Trademarks electronic filing

Jean-Marie PutzIT Manager

15 june 2006

What I will not tell you about electronic filing of trademarks…

Boring figures

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

2002 2003 2004 2005 2006

Traditional

Electronic

Boring technology

•BMBConnect is available as A web form A client A module in vendor’s programs

•A new version will be available soon In Java

What I will tell you about electronic filing of trademarks…

The world of Trademarks

Trademarks filing

Seen from the office point of viewMission

Receive trademark demands

Register trademarks

Publish trademarks

Tasks

Check formalities

Apply legal prescriptions

Apply agreed standards (e.g. Nice Classification) (uniformization of publication)To make their life easier, Trademark Offices invented forms.

To reduce their workload, they want applicants fill in the Office database…

Trademarks filing

Seen from the applicant point of viewMission

Run his business

Tasks

Find customers

Do his job

Registering a trademark is not an easy administrative process

Trademark standards are not common language

Trademark registering is not a natural phenomenon…

… but we believe it should be

This is Bob, thepainter…

This is Bob, thepainter…

Trademarks filing

The partners

Applies for registration of a

trademarkIn reality it is not that easy…

Requests a formSends a formTries to fill in the form

Requests help and adviceProvides help, but no

adviceGets angry

Sends the form … (or not)

BobThe

office

Trademarks filing

The partners (2)

Bob

The office

The agent

•The agent helps with formalities (because the procedure is not easy)

•The agent provides good advice

Electronic filing

The electronic partners

BobThe

office

Form is available on InternetForm provides help

Form avoids input errors…

…Form is easy to use, but

Form does not provide advice…

•The agent provides good advice

The real world

In the real world…

Bob is painting

Bob is living in Schengen, Luxemburg

…and he is aware of the importance of having a registered trademark

If Benelux was an island

Schengen

But Benelux is not an island…

Schengen

Bob is a good painter…

• He wants to extend his business to France and Germany…

• He has several possibilities: Register directly in France and in

Germany Register in Benelux, and extend

through Madrid system Register at OHIM

The traditional way (1)

Registering in France and Germany

Requests a form

Requests a form

Sends a form

Sends a form

Requests help and advice

Requests help and advice

Tries to fill in the forms

And so on…

The traditional way (2)

WIPO

Applies for a trademark

and asks for international extension

Germany

France

The traditional way (3)

OHIM

Applies for an European TM

Which is not easier than applying for a national trademark…

European trademark

Applying for an European trademark, Bob will get protection in the whole European community.

Question: did he really want this ?

Does he really need this… ?

The ideal world

In an ideal situation….

Applies for a trademark

Indicates the countries he is interessed in

Computer lets him choose the desired procedure

Computer sends the application form to the

desired office(s)

Is this possible?…

• Requirements A common electronic filing platform A common will to cooperate A kind of harmonization between

trademarks offices

• Standards Existing TM-XML (will be Wipo

standard ST66)…

Bringing the worlds together

Let’s protect trademarks…

Thank you for yourattention

Discussion