the Bulletin (in 11 languages), and certain publications on the CTM and national law ± are outlined, together with an overview of the progress in providing more compact CDROM versions of those materials. Electronic public trademark search services enabled by the increasingly paperless environment for ®ling and processing include an Internet website. The site has information on, for instance, trademark law decisions, the OHIM annual report, links to other trademark oce sites, and access to three databases (CTM-ONLINE, CTM-DOWNLOAD and CTM AGENT). A description is given of actioning public requests for information (such as ®le inspection and earlier national search reports) ± currently by conventional paper copies ± and the scope for using CTM-ONLINE to retrieve data from EUROMARC, the OceÕs internal database. Finally, the author concludes that further movement towards a totally paperless oce is predicated on changes to the acceptable means of proof in judicial proceedings as well as further changes in public attitudes towards such a working environment. Ó 2000 Elsevier Science Ltd. All rights reserved.
1. Introduction Paper and paperwork have become bywords for bureaucracy. But does this mean that when an oce dispenses with paper to operate in a purely electronic environment, it automatically becomes more user friendly? This article looks at the experience of the Oce for Harmonization in the Internal Market (Trade Marks and Designs) (``OHIM'', or the ``Oce''), based in Alicante, Spain. Some aspects of the work of OHIM have previously been brie¯y described in this journal [1,2]. Particular emphasis is placed in the present article on the information available from OHIM and its accessibility for outside users.
First, OHIM was a unique creation: a Community trademark oce established to grant and administer a new type of legal instrument ± the Community trademark ± for the 21st century. In such an innovative atmosphere, it was only right and proper that OHIM should be at the forefront of hi-tech oces. Secondly, there was a genuine desire to try to cut some of the red tape that traditionally surrounds administrative organizations of any description. In a nutshell, to become user friendly. It was therefore no coincidence that the ®rst edition of ``OAMI 1 NEWS'', the OceÕs newsletter intended for its users, was ± in part ± devoted to information available electronically. Likewise, from the outset every member of sta at OHIM was given a PC connected to a network and printers.
2. Avant-Garde approach When OHIM opened its doors for business in April 1996, it proclaimed itself to be a paperless oce. In those days, few oces in Europe were paperless and no national trademark oces had taken the plunge and cleared their desks of paper ®les. So, why did OHIM take the risk of operating electronically?
*
Tel.: +34-965-139-470.
3. Informing users in the traditional way Although primarily operating in an electronic environment, OHIM does have recourse to paper publications. The two most important paper-based sources of information for outside users are the OHIM Ocial Journal and the Community Trade Marks Bulletin. 1
OAMI is the Spanish acronym of OHIM.
0172-2190/00/$ - see front matter Ó 2000 Elsevier Science Ltd. All rights reserved. PII: S 0 1 7 2 - 2 1 9 0 ( 0 0 ) 0 0 0 4 3 - 0
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G. Humphreys / World Patent Information 22 (2000) 135±141
3.1. Other publications There are, of course, a number of other publications, which include the following: · Brochure on the OHIM published in 11 languages (free of charge up until ®ve copies, thereafter Eu5 per copy). · OAMI News ± a newsletter published every 2 months with various articles in the ®ve Oce languages (free of charge). · Annual Report in ®ve languages (free of charge). · Directory of professional representatives, published every 2 years in the ®ve Oce languages (price: Eu20 per copy). · Compendium of selected instruments relating to the CTM (price: Eu25 per copy for the multilingual version). · National law relating to the CTM ± provides information on the interaction of the CTM system with national ones (free of charge). · Vademecum of various publications, etc. 3.2. The OHIM Ocial Journal The OHIM Ocial Journal contains a plethora of legislative and legal information. For example, it contains the basic and implementing Community trademark Regulations (together with any amendments), names and addresses of professional representatives entitled to act before the Oce (plus any amendments of their details), decisions and communications of the President, leading decisions of the Opposition Division and the Boards of Appeal, together with judgements handed down by the Court of First Instance and the Court of Justice of the European Communities in trademark matters. It is published in the ®ve languages of the Oce (English, French, German, Italian and Spanish) and has appeared monthly since 1995. It is supplemented by an annual table of contents designed to facilitate searches. Subscriptions are on an annual basis and are priced at Eu200 p.a. 3.3. The Community Trademarks Bulletin The Community Trademarks Bulletin contains the entries made in the Register of Community trademarks (``CTMs''). It is divided into parts A, B and C. Part A deals with CTM applications and is thus a source of useful information for anyone contemplating opposition proceedings. Indeed, opposition can only be brought within two months of the part A publication. Part B publications concern all registrations of CTMs, whereas part C deals with entries in the Register post-registration and will generally involve such matters as transfers, licences, rights in rem and changes of name. The Bulletin
has been published monthly since March 1997 in the 11 languages of the EU and is distributed to national oces free of charge. For others, subscription is again on an annual basis and is priced Eu1500 p.a., or Eu500 p.a., if a second subscription is entered into for another Oce product. 4. Cutting bulk through CDs Since paper publication is bulky and space consuming, it is more convenient to some users to subscribe to a CD-ROM version of the Bulletin. This possibility has been available since July 1998. As well as containing all the information found in the paper version of the Bulletin, the CD also includes a search tool, an interface in the ®ve languages of the Oce, and other useful data on the Nice and Vienna classi®cations. It is therefore a useful tool for anyone contemplating opposition or cancellation proceedings, or more generally, in the defence policy of an earlier registration made at international, Community or national level. CDs are distributed free of charge to national oces on demand. For everybody else, the subscription prices are identical to those in force for the paper version of the Bulletin. Since June 1999, a second CD has been made available by the Oce to subscribers. This CD, known as EUROM, is essentially a compilation of cumulative data taken from the OceÕs CTM database, EUROMARC (see below, for more details). EUROM has been produced quarterly from June 1999 and the subscription price is, again, identical to that in force for CD-ROM and the Bulletin. Like the other instruments already mentioned, EUROM contains data in all 11 Community languages, although its interface is limited to the ®ve languages of the Oce. 5. On-line technology Clearly, any oce proclaiming to be essentially paperless must necessarily be heavily reliant on Internet based technology in its communications with the outside world. OHIM is no exception in this regard and, to this end, provides four on-line information instruments for users. 5.1. OAMI-ONLINE OAMI-ONLINE is the most general of these instruments and has been available since July 1998. It provides Internet users with access to a whole host of information in the ®ve languages of the OHIM on the OceÕs web page and links them to more speci®c tools. Apart from oering general information on the role of the OHIM, the CTM in practice, contact points within the Oce,
