ECTA HARMONIZATION COMMITTEE

Transcription

1 ECTA HARMONIZATION COMMITTEE Project (35) Project Coordinator Survey on acceptance of electronic certified copies from OHIM by national Offices/Courts/other institutions Monika Wenz Siebeke Lange Wilbert, Düsseldorf, Germany Compilation of the answers Status: Question 1: Do legal provisions/regulations/official communications exist in your country dealing with electronically generated documents? AUSTRIA The Austrian Signature Law, Official Federal Gazette I No. 190/1999, which implements Council Directive 99/93/EC, deals with the electronic authentication by means of specific software. These e- Signatures are frequently used in administrative and court procedures. This law does, however, not relate to the OHIM e-certificates. BELGIUM I am aware of official communications about electronically generated documents being acceptable for certain (legal and financial) transactions. I have not found legal provisions as such. BULGARIA Yes, the Civil Procedure Code where the general provisions for acceptance of electronically generated documents are provided. CYPRUS The Evidence Law, Cap. 9 is dealing with the presentation of electronically generated documents before the Court. CZECH REPUBLIC Yes, we have Act No. 300/2008 Coll., on electronic acts and documents authorised conversion. ECTA Secretariat, Rue des Colonies 18/24, 9th Floor, BE- Brussels, Belgium Tel 32/ Fax 32/ ecta@ecta.org Internet A company limited by guarantee. Reg. in England and Wales No Reg. address: 15 Southampton Place, London WC1A 2AJ, England. VAT No. BE

2 DENMARK Yes several, including among others, the Law on Digital Signature, Provisions with the tax system and currently the government is working on Law on Official Digital Post System to name a few. ESTONIA Digital Signatures Act - adopted on March 8, 2000, enforced on December 15, 2000, last amendments in force since January 1, The Act provides the necessary conditions for using digital signatures and digital seals, and the procedure for exercising supervision over the provision of certification services and time-stamping services (Article 1). The Act derives from Directive 1999/93/EC of the European Parliament and of the Council of 13 December 1999 on a Community framework for electronic signatures. FINLAND Yes, Act on Electronic Services and Communication in the Public Sector (13/2003) FRANCE Yes, Loi n of March 13, 2000 Codified under Art to of the French Civil Code GERMANY Yes. Act on electronic signatures (Gesetz über Rahmenbedingungen für elektronische Signaturen) of May 1, 2001 and many other legal provisions. GREECE Greek CPC differentiates among public documents and private documents as to the evidential value of the documents. Authentic public documents indisputably prove the facts and data incorporated into them, while private documents have full probative force, but may be challenged through counter evidence. By virtue of Law 3994/2011 the Greek CPC (Articles 444 and 448) was modified to accept the probative force of electronic documents, which were classified as to their evidential value at the same level as private documents. By virtue of Law 3979/2012 (Art. 13) an electronic certificate issued by a competent authority, bearing an advanced electronic signature, meeting the minimum requirements of Decision 2011/130/EU of 25 th of February 2011 of the European Commission, has the same validity as a non-digital certificate bearing signature and official seal. The implementing Ministerial Decision No 40-4/3/1031 was issued only on The implementation of the above mentioned provisions by the authorities has not substantially begun yet. Non-digital certificates issued by foreign authorities are generally accepted by the Greek courts. Their authenticity, in case of challenge, is proved by either the Hague Convention Apostille or a Validation Compilation of answers 2

