During 2011, in spite of the continued strong growth in Community trade mark and design applications, the Office continued to perform well with regard to most timeliness objectives, and to build on the previous progress made.
In September, the Office received the one millionth CTM application, and during the year the number of trade marks and designs received reached new record levels, in spite of the general economic problems.
The Boards of Appeal saw a further increase in the number of appeals filed and both closed more cases and made more decisions than the previous year.
On e-Business, CTM e-filing continued to be the preferred route for users, and RCD e-filing continued to grow in popularity.
By the end of 2011, just under 106,000 applications had been received, with Madrid Protocol applications representing 16% of the total.
This was 6% more than the Work Programme estimate and 7.7% up on the previous year.
CTM applications (2008-2011)
In view of the progress on timeliness in 2010, the Service Charter standards for the publication and registration of CTMs were reduced by one week to 10 weeks and 25 weeks respectively. In spite of the steady increase in applications, processing times were maintained or improved. By the end of 2011, 98% of CTM applications for straightforward files (not experiencing opposition or appeal) were being published and 99% were being registered within the new standard times.
With regard to oppositions, just over 17,000 were received, which is about 800 fewer than in 2010. Around 6 300 opposition decisions were made which, given the improved situation with regard to pending stock and timeliness means that the Office is now working in the steady state regime.
The target time to notify opposition decisions within 10 weeks of the end of the adversarial proceedings was being met in 89% of cases during the final quarter, maintaining the substantial improvements compared with the previous year, when the target time was 17 weeks.
Opposition decisions within 10 weeks (%)
However, further work is needed on the quality of opposition decisions. During the final two quarters approximately 88% of decisions met the quality standard which was still far from the target of 95%.
The quality of our decisions on trade mark classification and on absolute grounds, on the other hand, was generally met or exceeded during last year.
Decisions on classification complying with OHIM quality standards
Decisions on absolute grounds complying with OHIM quality standards
During 2011 we continued to receive increased numbers of CTM cancellations. Just under 1 100 cancellations were filed, which is almost 150 more than last year and 40% up on the number we received in 2009. The rise is broadly in line with the increased number of registrations during this period, and the Office also settled 986 cancellations, which is 36% more than in 2010.
During the year, a special team was put in place to tackle the backlog in cancellation decisions. In the final quarter 64% of files were complying with the new standard to notify the decision within 22 weeks of the end of the adversarial part of the proceedings, compared with just 12% in the first quarter. The Office intends to continue to make progress and will be reducing the target time to 16 weeks for 2012.
Cancellation decisions within 22 weeks (%)
The number of registered Community designs received grew overall by 7% to just over 87,000. Both direct filings and international applications increased, but the rate of growth of IAs, while still robust at 25%, was lower than in recent years.
Designs received (inc. International Apps)
With regard to timeliness for designs, the Office met the new design objectives for the Office “first action” within 10 working days in case of files with problems in 99% of cases (target 80%). The new standard for RCD “fast-track” registration within two working days for files meeting some simple application criteria was also met 99% (on target). For non fast-tracked files, provided no user interaction was required, the target of registration within 10 working days was met in 97% of cases in the final quarter.
Turning to RCD invalidity requests, while only a relatively small proportion of designs attract invalidity applications the Office has been experiencing a rising trend. Over 340 RCD invalidity applications were received, which is which was 80% more than the Work Programme estimate.
In spite of this increase, by the end of the year the new standard for notifying design invalidity decisions within 10 weeks was met in 91% of cases compared with just 79% in the first quarter.
The Boards of Appeal saw another increase in the number of appeals filed during 2011. A total of 2,622 appeals were received, which was a 2% rise compared with the previous year, but 65% more than in 2009.
The Boards made 2,166 decisions and 2, 202 appeals were closed – in both cases these figures were over 20% higher than in 2010. By the year end, 90% of inter partes were being notified within six months (target 80%) and 89% of ex parte decisions within the same period (target 90%).
Appeals Received Versus Decision s Made
The year saw a rise of six the number of cases filed at the General Court to 212 and at the Court of Justice the number of cases filed went up from 31 to 40. Meanwhile, with regard to decisions made by the Luxembourg courts during the year, the original OHIM decision was upheld in about 80% of cases.
During 2011 a new Mediation Service was introduced as an alternative to appeals decisions before the Boards of Appeal. The service is staffed by a number of experienced experts from OHIM who have undertaken specialist mediation training.
Mediation is a new departure for the Office and the initial reaction from users has been positive. While initially Mediation is limited to appeals cases the Office is open-minded about the possibility that in future it could be extended to other appropriate inter partes disputes.
The majority of OHIM’s exchanges with customers now take place electronically and the Office is continuing to invest in user-friendly tools for customers and more efficient file handling behind the scenes.
By the end of the year CTM e-filing accounted for 95% of filings, excluding filings under the Madrid Protocol. For RCDs, e-filing reached 78% of the total; and 34% of oppositions against CTM applications were being received electronically. In addition, the proportion of fees paid by credit card rose to over 17% compared with 14% the previous year.
|CTM E-Filing||RCD E-Filing|
The Office is committed to creating and maintaining world-class e-Business tools, both for our own use and to share with our partners in national IP offices in EU member states (see separate report on the Cooperation Fund).
*Design “fast-track” conditions are – Must have (1) OHIM current account. (2) Use e-filing. (3) Either no priority claim or priority documents attached (4) Use Eurolocarno for product designation and classification. (5) Owner and Rep. must use pre-existing OHIM ID number in application.