CTM QUALITY CHECKS PROCEDURE AND STANDARDS
1.AIM
The aim of this procedure is to continuously improve the quality of the decision making activity in CTM
examination and opposition processes.
2.SCOPE
The scope of the procedure is to establish a suitable and efficient checking system, which allows
reviewing a sample of decisions made in examination and opposition processes and verify their
compliance with predefined quality attributes.
The procedure is intended to:
A. Offer a reliable picture about the quality in the decision making activity of CTM examination
and opposition processes.
B. Supply valuable information for quality analysis.
C. Enable the Office to take preventive and corrective actions needed to enable improvements
in those areas.
3. RESPONSIBILITIES
The procedure involves the participation of the two departments dealing with CTM examination and
opposition, i.e. Trade Mark and Cancellation Department (TMCD) and Trade Mark and Register
Department (TMRD). However, the main responsibilities are shared as follows:
A. TMCD and TMRD Directors: approve the list of quality attributes to be checked and the
practice as to what should be accounted as an error; decide the circulation of reports on quality
internally and externally;
B. Legal Advisors: experienced examiners responsible for revising decisions on absolute and
relative grounds belonging to the selected statistical samples, following established quality
attributes and practices.
C. Classification Experts: experienced examiners responsible for revising the decisions on
classification belonging to the selected statistical samples, following established quality attributes
and practices
D. Quality Check Coordinator: generates the statistical samples from relevant populations and
distributes the cases belonging to the sample among Legal Advisors and Classification Experts
for revision; provides technical support to the Legal Advisors and Classification Experts in
conducting the control procedure.
E. Quality Check Review Group carries out analysis on quarterly basis and it is made up by
representatives of TMCD, TMRD, Department for IP Policy (DIPP) and Quality Management
Department (QMD).
4. ACTIVITIES
4.1 Defining the sample
From a statistical point of view, the relevant populations are the following:
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all CTM applications ready to be published and all refusal decisions on absolute grounds;
all decisions on substance taken in opposition proceedings.
Two samples are generated from the above mentioned populations using the random sampling tool in
Excel. Sample sizes are:
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Examination: 102 decisions a week1 (7% total population)
Oppositions: 16 decisions a week (15% total population)
4.2 Verify attributes
Each case belonging to the examination sample is allocated to a Legal Advisor and to a Classification
Expert. For each specific item, Legal Advisors and Classification Experts must verify the correctness of
every predefined attribute and he/she must keep the records in an ad-hoc database. The Legal Advisor
Group and the Classification Expert Group review all the errors identified by Legal
Advisors/Classification Experts in the latest checks and confirm or reject each error.
For each confirmed error, the Legal Advisor/Classification Expert of the service2 notifies it to the
individual Examiner and, if a remedy is possible, requests that the Examiner remedies the error.
The same procedure applies for the cases belonging to the opposition sample. However, the cases are
allocated only to Legal Advisors insofar as no classification decision is involved in the procedure.
4.3 Collect and analyze information
Monthly reports are generated using the results of the recorded Quality Checks. Legal Advisor Group
and Classification Expert Group carry out monthly analyses to identify steps that can be taken to
reduce the future occurrence of errors.
On a quarterly basis, the Quality Check Review Group carries out a more comprehensive analysis. The
analysis serves two purposes. Firstly it is concerned with the calculation of the service standards
achieved that is to be published in the website. Secondly it is concerned with isolating any shortfalls
against targets, identifying trends and gaining a fuller understanding of the causes of performance
problems, so that preventive actions may be proposed for discussion and agreement.
The Quality Check Review Group comprises representatives of TMCD, TMRD, Department for IP
Policy and Quality Management Department.
5. QUALITY STANDARDS
The decisions are checked on both format and content. Hereunder the items that are checked – if
applicable – are listed. A distinction between classification, absolute grounds examination and
opposition decisions has been made.
As regards format, written decisions must comply with the formal requirements mentioned below (7.1;
8.1.).
