Thursday, November 20, 2008

OHIM failing oppositions

OHIM's November issue of the Alicante News (here) features an interesting piece in response to their opposition decisions quality check.

The main points are as follows:

The Targets
For 2008 the Office decided on quality objectives for classification of lists of goods and services, absolute grounds for refusal as well as opposition. The target for oppositions was to produce at least 95% of decisions free from any error.

The Standards (what constitutes an error free opposition decision?)
A decision is error free when three aspects, namely, format, content and the outcome are all in accordance with the standards the Office has established. The format of an opposition decision is correct only if, among other things, it: clearly identifies the mark and the goods and services concerned and the parties. It must also summarise the relevant points made by the parties. In order for the content to be correct there must, among other requirements, be a correct comparison of the signs and goods and services. The whole content must be expressed in clear language.

The outcome of a decision must be in line with the Guidelines adopted by the Office. An incorrect outcome is where the decision wrongly either (a) upholds the opposition in respect of some or all of the goods and services concerned or (b) rejects the opposition in respect of some or all of the goods and services concerned.

Some commentators question whether including issues such as format and content represent too great an emphasis on form over substance. The Office does not see it that way. The outcome is, of course, important but the Office aims to have a high standard in all aspects of the decisions being made In December last year the Office convened an external panel to review the quality checking system that had been established. The panel was generally satisfied with the approach of the Office but also made some suggestions, including a recommendation that errors be categorised for greater transparency.

The checking process
The cases to be examined each week are selected automatically by a computer program. The number of cases and the program together ensure that the sample is sufficient to guarantee that the results on a quarterly basis can be relied as being representative of the overall output of decisions. The checks themselves are carried out by a group of four highly qualified and experienced staff. They individually examine the cases assigned to them before discussing those cases together where possible errors are detected.


The results of the weekly check are provided in writing directly to the examiners concerned as well as to their legal advisers and team leaders. In addition to the individual feedback, the process allows the group carrying out the check to identify measures the Office needs to take to assist examiners in carrying out their decision making tasks. The measures include: coaching for individuals; general training on specific topics; improvement in standard letters and decision templates; clarification of Guidelines through amendments to the Manual of Trade Mark Practice.

Assessment of results in 2008

The Office is disappointed that it continues to fail to reach its targets. The appropriate response is not to reduce the targets or dilute the self imposed standards that have been established. The Office will redouble its efforts to ensure that the measures taken as a result of feedback from the exercise have a greater impact on improving quality. The Office is also looking to see what additional measures can be implemented to underpin the process of delivering quality output. Among other things, a tool to increase clarity and consistency concerning similarity of goods and services will be available in the coming year to help address one of the important areas of errors.

Having been on the receiving end of some "interesting" or "creative" opposition decisions IP Freely is encouraged that OHIM have made the positive step of admitting it's problems (just like an addict it's the first step to recovery!) and are planning for the future. But one wonders when the UK IPO and other offices will follow suit.

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