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Changes To The Community Trade Mark System

Changes To The Community Trade Mark System

27/09/05

The Community Trade Mark (CTM) application system is the most cost effective method of obtaining trade mark protection throughout all of the member states of the European Union. In July 2005 a number of amendments to rules governing the CTM system came into effect. The changes (except those relating to ‘searches’ see below) will apply immediately to all matters currently pending before the Community office, regardless of whether or not they were initiated prior to 25th July 2005.

The most important of the amendments are detailed below.

Ownership

Previously a natural or legal person seeking a Community trade mark registration had to satisfy requirements concerning nationality, establishment or reciprocity. Failure to satisfy these requirements resulted in the rejection of an application for registration. This requirement has been removed and there are now no limitations as to who may own a Community trade mark.

There are now no limitations as to who may own a Community trade mark.

Representation of the Mark

Each trade mark application must include a representation of the trade mark for which registration is sought. Where the applied-for trade mark features some colour element, a colour representation of the mark should be included in the application and the colours making up the mark shall also be indicated in words. Additionally, the applicant has been granted the option of including a reference to a recognized colour code system, such as the Pantone ® system. This may be appropriate in circumstances in which a colour claim is integral to the trade mark.

Sound Marks

A Community trade mark may consist of any sign capable of being represented graphically, including "sound" marks. Therefore, where an application to register a "sound" as a trade mark is filed, the sound must be represented graphically. Musical notation has been used to satisfy this requirement. However if the application is filed through electronic means, under new practice rules, the application may now be accompanied by an electronic file containing the sound itself.

Formal Objections

Examiners at the Community office can now object to an application on the basis that the applied for mark includes a registered designation of origin and/or geographical indication.

Searches

Currently, once an application to register a mark has been accepted by the Community office, it issues a free "search" report providing brief details of earlier, similar trade mark applications and registrations listed on the Community trade mark register and some of the national registers of the Member states of the EU. The purpose of the search report is to advise applicants of potential grounds of opposition to the application. The search report has previously faced criticism on the basis that the reports issued by the participating national Registries are not consistent with one another in terms of the extent of the details provided. The new rules dictate that from 10 March 2008, the search reports issued by the national Registries will be available only for an additional fee and will take a standard form.

Opposition Procedure

The Community office is unable to object to applications on the basis of earlier national or Community trade mark rights and it is therefore incumbent upon the proprietors of earlier rights to protect their trade marks by formally opposing Community trade mark applications. For this reason, opposition proceedings are a common feature of the Community trade mark system. Several changes to, and clarifications of, the Community trade mark opposition procedure have been made under the new rules, the most significant of which are summarised as follows:

- the cooling off period is now to be capped at 24 months, whereas previously the period could have been extended indefinitely

- requests for proof of use of a trade mark relied upon by the Opponent must now be made within the first time limit set for the applicant to file observations in response to the opposition and may not be made at a later date

- the earlier rights upon which the opposition is based, must all belong to the same proprietor(s)

- the opposition fee will now be refunded to the Opponent when the opposed application is withdrawn in its entirety before the expiry of the cooling off period and in circumstances where the application has been ‘limited’ before the expiry of the cooling off period and that limitation, regardless of its nature has resulted in the conclusion of the opposition proceedings

- both the Applicant and the Opponent may only submit relevant observations within a single term, i.e. extensions of the deadline prior to which such evidence may be admitted will not be granted. In circumstances where the Applicant fails to submit observations in response to the opposition, the Community office must (as opposed to ‘may’) base its ruling on the evidence before it.