As regards content, the main questions to be looked at are: Is the decision in line with the Office
practice? Is the decision sufficiently motivated? Is the outcome supported by the reasoning used?
Have clear, complete and concise arguments been provided for each conclusion of the decision? Has
the appropriate case law been cited?
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The negative decisions are included in the sample but the proportion is quite low as it corresponds to the
proportion in the entire population.
2
The Legal Advisor/Classification Expert who records the error is not the same person who gives the feedback to
the Examiner because the Quality Checks in one service are performed by Legal Advisors/Classification Experts
from other services.
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5.1.
Classification
The classification will be checked on the following points:
Has the Office IT tool been used correctly?
Is the classification in accordance with the Office practice?
Have any punctuation errors been encountered?
Is the wording too vague?
Have parallel files been checked?
5.2.
Absolute grounds
5.2.1. Format
Has the template been used?
Is the 110 objection letter repeated in the final objection?
Does the objection/decision clearly identify the mark and the goods and services (g&s)?
Does the objection/decision clearly identify the grounds for the objection, including relevant legal and
factual material?
Does the decision summarise the relevant points made in reply by the applicant?
Are these relevant points rebutted?
5.2.2. Content
Is the decision in accordance with the Regulations, relevant jurisprudence, guidelines, manual, practice
notes, legal advisors’ minutes or any other source of Office practice?
Is the right ground for refusal invoked?
Is there a correct motivation, including possible evidence?
Has the language in which this ground is applicable been identified?
Has clear and correct language been used?
5.2.3. Detailed guidance on content
The decision must be in accordance with the Regulations, relevant jurisprudence, guidelines, manual,
practice notes, legal advisors’ minutes or any other source of Office practice.
5.2.3.1.
Is the right ground for refusal invoked?
The decision must be based on the correct legal ground. For example a 3D mark can be refused under
7(1)(e) or under 7(1)(b) CTMR, depending on the mark. Or, if the refusal is based on Article 7(1)(c)
CTMR, the decision must state whether the mark designates the kind, quality, quantity, intended
purpose, value, geographical origin or the time of production of the goods or of rendering the service,
or other characteristics of the goods or services in question.
Where it is found that an absolute ground for refusal exists the examiner shall issue a reasoned
objection in which all the individual grounds for refusal shall be specified.
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5.2.3.2.
Is there a correct motivation, including possible evidence?
The decision must explain why the invoked ground is applicable, even if this means stating the
obvious.
5.2.3.3.
Has the language in which this ground is applicable been identified?
The decision must indicate the language(s) to which the invoked ground for refusal apply.
5.2.3.4.
Has clear and correct language been used?
Correct language: is the style sufficiently formal, that is, not colloquial? Is the spelling and grammar
correct? Has the decision been proofread?
Clarity: Are the relevant issues dealt with in a logical manner? Is the outcome supported by the
reasoning?
5.3.
Opposition decisions
5.3.1. Format
Has the template been used?
Does the decision clearly identify the parties?
Does the decision clearly identify the contested mark and the contested goods and services?
Does the decision clearly identify the relevant earlier rights and the grounds?
Does the decision summarise the relevant points made by the parties?
Does the conclusion (‘dictum’) clearly state:
- goods and services for which the opposition is (partially) upheld?
- goods and services for which the opposition is rejected?
- decision on costs?
- fixation of costs?
5.3.2. Content
The decision must be in accordance with the Regulations, relevant jurisprudence, guidelines, manual,
practice notes, legal adviser’s minutes or any other source of Office practice.
Is each conclusion in the decision motivated?
Admissibility
Substantiation
Proof of Use
Identity
Likelihood of confusion, Article 8(1) CTMR
comparison of goods and services
comparison of the signs
enhanced distinctiveness/reputation
conclusion on likelihood of confusion (loc)
Agent’s or representative’s mark, Article 8(3) CTMR
Article 8(4) CTMR
If Article 8(5) is the ground:
Similarity
Reputation
Detriment/Unfair advantage
Due cause
Has clear and correct language been used?
