ECTA European Communities Trade Mark Association

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1 ECTA European Communities Trade Mark Association Summary Report on the Workshop on the Changes in the Implementing Regulations and CTM Renewals held in Alicante on October 4, 2005 ECTA attended the above Workshop organised by OHIM in Alicante. Most attendants were trade mark practitioners although there were some in-house counsels. The session was opened by Mr. Alexander von Mühlendahl, who briefly went through the latest changes that have affected the CTM system, namely the accession of the EU to the Madrid System, the enlargement of the EU and the 2004 amendment of the Community Trade Mark Regulation. In addition to these changes, the CTM Implementing Regulation (CTMIR) and the Regulation on fees payable to the Office have been revised and reformed in The subject matter of the Workshop was to go through the main cornerstones of the amendments. The Workshop was divided into different topics, namely Changes in the Filing formalities, Opposition Procedure, Cancellation Procedure, Appeal Procedure, Notifications from and to the OHIM, Restitutio in Integrum and Continuation of Proceedings, Fixing of Costs, Division, Transfer and Renewals. 1. Filing Formalities.- Mr. Detlef Schennen The main changes concerning filing formalities can be summarised as follows: Authorisation It is no longer needed or checked. However, in inter partes proceedings, the other party may request it. State of incorporation It is no longer required (e.g., a Delaware company ). But the abbreviation of the legal form remains required (e.g. SARL, GmbH). List of goods and services It is sufficient to make a reference to the same list filed in a previous CTM application. Seniority Only the filing date must be mentioned. Previously, the applicant had to indicate the date from which the registration is effective and this could mean priority, filing or registration date, or a combination Colour Marks New Rule 3 (5): The colour must be claimed if the mark is in colour. The colours must be indicated in words and the colour code (Pantone, RAL) is not required but recommended. 1

2 Sound marks New Rule 3 (6): Graphic representation is always required (on paper or by e-filing). For e- filing, sound file may be added. The format is to be determined though it is expected to be mpeg. 2. Opposition Procedure Ms. Jessica Lewis Rules 15 to 20 on Procedure for Opposition and Rule 22 on Proof of Use have been rewritten completely to rationalize proceedings and remove doubts that have arisen in the practice of the Office. A number of changes have been brought although in most cases the new law constitutes a codification of existing practice. The sequence of rules has been brought in the chronological order of the proceedings. Admissibility requirements The various requirements of Rule 15 Notice of opposition have been grouped into three parts: - Absolute requirements that must be fulfilled within the opposition period R15 (2) (a) to (c) - Relative requirements, which may be fulfilled within an additional period set by the Office R15 (2) (d) to (h) - Optional requirements, in the sense that they either may be complied with after the commencement of the adversarial part of the opposition proceedings or that they only concern the scope of the opposition R15 (3) R15 (1) adds clarification on Who may base an opposition on multiple earlier marks/rights: only the same proprietor(s) of the marks/rights and on Who may file an opposition in case of co-ownership: all, some or one of the co-owners. Goods & Services Only the goods and services on which the opposition is based must be indicated. It is irrelevant whether the earlier mark is also registered for other goods & services. R15(2)(f). If the goods and services against which the opposition is directed are not indicated, the opposition will be deemed to be directed against all the goods and services of the attacked CTM application. R15(3)(a). Notification of the Opposition (Rule16a) The notice of opposition (and any document submitted by the opponent as well as any communication addressed by the Office) shall be communicated to the CTM applicant for information. Then, if the opposition is found - admissible, the CTM applicant will be invited to file his reply later, when the proceedings will start. - inadmissible, the CTM applicant will be notified of this decision (Rule17(5)).The notice of opposition is not sent to the CTM applicant if the opposition is deemed not to have been entered (either because of lack of payment or because it has not been filed in one of the 5 languages of the office). Cooling-off period Under new Rule18(1), the cooling-off period is limited to 24 months in total. As from 25 July 2005, no extensions can be granted any more which would go beyond an overall period of 24 months. The Office will not allow suspensions during the cooling-off period on the grounds of negotiations because it is exactly the purpose of the cooling-off period to open a 2

