WIPO and OHIM to Collaborate in Trademark Classification

December 4, 2009

The World Intellectual Property Organization (WIPO) and the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), the Trademarks and Designs Registration Office of the European Union, signed on December 3, 2009, a Common Understanding on Future Cooperation in Trademark Classification. The agreement was signed by Mr. Francis Gurry, Director General of WIPO and Mr. Wubbo de Boer, President of OHIM, at the Annual European Meeting of the International Trademark Association (INTA), in Vienna.

As part of this common understanding, WIPO will support the initiative undertaken by OHIM and a number of national trademark offices in the European Union to establish a common database of acceptable indications of goods and services in an effort to harmonize classification practice and consequently facilitate the registration of marks in their respective offices. In its capacity as administrator of the International “Nice” Classification, WIPO will be available to arbitrate in case of a disagreement regarding the correct classification of a new term during the implementation of this project.

Under the agreement, OHIM will support the WIPO initiative to build a database of acceptable indications of goods and services for the purposes of the Madrid system procedures for the international registration of marks. In October 2009, the Madrid Union Assembly approved the implementation by WIPO of a project to accelerate the construction of such a database, in cooperation with interested members. WIPO plans to make this online database publicly available in the course of 2010, as soon as it reaches a minimum of 30,000 terms. In the context of the common understanding signed this week, OHIM will share with WIPO its own list of currently accepted indications.

WIPO and OHIM will explore collaboration in the development of an internet based tool enabling trademark applicants to file international applications online based on a Community Trademark (CTM) application or registration.

More information on the Madrid system g&s database can be found in document MM/A/42/3 submitted to the Madrid Union Assembly in September/October 2009.

December 4, 2009