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5.3.3. Detailed guidance on content
5.3.3.1.
Factual part
If an opposition is going to be successful on the basis of one earlier right (and more have been
invoked), it is sufficient if only the earlier right on which it will be decided is clearly indicated in the
factual part. A general statement such as, ‘the opposition is also based on 10 other earlier
registrations’ must be included.
In the case where the opposition is rejected, all the earlier rights must be mentioned, by indicating
territory, registration number and the sign.
The relevant arguments of the parties – without going into details - must be mentioned in the factual
part. They must be dealt with in the relevant part of the decision.
5.3.3.2.
Admissibility
It is not necessary to address the question of admissibility of all earlier rights if the opposition is
successful on the basis of one of the earlier rights that has been found admissible. If the opposition is
rejected both on substance and because some earlier rights have been found to be inadmissible, both
matters must be addressed and motivated.
5.3.3.3.
Not substantiated
If the opposition has not been properly substantiated, it should be rejected on this ground only.
Likelihood of confusion should not be dealt with.
It is not necessary to address the question of substantiation of earlier rights if the opposition is
successful on the basis of one of the earlier rights that have been substantiated properly. If the
opposition is rejected both on substance and because some earlier rights have not been substantiated,
both matters must be addressed and motivated.
5.3.3.4.
Proof of use (pou)
If there are earlier rights that were not subject to the obligation of use and which lead to a conclusion of
likelihood of confusion, it is unnecessary to assess the proof of use provided for the other earlier rights.
If the signs or the goods & services for which the earlier mark is registered are dissimilar to those of
the contested CTM, there is no need to enter in the question of pou.
When assessing proof of use, if the evidence is found convincing, it suffices to indicate those
documents that were used to come to this conclusion and why.
If the submitted evidence does not prove sufficient use, this may be mentioned in general terms: e.g.
‘the submitted evidence is considered insufficient to prove that the mark has been genuinely used
because none refers to the relevant period of time’.
If an opposition is rejected because the pou was not sufficient, likelihood of confusion must not be
addressed.
5.3.3.5.
Comparison of the Goods & Services: motivation
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The comparison of the g&s should comprise all contested goods and services. If these can be grouped
together, the comparison can be made between groups of goods or services. The criteria against
which the comparison must be made are those of the Canon judgment and those mentioned in the
guidelines. There is already a similarity even if the goods and services compared coincide according to
only one of these criteria.
Only those criteria relevant for the g&s in question need to be examined and dealt with.
Merely mentioning that the relevant criterion is different, e.g. ‘the purpose of these goods is different’ is
not sufficient. In this example the nature of these purposes must be mentioned, and if necessary why
they are different.
If the goods or services that are compared are so far apart that it is obvious that they are dissimilar, a
general statement is sufficient as a motivation.
If the result of the comparison is negative on all criteria and for all contested and compared g&s, i.e.
dissimilar, then there is no need to compare the signs.
5.3.3.6.
Comparison of the Signs: motivation
The relevant territory must be indicated.
The dominant, i.e. the visually outstanding, elements of both signs must be identified, but the
comparison must be made taking account of all elements of the sign.
A comparison of the signs is made on three levels, phonetic, visual and conceptual, and must cover
the signs in their entirety. If it is not possible to compare on one of the levels (e.g. the phonetic
comparison as the mark is figurative) then this level may be left out.
If there is only similarity on one of the three levels, then the signs are nevertheless similar, and the
degree of similarity can be indicated. Whether the signs are sufficiently similar to result in a likelihood
of confusion must be dealt in the conclusion on likelihood of confusion.
If the signs are dissimilar there is no need to compare the g&s, nor to consider a claim of reputation or
enhanced distinctiveness. However, signs are only dissimilar when they do not have anything in
common.
5.3.3.7.
Enhanced distinctiveness/reputation
When claimed, this point must be addressed, unless the signs are dissimilar.