3 time frame for negotiations before the adversarial stage begins. Afterwards, suspensions may be requested in the normal (traditional) way. Suspensions during the cooling-off period on other grounds such as that the opposing mark is not yet registered remain unaffected by the new Rules. Time limits for translations They have been reinforced. A notice of opposition which is not filed in the first or second language of the contested application must be translated within 1 month from the expiry of the opposition period (as used to be the case) but if it is not done, the Office will not open another time limit for doing so, see new Rule17(3). Furthermore, as per Rule 19(3), supporting documents such as the first observations of the opponent and the facts, evidence and arguments in support of the opposition must be translated within the same time limit for submitting the original and no additional period will be granted. New Rules 19 (4) and 98 exclude that the office takes into account what has not been translated within the 2 months given to file the original. Closure of Proceedings & Refunds R18 is more specific as to cases in which the proceedings are closed: without decision on costs and with fee refund If the application is withdrawn or restricted to goods not subject to the opposition; If the opposition is withdrawn further to a restriction; without decision on costs and without fee refund: If the parties inform the Office about a settlement ; If the application is rejected in a parallel proceeding. Substantiation of opposition R 19 (2) (a): copy of the registration certificate and if relevant of the latest renewal certificate showing that the term of protection of the TM extends beyond the time limit given to substantiate the opposition. Copy of equivalent document emanating from the administration will be accepted (no prints from private databases). R 19 (3): no extra time-limit for translation. R 19 (4): no extra time-limit for substantiation. R 20 (1): if the opponent did not prove the existence of his earlier mark or right, the opposition will be rejected outright. R 20 (6) second sentence: in no case the Office is required to tell the parties which facts or evidence could be or have not been submitted. Request for proof of use R 22 (1): The request for proof of use must be made by the CTM applicant in the first time limit for replying to the opposition. Requests made before the Board of Appeal for the first time will be inadmissible. In R 22 (5), provision is made for allowing to focus first on the proof of use before entering into the debate on likelihood of confusion. If the applicant requests proof of use, he will have the right to reply to the issues concerning likelihood of confusion at a later stage, namely in the reply to the evidence of use submitted by the opponent (to be seen in conjunction with new Rule 20 (6) first sentence). 3. Cancellation Procedure Mr. Alexander von Mühlendahl The main changes in cancellation proceedings are the following: 3

4 Rule 38 (1): Translation The time limit within which the applicant for revocation or a declaration of invalidity has to file a translation of his application shall be one month, starting with the date of the filing of his application, failing which the application shall be rejected as inadmissible. Rule 38 (3): A last sentence has been added to clarify that Where the translation is not filed or filed late, the language of the proceedings shall remain unchanged. Rule 39: Admissibility examination The application for revocation or for declaration of invalidity shall be rejected as inadmissible 1. Where the Office fee has not been paid within the time specified by the Office. 2. Where the translation required under Rule 38 (1) is not filed within the prescribed period. 3. If the application does not comply with Rule 37 and the applicant does not remedy the deficiencies before expiry of the time limit. Rule 40: Proof of Use in cases of revocation In revocation actions, the owner of the challenged CTM must prove genuine use of his mark. This was the practice of the Office but was not specified. Rule 40.5 now expressly states that in revocation actions, the proprietor has the burden of proof (In the case of an application for revocation based on Article 50 (1) (a) of the Regulation, the Office shall invite the proprietor of the Community trade mark to furnish proof of genuine use of the mark, within such period as it may specify. If the proof is not provided within the time limit set, the Community trade mark shall be revoked. Rule 22 (2), (3) and (4) shall apply mutatis mutandis). It is to be noted that the reference to Rule 22 (2), (3) and (4) in Rule 40 is erroneous. Rule 22 has now been amended, so Rule 40 should read, Rule 22 (3), (4) and (6) shall apply mutatis mutandis. 4. Appeal Procedure - Mr. Philipp von Kapff In the first place, we were informed that the Boards of Appeals have appointed a new Chairperson (Mr. Detlef Schennen) and two new Members (Mr. Philipp von Kapff and Mr. Gordon Humphreys). In order to explain the changes in the procedure of the Board of Appeals, several cases were put forward for the audience to discuss. The most important conclusions after revising the cases are the following: - The cases that due to their lack of difficulty or the absence of other specific circumstances can be conferred by the Board handling the case to the authority of a single member. For instance, decisions closing the proceedings following agreement between the parties, decisions on the fixing of costs and its review, decisions on the admissibility of the Appeal. - Presidium (Art. 131 CTMR, Art. 1 RP BoA): The authority referred to in Articles 130 and 131 of the Regulation shall be the Presidium of the Boards of Appeal. The Presidium is responsible for decision on abstract criteria for allocation of cases, internal rules of organisational nature and practical instructions for the parties. The Presidium shall comprise the President of the Boards of Appeal, who shall chair it, the chairmen of the Boards and Board members elected for each calendar year by and from among all the members of the Boards other than the President of the Boards of Appeal and the chairmen of the Boards. The number of Board members so elected shall be a quarter of 4

