ECTA HARMONIZATION COMMITTEE. Project 36. Project subject:

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1 ECTA HARMONIZATION COMMITTEE Project 36 Project subject: Survey on Ex-officio examination of trademark applications on relative grounds by the National Offices Project coordinator: Karel Šindelka Zeiner&Zeiner v.o.s. Compilation of answers: Question 1: Does your national PTO have the power to refuse applications on the basis of its own ex-officio examination of new trademark applications on relative grounds? AUSTRIA: BENELUX: BULGARIA: CROATIA: Question 1: Does your national PTO have the power to refuse applications on the basis of its own ex-officio examination of new trademark applications on relative grounds? 1

2 DENMARK: FRANCE: GERMANY: HUNGARY: ITALY: LATVIA: LITHUANIA: Legally, the answer should be NO. However, on 31/07/2012 ROPTO issues Working Instruction no. 4 that contains at point 11 a controversial text, that interprets the TM Law provision in a most original manner, as follows: With respect to the provisions of Art. 5 (1) (a), corroborated with the provisions of Art. 2 of the Law, namely the fulfilment of the requirement that the sign allows to distinguish the goods or services of one company from 2

3 those of another company, the examination shall be made in terms of identity or similarity, up to the likelihood of confusion created among the consumer, for identical goods/services of the same class or for similar goods/services of different classes. But this type of examination by way of comparison falls under the incidence of the provisions of Art. 6 (1) (4), namely of the relative grounds of refusal where, indeed, demonstrating the identity/similarity of goods/services is a mandatory requirement of the text of law (among other mandatory requirements). How the controversial text is applied? In theory, ROPTO conducts official searches (copying OHIM s practice). However, when the first publication is issued, the notification contains the following text: Based on provisions of Art. 6(6) of Law 84/1998, republished, the trademark you applied for is not refused registration when the holder of the earlier trademark consents to the registration of the subsequent trademark and, consequently, please provide us with this consent within 3 months. Consequently, instead of simply signalling the potential conflicting identical trademarks, the Examiner is conditioning the registration to a letter of consent obtained from the owner of a previous trademark that ROPTO considers as obstacle for registration of the earlier trademark. Subsequently, if no oppositions are filed, ROPTO issues a sort of provisional refusal, invoking the absolute grounds cited above* and declaring again that the trademark may only be registered with the consent of the holder of the earlier right. However, considering that the holder of earlier rights (the only one affected by the registration of an identical/similar trademark), notified about the existence of such subsequent trademark, may exert its right conferred by Law 84/1998, republished, namely: - File an opposition (Art. 19); - File a contestation (Art. 86); - Trademark cancellation (Art. 47). we do not see the reason why ROPTO, instead of maintaining its equidistant role of an impartial judge, a role imposed by the text of the harmonising law itself, intervenes as party, taking the role of the opponent and invoking the existence of an earlier registered trademark as grounds for the rejection of an application. Basically, ROPTO, by enforcing the Instruction, prohibits the right to defence as set forth in Art. 19 of Law 84/1998 (r), i.e. the right to defend in contradictory its point of view with regard to the identity/similarity of signs and goods/services and to be able to request proofs of use of the trademark invoked by the Examiner in its refusal and does not even give it the right to limit its list of goods/services or at least to file an argument in its favour. Moreover, the instructions expressly mention that the examination shall be made in terms of identity or similarity, up to the likelihood of confusion created among the 3

4 consumer, for identical goods/services of the same class or for similar goods/services, requirement that needs to be met only if Art. 6 is invoked, containing relative grounds of refusal (the only Article that contains such requirements), which is not allowed to the Examiner by Art. 22 (2) of Law 84/1998 (r) providing for the exofficio mandatory examination for absolute grounds only. Whereas the text of Art. 5, the only one that may be invoked by the Examiner, does not require the existence of a similar/identical trademark, whether earlier or not, and does not require the analysis or proof of the likelihood of confusion, the Examiner s analysis of the controversial text is entirely inconsistent with the remainder of the provisions of Art. 5, which refer to the distinctiveness of the trademark per se and not in comparison with another sign. Still, the distinctiveness of the sign is not confounded with the originality and does not imply any novelty or creativity. As for the conditioning of the trademark application EXCLUSIVELY on the consent of the earlier trademark holder, this not only reinforces the fact that ROPTO rejects trademarks by virtue of Art. 6, accepting the existence of the earlier, similar trademark but, even more, imposes on the applicant a requirement that is not to be found in any law and which, paradoxically, is MANDATORY, thus excluding all other rights conferred to the applicant by the law. No clarifications on this issue were provided by ROPTO. Our opinion is that the Examiner's consent request exceeds the legal text, since requiring such document means that they are examining the application for relative grounds, examination no longer permitted by the new TM Law. The State Office makes an unpardonable confusion between "distinctiveness" and "registration availability" and is exceeding the legal provision of the TM Law which clearly mentions that the Examiner should limit the examination to absolute grounds. This kind of refusal should be overcome if arguments are filed in respect with the Directive meaning of "distinctiveness" and, if not ROPTO, at least a superior Court will definitely accept the registration. It will be also interesting how an opposition impartially will be judged, as long as they already decided that the application would be registered only if the consent is submitted. 4