G. Humphreys / World Patent Information 22 (2000) 135±141
distribution of information on the CTM and Oce administration, OAMI-ONLINE also proers guidance by way of a site map, a ``whatÕs new'' section, frequently asked questions (with answers) and a dialogue box for direct, on-line contact with the Oce. In addition, the web page provides a link to the OceÕs three databases (see below) and to related web sites. The related web sites include the web pages of all the 15 Member State trademark oces or authorities (plus the Benelux), as well as those of the USA, Korea, Japan and Switzerland. It also links users to certain non-governmental bodies with which the OHIM cooperates and to regional and other international bodies such as the EPO, WIPO and the WTO. Finally, it oers access to the EUÕs EUROPA website for general and detailed information on EU law and policy. In addition, the website contains a number of other useful pieces of information. For example: · Texts published in the Ocial Journal (decisions and communications of the President, forms, guidelines, selected Opposition and Boards of Appeal decisions, etc.). · Selected case law of the Court of First Instance and Court of Justice of the European Communities. · OAMI News. · The OceÕs Annual Report. · A number of other publications, brochures, etc. The OHIMÕs website is located at http://oami.eu.int/. 5.2. CTM-ONLINE In terms of searches eected by persons outside the Oce, one of the prime database instruments which has recently been made available by the OHIM is CTMONLINE. This database has been operational since the end of last year and enables users to consult ± free of charge ± the OceÕs EUROMARC database (see below for more details) on-line. However, in order to be able to make proper use of this instrument, users must know either the CTM number or the name of the mark they are searching. Information is available in the ®ve Oce languages. Nevertheless, it provides a useful tool for checking the status of a CTM application (e.g., whether it is undergoing examination or opposition proceedings, whether the application has been published or has gone through to registration, etc). It can also be used to ascertain details concerning the owner, the representatives and the goods and services covered by the application or registration. 5.3. CTM-DOWNLOAD CTM-DOWNLOAD has been available since March 1999. It is oered free of charge to national oces but attracts a subscription fee of Eu5000 p.a. for private
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entities, who must furthermore enter into a licence agreement with the Oce. The database contains all data on CTMs as currently held in EUROMARC. The database is updated daily and updates may be downloaded daily or at any time during a three monthperiod from the time of update. Although currently only available in English, it oers a number of advantages over CTM-ONLINE. CTM-DOWNLOADÕs main edge is that it can be used to search marks for which the name or number is not known, or not completely known. It can therefore be used as an investigative tool by interested parties. Clearly, with subscription costs running to Eu5000 p.a. this instrument will be of greater interest to private commercial agencies through which third parties may conduct searches. 5.4. CTM AGENT CTM AGENT, the OceÕs third database, oers information on representatives and law ®rms admitted to act in trademark matters before the Oce. It is accessible free of charge. With this tool outside users can search for lists of representatives per town or country or nationality. It is thus even possible to ®nd, for example, US citizens practising in Community trademark matters in London. Users should note that whilst individual professional representatives admitted to act before OHIM will be shown on the computerised lists, individual legal practitioners will not. However, it is possible to ®nd the name of law ®rms acting before OHIM (without the names of the individual lawyers working in those ®rms). As already mentioned, these three databases may be accessed via OAMI-ONLINE. Where it is necessary to subscribe to a licence agreement, further information can be obtained on this matter or ± more generally ± on any OHIM publications (in paper or CD format) by telephoning the Oce on: +34 96 51 39 102. 6. EUROMARC ± the Oce mainstay In the ®rst year of operation of the Oce, 800,000 pages of documents were sent to Alicante. Processing paper ®les was clearly going to be a non-contender from the outset. The solution envisaged was to ensure that every member of sta in the Alicante Oce had a computer adapted to a multilingual environment from day one. Rather than keying in data from paper ®les, applications, correspondence and other documents are scanned and arranged into corresponding electronic ®les. As far as CTM applications are concerned, these are usually ®led at the Oce or at national oces in paper form on the OHIMÕs standard application form or on a self-generated form. Filing may be made by mail, fax or
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messenger service. However, it is also possible to ®le a CTM application completed on a 3.5-in. diskette, available from the Oce. The format of the electronic document contained in this diskette is known as ETMAF (Electronic Trademark Application Form). Where the CTM application is ®led at a national oce, it is forwarded to the OHIM for processing in the usual way. Fig. 1 outlines these processes. The general data gleaned from the electronic ®les is keyed in and stored on a database called EUROMARC. Correspondence sent by the Oce is generated automatically through the computer and ®led accordingly. EUROMARC database incorporates all stages of procedure and, in particular, changes in the status of an application (e.g., from examination to publication of the application in part A of the Bulletin). EUROMARC is available on-line to examiners in the Examination, Opposition and Cancellation Divisions as well as the Register Service and support sta in other units such as the Registry of the Boards of Appeal and the Accounting Department. EUROMARC contains information on the current status of a given CTM application or registration, the goods and services covered by the mark, the logo, the representative, the proprietor (nationality and seat) and any recordals (assignments, bankruptcy or in rem rights) or oppositions made against the mark. In short, EUROMARC provides access to all available information either received or sent by the Oce concerning the CTM in question. Of course, there are a small number of documents that ± due to their sheer volume or technical format ± are not scanned (e.g., proof of use documents, materials or video tapes
