NEW TRENDS IN TRADE MARK PRACTICE AT OHIM. AMENDMENTS TO THE COMMUNITY TRADE MARK REGULATION. COUNCIL REGULATION (EC) No 422/2004 1. Julio Laporta Insa Examiner Trade Marks Department OHIM 1 The opinions expressed in this article are exclusively those of the author and are not binding on the Office. For documents concerning the official practice, practitioners are referred to OHIM s website at www.oami.eu.int. Page 1
0. FOREWORD This paper deals with Regulation No 422/2004 2 that amends the CTMR 3 and looks into how the changes introduced by this recent reform will affect the trade mark practice at OHIM 4. The main points of this paper are the following: overview of Regulation No 422/2004 amending the CTMR, amendments that have already entered into force, amendments that need implementing measures to enter into force, amendments that will enter into force only after four years, in 2008. 1. OVERVIEW OF REGULATION NO 422/2004 AMENDING THE CTMR The CTMR has been substantially amended over the last year in order to adapt the system to the Madrid Protocol, to the enlargement, etc. In the annex you will find a list of these amendments. Out of all these amendments, this paper deals with the amendments introduced by Council Regulation (EC) No 422/2004 amending the CTMR. It consists of quite a number of amendments, additions and deletions made in the CTMR. These amendments can be of two types: Considering when they will enter into force: (1) some already entered into force on the 10 th of March, (2) some will enter after implementing measures are introduced and (3) some other after four years; 2 Council Regulation (EC) No 422/2004 of 19 February 2004 amending Regulation (EC) No 40/94 on the Community trade mark, published in OJEU 09/03/2004. 3 CTMR: Community Trade Mark Regulation. 4 OHIM: Office for Harmonization in the Internal Market (Trade Marks and Designs). In this paper OHIM will also be referred to as the Office. Page 2
If we consider their importance there are: (1) new features of the system, (2) changes of the existing practice, (3) ancillary issues and (4) confirmation of the existing practice. Out of all the amendments, this paper will focus on (1) the new features of the system and (2) the changes of practice grouping them by the moment when they have entered or will enter into force. 2. AMENDMENTS THAT HAVE ALREADY ENTERED INTO FORCE The following are the amendments that entered into force on the day following the publication of the reform: the 10 th of March 2004. 2.1. New features There is only one new feature with immediate effect: it is introduced by the new Article 60a and institutes the old-named interlocutory revision, now called revision of decisions, in inter partes cases. It means that when an appeal is filed against a decision in an inter partes case, like an opposition decision for example, the appeal is first sent to the department whose decision is contested, the Trade Marks Department in the case of an opposition decision. If, within one month, the department does not consider the appeal to be admissible and well founded, it shall send the appeal back to the Boards of Appeal. Otherwise, if the department finds the appeal admissible and well founded and considers that it should rectify the decision, it shall so inform the other party to the proceedings. The other party has then two months to declare whether or not it agrees to the rectification. If it does not reply or does not agree, the appeal is sent back to the Boards of Appeal. If it agrees, the decision is then rectified. 2.2. Changes of practice Page 3
Proprietorship (Amendment of Article 5, deletion of Article 37, partial deletion of Articles 50 and 51). Article 5 lays down who can be a proprietor of a Community trade mark. The new version of Article 5 opts for a more flexible approach: there is no longer any requirement concerning nationality, establishment or reciprocity. The system is now open to any natural or legal person or authority established under public law. As a consequence, there is no need to examine the entitlement during the registration procedure (Article 37 has been deleted) and lack of entitlement is no longer a ground for revocation or invalidity proceedings (partial deletion of Articles 50 and 51). In practical terms this means that all existing CTM applications coming from states or territories for which there is not yet a reciprocity finding (like the Channel Islands) will be accepted. Conversion (Amendment of Articles 108 to 110). There are two changes concerning conversion. The first one is that, in those cases where the CTMA is refused by a decision of the Office or where the CTM ceases to have effect as a result of a decision of the Office (or of a Community trade mark court), the request for conversion shall be filed within three months after the date on which that decision became final. In practical terms it means that, in those cases referred to, the Office will no longer send a notification fixing a period of three months for conversion. In other words, when the Office takes a decision refusing a CTMA or canceling a registered CTM, the period of three months for requesting conversion starts automatically once the decision becomes final. The second change concerns the role the Office will play at the beginning of the conversion procedure: the admissibility of the request is now examined by the Office. It implies that, from now on, the Office will also check the cases where conversion cannot take place. For example, when a CTMA was rejected because of an opposition based on an Page 4
