Brussels, 20th January 2003
Industrial property: Commission proposes improvements to Community Trade Mark system
The European Commission has presented a proposal for a Regulation modifying existing procedures for the granting of Community Trade Marks (CTMs) by the Office for Harmonisation in the Internal Market (OHIM) in Alicante. Community Trade Marks are valid EU-wide on the basis of a single application to the OHIM. The new proposal would abolish the system of searches. That system was intended to help applicants for CTMs to monitor effectively the possible existence of prior conflicting rights, but in practice has not proved satisfactory. Moreover, the Regulation would amend the regime for professional representation before the OHIM to bring it fully into line with the principles of freedom of establishment and freedom to provide services. Furthermore, the proposed Regulation would expand the system to include instruments allowing the Boards of Appeal to improve further the way they function. The Regulation would also make other procedural changes aimed at making the system simpler and more efficient, without affecting its substance or the rights of the parties involved. For the full text of the proposed Regulation and of reports on the functioning of the existing Regulation see: http://ec.europa.eu/internal_market/en/indprop/tm/index.htm
"Search system" for Community Trade Marks
The proposed Regulation would abolish the system of searching set up under the existing Community Trade Mark Regulation (40/94/EC CTMR). That system aimed to help applicants for CTMs to monitor effectively the possible existence of prior conflicting rights, but did not prove satisfactory in practice.
This proposed amendment to the CTMR is based on a report submitted by the Commission. The Commission launched a public consultation before finalising the report. It received a total of 27 responses from interested parties including multinationals, professional organisations and Member States.
The Commission's report concludes that the system of searches prolongs unnecessarily the procedure for the registration of CTMs and imposes an administrative burden on national offices, the Office and applicants, without providing applicants with a valuable and cost-effective tool to help them to monitor effectively the possible existence of prior conflicting rights.
Furthermore this system would, if maintained after enlargement of the European Union, become even more costly and complex.
The abolition of the search system would bring the CTMR closer into line with the Regulation on Community Designs (see IP/01/1803) under which there will be no need for designs submitted to undergo, before registration is granted, a detailed examination in order to ensure they qualify for protection.
The existing Community Trade Mark Regulation allows for the professional representation - by lawyers or other qualified persons of applicants to register trade marks at the OHIM and of those opposing such applications. The Regulation requires the Commission to examine the system of professional representation and, if necessary, to propose some modifications to this regime. That examination has indeed revealed the need for further action.
The new proposal would amend the CTMR's provisions on professional representation to bring them fully into line with the principles of freedom of establishment and freedom to provide services. It would mean that, once registered to appear before the OHIM, professional representatives, wherever they resided or conducted business in the EU, would retain their registration. Furthermore, the Commission as a general recommendation will ask the OHIM to provide Member States, and accession countries, with the necessary advice and guidance to ensure that national representatives all over the European Union have equal access to information and know-how on the Community trade mark and, in due course, on the Community Design (see IP/01/1803).
Finally, the Commission is inviting the non-governmental organisations with which the OHIM co-operates to consider adopting a voluntary, non-binding code of conduct for professional representatives before the OHIM. The Commission and the OHIM would if necessary assist them in drawing up such measures.
Boards of Appeal
Experience and an assessment of the functioning of the CTM Boards of Appeal have revealed a need for improvement in certain areas. This mainly relates to giving the Boards additional means of improving their efficiency and output. This is crucial for the credibility, particularly outside the EU, of the Community system and of the work carried out by the OHIM. It is also a crucial point for users. The measures proposed would allow for the formal appointment of a Chairman of the Boards of Appeal and of an enlarged Board which should improve consistency in decision-making, as well as allowing decisions to be taken by a single member.
The proposed Regulation would also abolish the nationality and reciprocity conditions for allowing an application for a CTM. This means that there would no longer be nationality and residence restrictions on access to the Community Trade Mark system.
There are a number of other procedural points, including some proposed changes to the decision-making rules for appointments to the Boards of Appeal.
The proposal is subject to unanimous adoption by the EU's Council of Ministers following consultation of the European Parliament.