3 by the Greek Consul of the country, where the document was issued. Greek authorities and financial institutions, such as banks etc. always require Apostille or consular validation as a proof of authenticity. Law 3979/2012 covers electronic certificates issued by Greek authorities, but theoretically it could be applied by the way of analogy also for electronic documents issued by foreign authorities. Since the relevant provisions were introduced very recently, there is no experience, nor jurisprudence of the Greek courts, as to their implementation in case of certificates of foreign authorities. HUNGARY No, the use of electronically generated documents is rather rare in the Hungarian legal system yet, therefore no general provision or regulation has been issued. However, in certain procedures the use of electronically generated documents cannot be avoided, accordingly official communications as to this regard do exist. These cases are mainly restricted to the field of company law at present. IRELAND No. ITALY According to the Italian PTO s instructions for drawing up the opposition form, in order to substantiate the earlier rights it is possible to file a copy of the publication made by the competent TMO on the Official Gazette or on its official database of the national, international or Community trademark on which the opposition is based. LATVIA Electronic Documents Law adopted on ; in force since ; amended on , , , and Included in this Law are legal norms arising from Directive 1999/93/EC of the European Parliament and of the Council of 13 December 1999 on a Community framework for electronic signatures. LITHUANIA No general provisions provided, each official institution has internal rules on how the certificates or other documents issued shall be certified, if necessary. LUXEMBOURG No. There are no specific provisions or regulations regarding electronically generated documents in Luxembourg. Electronic signatures have, however, been authorised and regulated by a law of 14 August MALTA There are no specific provisions within the context of trademark law, however the general best evidence rule found in the Code of Organisation and Civil Procedure must be followed, particularly Compilation of answers 3

4 with respect to the filing of documents within the context of judicial proceedings. NETHERLANDS No POLAND Yes. Act of 17 February 2005 on Informatization on Entities Performing Public Tasks, with amendments Electronic Signature Act of 18 September 2001 with amendments (Directive 1999/93/EC on a Community framework for electronic signature) PORTUGAL Yes. Decree-Law nr. 88/2009 de 9 de Abril ROMANIA Yes, but they are dealing with different aspects (electronic signature, electronic archive, a.s.o.) SLOVAKIA No there is no specific legislation dealing with electronically generated documents SLOVENIA Yes. Namely, for procedure before the SIPO (Slovenian Patent Office) the General Administrative Procedure Act is relevant, which prescribes that the parties have to submit the document in original or a microfilm copy of the document or a verified transcript of the document or a simple transcript thereof. For the procedure before the Court the Civil Procedure Act is relevant, which determines that the documents may be submitted in the original or a transcript thereof. According to the Law which regulates safekeeping of documents as a transcript is considered: an acquired and saved microfilm or electronic (scanned) copy, a reproduction of such a copy or a verified transcript thereof, a simple transcript or a microfilm, electronic (scanned) copy of a document. All documents which are in foreign language have to be submitted in a Slovenian translation prepared by a sworn translator. SPAIN No. SWEDEN No. Compilation of answers 4

5 UNITED KINGDOM Nothing specific in respect of electronically generated certified documents. Compilation of answers 5

6 Question 2: Are OHIM s e-certificates accepted for proof of CTM registration a) by your national Office b) by your national Civil Courts c) by financial institutions (banks, etc.) in your country? AUSTRIA a) The Austrian Patent Office accepts excerpts from the OHIM s database even without e-certificate. In case of doubt of authenticity, the officials themselves take a look into the database. b) Under the Austrian Civil Procedure Code, any means of evidence may be used in civil procedures. Generally, the acceptance of evidence depends on the judge who has absolute discretion to accept a document or not. The adversary party may, generally, object to the authenticity of a document filed by the other side. In this case, the authenticity of the evidence must be proved by the party who filed the evidence. The problem has never come up until now, but we are of the opinion that a certificate of OHIM duly authenticated by the OHIM itself must be recognised in all countries of the internal market without requiring any legalisation. However, for third countries, any certificate issued by OHIM must be super-legalized by the signature of the president of the Permanent Mission of the EU to Spain. According to Sec. 293 of the Austrian Civil Procedure Code, any document established as an official document under the relevant laws of the issuing authority enjoys a stronger grade of evidence and is considered authentic by law as long as reciprocity with the respective issuing State or organisation is given. This, however, only applies to documents which are properly legalized. As a result, e-certificates qualify as official documents within the meaning of the Civil Procedure Code and do, without any further legalization, enjoy the benefits of an official document. We do not know of any cases where an e-certificate was filed as evidence. In our experience, excerpts from the OHIM database are accepted without any further requirements. It did not occur to us, until know, that an adversary party objected to the authenticity of an excerpt. c) According to information provided to us by an expert of one of the major banks in Austria, trademark registry excerpts are very seldom used in bank transactions. Naturally, the expert has not had until now any case were e-certificates were filed as evidence of ownership or other trademark rights. BELGIUM a)/b)/c): Yes BULGARIA a) Yes b) Yes c) No practice Compilation of answers 6