5 the number of Board members, other than the President of the Boards of Appeal and the chairmen of the Boards, rounded up if necessary. - Grand Board (Art. 131 CTMR, Art. 1 RP BoA): competent when justified by the legal difficulty or importance of the case or special circumstances (e.g. diverging decisions on a point of law). The referral of a case to the Grand Board can be done by the competent Board of Appeals or by the Presidium (on proposal of the President of the BoA or of a member of the Presidium). Not by the parties, the President of the Office or by another Board. The Grand Board shall comprise nine members, including the President of the Boards of Appeal, who shall chair it, the chairmen of the Boards, the rapporteur designated prior to referral to the Grand Board, if applicable, and members drawn in rotation from a list comprising the names of all members of the Boards of Appeal other than the President of the Boards of Appeal and the chairmen of the Boards. - Interlocutory Revision / Revocation: The new Art. 60a CTMR concerns the revision of decisions in inter partes appeal proceedings with reimbursement of the appeal fee, if successful (Rule 51 b CTMIR). However, this rectification is only possible with acceptance of the winning party. It is also possible to request revocation of the decision by the Office in case of an obvious procedural error attributable to the Office (six months, no fee). - Continuation of proceedings (Art. 78a CTMR). New way to redress the non-compliance with a time limit. Please note that Rule 50(1.2) CTMIR excludes the application of Art. 78a CTMR to the time limits fixed pursuant to Art. 61(2) CTMR for opposition procedures (not cancellation). See more comments in point 6 below. - Late facts and evidence: This is a very controversial point that must be further defined by the CFI and the ECJ. In absolute grounds for refusal, new facts and evidence for acquired distinctiveness are generally accepted for a reason of functional continuity. In case of relative grounds, the appellant cannot file the missing facts/ evidence (e.g. additional proof of use) in appeal since there is a time limit to do so set by the Opposition Division (Rule 22(2) CTMIR). Nevertheless, the BoA has discretion to accept facts or evidence which were not submitted in due time (Art. 74(2) CTMR). - Fixing of costs: Rule 94 CTMIR has increased to costs as from 25 July 2005). If opponent/appellant wins, he can claim Euro 2,000. If applicant/respondent wins, he can claim Euro Notifications Mr. Alexander von Mühlendahl Communications from the Office Means of communication. Rule 61 (1) states that Where the addressee has indicated his telecopier number or contact details for communicating with him through other technical means, the Office shall have the choice between any of these means of notification and notification by post. Special attention must be made to the decision of the CFI of 19 April 2005 (PAN SPEZIALITATEN), where it supported the means of communication chosen by the OHIM. Notification by post. The meaning of post does not imply governmental postal services but includes private courier companies. Only decisions subject to a time limit for appeal, summonses and other documents as determined by the President of the Office shall be notified by registered letter with advice of delivery. All other notifications shall be by ordinary mail. (Rule 62) 5

