Amendments to the Community Trade Mark Implementing Regulation and Fees Regulation which entered into force on 25 July 2005
The Community trade mark (CTM) system has undergone significant changes in the last eighteen months as a result of the enlargement of the European Community, the accession of the European Community to the Madrid Protocol, and moves to improve the workings of the system. The latest in the series of changes took effect on 25 July 2005 when two new regulations1 amending the Implementing Regulation2 and Fees Regulation3 came into force.
The amendments which came into effect on 25 July 2005 do two things. Firstly, they implement measures required to bring into force some of the changes to CTM Regulation4 made by Commission Regulation (EC) No. 422/2004 of 19 February 2004. Secondly, they introduce other changes to the procedural rules, many of which clarify or confirm existing practice.
The most significant changes introduced on 25 July 2005 are discussed below.
1. Continuation of Proceedings
Parties who fail to observe certain time limits set by the CTM Office (OHIM), such as the deadline for responding to a refusal on absolute grounds, can now request “continuation of proceedings”. Provided that (a) the request is made within two months of the unobserved time limit, (b) the omitted act is carried out before the request is made, and (c) a fee of €400 is paid, the consequences of the failure to observe the deadline are effectively waived.
This is a useful new provision which may enable parties who have been unable to complete a certain act within a required time limit to avoid loss of rights.
2. Revocation of Decisions
Where OHIM has made an entry on the CTM Register or taken a decision which contains an obvious procedural error attributable to OHIM, it shall now ensure that the entry is cancelled or the decision is revoked.
Cancellation or revocation may be made by OHIM of its own motion, or at the request of a party to any relevant proceedings, within six months of the entry/decision, and after consultation with any affected parties.
Existing rights to (a) appeal against decisions, or (b) request correction of (i) errors in the name and address of an applicant, (ii) errors of wording or copying, or (iii) obvious errors, are not prejudiced by this new provision.
3. Division of Community Trade Mark Applications/Registrations
It is now possible to divide a Community trade mark application or registration to create one or more divisional applications/registrations. The fee for filing a declaration of division is €250.
Each new divisional application/registration will retain the filing date (and, if relevant, the priority and seniority dates) of the original application/registration, and will cover some of the goods or services included in the original application/registration.
A declaration of division shall not be admitted if (a) it divides the goods/services against which a pending opposition, application for revocation, declaration of invalidity, or counterclaim for revocation and/or invalidity is directed, or (b) it is filed (i) before the filing date of the original application is accorded, (ii) during the opposition period, or (iii) in the period between OHIM notifying the applicant that the registration fee is payable, and grant.
A declaration of division that has been admitted will face an objection if the goods/services of each divisional application/registration overlap with those of any other divisional applications/registrations, or those remaining in the original application/registration. Where an objection is raised, the applicant/proprietor will be set a period of two months to remedy any deficiencies.
Division can be useful in some circumstances. For example, an applicant may wish to divide an application where an objection/opposition has been directed against some of their goods/services, but they want to obtain a registration quickly in respect of other goods/services, for enforcement or other purposes.
4. Apportionment and Fixing of Costs
Previously, the apportionment and fixing of costs was always a two-step process. A decision as to who would bear costs would be given in an opposition, revocation, invalidity or appeal decision, or following the termination of such proceedings by one of the parties. It would then be for the party to whom costs had been awarded to file a request for the amount of costs to be fixed.
Now, where the amount of costs to be paid is limited to office fees and representation costs, the amount of costs will be fixed at the same time as the apportionment of costs is made.
Legal or professional representatives, who represent natural or legal persons before OHIM, will no longer be required to file authorisations unless OHIM or another party to proceedings expressly requests it. This change clarifies the previous position where authorisations were still required but OHIM stopped examining them some time ago.
Employees acting on behalf of natural or legal persons will still be required to submit authorisations as a matter of course.
6. Decisions of the Opposition and Cancellation Divisions
Previously, all decisions of the Opposition and Cancellation Divisions were made by three members, at least one of whom had to be legally qualified. In an attempt to improve the speed and efficiency of case handling, certain decisions can now be made by a single member. These are: (a) decisions on the apportionment of costs, and the amount of costs where this is to be fixed at the time of apportionment; (b) decisions to close a file or not to proceed to judgement; (c) decisions to reject an opposition as inadmissible before the expiry of the cooling-off period; (d) decisions to stay proceedings; and (e) decisions to join or separate multiple oppositions.
7. Opposition Procedures
The rules governing oppositions have been substantially rewritten, mainly to confirm or clarify existing procedures. However, a number of new features have been introduced into the opposition procedure including, in particular:
(a) Immediately notifying an applicant of any opposition without waiting for the admissibility check to be completed. (The cooling-off period will continue to run from when the admission of an opposition is notified to the applicant).
(b) Limiting the cooling-off period to a maximum period of twenty-four months, in order to encourage the earlier resolution of oppositions.
(c) Restricting when the applicant can request proof of use from the opponent to the two month period in which the applicant should file observations in reply.
8. Representation of the Trade Mark
(a) Application for registration in colour
The rules now indicate that an application for registration in colour should include a colour reproduction of the mark and an indication in words of the colour(s) making up the mark, but that specifying the relevant colour code(s) according to an internationally recognised colour code system (such as the Pantone® system) is optional.
Accordingly, OHIM will not raise an objection if colour codes are absent. Nevertheless, an applicant would be well advised to include a reference to colour codes, where possible. If they are not included, there is a risk that the mark could later be held not to fulfil the requirement for graphic representation, due to a lack of precision or durability.
(b) Application for registration of a sound mark
A new rule states that an applicant for registration of a sound mark who files electronically can, optionally, provide an electronic file containing the sound, in addition to a graphic representation of the mark in the form of musical notation. (As per Case C-283/01 Shield Mark B.V. v Joost Kist h.o.d.n. Memex , the musical notation should comprise “a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals”).
It has been clarified that where grounds for refusal of a CTM application, or for revocation or invalidity of a CTM registration, are based on the meaning of a trade mark in a particular language of a European Union member state, the applicant/proprietor can still convert their CTM application/registration into national applications in those members states where the language is not an official language. For example, if a CTM application is refused because the trade mark is descriptive in French of the goods/services covered by the application, it will still be open to the applicant to convert the CTM application into national applications in any member states other than France, Belgium and Luxembourg.
The fee for recording the transfer of a Community trade mark and the fee for alteration of the representation of a Community trade mark have been abolished.
11. Recordal of Licences
If a request to record a licence is co-signed or filed by the trade mark owner, it will not now be necessary to submit either documentary proof of the licence or the trade mark owner’s consent, in order for the licence to be recorded.
Lack of Transitional Provisions
No transitional provisions were introduced in respect of the amendments which took effect on 25 July 2005. This means that the amendments should apply to all pending cases when a relevant situation occurs on or after 25 July 2005. For example, if a cooling-off period, which has already lasted for twenty-four months, expires after 25 July 2005, a further extension of time will not be granted regardless of whether both parties to the opposition consent to it being extended.
Amendments cannot, however, be applied retrospectively. For example, parties required before 25 July 2005 to file an authorisation of agent form would still be well advised to do so, even though authorisations will not be required in respect of applications filed or changes of agent occurring on or after 25 July 2005.
1. Commission Regulation (EC) Nos. 1041/2005 and 1042/2005 of 29 June 2005.
2. Commission Regulation (EC) No. 2868/95 of 13 December 1995 implementing Council Regulation No. 40/49 on the Community trade mark.
3. Commission Regulation (EC) No. 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs).
4. Council Regulation (EC) No. 40/49 of 20 December 1993 on the Community trade mark.