7 Question 2: Are OHIM s e-certificates accepted for proof of CTM registration a) by your national Office b) by your national Civil Courts c) by financial institutions (banks, etc.) in your country? CYPRUS a) Yes b) Yes c) We believe that since OHIM s e-certificates are accepted for proof of CTM registration by the National Office and the national Civil Courts, they will also be accepted by financial institutions (banks etc). CZECH REPUBLIC a)/b)/c): Yes DENMARK a)/b)/c): Yes ESTONIA a) Yes. Although, for instance, according to our national law (Trademark Regulation, Article 26 (5)) the priority document shall be original one. However, in practice the PO has accepted e-certified copies of OHIM, especially since the officials of PO are able to check the data by themselves from OHIM database. b) Yes. Just the simple extract from the OHIM database is also accepted as the proof of CTM registration (on condition that the extract includes the date and URL link). c) Having no experiences in that respect, but presuming that e-certified copies are accepted also in that case. FINLAND a)/b)/c): Yes FRANCE a)/b)/c): Yes Compilation of answers 7

8 Question 2: Are OHIM s e-certificates accepted for proof of CTM registration a) by your national Office b) by your national Civil Courts c) by financial institutions (banks, etc.) in your country? GERMANY a)yes b) Probably yes unless serious doubts exist c) Presumably yes, unless serious doubts exist. GREECE a) Yes b) Yes, they are accepted with the evidential value of a private document (complete probative force, subject to challenge by counter evidence). There is insufficient knowledge, on whether they will be accepted with the evidential value of a public document (indisputable probative force). c) No. HUNGARY a) Based on the general HIPO-practices and the information/experience we possess, we can say that if no special reason whatsoever for any fraudulent act occurs, the national Office accepts for proof of CTM registration the e-certificates issued by OHIM. b) The same goes for the national Civil Courts according to our recent experience, they accept for proof of CTM registration the e-certificates issued by OHIM. c) If for example a trademark owner wishes to create a mortgage on its trademark or trademark application or in case of pledging its IP assets for securing a loan etc. or any other alike matter, a financial institution may decide upon its own rules, its in-house policies and accordingly it might happen that the concerned financial institution does not accept the e-certified copy issued by OHIM as sufficiently authentic proof/document. IRELAND a) The Irish Patents Office will accept the certified copy of the Application form (not the Certificate of Registration) that is downloadable from the OHIM website. b) Yes. But there is a risk if it is challenged. c) Yes, However, it may depend on the circumstances. ITALY a)/b)/c): Yes Compilation of answers 8