If the evidence is found convincing, it suffices to indicate those documents that were used to come to
this conclusion and why.
If the submitted evidence does not prove enhanced distinctiveness/reputation, this may be mentioned
in general terms: e.g. ‘the submitted evidence is considered insufficient to prove that the mark is
reputed because none of the documents refer to the mark in question’.
5.3.3.8.
Conclusion on Likelihood of Confusion
In the conclusion, the degree of similarity of the signs and of the goods and services, the
distinctiveness per se in relation to the goods and services, and enhanced distinctiveness, as well as
the relevant public must be considered insofar as applicable. Here it can occur that the marks are
distinctive for some of the goods or services but not for others. A distinction concerning likelihood of
confusion may have to be made in this case.
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If an opposition is successful on the basis of one of the earlier rights then it is not necessary to decide
on the other earlier rights and a brief statement that these will not be examined for economy of
proceedings is sufficient.
If an opposition is not successful on the basis of the earlier right that is considered ‘closest’ to the
contested sign then it may be refused with a general statement concerning the other earlier rights.
However, it must be mentioned why the remaining earlier rights are considered even less similar than
the one examined.
5.3.3.9.
Article 8(3) CTMR – Agents’ or representative’s mark
The following five points must in principle be addressed:
a. the applicant is an agent or representative of the proprietor of the mark;
b. the application is in the agent’s name;
c. the application was filed without the owner’s consent;
d. the agent or representative fails to justify his acts;
e. the marks are identical or similar.
However, if one of the requirements under a, b, c, or e, is not met, the opposition must be rejected, and
it becomes unnecessary to address the remaining requirements.
5.3.3.10. Article 8(4) CTMR – Earlier non registered trade mark or sign used in the course of trade
The following five points must in principle be addressed:
a.
b.
c.
d.
e.
the earlier right must be a non-registered trade mark or a similar sign;
the sign must be used in the course of trade;
the use must be of more than mere local significance;
the right must be acquired prior to the filing date of the contested mark;
the proprietor of the sign must have the right under the terms of the national law governing this
right to prohibit the use of the contested mark.
However, if one of the abovementioned requirements is not met the opposition must be rejected, and it
becomes unnecessary to address the other requirements.
5.3.3.11. Article 8(5) CTMR – Reputed trade mark
5.3.3.11.1. Similarity of the signs
The signs must be similar. Exactly the same comparison as under 8(1)(b) CTMR must be made. If an
opposition is based on both likelihood of confusion and on Article 8(5) CTMR, reference may be made
to the outcome of the comparison under 8(1)(b) CTMR. See under section 5.3.3.6. If the signs are
dissimilar, the claim under this Article 8(5) CTMR may then be dismissed, without addressing the other
requirements.
5.3.3.11.2. Reputation
When claimed, this point must be addressed, unless the signs are dissimilar.
If the evidence is found convincing, it suffices to indicate those documents that were used to come to
this conclusion and why.
If the submitted evidence does not prove reputation, this may be mentioned in general terms: e.g. ‘the
submitted evidence is considered insufficient to prove that the mark is reputed because none refers to
the mark in question’. The claim under this Article 8(5) CTMR may then be dismissed without
addressing the other requirements.
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5.3.3.11.3. Detriment/Unfair advantage
The decision must indicate whether the use of the trade mark applied for would take unfair advantage
of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
If this requirement is not sufficiently substantiated by the opponent, the opposition must be rejected
and it becomes unnecessary to address the other elements of Article 8(5) CTMR.
5.3.3.11.4. Without due cause
The lack of due cause must be presumed. It can be rebutted by the applicant. The decision must
address this point, unless the claim was already dismissed on one of the preceding points.
5.3.3.12. Clear and correct language
Correct language: is the style sufficiently formal, that is, not colloquial? Is the spelling and grammar
correct? Has the decision been proof read?
Clarity: Are the relevant issues dealt with in a logical manner? Is the outcome supported by the
reasoning?
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