CTM REFORMS
How well is the Community trademark (CTM) system working?
On the whole, the CTM system works well and meets the needs of users and practitioners. With the Offi ce for Harmonization in the Internal Market (OHIM) receiving a record 108,000 CTM applications in 2012, there is a demonstrated (and growing) market for the CTM. T e challenge for EU legislators and OHIM is to make the underlying rules and procedures match today’s business world and fi t in a EU that—aſt er Croatia’s entry in July 2013—will comprise 28 member states.
Does OHIM process CTMs effi ciently?
Over the past few years, OHIM has invested heavily to improve its key performance indicators. Its service charter standards for the publication and registration of CTMs were reduced to 10 weeks and 25 weeks respectively, being met in around 98 percent of cases. It is now absolutely normal for a CTM to mature to registration within fi ve or six months from application.
T ese effi ciency pushes have resulted in considerable improvements in the speed of procedures, which—in general—are conducted expeditiously, particularly in the Opposition Division.
Nevertheless, last year’s IP Translator judgment of the Court of Justice of the EU was a signifi cant setback for OHIM and resulted in some long delays across all procedures.
What improvements could be made at OHIM?
T ere are still considerable delays with cancellation decisions, with almost half of OHIM’s cases failing to meet the decision-taking target of 22 weeks from close of the proceedings. OHIM should consider diverting more resources to this division to clear up the backlog.
While OHIM should be applauded for its eff orts in increasing timeliness, one sometimes gets the impression that quality, consistency and predictability of decisions have been compromised as a result. An unacceptable number of decisions fail OHIM’s ex post quality management procedures.
Is there a good balance between national marks and CTMs, as well as national offi ces and OHIM?
T e balance between the European and national trademark systems
is still far from perfect.
Divergences in practice, laws and tools mean that users of the European system cannot make choices regarding trademark protection based only on business reasons, such as the proposed territorial scope of the trademark. Instead, decisions are
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oſt en taken on costs and procedural issues, such as the ex offi cio citation of earlier marks.
T e legislative package, published by the European Commission (EC) on March 27, and the moves by OHIM and the national offi ces to converge practices will go some way to addressing these inconsistencies. It is clear, however, that the coexistence of the European and national trademark systems
will
form the backbone of European trademarks for the foreseeable future.
Will the proposed EC changes to the trademark system boost convergence between national offi ces and OHIM?
T e legislative package will result in a much greater level of harmonisation of the national trademark laws of the EU’s member states than we have had to date. T e harmonisation is based largely on the provisions already in place for CTMs. Such harmonisation will largely be welcomed by users of the European trademark systems, since there is no justifi cation for having such divergent laws.
T e legislative package must be considered
together with the ‘soſt er’ projects on convergence, such as OHIM’s Cooperation Fund (which funds the convergence of EU-wide IT tools) and the Convergence Programme, the goal of which is to engage voluntary participation of the national offi ces on a broad range of issues regarding trademark practice. T ese projects, together with the legislative package, will fundamentally change the landscape of trademark protection in the EU in the years to come.
Which two proposals will have the biggest practical impact on trademark owners?
Various proposals will have a large impact on trademark owners. One is the proposal to charge separate class fees beyond the fi rst Nice class. Many applicants take advantage of
the current ‘three
classes for the price of one’ fee structure for CTMs which has, however, contributed to cluttering of the trademark registers. It is to be hoped that charging on a class basis will help alleviate this problem, making it easier to clear and protect new trademarks.
T e requirement to pay the application fee
immediately and to claim priority together with the application, while intended to streamline and speed up proceedings, will require trademark applicants to be particularly careful at the moment of fi ling.
Another proposal is that non-EU languages be taken into account when examining applications for absolute grounds of refusal. T is will not only be a challenge for OHIM, but will also have an impact on the fi ling practice of trademark owners.
Michael Hawkins is a solicitor admitted in England and Wales. He advises clients on all areas of European trademark and design law and is an active member of INTA’s legislation and regulation committee, as well as the Pharmaceutical Trade Marks group (PTMG).
Tobias Dolde specialises in CTM and design law, international trademark protection/ litigation and proceedings before the European courts in Luxembourg. He is an active member of INTA’s bulletin committee, ECTA’s harmonization committee and Marques.
What does the future hold for the CTM/European trademark system?
T e European trademark, as the CTM will be known if the legislative package is adopted, has a very bright future. In July 2013, Croatia joins the EU and there are several other candidate countries waiting in the wings. T e ability to obtain trademark protection by way of a single, aff ordable registration system, and covering a market upwards of 500 million consumers with a high level of purchasing power, will mean that it will always be attractive to the business community.
Tobias Dolde is a partner in Noerr’s media, IP & IT department and head of the Alicante, Spain, offi ce. He can be contacted at:
tobias.dolde@
noerr.com
Michael Hawkins is a partner in Noerr’s media, IP & IT department and is based in the Alicante, Spain offi ce. He can be contacted at:
michael.hawkins@noerr.com
World Intellectual Property Review Annual 2013
81
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