9 Question 2: Are OHIM s e-certificates accepted for proof of CTM registration a) by your national Office b) by your national Civil Courts c) by financial institutions (banks, etc.) in your country? LATVIA a) Yes (Latvian translation is required) b) Yes (Latvian translation is required) c) Yes LITHUANIA a) Accepted b) Accepted c) Accepted by bank and notaries, e.g. for the pledge of the trademark. LUXEMBOURG a) Luxembourg does not have a national Office but shares the Benelux Office of Intellectual Property (BOIP) with Belgium and the Netherlands.The BOIP accepts e-certificates for proof of CTM registration. b) The question has not yet been raised before the courts. Copies of e-certificates will however most probably be accepted by the courts. c) I am not aware of a case where a problem with an e-certificate has occurred before a financial institution in Luxembourg. MALTA a) The Registry does not require the filing of supporting documents unless it specifically asks for such documents; in that eventuality, in our view OHIM s e-certificates should be acceptable as evidence of CTM registration. b) This matter has not been specifically tested as yet and theoretically the best evidence rule would require documentation which is officially certified in ink, then notarised and legalised. In practice however, electronic versions of CTM entries are usually filed and so far the Courts have never rejected this as far as we are aware. c) We are not aware of situations whereby these documents are required by financial instituions, however in our opinion such method of producing evidence would be acceptable by these institutions. NETHERLANDS a) Yes b) Probably c) Probably Compilation of answers 9

10 Question 2: Are OHIM s e-certificates accepted for proof of CTM registration a) by your national Office b) by your national Civil Courts c) by financial institutions (banks, etc.) in your country? POLAND a)/b)/c): Yes PORTUGAL a) Yes b) Yes (at least no objection was made on the cases experienced) c) Yes (at least no objection was made on the cases experienced) ROMANIA a) Yes, with translation into Romanian. The Implementing Regulations of TM Law 84/1998 provide within art. 5 that the entire correspondence with the national office shall be drawn up in Romanian. b) Yes, with certified translation into Romanian. Art. 112 of RO Code of Civil Procedure (Ro CCP) deals with submission of proof consisting in documents. It provides that certified copies of these must be provided, attesting that they are copies of the original document. If the documents are written in a foreign language, translations into RO language shall be submitted, also certified by the party. c) Yes, with translation into Romanian. In general, the banking system is functioning on some internal regulations, which differ from case to case. However, the basic provision remains the same Art. 112 of RO CCP. SLOVAKIA a) Yes (at least based on own earlier experience that other electronic document are accepted) b) Yes (at least based on own earlier experience that other electronic document are accepted) c) As far as I am aware there could be a problem due to the Slovak financial institutions always require an original of documents. SLOVENIA a) Yes b) Yes, but at the same time it has to be translated into Slovenian language by a sworn translator. c) Yes, but at the same time it has to be translated into Slovenian language by a sworn translator. Compilation of answers 10

11 Question 2: Are OHIM s e-certificates accepted for proof of CTM registration a) by your national Office b) by your national Civil Courts c) by financial institutions (banks, etc.) in your country? SPAIN No. SWEDEN a)/b)/c): Yes UNITED KINGDOM a) Yes, the UK IPO accepts electronically generated e-certificates. b) Yes, e-certificates are accepted as evidence. We even found examples of non-certified e-copies being accepted as evidence. c) No information available. No reason to suggest that e-certificates would not be accepted by financial institutions if accepted by the UK courts as the threshold seems to be quite low in general. Compilation of answers 11

12 Question 3: If the answer to 2. a), 2. b) or 2. c) is No, kindly explain the reasons for non-acceptance. a) Reasons for non-acceptance by national Offices: b) Reasons for non-acceptance by national Civil Courts: c) Reasons for non-acceptance by financial institutions (banks, etc.): AUSTRIA a)/b)/c): N/A BELGIUM BULGARIA CYPRUS CZECH REPUBLIC DENMARK ESTONIA a) N/A b) N/A c) Presumably N/A FINLAND FRANCE Compilation of answers 12

