• ALICANTE ABSTRACTS

    Amendments to CTM Regulation

    In 9 March 2004, a notice in the Official Journal of the European Union announced that, by virtue of Council Regulation (EC) No. 422/2004 of 19 February 2004 (“the Regulation (as amended)”), the CTM regulation had been amended. Except where stated otherwise, these amendments entered into force on 10 March 2004. The main amendments can be summarised as follows:

    1) The CTM Applicant – Previously, under Article 5 of the Regulation, the only persons who were able to own a CTM were natural or legal persons (including authorities established under public law) who were:

    a) nationals of a Member State;

    b) nationals of other States party to the Paris Convention or to the WTO Agreement;

    c) nationals of States not party to the Paris Convention who are domiciled or have real and effective industrial or
    commercial establishments within a territory of the Community or a State party to the Paris Convention; or

    d) nationals of States (not belonging to the categories in b) or c) above) which accord to nationals of all Member States the same protection for trade marks as they accord their own nationals.

    However, under the Regulation (as amended), any natural or legal person including authorities established under public law may now own a CTM.

    2) Geographical Indications – Under Article 7 of the Regulation (as amended), the provision on absolute grounds for refusal, subsection k) has been added. Under the Regulation, subsection j) prevents the registration of trade marks for wines and spirits unregistrable if they contain or consist of a geographical indication. New subsection k) renders trade marks unregistrable if they contain or consist of a designation of origin or a geographical indication registered in accordance with Regulation (EEC) No. 2081/92.

    3) Non-registered Rights – Article 8(4) of the Regulation provided that, under opposition by the proprietor of a non-registered trade mark or other sign used in the course of trade of more than mere local significance, a trade mark would not be registered in so far as the law of the Member State governing that sign prohibited such registration. These non-registered rights have now been extended to include those protected by Community legislation.

    4) Search Reports – Until 10 March 2008, the Office will continue to issue search results provided by each Member State of the European Union that has agreed to search CTMs against national registers. After this point, in accordance with the Regulation (as amended), the Office will only provide search results from the various national Offices (set out in a standard form prepared by the Office) upon request at the time of filing the CTM application and upon payment of the appropriate search fee within the time limit for paying the filing fee. This falls under Article 39 of the Regulation (as amended). The Office will, however, continue to issue a search report containing details of earlier CTM applications and registrations.

    5) Division of the Application – A new provision has been inserted into the Regulation under Article 44a, whereby the CTM applicant may divide the application in respect of the goods or services included in the original application. It will not be possible to divide an application where the application is under opposition and the division is in respect of the opposed goods and/or services.

    6) Division of the Registration – Likewise, the proprietor of a registered trade mark may now also divide the registration in respect of the goods or services included in the original registration. It will not, however, be possible to divide a registration where an application for revocation or invalidity has been entered against the registration and the division is in respect of the contested goods and/or services.

    The provisions dealing with division of applications and registrations will enter into force at a date laid down by the Commission and published in the Official Journal, when the necessary implementing measures have been adopted.

    7) Rights Relied on in Invalidity Proceedings – Article 52(2) of the Regulation sets out the types of earlier rights that can be relied upon in invalidity proceedings. It has been amended to include earlier rights, the use of which are prohibited under the Community legislation, as well as under national law.

    8) Revision of Decisions in Ex Parte Cases – Article 60 of the Regulation has been amended to allow for the revision of decisions in ex parte cases where the party who has lodged the appeal is the sole party to the procedure and the department responsible for the contested decision considers the appeal to be admissible and well founded.

    The amendment provides that if the decision is not rectified within one month after receipt of the statement of grounds, the appeal will be remitted to the Board of Appeal without delay and without comment as to its merit.

    9) Revision of Decisions in Inter Partes Cases – A new Article 60a has been added providing that where an appeal is made in inter partes proceedings and the department whose decision is contested considers the appeal to be well-founded and admissible, it shall rectify its decision.

    This rectification can only be implemented if the relevant department notifies the other party of its intention to rectify the decision and that party accepts it within two months of the date on which it received notification. If the other party fails to accept the rectification of the decision, the appeal shall be remitted to the Board of Appeal.

    If, on the other hand, the relevant department does not consider the appeal to be well-founded, it shall remit it to the Board of Appeal.

    10) Revocation of Decisions – A further provision has been introduced whereby an entry in the Register or a decision made by the Office and containing an obvious procedural error attributable to the Office shall be cancelled (in the case of an entry) or revoked (in the case of a decision). Such cancellation or revocation must be determined within six months from the date on which the entry was made in the Register or the decision was taken. This falls under Article 77a.

    This amended provision will enter into force at a date laid down by the Commission and published in the Official Journal, when the necessary implementing measures have been adopted.

    11) Continuation of Proceedings – Under the newly inserted Article 78a, it is possible for a trade mark applicant, proprietor or any other party to proceedings before the Office who has failed to observe a time limit set by the Office to obtain, upon request, a continuation of the proceedings. This article is subject to the proviso that at the time the request is made to the Office, the omitted act has been fulfilled. A time limit of two months (from the date of the omission) is allowed for such a request to be made and a fee is payable in respect of the continuation.

    This new Article does not apply to the time limits set out in the following articles:

    • Article 25(3) – time limit for CTM application filed through a national Office to reach the CTM office.

    • Article 27 – time limit for payment of application fee.

    • Article 29(1) – time limit for claiming priority from a national application.

    • Article 30 – time limit for filing priority documents and translations thereof.

    • Article 33 – time limit for claiming priority from exhibition of goods/services under the mark in question and filing supporting documents.

    • Article 34 – time limit for claiming seniority.

    • Article 36(2) – time limit to remedy deficiencies in a CTM application.

    • Article 42 – time limit for opposing a CTM application.

    • Article 43 – time limit for filing observations in relation to an opposition.

    • Article 47(3) – time limit for renewal of a CTM registration.

    • Article 59 – time limit for appealing against a decision of the Office.

    • Article 60a – time limit for accepting rectification of a decision.

    • Article 63 (5) – time limit for bringing an action before the Court of Justice against a decision of the Board of Appeal.

    • Article 78 – time limit for requesting restitutio in integrum.

    • Article 108 – time limit for requesting conversion.

     

    This amended provision will enter into force at a date laid down by the Commission and published in the Official Journal, when the necessary implementing measures have been adopted.

    12) Conversion – Under Article 109(3) of the Regulation (as amended), the Office will now additionally check whether conversion fulfils the requirements of Article 108(2), which states that conversion shall not take place if:

    • the proprietor’s rights in the CTM have been revoked on the grounds of non-use, or
    • there exist grounds for refusal of registration or grounds for revocation or invalidity in respect of the CTM on a national level.
    • Previously these checks had been the responsibility of the national offices, with OHIM only checking that time limits had been met and that the CTM in question had been refused, withdrawn, deemed withdrawn or had otherwise ceased to have effect.