1. User Group meeting 22 nd April 2013 Convergence Programme Overview

2. Envisaged endorsement in 2013 CP roll-out Plan Envisaged endorsement in 2014 Convergence Programme CP5. Relative Grounds - Likelihood of Confusion CP1. Harmonization of Classification – General indications CP2. Convergence of Class headings CP3. Absolute Grounds - Figurative Marks CP4. Scope of Protection B&W Marks CP1 Endorsement in 2012 5 projects running

3. Progress : General Indications of Nice Class Headings CP1. Harmonization of Classification of G&S Convergence Programme Progress Report Class Nice Class Heading individual term 6 Goods of common metal not included in other classes 7Machines and machine tools 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes 16 Paper, cardboard and goods made from these materials, not included in other classes 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes 18 Leather and imitations of leather, and goods made of these materials and not included in other classes 20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics 37Repair 37Installation services 40Treatment of materials 45 Personal and social services rendered by others to meet the needs of individuals RESULT : a new common practice reached where 11 individual Nice Class heading terms are now commonly considered as being too vague for classification + common reasoning OBJECTIVE : reach a common answer as to which general indications of the Nice Class Headings are sufficiently clear and precise for classification. Initiative started June 2012 Envisaged for endorsement in AB meeting by May 2013 This initiative will lead to a harmonized approach in ETMD network

4. Progress : Harmonization on Classification Practice CP1. Harmonization of Classification of G&S Convergence Programme Progress Report Guidelines for common criteria acceptability for classification 01 02 03 Common agreement on what terms to reject 04 05 12 harmonized offices (OHIM, IE, SE, GB, ES, MT, IT, PT, BG, EE, GR, PL) Common Communication: harmonized and synchronised communication on CP achievements

5. Progress : Taxonomy CP2. Convergence of Class Headings Convergence Programme Progress Report Taxonomy - It is a hierarchical structure based on the Nice Classification system that groups terms with similar characteristics within each of the classes into a logical and intuitive tree structure. Benefits - Fits classification terms into a hierarchical structure based on the Nice Classification system; Allows for user-friendly searching of goods and services; Facilitates efficient and timely updates of term databases to better reflect the current economic market; 01 02 03 Allows for adequate protection while filing shorter lists of goods and services. 04

6. Progress : Taxonomy CP2. Convergence of Class Headings Convergence Programme Progress Report Communication milestones Phases PHASE 1: PILOT PHASE 2: Operational Use ….. Milestones 1st July Taxonomy in TMClass 25th Nov Go-Live efiling; Website 22 Apr New Services 22 April User Group 2 May Common Com. IPT Case 21 May ABBC 4 May INTA 24 April Liaison 7 Nov Liaison 19 Nov ABBC 14 June Judges Training milestones 17 April DE SE EE On demand Video conference training for NOs 24 April PT LT BX GR BG IT July Webinar NOs to invite their users October 2 day taxonomy training for Classification Experts (NOs and OHIM)

7. CP3. Absolute grounds – Figurative Trade marks Convergence Programme : CP3. Absolute grounds – Figurative Trade marks Establish a common practice in relation to when a figurative mark, containing purely descriptive /non- distinctive words, passes the absolute grounds examination because the figurative element renders sufficient distinctive character. CP3. Absolute grounds – Figurative Trade marks Aiming at endorsement in AB meeting by November 2014

8. Criteria : Summary result of meeting held 16 October 2012 CP3. Absolute grounds – Figurative Trademarks Convergence Programme Progress Report With respect to the word elements in the mark: 1.Typeface and font 2.Combination with colours 3.Combination with punctuation marks and other symbols 4.Position (sideways, upside-down, etc.) With respect to the figurative elements in the mark: 1.Use of simple geometric shapes 2.The position and proportion (size) of the figurative element in relation to the word 3.The proportion (size) of the figurative element in relation to the word element 4.The figurative element is a representation of the goods and/or services Close to consensus To be further elaborated Typeface and font Combination with colours Position (sideways, upside-down, etc.) Combination with punctuation marks and other symbols Use of simple geometric shapes The position of the figurative element in relation to the word element

9. Convergence Programme : CP4. Scope of protection B&W marks Harmonize the different interpretations of the scope of protection of trade marks exclusively in black, white and/or shades of grey (whether they cover any/all colours or not). CP4. Scope of protection B&W marks Aiming at endorsement in AB meeting by November 2013

10. Status CP4. Scope of protection B&W marks Convergence Programme Progress Report Priority claims Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims At Meeting of 17 October 2012 : due to the administrative context the marks need to be the same in the strictest possible meaning Most of the participating offices agree that: a trade mark registered in B&W is not considered identical to the same sign in colour as regards priority claims. However, if the differences in colour are so insignificant that they may go unnoticed by the average consumer, the signs will be considered identical.

11. Status CP4. Scope of protection B&W marks Convergence Programme Progress Report What are insignificant differences? Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims

12. Status CP4. Scope of protection B&W marks Convergence Programme Progress Report What are significant differences? Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims

13. Status CP4. Scope of protection B&W marks Convergence Programme Progress Report Relative grounds for refusal Most offices agree with following phrasing: A change from B&W to colour will be noticed by the average consumer. Only under exceptional circumstances, namely when the differences in colours in the signs viewed as a whole are so insignificant that they may go unnoticed by an average consumer, the signs will be considered identical. Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims

14. Status CP4. Scope of protection B&W marks Convergence Programme Progress Report Proof of use Meeting of October 2012: For the purposes of use, a change only in colour does not alter the distinctive character of the trade mark as long as: The word/figurative elements coincide and are the main distinctive elements. The contrast of shades is respected. Colour or combination of colours does not have distinctive character in itself. Colour is not one of the main contributors to the overall distinctiveness of the sign. Converge the practice on whether a trade mark registered in B&W and/or greyscale is considered identical to the same sign in colour as regards priority claims

15. Convergence Programme : CP3. Absolute grounds – Figurative Trade marks Harmonize the practice regarding non distinctive/weak components of trade marks for the purpose of assessing likelihood of confusion, assuming that the goods and/or services are identical. CP5. Relative grounds – likelihood of confusion Aimed at endorsement in AB meeting by November 2014

16. Convergence Programme : CP3. Absolute grounds – Figurative Trade marks CP5. Relative grounds – likelihood of confusion

17. Convergence Programme Progress Report Team Composition / Dependencies Maintenance of Practices - Convergence Central Team

18. Contributors Authors Approved by owner DRAFT / APPROVED Status Presentation Revision history 08/02/20130.1 DescriptionAuthorDate Version PH- - - - - -- - - - - -- - - - 10/02/20131.0DS- - TECH. LAISON. Meeting March 2013 Convergence Programme

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