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A Business View of OHIM

A user of the Community trade mark since it first become available, INTA's President elect, Gerhard Bauer is also an observer, on behalf of BUSINESSEUROPE, on OHIM's Administrative Board and Budget Committee. In a special interview in advance of the INTA annual meeting in Boston, (22-26 May) he talks about his career and provides a unique business perspective on the achievements of the Community trade mark system and the challenges ahead for OHIM.

How did you get started in IP?
I got started in patents first back in 1987. After studying electrical engineering at university, I decided to join the patent department of the Daimler Benz company, where I got all my training on patent issues, and also on trade mark and design patent work. Then I passed my Patent Attorneys' exam in Germany and on returning to Daimler, I took over the trade mark department, which was a complete change and a new challenge for me. I worked on trade marks, design patents, external suggestions and all the administrative work of the whole IP-department.

Has this experience given you a different perspective to that of professional representatives acting for private clients?
As I am also the owner of my own private practice, I think I can see both sides. I represent SMEs as a patent and trade mark attorney and I represent a large multinational company as an employee. Of course, the largest amount of work is for Daimler and this gives me the perspective of an intensive user of the trade mark systems, handling a portfolio of more than 36,000 trade marks, including about 1,000 Community trade marks.

How far back does your history with OHIM go?
I was involved since the beginning of the Community trade mark system, following very closely the development and then, at the starting point, I remember filing all the applications in one day in order to get the proper filing date. At the start I was essentially a customer, but by the year 2,000 I had already got involved with user associations like INTA, the German national users' associations, and at a later stage, BUSINESSEUROPE, which brings together member associations at an international level.

Do you find that you are treated differently by different IP offices, or as a customer, is the experience similar?
It is absolutely different. As I have mentioned, I manage a huge trade mark portfolio covering the whole world and as such I experience trade mark offices at all levels and stages of development. I have to admit, of course, that at the top stage of development that's where you find OHIM. It's a benchmark.

While it is encouraging for any office to get good feedback, what could we be doing better?
As the saying goes, “Nobody's perfect”, but what is most important is that at OHIM this development keeps going on. We have been able to give feedback and to participate in development, mainly in the field of electronic business. But we have also played a role in developing and implementing regulations. There has always been a very close link between OHIM, the Commission and the users of the trade mark systems and we are looking forward that this spirit of cooperation will be ongoing in the future especially in view of the study of the overall functioning of the European trade mark systems which has been started by the Commission.

Is this level of cooperation unusual?
At least, it is not common. I have never seen such a degree of openness with respect to users and users' needs as I have experienced here. I am still in contact with various offices worldwide, but that is on a different level. It's not dealing with the day to day business, but more dealing with harmonization issues all over the world and the spread of international agreements. The difference with OHIM is: contact on a regular basis; exchange of ideas; always finding an open ear to new ideas.

Are OHIM's strategies of striving for greater efficiency, better service, and lower prices mirrored by developments in other IP offices?
We see a very diverse picture if we look at offices all over the world, and the main difference, I think, is whether those offices are self-funding or are funded by government budget. With respect to OHIM we have seen it is well-functioning and efficient to a great degree. Of course, we should not lose sight of quality. We have seen many, many efforts from the side of the office here, to have a stable or increasing level of quality applied to its work and to its decisions. Can efficiency and quality move forward together at the same time? The answer is a clear “yes”.

You have already mentioned the European Commission's study of the functioning of the trade mark systems in Europe . What is your view of this study?
I welcome the general idea of the study very much, because the Community trade mark has now been in place since 1996. It has been effective, but it is time to re-think things and maybe find improvements to the regulations if necessary. The study is a very good basis for these things. The study also gives us the opportunity to compare the Community level of protection with the national level of protection. I know this is a sensitive issue, because it also means comparing Community law with national law and benchmarking between institutions.

How important are national trade marks to businesses?
Representing a company with a huge trade mark portfolio, I always confirm that there has always been, and will always be, a need for national trade marks. The decision-making for filing at national or Community level is made on a case-by-case basis. So, despite all the arguments that fees are the most important thing, I would say that while, of course, we welcome saving money especially taking into account today's global economical situation, the decision is based on many factors. These include, where we are going to use the trade mark, what language, how many markets, and so on.