submitted in the context of opposition proceedings and examination proceedings or proof of acquired distinctiveness materials in the context of examination). Thus, EUROMARC serves as a mainstay to the work of the Oce. When correspondence is received in the Oce, it is scanned and stored centrally. It is then sent via electronic mail queues to the department or service to which it is addressed for further processing. Clearly, the disadvantage of this system is that there may be a certain amount of delay from the point in time at which an item of correspondence arrives in the Oce to the moment it actually reaches the relevant mail queue of the department or service in question. This problem will be more acute in some cases than in others. In order to attempt to reduce the eects and inconveniences caused by delay, the OceÕs Mail Room and Mail Dispatch services have set up a system of ``fast track'' queues. This basically means that in cases where time is of the essence, the OceÕs mail services endeavour to ensure that vital mail items reach the addressee as soon as possible. A prime example of mail items needing swift processing are requests for inspection of ®les and priority certi®cates, both of which are handled by the Register Service. In the case of a request for a priority certi®cate, the CTM applicant will lose his right to ®le an identical application in a third country if the second application is not ®led within six months of the CTM application. In inspection cases, requests are often made by either the national court or the parties to the on-going national court proceedings. Thus, in both cases a speedy turnaround time is of utmost importance.
Fig. 1. Outline of ®ling procedure for a CTM.
G. Humphreys / World Patent Information 22 (2000) 135±141
7. Inspection of ®les ± the paper chase In the defence of earlier rights, third parties may be alerted ± either through periodic searches in the Bulletin or OAMI on-line services or through a commercial agency providing similar search services or in some other way ± to the existence of a con¯icting CTM application or registration. Once alerted, the proprietor of the earlier right may often want more detailed information on the application or registration in question. 7.1. Information requests To this end, he can make one of three requests to the Oce: · to inspect the ®le; · to obtain (either certi®ed or uncerti®ed) copies of certain documents in the ®le; · to receive a reply to a request for information. These three requests fall under the general headings ``Information of the Public and of the Ocial Authorities of the Member States'', in the Basic Regulation on the CTM (Council Regulation (EC) No. 40/94) (Articles 83±87), and ``Inspection of ®les and keeping of ®les'', in the Implementing Regulation (EC) No. 2868/95 (Rules 88±91). These forms of request are also dealt with in the Guidelines on Inspection of Files, published in OHIM Ocial Journal 1998;(7/8):804. For this reason, they are referred to collectively as ``inspection'' in this article. 7.2. Inspection restrictions Inspection is subject to the following restrictions: 1. If the CTM application has not been published in part A of the Bulletin, and the person requesting the inspection, copy or information is not the proprietor of the mark, the Oce will not accede to the request unless the CTM applicant has given his consent. An applicant, or his representative, always has access to the ®les relating to his own application. 2. In the circumstances described in (1) above, the CTM applicantÕs consent will not be necessary where that CTM applicant has stated that once his mark is registered he will rely on it against the person requesting inspection, copy or information. 3. Certain documents marked as con®dential from the outset, pursuant to a request made by the CTM applicant may nevertheless be withheld from inspection, unless the person requesting inspection can show an overriding legitimate interest in obtaining them (e.g., that they are crucial to the on-going court proceedings). The documents will only be marked as con®dential where the party concerned has shown a special interest in keeping them so (e.g., a trade secret
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or the like). Therefore, the Oce must weigh-up the special interests of one party against the legitimate interests of the other. In addition, draft decisions or opinions or other internal documents (e.g., objections raised by a particular examiner on the grounds that he considers himself to be partial or biased and therefore un®t to examine the case) will also be withheld from inspection. 4. Subject to (3) above, documents and information will be freely available as from publication of the CTM application in part A of the Bulletin. It should be noted that the Oce is bound to cooperate with the courts or authorities of national Member States (including Public ProsecutorsÕ Oces and central industrial property oces) and, as such, these bodies are not subject to any of the restrictions mentioned above. In other words, these bodies have an unfettered right of access to the OceÕs ®les, documents and databases. 7.3. File inspections ± formalities As to what each of the above requests actually implies, it should be noted that a request to make inspection of a ®le is dealt with in the following manner. First, the Oce must examine the formal admissibility of the request: · the appropriate fee must be paid (see below); · the request must be in writing (letter or fax); · it must be submitted in the correct language (see below); · it must not be tainted by any of the restrictions or prohibitions mentioned above, or, if so tainted, evidence overcoming such an objection must be ®led with the inspection request; · the ®le number or registration number of the CTM in question must be indicated; · the name and address of the applicant for inspection must be indicated; · the name and the business address of the representative, if any, must be indicated; · if appropriate, there should be an indication of the document or information for which inspection is requested; · the signature of the representative or the applicant should appear on the request. 7.4. Information requests ± language It should be noted that requests of this nature may be made in the ®rst (i.e., any ocial language of the EU Member States) or second language (i.e., English, French, German, Italian or Spanish) of the CTM application before the mark is registered and thereafter in any one of the ®ve Oce languages. In practice, as shown in Fig. 2, the majority of CTM applications are
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G. Humphreys / World Patent Information 22 (2000) 135±141
Fig. 2. First language of CTM applications (Source: OHIM Statistics, February 2000).