6 Date of receipt. Notifications by regular mail are deemed to have been effected on the tenth day following that of its posting. Notifications by telefax shall be deemed to have been taken place on the date on which the communication was received by the telefax device of the recipient (even if it is a Saturday or a Sunday). Notifications by My Page shall be deemed to have taken place on the fifth day following the day on which the document was placed on MyMAILBOX (see Decision of the President No EX-04-6 of 14 December 2004). Public Notification: Takes place only when mail gets returned after two unsuccessful attempts. The place where the public notification is at discretion of the office. It is expected that in the future public notification will take place in the web site of the OHIM only. Communications to the Office Rule 81 and 79 c) have been deleted (communications by telex and telegram). In fact, the Office does not have a telex, so communications by this means would surely be unsuccessful. Annexes to written communications. Where a document or an item of evidence is submitted in accordance with Rule 79 point (a) by a party in a proceeding before the Office involving more than one party to the proceedings, the document or item of evidence, as well as any annex to the document, shall be submitted in as many copies as the number of parties to the proceedings (Rule 79a). This includes the Statement of Grounds and not only the Annexes. If this is not observed, the OHIM will in principle be comprehensive. Electronic faxes need not be signed. Rule 80.3 has been amended in order to accept not signed electronic faxes ( Where the communication has been sent by telecopier electronically, the indication of the name of the sender shall be equivalent to the signature ). Submitting proper originals. Where an application for a Community trade mark is submitted to the Office by telecopier and the application contains a reproduction of the mark pursuant to Rule 3(2) which does not satisfy the requirements of that Rule, the required reproduction suitable for publication shall be submitted to the Office in accordance with Rule 79(a). Where the reproduction is received by the Office within a period of one month from the date of receipt of the telecopy, the reproduction shall be deemed to have been received by the Office on the date on which the telecopy was received. Communication by technical means. The President of the Office shall determine whether, to what extent and under what technical conditions communications may be sent to the Office by electronic means. It is expected that this will be done through My Page. The audience was reminded that the OHIM is a paperless office. Most documents are scanned so it is not convenient to file briefs in the form of booklets (with bindings). In addition, the Office informed that rather than filing the same evidence several times (reputation, proof of use, etc.), the parties could refer to the documents submitted in a previous case as long as complete details are given (exact date of the brief, identification number of the case, pages from X to Y, etc.). 6. Restitutio in Integrum / Continuation of Proceedings Mr. Detlef Schennen There are three means of redress the non-compliance with time limits 1. Appeal plus interlocutory revision: only if time limit is non-peremptory AND the appeal is well-founded. After the amendment introduced by Reg. 422/2004 it is now possible to request Interlocutory Revision in the opposition procedure, if the other party consents (Art. 60a), which is unlikely. 6

7 2. Restitutio in Integrum (Art. 78): only if immediate loss of right. After the last amendment, restitutio is also possible in the priority time limit, but not in the time limit to pay the opposition fee 3. Continuation of proceedings (Art. 78a): newly introduced figure that follows the provisions of the European Patent Convention. Comparison Restitutio in Integrum and Continuation of Proceedings Restitutio in Integrum Time limit starts when obstacle ceases (max. 1 year) Fee Euro 200, always kept Continuation of Proceedings Time limit starts with expired time limit (2 months from expiry of unobserved time limit) Fee Euro 400, if granted Omitted act must be completed Request must be reasoned: Standard of all due care Intervening rights for third parties in good faith Priority time limit: yes Filing date-related time limit: yes Opposition period: no Appeal period: yes Time limit under Art. 60a: no Conversion time limit: yes Time limit for observations within the opposition procedure: yes Time limit to request proof of use: no Time limit to furnish proof of use: yes Time limit to translate opposition: yes Time limit to remedy admissibility deficiencies: yes Omitted act must be completed Even if failure was intentional (no excuses or reasoning necessary) No third party rights Priority time limit: no Filing date-related time limit: no Opposition period: no Appeal period: no Time limit under Art. 60a: no Conversion time limit: no Time limit for observations within the opposition procedure: no Time limit to request proof of use: yes Time limit to furnish proof of use: yes Time limit to translate opposition: yes Time limit to remedy admissibility deficiencies: yes 7. Allocation and Fixing of Costs Mr. Detlef Schennen The basic principle is that the Reimbursable Costs have increased. 7

8 R. 94 (7) (d): All amounts increased by Euro 50. For example, opposition reimbursable fees have raised from Euro 250 to Euro 300. Only reimbursable if professional representatives within the meaning of Article 89 were appointed, not for employees or the party itself. Fixing of Costs The costs are automatically fixed in the decision. The amount is limited to representation costs at standard rate and, if applicable, OHIM fees. The Decision constitutes the executory title as regards the costs. The liability is for the party and not for his representative. The new provisions on fixing of costs (new amounts, new procedure) apply to all fixings made after The new amount is applied even if the case started, or was decided, under the "old law" and even if only Euro 250 were requested / proven by the bill. Less Proof or even No Proof of Costs Incurred If the fixing is made in the Decision, Rule 94 (3) states that no proof / assurance whatsoever is required. There is an irrefutable presumption that representative did charge the standard scale amount. There is no need for representatives to reveal their pricing policy. Time Limit to Request Fixing In the future, separate fixings shall only be made: (a) When the Decision was adopted before (b) When the costs go beyond the standard scale (only if oral hearing). (c) When inclusion of fixing in Decision was forgotten. The important change is that a separate fixing can only be requested within two months after Decision became final (Art. 81 (6), 3 rd sentence). Previously, there was no statutory time limit. 8. Transfer, Division, Renewal Mr. Gordon Humphreys An outline of the most important facts for applicants to take into account were put forward. They can be summarised as follows: Transfers. - Requirements of requests for registration of transfers. - The request must be made using an official OHIM Recordals Form. - No fee to be paid. - Languages:1st or 2nd language indicated in the application (if it is a transfer of a CTM Application) and 1 of the 5 languages of the Office (if it is a transfer of a CTM Registration). - Parties to the proceedings: only the original proprietor or successor in title may file the request for transfer. The request can also be filed jointly, if there is a common representative for either proprietor or successor in title. - Formal requirements: Proof of transfer (i) Declaration signed by the original proprietor that he agrees to the recordal in the register of successor in title or, (ii) Request signed by both parties (original proprietor and successor) or (iii) Separate 8

