Wednesday, 6 November 2013

Pause for Thought: Unlawful Trade Mark Examination

It's often the case that, having filed a UK trade mark application, an applicant is in two minds as to
Pondering whether to Proceed with his Trademark
whether it is prudent to allow a notification to go to an owner of an earlier right. Depending on how close the trade mark is or whether the owner of the earlier right is still in business and indeed possibly a close competitor, it might be a good idea to let him know so that the invitation to oppose from the UK IPO (which is what it feels like, even though it isn't) does not come out of the blue. For this reason, the UK IPO have decided that the application should wait for two months before they go ahead with the advertisement. During that time the applicant can respond and push the application ahead straight away -- or he can ponder.

Things aren't quite the same with OHIM. There, they are very competitive and love to be able to advertise that applications are published within hours or, at the very least, days. I think this race to register began with the dot-com boom and the need to have a trade mark to get into the sunrise period for new top-level domains. Such joys have now passed. Efficiency is good -- but should it be in disregard of the law? In the summer, the IPKat drew attention to the fact that OHIM are regularly publishing applications less than a month after they have sent out the search report. This contravenes Article 38(7) of the Community Trade Mark Regulation (CTMR), which was designed to give applicants an opportunity to ponder their search results by delaying the publication for a month from delivery of the search report.

One of the improvements OHIM have offered in their new website (see post below) is an opportunity to do a search at the point of filing, so you can decide whether to pay your fee. This looks very promising -- though I haven't had an opportunity to try it (being small and not impacted by new websites (sob!)). So I asked the OHIM team whether they were going to continue ignoring Article 38(7). The question was well understood -- but it wasn't answered.

Efficiency! Speed! Those are the objectives, and they can be measured. No doubt the revision of the CTMR, if and when it happens, can be made to remove this embarrassing provision. However, it hasn't happened -- and it doesn't bode well for the rule of law if European institutions are able to boast about disregarding burdensome provisions while asking the CJEU in great ceremony to interpret others less inconvenient.

Many professional trade mark attorneys use a deposit account. The rules of deposit accounts require the the fee is not deducted until one month after the filing date. This fits nicely with the anticipated delay before publication, and these applications don't seem to be fast-tracked as they can withdraw during this period of grace and recover their Euro. However, it seems that the credit card users pay their money straight away so their applications are advertised faster. In many cases, it may be the credit card users who are best advised to ponder.

I don't like to criticise OHIM. Mostly speed is good but maybe the Oppositions and Appeals process could get the benefit of acceleration while the applications comply with the law.


  1. Thanks for highlighting that (if I've understand things correctly) there's going to be a search-before-paying facility at OHIM. As my office generally uses a credit card to pay fees, this is going to a significant headache. Businesses are entitled to take the view that " it's less expensive to file an Application and see what happens than it is to collect Search Reports ". The headache comes in when the (no cost) searches that businesses have done pre-filing don't match the results of the search-before-paying facility. Won't happen ? Let's wait and see !

  2. You dont have to click on the search button. Its there to help private applicants who might struggle with TmView. For the professional its use is interesting. If its certain disaster there is good reason to stop and warn the client. In most cases search results are very much a maybe than the much desired Yes/No. Therefore I think it will be click, wonder and proceed