®led in English followed by German, while English followed by French is most common for the second Oce language (see Fig. 3). 7.5. Information requests ± procedures Where inspection of ®les has been requested, the Oce estimates the number of pages in the ®le. It then either telephones or writes to the person who requested the inspection and gives him an estimate of how many pages there are in the ®le. That person can then either choose to come and inspect these paper documents at the Oce in Alicante (in which case the Oce will give him an appointment time to do so), or request copies of certain documents or of the whole ®le. In both cases, payment must be made beforehand in order to validate the request. To facilitate matters, persons making these sort of requests will often have current accounts with the Oce from which the sums owing can be debited. If a person comes to the Oce to inspect the ®le, it will cost Eu30. However, this will give no right to obtain copies of any documents inspected. For copies of the ®le, the price is Eu10 or 30 (depending on whether certi®ed or
uncerti®ed copies are requested) ± this gives a right to obtain up to 10 pages of copied materials ± thereafter the person making the request must pay Eu1 per page and make a new request for certi®ed or uncerti®ed copies of the ®le, as the case may be. In the near future, the Oce will make on-line inspection possible for outsiders coming to the OceÕs new central seat in Alicante (again by prior appointment). This will, of course, involve making limited access to EUROMARC available. So, it will not be possible to inspect ®les other than the one for which inspection has been requested. It should be stressed that inspection of ®le requests for an on site inspection are few and far between and are, at present, most practicable for representatives with oces in Alicante. Finally, a word should be said about requests for information. These requests, like all the others mentioned above, must be made in writing and are subject to the same limitations and restrictions. They are priced at Eu10 per request and will normally deal with individual items of information concerning a CTM or a CTM application. Examples of matters commonly dealt with include: whether a CTM application has been contested in opposition proceedings, the identity of the party or parties who brought those proceedings, the status of the mark, con®rmation that a CTM application has been refused or withdrawn and whether the CTM application has been converted. The reply of the Oce is always given in writing by way of a formal letter. It can be seen that inspection of ®les, copies and information requests are among the requests which least lend themselves to a paperless environment. Although the inspection procedure will shortly be fully automated, the paper chase will continue for quite some time to come in the case of copies and information requests.
8. Searching for clues Fig. 3. Second (ocial) language of CTM applications (Source: OHIM Statistics, February 2000).
A multitude of information is available from the Oce, but often the problem is knowing exactly what to
G. Humphreys / World Patent Information 22 (2000) 135±141
ask for. This problem is sometimes particularly acute in the case of copies of ®le documents. The circumstances in which copies of such documents may be needed are manifold. However, if the purpose is to defend earlier rights, it can be useful to have sight of national search documents relating to the CTM application or applications that are considered as potentially con¯icting. 8.1. National search reports Basically, once a CTM application has been given a ®ling date, and provided the goods and services in the application are properly classi®ed, a copy of the CTM application is sent to the national oces. These oces then search their national registers against the CTM application and then each one dispatches a report to the OHIM. If the national search report shows up the earlier right it may be used as a bargaining tool by the earlier right holder in the context of any negotiations subsequently entered into with the CTM applicant. The interesting point for the earlier right holder is that a copy of the search report obtained through the Oce by making a copy request will be (in some cases) over ®ve times cheaper than obtaining it direct from the national Oce. However, not all the national oces produce search reports. Consequently, the domestic situation in France, Germany and Italy will not be ascertainable from the OHIMÕs ®les in relation to a given CTM application. 8.2. CTM search Earlier right holders should also be aware that the Oce conducts an earlier rights search for all CTM applications against existing CTM applications and registrations. This search is carried out more or less contemporaneously with the national searches. The CTM search focuses on: · the dates of ®ling and priority; · the Nice classes, and · the main word and ®gurative elements of the mark.
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However, applications ®led on the same day will not be compared with each other. In addition, although the basic search tool is automated, specialist members of the Oce sort out the names of marks that will actually be cited. The CTM search report is sent to the applicant at the same time as the national search reports. This means that a copy of the CTM report may also be obtained from the Oce by anyone interested in the information it contains. As already mentioned, requests for information, copies and inspection should be addressed to the Oce in writing. The simplest way of doing this will be by sending a fax to the Oce (fax number: +34 96 51 31 344). This fax, once received by the OceÕs central server, will be forwarded to the mail queue of the Register Service (Inspection Group) which processes this type of request.
9. Conclusion Although operating in a totally paperless environment is virtually impossible in current business practice, the OHIM has gone as far as possible to go in that direction. This paperless environment favours complete transparency ± in so far as permitted by the CTM regulations ± in searches made by third parties. The system strives to be as user friendly as possible. However, the total disappearance of paper from the Oce will necessitate further changes in public attitudes towards such a working environment and, more particularly, changes in the acceptable means of proof in judicial proceedings. References [1] Alexander von M uhlendahl. The opening address to PATLIB98 in Alicante: ``The OHIM and the EPO''. World Patent Information 1999;121(1):3±4. [2] Alberto Casado. The closing address to PATLIB98 in Alicante: ``OHIM and trade mark information: the future''. World Patent Information 1999;21(1):41±2.
