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Monday, 1 December 2014

Monday miscellany

The cost of a name-change. From Christopher Morcom QC (Hogarth Chambers) comes an interesting observation. He writes:


Readers of your weblog may have noted the recent publication by the Office for Harmonisation in the Internal Market (OHIM) of an “Implementation Analysis on the Legal Reform” [read here, download here]. One such item concerns a “Change in the Name of the Office”. There are two proposals, from the European Commission and the European Parliament. The former proposal is to amend Article 2 of the Community Trade Mark Regulation to change the name of the Office to “European Union Trade Marks and Designs Agency”. The latter proposal is for “European Union Intellectual Property Office”, which is misleading, because the Office will not be concerned, for example, with patents or copyright.

The real objections to both proposals is that they are unnecessary, and involve costs that should be considered unacceptable. As regards necessity, OHIM’s Analysis itself makes the point, noting that ”The Office’s current name is well-known in the IP community and has acquired a high level of distinction”. Dare one say that ‘OHIM’, known to the IP community internationally, is established as the trade mark of the Office? [Merpel thinks it's more than even a trade mark: is it by chance a Protected Symbol under Article 6 ter of the Paris Convention, she speculates] Further, the Analysis sets out, under ‘Benefits’ the of the current name, a number of cogent points. In contrast, the “main benefits” claimed for a change of name are that they “could” – not would – have certain results. So why the need for any change? The case against any change becomes even stronger when it is seen what either proposed change would cost. We are informed that the Office requires a total of EUR 1,854,211.60 to implement a change of name. The total cost to users is estimated at EUR 3.9 million, and the cost to ‘stakeholders’ at EUR 135,000 ['stakeholders' here are only national offices and NGOs. Apparently no-one else, including users of the system, incurs any cost]. It is time that those responsible for the proposed changes to the CTM Regulation and the Harmonisation Directive to make the only sensible decision, which is to maintain the existing name.
The IPKat would love to hear from readers, who may have thoughts on this matter.  While we're about it, this Kat continues to wonder why OHIM insists in spelling 'Harmonisation' with a 'z' when the Community Trade Mark Regulation spells it with an 's'.  



Latest JIPLP. Since so many members of the IPKat blogging team past, present and no doubt future have been involved with the Journal of Intellectual Property Law & Practice (JIPLP), that journal is practically regarded in some quarters as the serious side of this weblog (or perhaps this weblog reflects JIPLP at play). Either way, the December issue has now been published online (the print edition will be out soon -- but well over 90% of subscribers take the online version); contributors include regular Kat Birgit plus frequent guest contributors Valentina Torelli and Paul England. You can peruse its contents here and read the guest editorial on federalisation and local IP law-making by Phillip Johnson here.  Enjoy!



QMJIP: hard to pronounce, good to read.  On the subject of journals, the latest issue of the Queen Mary Journal of Intellectual Property is now available. Details of its contents, plus information concerning this issue's free bonus article ("Legal and economic arguments for the protection of advertising value through trade mark law" by Apostolos Chronopoulos), can be found by clicking on publisher Edward Elgar's website here.



Around the weblogs. IP Finance has been busy of late. Keith Mallinson has been looking at the licensing of mobile technologies, highlighting some of the positive aspects of the phenomenon, while Mike Mireles writes on trade marks and homophones.  PatLit's David Berry explains the significance of the recent Court of Appeals for the Federal Circuit ruling in Versata Software v Callidus Software on whether patent infringement proceedings should be stayed pending a post-grant patent review. On Class 46 our friend and former guest Kat Laetitia has some news for people who assume that Eau de Cologne comes from that lovely city while, on Class 99, readers can reflect on the relative design characteristics of a domestic cats and none-too-domestic pumas.


" ... But some patent attorneys are more EQE than others".  Brian Cronin (PATSKILLS) has written to inform us of the publication on YouTube of a tutorial entitled “EQE 1st Approach – Serving the Client”. You can access it by clicking here. Brian explains:
In this tutorial, the job of a European Patent Attorney in serving a client’s interests is applied to the EQE [= European qualifying examination] candidate by considering that the Examination Organisation -- a 50-50 joint venture between the European Patent Office and the epi [= European Patent Institute] -- is a client of the would-be European Patent Attorney who must find out this client’s requirements and serve its interests. This tutorial will be of interest to all candidates preparing for one or more papers of the EQE.
This is the first of a series of tutorials covering six complementary approaches to the EQE, says Brian who adds: "Keep on the lookout for the follow-up!"



Feeling hungry? Dine in style!  Don’t forget the Union dinner on 4 December 2014 where Charlotte May QC will be reflecting on, in appropriately Christmassy fashion, on IP past, present and future.  Further information available from dinners@union-gb.com 


The branding of Belgian chocolates? Well, not quite, but here's a reminder that, on 29 and 30 January 2015, you can enjoy "Trade Mark Litigation", a two-day forum organised by C5 and held in the Royal Windsor Hotel, Brussels. The large cast of experts includes several members of the judiciary past and present and a good smattering of Katfriends to boot, including former guest Kat Darren Meale.  For further particulars of the programme and for registration click here.



Kiwi users, beware. The New Zealand Intellectual Property Office's Maori Advisory Committee has produced some new guidelines on the application of sections 177-180 of that lovely land's Trade Marks Act 2002. "These Guidelines do not constrain the judgement and discretion of the Commissioner of Trade Marks, and each application will be considered on its own merits" -- and here they are (a Katpat to Chris Torrero for the link). This Kat had no idea that use of "kiwi" might be a matter of cultural sensitivity, so he promises to be most careful how he uses it in future.



A Katpat goes to Rhoda Baxter ("writer of smart romantic comedy" and author of Girl on the Run, originally released under its far more appealing title of Patently in Love) for pointing us to "Why Copyright Needs to Be Defended", a lively piece by Robert Levine that is sure to raise the hopes of half our readers and the hackles of the other half. Robert, you may recall, is author of Free Ride: How Digital Parasites Are Destroying the Culture Business, and How the Culture Business Can Fight Back.

6 comments:

Anonymous said...

Article 2 of the original Community Trade Mark Regulation (Council Regulation (EC) [http://eur-lex.europa.eu/legal-content/EN/TXT/;ELX_SESSIONID=064fJ89cJb86yL7GTJyvm3gp8lbCHSn15fhk2bn8xyP1yQwVXgjB!2005588632?uri=celex:31994R0040 No 40/94] of 20 December 1993 on the Community trade mark) spelled Harmonisation with a 'z', which is probably the reason the OHIM does so as well.

Anonymous said...

Article 2 of the original Community Trade Mark Regulation (Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark) spelled Harmonisation with a 'z', which is probably the reason the OHIM does so as well.

Tim, Copyright for Archivists said...

Christopher Morcom QC is forgetting that OHIM is now responsible for the EC Orphan Works register, under the directive that came into force in the UK recently (see SI 2014/2861 Sch para 5(9)). It should therefore certainly not be named a trade marks and designs agency; intellectual property office seems much more appropriate even without any patents work.

Katharina Schmid said...

I certainly support the proposal that OHIM’s name is NOT CHANGED, and assume that many others do, too. I wonder if doing an online-survey by the ipkat might help support the case?

Charles said...

OHMI, OAMI, OHIM. Time to harmonisze the name?

Anonymous said...

I don't know about the IP community, but I get raised eyebrows everytime I tell a member of the general public that the body responsible for EU trademarks and designs is called "Office for the Harmoni(s/z)ation of the Internal Market". I guess that the expenditure of changing its name is harder to justify in these lean times, but I suspect it'll have to do it at some time in the future.

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