Alicante (Spain) - The need for international cooperation on trade mark issues is widely agreed, but it has proved difficult so far to make further progress in an area that is governed by a range of sometimes conflicting economic and jurisdictional interests.

To move things forward, OHIM President Wubbo de Boer has called for a major effort to cut the red tape facing businesses attempting to protect their intellectual properties worldwide.

Speaking at the International Trademark Association conference in Sydney Australia earlier this month, he invited the world's ten biggest trade mark organisations to get round the table with the ten biggest international filing companies to thrash out a workable solution.

He offered to host a working conference to take the "first exploratory steps" towards a more transparent and less bureaucratic world trade mark system. The reason being that trade mark owners increasingly dealt with more than one jurisdiction and would like to see their applications dealt with in the same way, with the same basic information demanded.

The background to this latest initiative does show a history of progress in some areas. International trade mark law has been in place through the various WIPO instruments and TRIPS for many years and the minimum guarantees that national registration must secure are provided for. In addition, an international registration system already exists and is heavily used in an increasing number of countries, and classification issues had been dealt with. Nevertheless, significant differences in practice remain, particularly between the US and the rest of the world.

Pointing to some of the key differences remaining in his speech in Sydney, OHIM's President said: "This is one area in which harmonization is really needed. International businesses need a consistent approach from international trade mark offices".

The "treaty approach" was one possible solution, as was the creation of regional systems such as the Community trade mark administered by OHIM or the Benelux approach. However, there was also the “pragmatic office approach” illustrated by OHIM's liaison meetings with EU member states, exchanges of personnel, and cooperative efforts on training. Meanwhile, on the international scene OHIM was making efforts to harmonize classifications via the Trilateral meetings between Japan, the US and the EU.

He said that the key to this kind of "pragmatic" progress was easy and immediate public access to the content of databases belonging to several offices. OHIM was already cooperating in two major projects in this area with the EU member states – EuroClass, which works towards common classification terminology; and EuroRegister, which is creating a common look-up of European trade marks.

The speech set out three ground-rules for progress:

• The field for harmonization should be well defined and reformers should not try to tackle ‘the impossible'. The emphasis should be on issues like classification, common standards for electronic communication, or databases setting out the practice on similarity of goods and services.
• Trade mark owners should be asked to help define priority of issue.
• The methodological choice between harmonization and transparency must be explored.

"We talk a lot about 'harmonization' but I strongly believe that the key to a potential successful next step lies in transparency and openness, and better understanding of the legal situation in the various jurisdictions", the OHIM President added.

Source: Alicante News - European Trade Marks and Designs Newsletter - issue 03/08

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