www.elsevier.com/locate/worpatin
Navigating through the paperless world of OHIM Gordon Humphreys * Legal Department, Oce for Harmonisation in the Internal Market (Trade Marks and Designs), Avenida de Aguilera, 20, E-03080 Alicante, Spain
Abstract The current and planned extent of realisation of OHIMÕs objective of a totally paperless working environment is described. Those areas where paper copies are still needed ± e.g., the Ocial Journal (in ®ve languages), the Bulletin (in 11 languages), and certain publications on the CTM and national law ± are outlined, together with an overview of the progress in providing more compact CDROM versions of those materials. Electronic public trademark search services enabled by the increasingly paperless environment for ®ling and processing include an Internet website. The site has information on, for instance, trademark law decisions, the OHIM annual report, links to other trademark oce sites, and access to three databases (CTM-ONLINE, CTM-DOWNLOAD and CTM AGENT). A description is given of actioning public requests for information (such as ®le inspection and earlier national search reports) ± currently by conventional paper copies ± and the scope for using CTM-ONLINE to retrieve data from EUROMARC, the OceÕs internal database. Finally, the author concludes that further movement towards a totally paperless oce is predicated on changes to the acceptable means of proof in judicial proceedings as well as further changes in public attitudes towards such a working environment. Ó 2000 Elsevier Science Ltd. All rights reserved.
1. Introduction Paper and paperwork have become bywords for bureaucracy. But does this mean that when an oce dispenses with paper to operate in a purely electronic environment, it automatically becomes more user friendly? This article looks at the experience of the Oce for Harmonization in the Internal Market (Trade Marks and Designs) (``OHIM'', or the ``Oce''), based in Alicante, Spain. Some aspects of the work of OHIM have previously been brie¯y described in this journal [1,2]. Particular emphasis is placed in the present article on the information available from OHIM and its accessibility for outside users.
First, OHIM was a unique creation: a Community trademark oce established to grant and administer a new type of legal instrument ± the Community trademark ± for the 21st century. In such an innovative atmosphere, it was only right and proper that OHIM should be at the forefront of hi-tech oces. Secondly, there was a genuine desire to try to cut some of the red tape that traditionally surrounds administrative organizations of any description. In a nutshell, to become user friendly. It was therefore no coincidence that the ®rst edition of ``OAMI 1 NEWS'', the OceÕs newsletter intended for its users, was ± in part ± devoted to information available electronically. Likewise, from the outset every member of sta at OHIM was given a PC connected to a network and printers.
2. Avant-Garde approach When OHIM opened its doors for business in April 1996, it proclaimed itself to be a paperless oce. In those days, few oces in Europe were paperless and no national trademark oces had taken the plunge and cleared their desks of paper ®les. So, why did OHIM take the risk of operating electronically?
*
Tel.: +34-965-139-470.
3. Informing users in the traditional way Although primarily operating in an electronic environment, OHIM does have recourse to paper publications. The two most important paper-based sources of information for outside users are the OHIM Ocial Journal and the Community Trade Marks Bulletin. 1
OAMI is the Spanish acronym of OHIM.
0172-2190/00/$ - see front matter Ó 2000 Elsevier Science Ltd. All rights reserved. PII: S 0 1 7 2 - 2 1 9 0 ( 0 0 ) 0 0 0 4 3 - 0
136
G. Humphreys / World Patent Information 22 (2000) 135±141
3.1. Other publications There are, of course, a number of other publications, which include the following: · Brochure on the OHIM published in 11 languages (free of charge up until ®ve copies, thereafter Eu5 per copy). · OAMI News ± a newsletter published every 2 months with various articles in the ®ve Oce languages (free of charge). · Annual Report in ®ve languages (free of charge). · Directory of professional representatives, published every 2 years in the ®ve Oce languages (price: Eu20 per copy). · Compendium of selected instruments relating to the CTM (price: Eu25 per copy for the multilingual version). · National law relating to the CTM ± provides information on the interaction of the CTM system with national ones (free of charge). · Vademecum of various publications, etc. 3.2. The OHIM Ocial Journal The OHIM Ocial Journal contains a plethora of legislative and legal information. For example, it contains the basic and implementing Community trademark Regulations (together with any amendments), names and addresses of professional representatives entitled to act before the Oce (plus any amendments of their details), decisions and communications of the President, leading decisions of the Opposition Division and the Boards of Appeal, together with judgements handed down by the Court of First Instance and the Court of Justice of the European Communities in trademark matters. It is published in the ®ve languages of the Oce (English, French, German, Italian and Spanish) and has appeared monthly since 1995. It is supplemented by an annual table of contents designed to facilitate searches. Subscriptions are on an annual basis and are priced at Eu200 p.a. 3.3. The Community Trademarks Bulletin The Community Trademarks Bulletin contains the entries made in the Register of Community trademarks (``CTMs''). It is divided into parts A, B and C. Part A deals with CTM applications and is thus a source of useful information for anyone contemplating opposition proceedings. Indeed, opposition can only be brought within two months of the part A publication. Part B publications concern all registrations of CTMs, whereas part C deals with entries in the Register post-registration and will generally involve such matters as transfers, licences, rights in rem and changes of name. The Bulletin
has been published monthly since March 1997 in the 11 languages of the EU and is distributed to national oces free of charge. For others, subscription is again on an annual basis and is priced Eu1500 p.a., or Eu500 p.a., if a second subscription is entered into for another Oce product. 4. Cutting bulk through CDs Since paper publication is bulky and space consuming, it is more convenient to some users to subscribe to a CD-ROM version of the Bulletin. This possibility has been available since July 1998. As well as containing all the information found in the paper version of the Bulletin, the CD also includes a search tool, an interface in the ®ve languages of the Oce, and other useful data on the Nice and Vienna classi®cations. It is therefore a useful tool for anyone contemplating opposition or cancellation proceedings, or more generally, in the defence policy of an earlier registration made at international, Community or national level. CDs are distributed free of charge to national oces on demand. For everybody else, the subscription prices are identical to those in force for the paper version of the Bulletin. Since June 1999, a second CD has been made available by the Oce to subscribers. This CD, known as EUROM, is essentially a compilation of cumulative data taken from the OceÕs CTM database, EUROMARC (see below, for more details). EUROM has been produced quarterly from June 1999 and the subscription price is, again, identical to that in force for CD-ROM and the Bulletin. Like the other instruments already mentioned, EUROM contains data in all 11 Community languages, although its interface is limited to the ®ve languages of the Oce. 5. On-line technology Clearly, any oce proclaiming to be essentially paperless must necessarily be heavily reliant on Internet based technology in its communications with the outside world. OHIM is no exception in this regard and, to this end, provides four on-line information instruments for users. 