5 Question 1: Does your national PTO have the power to refuse applications on the basis of its own ex-officio examination of new trademark applications on relative grounds? SLOVENIA: SPAIN: SWITZ: UNITED KINGDOM: 5

6 Question 2: At which stage of the registration proceeding is such ex-officio examination conducted by the national PTO? (e.g. prior to publication of an application for oppositions, after publication of a trademark application for oppositions, at other time). Prior to publication of an application in the Official Gazette for oppositions by third parties. Prior to publication of a trademark application for oppositions Prior to publication of a trademark application. Prior to publication of a registered trademark for oppositions. Prior to publication of an application for oppositions. Prior to publication of an application for oppositions. Malta does not have an opposition procedure. Once received by the Trademarks Office, the Comptroller will examine whether the application for registration of the trademark satisfies the requirements of the Trademarks Act (2000) and for that purpose he shall carry out a search, to such extent as he considers necessary, of earlier trademarks. The trademark application normally takes between 6 8 months to proceed to registration, in the event that it does not encounter problems of registration within that time. Usually after publication of a trademark application for observation (interested third parties may file observations as to why the mark should not be protected) and before registration and publication of a trademark registration for oppositions. The ex officio examination should be conducted by the Office after expiration of the term for opposition purposes (which is 2 months after publication) where no opposition was filed or after the end of opposition proceedings. Prior to publication of an application for oppositions Prior to publication of an application for oppositions. Prior to publication. 6

7 Question 3: What prior rights may your national PTO raise in such ex-officio anticipation? Question 3a): Trademarks and trademark applications? Yes (including Community trademarks and International trademarks designating Cyprus). 7

8 Question 3b): Unregistered rights? (e.g signs used in the course of trade) Yes (if known to PTO). Yes, if established by use in a significant part of the country. 8

9 Question 3c): Other industrial property rights (e.g. designs, company name)? Yes, but very rarely. Yes, logos (other distinctive sign registered at the Office). Yes, registered company names and unregistered company names if established by use in a significant part of the country. 9

10 Question 3d): Copyrights? Yes, but very rarely. 10

11 Question 3e): Right to a name? Yes, but only distinctive surnames and if the owner of the name can suffer some disadvantage by the registration. 11

12 Question 3f): Other (please quote which ones)? N/A. Drug names, also other rights (see comments below). A right of personal portrayal or an industrial property right. None. Geographical indication. If the mark contains a picture that refers to someone not long dead. 12

13 Question 4): If your national PTO may raise prior trademark rights in an ex officio anticipation, which trademarks/trademark applications can be anticipated? Identical or also similar? Question 4a): Identical trademarks/applications? 13

14 Question 4b): Similar trademarks/ applications? Yes (both optical and acoustical similarity are examined by the PTO). 14

15 Question 4c): Other definition? N/A. - Reproduction or imitation of a trademark previously registered by another person for identical or similar products or services that may mislead or confuse the consumer or comprise the risk of association with the already registered trademark. Well known earlier sign (registered or established by use) if the new application may take unfair advantage of the earlier sign or that may unreasonably harm the earlier sign s distinctiveness or renown. 15

16 Question 5): If your national PTO may raise prior trademark rights in an ex officio anticipation may it anticipate prior trademarks/applications which are registered/applied for goods/services that are only identical to those covered by a new trademark application or may it also anticipate older trademarks/applications which are registered and/or applied for similar goods/services? Question 5a): Trademark registered/applied for identical goods/services? 16

17 Question 5b): Trademark registered/applied for similar goods/services? Unlikely. 17

18 Question 5c): Trademarks registered/applied for dissimilar goods/services provided that such older trademarks have good reputation or are well-known? Yes (according to the law, however, not common in practice). Yes (to a certain extent). Unlikely. 18

19 Question 5d): Other? N/A. - None. - Registration in bad faith of a trademark tha can be condusfd with an earlier sign in use in Sweden or abroad. 19

20 Question 6): What are the possible ways to overcome an ex officio anticipation based on earlier rights? Question 6a): Consent of the right-holder? 20

21 Question 6b): Arguments? Yes, during a hearing procedure before the Registrar or with the submission of a written considered reply at the PTO which will be followed by oral arguments before the Registrar. Depends on the matter, in practice usually not. No jurisprudence yet (the TM attorney are having various approaches on the issue) 21

22 Question 6c): Other? Initiation of expungement procedure at the PTO against an earlier registered trademark. E.g. cancellation of the trademark on which IPO s anticipation is based By limiting the list of goods/services. Restricting the list of goods and services. Applying to invalidate or revoke the cited mark or convincing the registered proprietor to voluntarily surrender the mark. If the mark applied for has been used for a number of years in Ireland, it may be possible to argue that the Applicant has honest concurrent user rights in the mark. None. Requesting cancellation of earlier right Requesting cancellation of earlier right (and suspending examination). Cancellation action against the earlier sign. 22