Why do you think that CTM applications have bounced back from the recession so quickly?
It is the easy, quick and efficient way to obtain trade mark protection, which attracts the users of the system. Nevertheless, there is also an increase for national trade mark applications. We have to differentiate the applicants. Many small enterprises, which are only active in one country, may prefer national trade mark protection, and that is leading to an increase in trade marks in those countries. On the other hand, a trade mark owner applying for protection in several countries would probably prefer the Community trade mark way. It offers a simplification of procedures and value for money. There may also be a tendency for foreign trade mark applicants to prefer the Community route.

Statistics seem to confirm that: the number of applications from local companies has kept growing in all of the 25 national offices in the EU since the CTM system began functioning in 1996. Where national offices have lost applications, this has been a loss in applications filed by foreign companies, which is just normal considering the availability of the CTM system.

One can then conclude that if some substitution of CTMs for national trade marks is taking place, this substitution is precisely what the lawmaker intended and follows the logic of the Single Market.

Should the Community trade mark continue to get cheaper if that is possible?
Of course, it will be attractive if the fees are reduced, and I also think this is the right way. Every applicant is looking at what he gets for his money. As a user you want to see an appropriate ratio between the amount of work performed by an institution and the cost of the work. Fees should not be maintained artificially high if there is room for reduction. This leads me to the controversial issue of the CTM renewal fees. Renewal fees are now more expensive than the initial registration, and there is very little work involved for the office: this lacks logic. I think there should be a substantial reduction and I know that the office has suggested that steps be taken to address this issue in its submission to the EC study.

What other issues do you think the EC study should address?
Having a complete review of the Community trade mark after 15 years of operation is important. We should also look into the fee issue, but also get some updates and improvements with regard to some open or controversial questions, such as the “genuine use” issue, where there is still no harmonization between the national and the Community level as seen in recent decisions by certain national offices.

What do you think that the recent decisions, suggesting that “genuine use” in a single country is not enough for a Community trade mark?
We really have to define a bit more what “genuine use” is. The answer is not as simple as, “one country is not sufficient”, whereas use in two or three may be sufficient. You have to take a close look at the facts of each case: how extensive is this use, which products are involved, are they for the mass market or for specialised machinery. In my opinion there will be no simple answer with respect to one country, two countries or three countries. All the facts belonging to each case must be considered. The basis of this discussion is the fear of some trade mark owners or trade mark offices that the Community trade mark might be used by applicants who have just the intention of blocking use for another trade mark owner in an individual country. The fact is that I am not aware of a single instance where this has created a problem.

What do you think of the objection that even where Community trade marks are used in several large countries, they may never be used in some countries and this has the effect of reducing the choice for national trade mark users?

There is an easy answer to that. We have created a Common Market with instruments such as the Community trade mark to facilitate trade. Users need this flexibility even if they do not have the intention of doing business in every single country. The CTM was always intended to be a unitary trade mark in the territory of the European Union.

How important do you think international cooperation in trade marks is?
From the users' point of view cooperation between trade mark offices is an absolute must. There is a need for harmonization and predictability, for example on absolute grounds or for classification. I know that OHIM has taken a leading role in this aspect. The OHIM Cooperation Fund has now been set up, which gives us more opportunities and more monetary means to foster cooperation and harmonization in the EU. We must not forget, however, that there are other major players such as the Chinese Office, the USPTO, the Japanese Office and many others where there is also a need for cooperation and I think there has been good progress in this area also.

Looking forward, what advice would you give to OHIM?
Keep doing what you are doing in the very positive way you have shown in the past. Take a leading role with the Commission to ensure that there is a regular review of fees, including, in particular, a reduction of the renewal fee. Finally, make best use of OHIM's existing surplus by measures such as paying the money back to the users.

Gerhard Bauer was interviewed by Alicante News' editor, Reg Rea. A delegation from OHIM led by President Wubbo de Boer will be attending the INTA Annual Meeting from 22-26 May. Our experts will be giving a number of presentations and we look forward to seeing users at booth 618. The current interview is one of the articles contained in a special PDF magazine marking OHIM's participation at the INTA meeting, which is due to be published online on Friday 21 May. For more information see the events page on the OHIM website.