9 proof of transfer, extract of Trade Register, merger documents, etc. The Office may request additional proof in case of serious doubt as to veracity of documents. - Partial transfers: a part of goods and services of the CTMR can be transferred. The applicant must indicate the new distribution of the list of goods an services (by class). The list may not be broadened (but alcoholic beverages may be transferred for whisky and gin only). The partial transfer implies the division of a CTMR application or registration (a separate file but with the same filing date, priority date, etc..). The Office shall give a new number for the transferred portion (divisional registration or application) of original CTM. The partial transfer will be notified to both parties and published in Part C of the Bulletin. Division The possibility to divide the application has been newly introduced in Article 44a of the CTMR. What is it? It is the splitting of the application or the registration maintaining the same ownership. What does it do? It creates two or more CTM applications and carries forward all existing rights (seniorities / priority filing date). When can it not be done? - Before obtaining a filing date. - During the opposition period. - During on-going opposition proceedings if opposed goods are to be split off into a new CTMA (or if there is any doubt in this regard). - If opposition decision has become final against all goods and services of CTMA. - If notification of registration fees has already been sent. Note: If the applicant successfully defends the application against an opposition, he can split the application between that time and the time when the Offices asks for payment of the registration fee. How to do it? Identification of the CTM and the party Payment of official fee Euro 250 Indication of the list of goods and services that remains and those to be split off. Renewals Notification from the OHIM The OHIM shall inform at least 6 months before the CTM expiry (1) the proprietor or his representative and (2) any person having a registered right in respect of the CTM (ex.: licensee, owner of a right etc..) or his representative. For the time being 19,000 letters have been sent to cover concerning CTMs filed on 1-3/04/96. It is to be noted that failure to give such information does not affect the expiry of the registration and does not involve the responsibility of the Office. Formalities of the Request for Renewal - In writing (fee payment only is not sufficient without indicating the CTM). 9

10 - Request must be signed by an authorized person: (the proprietor, a person expressly authorized by the proprietor such as a licensee, an authorized representative acting on behalf of any of above persons may be filed in any of the 5 languages of the OHIM (language of the renewal proceedings). - Methods of payment: banker s transfer, current account, credit card (in the future). Payments (new fees quoted) Renewal Fee: Individual CTM: 1,500 EUR / 1,350 EUR for e-renewal Collective CTM: 3,000 EUR For each class exceeding 3: Individual CTM : 400 EUR Collective CTM : 800 EUR Payment deadline Maximum: 6 months before the expiry of the 10 year protection. Fees should not be paid before start of 6 month period. Minimum: 6 months ending on the last day of the month in which protection ends ( ordinary deadline ). Possibility to renew within the so-called grace period. Methods of renewal E-renewal through MyPage (registered users) E-renewal through Internet Faxed form Ordinary mail Courier service Hand delivery Deficiencies If there is a deficiency, the OHIM sends a letter to renewal applicant or representative asking to remedy this within two months. If the fees have been paid but the registration is not renewed or the renewal is requested after the expiry of the additional period, the OHIM will refund the renewal fees: Rule30(6) CTMIR. Should deficiencies not be remedied before the expiry of the time limit (2 months), the Office will issue a notification of loss of right in accordance with Rule30(4) CTMIR. This resolution will be effective after 2 months (except if there is an appeal). There is no possibility of continuation of proceedings. Effect of the renewal The renewal takes effect on the day following the date on which the existing registration expires. No renewal certificate will be issued (merely a notification). Reported by Jordi Güell and Mireia Curell, ES 10