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September 16, 2014 // Barcelona Forum // UP & UPC Conference //  B&W Marks

Highlights for Litigators at the 15th Open Forum

The 15th Open Forum in Barcelona offers a multitude of practical and informative sessions to suit every practice area, including IP litigators and commercial IP attorneys. 

Unified Patent Court

Patent litigation in Europe has until now been a national domain, lacking harmonization, leaving patent litigation plaintiffs few to choose among the few mainstream fori. That has all changed. The UPC should harmonise patent litigation in Europe. In one of the keynote sessions of the 15th Open Forum, top experts will provide the latest news and their views on the future of litigation in the UPC.

This session, moderated by Richard Ebbink (NL), a European Patent Litigator, will feature as speakers Daniel Alge (AT) (Patent Attorney and “Technical Judge” at the Commercial Court Vienna); Dr. Martin Chakraborty (DE) (Litigator); Dr. Klaus Grabinski (DE) (Judge Bundesgerichtshof and member of Draft committee for the RoP of the UPC); and Kevin Mooney (GB) (Litigator and Chairman of Draft committee for the RoP of the UPC).

Make sure you know what the future has in store for you and your clients. 

Liability and disciplinary risks.

Attorneys and law firms have to cope with very high standards for due care and diligence on both a personal and an organisational level in order to avoid malpractice and liability issues. At the same time, IP work requires the handling 

of large files of high commercial values on a daily basis. What happens if things do go wrong? This session will give you examples of what can go wrong, how to deal with it and how to avoid it. Our speakers will shed light on cases that have been brought before disciplinary committees and insurance companies, and on measures a firm may take to hedge organisational risks.

Moderated by Roberto Pistolesi (IT), our speakers include Redvers Cunningham (GB); Barry Graham (US); Huw Hallybone (GB); and Dr. Shoichi Okuyama (JP)

Register Now

Hotel space is quickly filling up. The Forum Brochure, and registration forms, are available online at

Conference on the Unified Patent Court

Ratification of the Unified Patent Court is underway, permitting the UPC to start with a first group of at least thirty countries, expanding as other countries ratify the Court and make any necessary changes to their patent laws.

The Unitary Patent and Unified Patent Court were the subject of a conference held in Paris on 4 July 2014. Jérôme Collin of FICPI reports on the conference and its outcome. You can read his report here

OHIM Position on Black and White Trade Marks


As part of OHIM's attempt to harmonise divergent trade mark practices in EU member states, where that can be done without legislative changes, OHIM has proposed to deal with the scope of protection afforded by black & white (B&W) and greyscale marks.

FICPI was one of three NGOs invited to participate as observers in the CP4 Working Party, but  observers were excluded from the meetings between OHIM and representatives of the national offices at which a draft Common Practice was worked out. In due course that draft was unanimously endorsed by the OHIM Administrative Board.
MARQUES, a user group that was present as an observer at meetings where FICPI was not represented, stated in disagreeing with the Common Practice proposal that it “should be exactly the opposite of what has been proposed within CP4”.

OHIM prepared a response which it intended should be co-signed by the “participating user associations” but FICPI declined to join in the response.
The Issue

Some national offices within the EU take the view that a mark registered in B&W (or greyscale) offers protection not only for that but also for all colours and colour combinations. Other offices apply the practice that marks registered in B&W are protected only in B&W.

The draft new Common Practice proposed by OHIM is that a mark filed in B&W (or greyscale) is considered to be the same as a variant in colour only where the marks are the same in all respects or where any difference is insignificant, i.e. would be noticed by the average consumer only on side-by-side examination. Similarly, for priority claims and relative grounds for refusal, the draft Common Practice provides that a mark registered in B&W is not considered to be the same as the mark in colour unless the differences are insignificant.

MARQUES’ position is that CP4 could have concluded that “B&W covers all” should be the common practice, or alternatively that it is inappropriate to address this issue in the Convergence Programme in view of the differences in national statutes, established case law, the Community Trademark Regulation and the Madrid System.
FICPI’s position is that harmonisation in this area is beyond the competence of OHIM and should not be addressed in the Convergence Programme, but rather by considered legislative review in the affected member states, following proper consultation with users of the trade mark system. What has been proposed would devalue existing registrations in B&W.

Questions that need careful consideration include:
  • Is the proposal compatible with the Madrid System?
  • Would trade mark owners be obliged to file multiple applications in order to obtain full protection, and would they then be faced with higher costs?
  • What effect would this change have on SMEs and non-EU trade mark owners?
In view of this, FICPI urges OHIM and the national offices to reopen the discussion and to involve fully all possible affected parties, and notes that in this case there is no urgency that would justify abbreviating the consultation process.
FICPI;s 15th Open Forum
Barcelona, Spain
5 - 8 November, 2014
Sent by FICPI - Holbeinstrasse 36-38, 4003 Basel, Switzerland
Authorized by Doug Deeth, President of Communications Commission.