Spanish mark and now the applicant request the conversion of the defeated CTMA into, among others, a national Spanish trade mark application, the Office will declare such request partially inadmissible. Other changes of practice The following other changes have been introduced into the CTMR with immediate effect: Article 21: the original title bankruptcy or the like proceedings is now changed into insolvency proceedings and the whole article has been adapted to the newest Community legislation in this field. Article 25(3) concerning applications filed via the national offices. Firstly, the original deadline for the national offices to transmit the applications to OHIM of one month has been extended to two months; secondly, the original consequence when the applications were not received by OHIM within that deadline (deemed to be withdrawn) has been changed into considering them to have been filed on the day when they are actually received by OHIM. Article 78(5) has been amended in order to allow a restitutio in integrum request when the time limit for filing a priority claim has not been observed. There are other amendments that have already entered into force but, as mentioned before, since they are either ancillary or only confirm the existing practice they will not be covered in this paper. 3. AMENDMENTS THAT WILL ENTER INTO FORCE WHEN IMPLEMENTING MEASURES ARE ADOPTED 3.1. New features There are quite a number of new features: the division of the application or registration, the continuation of the proceedings in spite of the fact of a missed deadline and the revocation of decisions. Page 5
New Articles 44a and 48a allow the division of the application (44a) and/or registration (48a). Consequently, the applicant/proprietor can declare that some of the goods or services included in the original application will be the subject of one or more divisional applications. This declaration will be subject to a fee. New Article 77a (revocation of decisions) permits the Office to cancel an entry in the Register or to revoke a decision which contains an obvious procedural error attributable to the Office. It shall be determined, ex-officio or at the request of one of the parties to the proceedings within six months from the date on which the entry was made in the Register or the decision was taken, after consultation with the parties to the proceedings and any proprietor of rights. New Article 78a provides for a period of grace in the form of a continuation of the proceedings when a party to proceedings before the Office has failed to observe a time limit. In such circumstances, it is possible to obtain, on request, the automatic continuation of the proceedings against payment of a fee. The Office can thus continue the proceedings as if the time limit had been observed. The request has to be filed within two months after the end of the original time limit and there are some time limits that are excluded 5. Article 78 has been adapted to exclude from restitutio in integrum the time limits foreseen in this new Article 78a. 3.2. Changes of practice The changes of practice that will enter into force once implementing measures are adopted are: 5 This Article shall not be applicable to the time limits laid down in Article 25(3) CTMR [deadline for national offices to forward the CTM applications to OHIM], Article 27 CTMR [payment of the filing fee], Article 29(1) CTMR [priority right], Article 33(1) CTMR [exhibition priority], Article 36(2) CTMR [examination of the conditions of filing], Article 42 CTMR [filing of an opposition], Article 43 CTMR [examination of the opposition], Article 47(3) CTMR [payment of renewal fee], Article 59 CTMR [time limit for appeals], Article 60a CTMR [revision for decisions in inter partes cases], Article 63(5) CTMR [actions before the Court of Justice], Article 78 CTMR [restitutio in integrum], Article 108 CTMR [conversion], or to the time limits laid down in this Article or the time limits laid down by the Implementing Regulation for claiming priority within the meaning of Article 30 CTMR, exhibition priority within the meaning of Article 33 CTMR or seniority within the meaning of Article 34 CTMR after the application has been filed. Page 6
Article 81(6) (Costs fixation). With regard to the apportionment of costs, when the amount of the costs to be paid is limited to the fees paid to the Office and the representation costs, the amount will be fixed in the decision itself and not in a separate proceeding. Therefore, the present two step procedure (decision on the question of who has to bear the costs plus separate fixation of the amount of the costs) will be merged into one single act. Articles 88 and 89 (Representation) have been amended to introduce two changes. The first being that it would suffice, for a professional representative, to be resident in any EU Member State to be able to deal with the Office in the sense that changing one s place of residence or employment within the territory of the various Member States would no longer have any implications for one s representation at the Office. The second is that the conditions under which authorisations must be filed will be fixed in the Implementing Regulation. In practice it means that, as a general rule, no authorisation will be required for professional representatives and legal practitioners. Articles 127 and 129 (Opposition Divisions and Cancellation Divisions) permit that in the future under certain circumstances certain decisions in opposition and in cancellation proceedings will be taken by a single member. Articles 130 and 131 introduce several changes in the functioning of the Boards of Appeal: (a) the first is that it is now possible, for the Boards of Appeal to take decisions in an enlarged Board (one of the objectives of this measure is to avoid contradictions between the various Boards in similar cases); (b) the second, that it is also possible for a single member to take decisions (with the purpose of speeding up decisions by the Boards of Appeal); and (c) the third, that the members of the Boards will now be appointed by the Administrative Board and not by the Council 6, this having the effect of making the appointing procedure more efficient and easier to administer. 