5.1. OAMI-ONLINE OAMI-ONLINE is the most general of these instruments and has been available since July 1998. It provides Internet users with access to a whole host of information in the ®ve languages of the OHIM on the OceÕs web page and links them to more speci®c tools. Apart from oering general information on the role of the OHIM, the CTM in practice, contact points within the Oce,
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distribution of information on the CTM and Oce administration, OAMI-ONLINE also proers guidance by way of a site map, a ``whatÕs new'' section, frequently asked questions (with answers) and a dialogue box for direct, on-line contact with the Oce. In addition, the web page provides a link to the OceÕs three databases (see below) and to related web sites. The related web sites include the web pages of all the 15 Member State trademark oces or authorities (plus the Benelux), as well as those of the USA, Korea, Japan and Switzerland. It also links users to certain non-governmental bodies with which the OHIM cooperates and to regional and other international bodies such as the EPO, WIPO and the WTO. Finally, it oers access to the EUÕs EUROPA website for general and detailed information on EU law and policy. In addition, the website contains a number of other useful pieces of information. For example: · Texts published in the Ocial Journal (decisions and communications of the President, forms, guidelines, selected Opposition and Boards of Appeal decisions, etc.). · Selected case law of the Court of First Instance and Court of Justice of the European Communities. · OAMI News. · The OceÕs Annual Report. · A number of other publications, brochures, etc. The OHIMÕs website is located at http://oami.eu.int/. 5.2. CTM-ONLINE In terms of searches eected by persons outside the Oce, one of the prime database instruments which has recently been made available by the OHIM is CTMONLINE. This database has been operational since the end of last year and enables users to consult ± free of charge ± the OceÕs EUROMARC database (see below for more details) on-line. However, in order to be able to make proper use of this instrument, users must know either the CTM number or the name of the mark they are searching. Information is available in the ®ve Oce languages. Nevertheless, it provides a useful tool for checking the status of a CTM application (e.g., whether it is undergoing examination or opposition proceedings, whether the application has been published or has gone through to registration, etc). It can also be used to ascertain details concerning the owner, the representatives and the goods and services covered by the application or registration. 5.3. CTM-DOWNLOAD CTM-DOWNLOAD has been available since March 1999. It is oered free of charge to national oces but attracts a subscription fee of Eu5000 p.a. for private
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entities, who must furthermore enter into a licence agreement with the Oce. The database contains all data on CTMs as currently held in EUROMARC. The database is updated daily and updates may be downloaded daily or at any time during a three monthperiod from the time of update. Although currently only available in English, it oers a number of advantages over CTM-ONLINE. CTM-DOWNLOADÕs main edge is that it can be used to search marks for which the name or number is not known, or not completely known. It can therefore be used as an investigative tool by interested parties. Clearly, with subscription costs running to Eu5000 p.a. this instrument will be of greater interest to private commercial agencies through which third parties may conduct searches. 5.4. CTM AGENT CTM AGENT, the OceÕs third database, oers information on representatives and law ®rms admitted to act in trademark matters before the Oce. It is accessible free of charge. With this tool outside users can search for lists of representatives per town or country or nationality. It is thus even possible to ®nd, for example, US citizens practising in Community trademark matters in London. Users should note that whilst individual professional representatives admitted to act before OHIM will be shown on the computerised lists, individual legal practitioners will not. However, it is possible to ®nd the name of law ®rms acting before OHIM (without the names of the individual lawyers working in those ®rms). As already mentioned, these three databases may be accessed via OAMI-ONLINE. Where it is necessary to subscribe to a licence agreement, further information can be obtained on this matter or ± more generally ± on any OHIM publications (in paper or CD format) by telephoning the Oce on: +34 96 51 39 102. 6. EUROMARC ± the Oce mainstay In the ®rst year of operation of the Oce, 800,000 pages of documents were sent to Alicante. Processing paper ®les was clearly going to be a non-contender from the outset. The solution envisaged was to ensure that every member of sta in the Alicante Oce had a computer adapted to a multilingual environment from day one. Rather than keying in data from paper ®les, applications, correspondence and other documents are scanned and arranged into corresponding electronic ®les. As far as CTM applications are concerned, these are usually ®led at the Oce or at national oces in paper form on the OHIMÕs standard application form or on a self-generated form. Filing may be made by mail, fax or
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messenger service. However, it is also possible to ®le a CTM application completed on a 3.5-in. diskette, available from the Oce. The format of the electronic document contained in this diskette is known as ETMAF (Electronic Trademark Application Form). Where the CTM application is ®led at a national oce, it is forwarded to the OHIM for processing in the usual way. Fig. 1 outlines these processes. The general data gleaned from the electronic ®les is keyed in and stored on a database called EUROMARC. Correspondence sent by the Oce is generated automatically through the computer and ®led accordingly. EUROMARC database incorporates all stages of procedure and, in particular, changes in the status of an application (e.g., from examination to publication of the application in part A of the Bulletin). EUROMARC is available on-line to examiners in the Examination, Opposition and Cancellation Divisions as well as the Register Service and support sta in other units such as the Registry of the Boards of Appeal and the Accounting Department. EUROMARC contains information on the current status of a given CTM application or registration, the goods and services covered by the mark, the logo, the representative, the proprietor (nationality and seat) and any recordals (assignments, bankruptcy or in rem rights) or oppositions made against the mark. In short, EUROMARC provides access to all available information either received or sent by the Oce concerning the CTM in question. Of course, there are a small number of documents that ± due to their sheer volume or technical format ± are not scanned (e.g., proof of use documents, materials or video tapes
