Merpel visits the EU IPO

Having visited the European Patent Office and the (not yet existing) Unified Patent Court, Merpel now completes a trilogy of visitations of European intellectual property institutions by heading over to the Office Formerly Known as OHIM, now the European Union Intellectual Property Office.  [*Distracting diversion* - "EUIPO" brings to Merpel's mind the line after "Old MacDonald had a farm", and she wonders whether the acronym OFKO might take off instead.  *End of distracting diversion*]  In particular, Merpel has been receiving concerning reports of poor handling of design matters by the EU IPO over the last year or so.

The EU IPO is responsible for registration not only of EU Trade Marks, but also (confusingly still called) Community Registered Designs, which were added to its duties in 2003.  Merpel recalls from when she was a kitten that there were some snags from the outset - many applications were registered on the first day of operation, and some got registered within a few days of filing; others languished for weeks or months leading some applicants to believe that they were being treated unfairly.  Nevertheless, the system worked perfectly adequately from the point of view of most users for the first decade.

The first problem came with the new OHIM website in December 2013.  Setting aside some issues of poor quality content, there was a catastrophic failure of the online filing search functions (see IPKat posts here and here).  Users reported regular problems with online filing of designs thereafter, sometimes the system working perfectly well, and other times crashing irretrievably (a bit of a problem when you have just uploaded the representations for 50 designs).  OHIM's technical assistance frequently concluded that there was no issue at their end, so the problem must be with the user.

Then, without any prior warning or consultation of which Merpel or her correspondents were aware, in September 2015 OHIM changed its online filing system for designs overnight (briefly reported by IPKat here).  The new filing system seems to work reasonably well; the issue for users was that it changed the technical requirements for documents to be submitted (size of JPG images; views over 7 to be submitted as JPGs not PDF and with a 3-view limit), so that application documents that were perfectly acceptable one day were not usable the next.

There have been substantive problems as well.  Over the last year, Merpel has heard of Examiners raising bizarre objections to applications.  First, there has been a sudden increase in incorrect objections to the representations (usually alleging that one or other image does not correspond to the others); on challenge these objections are usually withdrawn without comment and the application registered as if nothing had happened.  And secondly, in respect of some priority countries, the EU IPO has been beginning to insist that the applicant is required to declare that the priority application is the first application for the subject matter, when there appears to be no legal basis for requiring this either in the Regulations or the Examination Guidelines, which have not changed.  These unfounded objections risk tarnishing the reputation of the EU IPO amongst applicants.  This reputation is not helped by other reports of the issuance of certified copies of Community design applications (needed for corresponding applications in other countries claiming priority from the Community application) sometimes being held up by weeks.

Ending with a positive however, Merpel has learned that the work to develop a common practice for graphic representation of designs has now been completed.  A communication (referred to as "CP6") has been finalised by the European Trade Marks and Design Network, which gives detailed guidance with examples of how different types of design can be shown, and how aspects such as colour and disclaimers can be depicted.  Much of the content of this document has been incorporated in a 15 April 2016 amendment of the Examination Guidelines.  It is hoped that this will lead to a convergence of interpretation of design registrations, still hampered by the fact that they contain no legally binding description or claim.  The difficulties that this leads to were vividly illustrated in the recent Trunki case in the UK.  Unfortunately, but understandably, while CP6 gives extensive guidance as to how designs can be depicted, it does not elucidate how those depictions will then be interpreted, which is still subject to the vagaries of national courts.