13 Question 3: If the answer to 2. a), 2. b) or 2. c) is No, kindly explain the reasons for non-acceptance. a) Reasons for non-acceptance by national Offices: b) Reasons for non-acceptance by national Civil Courts: c) Reasons for non-acceptance by financial institutions (banks, etc.): GERMANY GREECE a) b) c) The existing experience with regard to non digital certificates is that financial institutions, esp. Banks, always insist on some proof of authenticity, such as Apostille or the consular validation. Since this type of proof is not suitable for electronic documents, and there is no jurisprudence of the Greek courts yet, as to the probative force of electronic documents issued by foreign authorities, it is highly likely that OHIM s e-certificates will not be accepted. HUNGARY IRELAND a) The Irish Patents Office will accept the certified copy of the Application form (not the Certificate of Registration) that is downloadable from the OHIM website. The Office has not provided reasons as to why the downloadable Certificate of Registration is not acceptable. b) In theory, it is possible to use an e-certificate as proof of a CTM Registration when compiling evidence and in Court. However, if its authenticity is called into question, issues may arise whereby the judge may prefer that either the original registration certificate be provided or a copy that has been certified by a Solicitor. c) This matter depends on the situation. It is likely that the greater the potential risk to a bank or financial institution, the greater the likelihood that they insist on being provided with either the original registration certificate or a copy that has been certified by a Solicitor. ITALY LATVIA Compilation of answers 13

14 Question 3: If the answer to 2. a), 2. b) or 2. c) is No, kindly explain the reasons for non-acceptance. a) Reasons for non-acceptance by national Offices: b) Reasons for non-acceptance by national Civil Courts: c) Reasons for non-acceptance by financial institutions (banks, etc.): LITHUANIA LUXEMBOURG N/A MALTA N/A NETHERLANDS POLAND PORTUGAL ROMANIA SLOVAKIA SLOVENIA Compilation of answers 14

15 Question 3: If the answer to 2. a), 2. b) or 2. c) is No, kindly explain the reasons for non-acceptance. a) Reasons for non-acceptance by national Offices: b) Reasons for non-acceptance by national Civil Courts: c) Reasons for non-acceptance by financial institutions (banks, etc.): SPAIN a) The Spanish Trade Mark Law does not provide the possibility of substituting an original certified copy with an electronic one. b) They require a document that is certified by the Trade Mark Office. An electronic certificate does not provide the guarantees required by the Spanish Civil Law. c) The same as above. SWEDEN UNITED KINGDOM Compilation of answers 15

16 Any other remarks?: Question 4: AUSTRIA Neither before the Austrian Patent Office nor the Austrian courts, we were ever required to submit e- certificates. In all cases, simple excerpts from the OHIM database are accepted and, to my knowledge, are never contested because the courts are able to check themselves. This reliance is surprising because we know that the OHIM database does contain errors, particularly in connection with seniorities. BELGIUM BULGARIA CZECH REPUBLIC No CYPRUS DENMARK ESTONIA No FINLAND As stated by OHIM the e-certified copies have the same legal value as the earlier paper certificates. FRANCE Besides the certified copy of the registration certificates, the French courts also request a certified extract from the register. Only the latter shows whether there are any obstacles to the protection of the trademark, such as applications for a declaration of invalidity or final decisions in this respect. Compilation of answers 16

17 Any other remarks?: Question 4: GERMANY GREECE HUNGARY While we have filed electronic certificates from OHIM with HIPO, the first instance appeal court (Metropolitan Court) and from financial institutions with the National Tax and Customs Office we have not submitted such form of certified register extract to banks therefore it may happen that banks do not accept it. However, as they have been accepted by HIPO, Metropolitan Court and National Tax and Customs Office you may indicate that this electronic certificate is acceptable in Hungary IRELAND The Irish Law Reform Commission has produced a report recommending that the law be changed to take account of electronically generated documents. However, nothing has thus far been implemented. ITALY LATVIA LITHUANIA LUXEMBOURG MALTA No additional remarks Compilation of answers 17

18 Any other remarks?: Question 4: NETHERLANDS POLAND PORTUGAL ROMANIA SLOVAKIA No SLOVENIA SPAIN SWEDEN A counterparty in a conflict, but also a financial institution could of course always, in a specific case, request a formal certificate in original. UNITED KINGDOM Compilation of answers 18