6 The President of the Boards and the chairpersons will still be appointed by the Council of Ministers. Page 7
Article 157 (fees). The fees for alteration of the representation of a Community trade mark and for registration of the transfer of a Community trade mark will be abolished. These are the most significant amendments that will enter into force when implementing measures are adopted. 4. AMENDMENTS THAT WILL ENTER INTO FORCE AFTER FOUR YEARS The only amendment that will enter into force in four years time, on the 10 th March 2008, is the reform of the search system (basically, Article 39, and, tangentially, Articles 40 and 150(3)). The main lines of the new system are the following: the search carried out by OHIM in the CTM register will remain compulsory for OHIM, the searches carried by the national offices will become optional under an all or nothing principle and upon payment of a separate search fee. In practical terms it means that at the time of filing, it is up to the applicant to decide whether or not he wants that a search report be prepared by the central industrial property offices of the Member States. If he wants the search report to be prepared, he will have to expressly request it and pay, along with the application fee, a search fee. In such cases, once the Office has accorded a filing date to the CTM application, it will send a copy of the application to the central industrial property offices that have informed the Office of its decision to operate a search in its own register of trade marks in respect of CTM applications. Within two months as from when these offices received the CTM application, they will communicate to the Office the search reports in a standard form. The publication of the CTM application will not take place before the expiry of one month as from the date on which the Office transmitted the search reports to the applicant. Page 8
5. SUMMARY These are all the new features and changes of practice that have been introduced into the CTM system by Regulation 422/2004 amending the CTMR. To conclude, is important to keep in mind that: In the last year the CTMR has been the subject of various reforms; The one that took place in February 2004, has substantially amended the CTMR; Some of amendments entered into force on the 10 th of March 2004: revision of decisions in inter partes cases, proprietorship, conversion, filings at the national offices, insolvency proceedings and restitutio in integrum; Others need implementing measures to be adopted: division of applications/registrations, revocation of decisions, continuation of proceedings, fixation of costs, representation, changes in the way decisions will be taken by the opposition and cancellation divisions and the Boards of Appeal and the abolishment of some fees; Finally, the reform of the search system has been adopted but it will only enter into force on the 10 th March 2008. Enclosures: Annex: Amendments of the CTMR that took place in 2003 and 2004 Page 9
ANNEX: Amendments of the CTMR that took place in 2003 and 2004 14/04/2003: Council Regulation (EC) No 807/2003 adapting the CTMR to Decision 1999/468/EC concerning the provisions relating to committees which assist the Commission in the exercise of its implementing powers. It entered into force on 05/06/2003 and modifies Article 141 (after 27/10/2003 re-named Article 158) and it adapts the CTMR to the general rules on regulatory committees. 18/06/2003: Council Regulation (EC) No 1653/2003 of 18/06/2003 amending Article 118a and Article 136 of the CTMR. It entered into force on 01/10/2003. This Regulation adapted the CTMR to the new control and audit systems of the Community institutions by introducing a new Article 118a and modifying Article 136 and it has to do with access to documents. 23/09/2003: Incorporation of Article 142a to the CTMR according to Annex II of the Act of Accession. It entered into force on accession (i.e., on 01/05/2004). As a consequence of the enlargement of the EU a new Article 142a (after 27/10/2003 re-named 159a) was introduced. 27/10/2003: Council Regulation (EC) No 1992/2003 amending the CTMR to give effect to the accession of the EC to the Protocol relating to the Madrid Agreement. It has not entered into force yet: it will once the Protocol enters into force with respect to the EC. This Regulation adapted the CTMR to the Madrid System and introduced a new title XIII international registration of marks in the CTMR (new Articles 140 to 156). 19/02/2004: Council Regulation (EC) No. 422/2004 amending the CTMR. It entered into force on 10/03/2004. This is the subject of this paper. Further information is available at: http://oami.eu.int/en/mark/aspects/amend.htm Page 10