submitted in the context of opposition proceedings and examination proceedings or proof of acquired distinctiveness materials in the context of examination). Thus, EUROMARC serves as a mainstay to the work of the Oce. When correspondence is received in the Oce, it is scanned and stored centrally. It is then sent via electronic mail queues to the department or service to which it is addressed for further processing. Clearly, the disadvantage of this system is that there may be a certain amount of delay from the point in time at which an item of correspondence arrives in the Oce to the moment it actually reaches the relevant mail queue of the department or service in question. This problem will be more acute in some cases than in others. In order to attempt to reduce the eects and inconveniences caused by delay, the OceÕs Mail Room and Mail Dispatch services have set up a system of ``fast track'' queues. This basically means that in cases where time is of the essence, the OceÕs mail services endeavour to ensure that vital mail items reach the addressee as soon as possible. A prime example of mail items needing swift processing are requests for inspection of ®les and priority certi®cates, both of which are handled by the Register Service. In the case of a request for a priority certi®cate, the CTM applicant will lose his right to ®le an identical application in a third country if the second application is not ®led within six months of the CTM application. In inspection cases, requests are often made by either the national court or the parties to the on-going national court proceedings. Thus, in both cases a speedy turnaround time is of utmost importance.
Fig. 1. Outline of ®ling procedure for a CTM.
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7. Inspection of ®les ± the paper chase In the defence of earlier rights, third parties may be alerted ± either through periodic searches in the Bulletin or OAMI on-line services or through a commercial agency providing similar search services or in some other way ± to the existence of a con¯icting CTM application or registration. Once alerted, the proprietor of the earlier right may often want more detailed information on the application or registration in question. 7.1. Information requests To this end, he can make one of three requests to the Oce: · to inspect the ®le; · to obtain (either certi®ed or uncerti®ed) copies of certain documents in the ®le; · to receive a reply to a request for information. These three requests fall under the general headings ``Information of the Public and of the Ocial Authorities of the Member States'', in the Basic Regulation on the CTM (Council Regulation (EC) No. 40/94) (Articles 83±87), and ``Inspection of ®les and keeping of ®les'', in the Implementing Regulation (EC) No. 2868/95 (Rules 88±91). These forms of request are also dealt with in the Guidelines on Inspection of Files, published in OHIM Ocial Journal 1998;(7/8):804. For this reason, they are referred to collectively as ``inspection'' in this article. 7.2. Inspection restrictions Inspection is subject to the following restrictions: 1. If the CTM application has not been published in part A of the Bulletin, and the person requesting the inspection, copy or information is not the proprietor of the mark, the Oce will not accede to the request unless the CTM applicant has given his consent. An applicant, or his representative, always has access to the ®les relating to his own application. 2. In the circumstances described in (1) above, the CTM applicantÕs consent will not be necessary where that CTM applicant has stated that once his mark is registered he will rely on it against the person requesting inspection, copy or information. 3. Certain documents marked as con®dential from the outset, pursuant to a request made by the CTM applicant may nevertheless be withheld from inspection, unless the person requesting inspection can show an overriding legitimate interest in obtaining them (e.g., that they are crucial to the on-going court proceedings). The documents will only be marked as con®dential where the party concerned has shown a special interest in keeping them so (e.g., a trade secret
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or the like). Therefore, the Oce must weigh-up the special interests of one party against the legitimate interests of the other. In addition, draft decisions or opinions or other internal documents (e.g., objections raised by a particular examiner on the grounds that he considers himself to be partial or biased and therefore un®t to examine the case) will also be withheld from inspection. 4. Subject to (3) above, documents and information will be freely available as from publication of the CTM application in part A of the Bulletin. It should be noted that the Oce is bound to cooperate with the courts or authorities of national Member States (including Public ProsecutorsÕ Oces and central industrial property oces) and, as such, these bodies are not subject to any of the restrictions mentioned above. In other words, these bodies have an unfettered right of access to the OceÕs ®les, documents and databases. 7.3. File inspections ± formalities As to what each of the above requests actually implies, it should be noted that a request to make inspection of a ®le is dealt with in the following manner. First, the Oce must examine the formal admissibility of the request: · the appropriate fee must be paid (see below); · the request must be in writing (letter or fax); · it must be submitted in the correct language (see below); · it must not be tainted by any of the restrictions or prohibitions mentioned above, or, if so tainted, evidence overcoming such an objection must be ®led with the inspection request; · the ®le number or registration number of the CTM in question must be indicated; · the name and address of the applicant for inspection must be indicated; · the name and the business address of the representative, if any, must be indicated; · if appropriate, there should be an indication of the document or information for which inspection is requested; · the signature of the representative or the applicant should appear on the request. 7.4. Information requests ± language It should be noted that requests of this nature may be made in the ®rst (i.e., any ocial language of the EU Member States) or second language (i.e., English, French, German, Italian or Spanish) of the CTM application before the mark is registered and thereafter in any one of the ®ve Oce languages. In practice, as shown in Fig. 2, the majority of CTM applications are
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Fig. 2. First language of CTM applications (Source: OHIM Statistics, February 2000).
