N. 11, Oct. - Nov. 2003 
IP & RTD: Articles 

The Council considers the reform of the Community trademark system
Olivier Waelbroeck1

 
In general, the Community trademark system has responded satisfactorily to users' expectations: it has already enabled more than 200,000 companies to obtain, by means of registration with the Office for the Harmonisation of the Internal Market (OHIM), unitary protection of their trademarks in all of the European Union. Nonetheless, after seven years in use, it has become necessary, on the one hand, to correct certain weaknesses in the system and, on the other hand, to guarantee its effectiveness for the challenge of enlargement. This is why the Commission presented a proposition in December 2002 which aims to reform the community trademark system and improve the way it works. The measures proposed refer in particular to the search system and to the smooth functioning of the OHIM Boards of Appeal.


The search system

The system currently in force provides that, for any application for registration of a community trademark, a search shall be carried out in the national registers and the community register in order to identify any previous rights liable to be asserted to prevent the registration of the community trademark applied for.

This system has several important defects:

  • the searches are carried out after the filing of the community trademark application when, to be useful, they should be done beforehand;

  • the results of the searches in the national registers, contained in the search reports, are neither harmonised nor complete. The searches are not carried out in three of the largest national registers, namely the German, French and Italian registers;

  • the searches lengthen the grant procedure by at least five months;

  • the current system does not respond to the interests of trademark owners in general, and SMEs in particular. The latter are lead to rely on search reports when these are neither harmonised nor complete. In addition, no national office informs the owners of prior rights mentioned in the search reports that a community trademark which could enter into conflict with their rights has been applied for;

  • the current system is, despite its lack of efficiency, very expensive for the OHIM: every year, the latter pays around 12 to 13 million euros to the national offices for the searches that they conduct in their registers (or 1.2 million per office per year). With enlargement, the cost of the search system will double and endanger the financial well-being of the OHIM.

It is for all of these reasons that the Commission, with the support of the OHIM, has proposed that the search system be purely and simply abolished. Nonetheless, this proposition was not met with sufficient support among the member states when it was reviewed by the Council. The latter appears to favour a system whereby the search for prior rights that may enter into conflict with the community trademark application shall remain obligatory as regards existing community trademarks, while it would become optional as regards trademarks appearing in the national registers. It would henceforth be for the community trademark applicant to specify, when filing its application, whether it wishes a search to be carried out in the national registers and in this case, to pay an associated fee.


The Appeal Boards

Several measures have been proposed by the Commission to enable the Appeal Boards to function more efficiently. Among these we may cite the possibility, according to the difficulty or importance of the case, for the enlarged board of appeal or a single member to decide cases or for the role of the President of the Boards of Appeal to be modified.

At the moment, all of the appeals brought before the Boards are examined by three members. In the future, the Boards could also decide as an enlarged Board whenever the legal difficulty, the importance of the case or the particular circumstances justify this. On the other hand, simple cases may be decided by a single member. The latter must be a legal professional.

The possibility of adapting the composition of the Board to the difficulty or importance of the cases would improve the functioning of the boards: the appeal to a sole member would reduce the decision-making time and the setting up of an enlarged board should enable the emergence of conflicting case-law within the Boards to be prevented.

Finally, the President of the Boards of Appeal, whose position is equivalent to a Vice-President of the Office, shall be responsible for presiding over the enlarged Board. In addition to his judicial functions, the President of the Boards of Appeal will also have the task of organising the work of the Boards and of guaranteeing efficient administrative management.

The reforms proposed by the Commission have been debated by a working group within the Council. They should now be examined by COREPER as regards the possibility of adopting them by unanimity within the Council of the European Union. Their adoption is essential in order to permit the community trademark system to continue working efficiently. 2





1. Head of legal and institutional affairs within the General Affairs and External Relations Department of the Office for the Harmonisation of the Internal Market (trademarks and industrial designs) and manager of the Liaison Office between Brussels and the OHIM. («)


2. Editor's note: After this article has been drafted the Council of the European Union reached an agreement on the draft Regulation modifying the Community trade mark Regulation (EC) No 40/94 in order to make the CTM system more efficient. Under this agreement, the search as regards prior national trade marks will be voluntary, whilst the search for prior Community trade marks remains compulsory. Several criteria aimed at improving the quality of these searches have also been adopted. The Council envisages adopting the amending Regulation at one of its forthcoming meetings. («)