®led in English followed by German, while English followed by French is most common for the second Oce language (see Fig. 3). 7.5. Information requests ± procedures Where inspection of ®les has been requested, the Oce estimates the number of pages in the ®le. It then either telephones or writes to the person who requested the inspection and gives him an estimate of how many pages there are in the ®le. That person can then either choose to come and inspect these paper documents at the Oce in Alicante (in which case the Oce will give him an appointment time to do so), or request copies of certain documents or of the whole ®le. In both cases, payment must be made beforehand in order to validate the request. To facilitate matters, persons making these sort of requests will often have current accounts with the Oce from which the sums owing can be debited. If a person comes to the Oce to inspect the ®le, it will cost Eu30. However, this will give no right to obtain copies of any documents inspected. For copies of the ®le, the price is Eu10 or 30 (depending on whether certi®ed or
uncerti®ed copies are requested) ± this gives a right to obtain up to 10 pages of copied materials ± thereafter the person making the request must pay Eu1 per page and make a new request for certi®ed or uncerti®ed copies of the ®le, as the case may be. In the near future, the Oce will make on-line inspection possible for outsiders coming to the OceÕs new central seat in Alicante (again by prior appointment). This will, of course, involve making limited access to EUROMARC available. So, it will not be possible to inspect ®les other than the one for which inspection has been requested. It should be stressed that inspection of ®le requests for an on site inspection are few and far between and are, at present, most practicable for representatives with oces in Alicante. Finally, a word should be said about requests for information. These requests, like all the others mentioned above, must be made in writing and are subject to the same limitations and restrictions. They are priced at Eu10 per request and will normally deal with individual items of information concerning a CTM or a CTM application. Examples of matters commonly dealt with include: whether a CTM application has been contested in opposition proceedings, the identity of the party or parties who brought those proceedings, the status of the mark, con®rmation that a CTM application has been refused or withdrawn and whether the CTM application has been converted. The reply of the Oce is always given in writing by way of a formal letter. It can be seen that inspection of ®les, copies and information requests are among the requests which least lend themselves to a paperless environment. Although the inspection procedure will shortly be fully automated, the paper chase will continue for quite some time to come in the case of copies and information requests.
8. Searching for clues Fig. 3. Second (ocial) language of CTM applications (Source: OHIM Statistics, February 2000).
A multitude of information is available from the Oce, but often the problem is knowing exactly what to
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ask for. This problem is sometimes particularly acute in the case of copies of ®le documents. The circumstances in which copies of such documents may be needed are manifold. However, if the purpose is to defend earlier rights, it can be useful to have sight of national search documents relating to the CTM application or applications that are considered as potentially con¯icting. 8.1. National search reports Basically, once a CTM application has been given a ®ling date, and provided the goods and services in the application are properly classi®ed, a copy of the CTM application is sent to the national oces. These oces then search their national registers against the CTM application and then each one dispatches a report to the OHIM. If the national search report shows up the earlier right it may be used as a bargaining tool by the earlier right holder in the context of any negotiations subsequently entered into with the CTM applicant. The interesting point for the earlier right holder is that a copy of the search report obtained through the Oce by making a copy request will be (in some cases) over ®ve times cheaper than obtaining it direct from the national Oce. However, not all the national oces produce search reports. Consequently, the domestic situation in France, Germany and Italy will not be ascertainable from the OHIMÕs ®les in relation to a given CTM application. 8.2. CTM search Earlier right holders should also be aware that the Oce conducts an earlier rights search for all CTM applications against existing CTM applications and registrations. This search is carried out more or less contemporaneously with the national searches. The CTM search focuses on: · the dates of ®ling and priority; · the Nice classes, and · the main word and ®gurative elements of the mark.
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However, applications ®led on the same day will not be compared with each other. In addition, although the basic search tool is automated, specialist members of the Oce sort out the names of marks that will actually be cited. The CTM search report is sent to the applicant at the same time as the national search reports. This means that a copy of the CTM report may also be obtained from the Oce by anyone interested in the information it contains. As already mentioned, requests for information, copies and inspection should be addressed to the Oce in writing. The simplest way of doing this will be by sending a fax to the Oce (fax number: +34 96 51 31 344). This fax, once received by the OceÕs central server, will be forwarded to the mail queue of the Register Service (Inspection Group) which processes this type of request.
9. Conclusion Although operating in a totally paperless environment is virtually impossible in current business practice, the OHIM has gone as far as possible to go in that direction. This paperless environment favours complete transparency ± in so far as permitted by the CTM regulations ± in searches made by third parties. The system strives to be as user friendly as possible. However, the total disappearance of paper from the Oce will necessitate further changes in public attitudes towards such a working environment and, more particularly, changes in the acceptable means of proof in judicial proceedings. References [1] Alexander von M uhlendahl. The opening address to PATLIB98 in Alicante: ``The OHIM and the EPO''. World Patent Information 1999;121(1):3±4. [2] Alberto Casado. The closing address to PATLIB98 in Alicante: ``OHIM and trade mark information: the future''. World Patent Information 1999;21(1):41±2.