Amendments to the Implementing Regulation and the Fees Regulation adopted – Amendments enter into force on 25 July 2005
 

 

On 29 June 2005 , the European Commission adopted amendments to the Regulation implementing the Community trade mark Regulation and amendments to the Regulation on the fees payable to the OHIM.

The new Regulations

Commission Regulation (EC) No 1041/2005 of 29 June 2005 amending Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark was published in the Official Journal of the European Union of 5 July 2005 (OJ L 172, p. 4). On the same date, the Commission adopted Commission Regulation (EC) No 1042/05 of 29 June 2005 amending Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ L 172, p. 22). The amendments enter into force 20 days after their publication, i.e. on 25 July 2005 .


Background to the amendments

The amendments to these Regulations must be seen in the context of the amendments to the Community trade mark Regulation made by Council Regulation (EC) No 422/2004 of 19 February 2004 amending Regulation (EC) No 40/94 on the Community trade mark . Some of those amendments entered into force immediately. Several amendments concerning the organisation of, and procedures before, the Boards of Appeal of the Office required changes to the Rules of Procedure of the Boards of Appeal. These have been implemented by Commission Regulation No 2082/2004 of 6 December 2004 (published in OJ OHIM 2005, 446; see also Information from the Commission, published in OJ OHIM 2005, 465).

A number of other amendments brought about by Regulation No 422/2004 required implementing rules and are only now coming into force together with the recent amendment to the Implementing Regulation and the Fees Regulation (see Information from the Commission, referred to above ).

The recent amendments to the Implementing Regulation go beyond merely implementing Regulation No 422/2004 and contain a number of other procedural improvements. This is in order to simplify the proceedings, remove doubts and pitfalls, and to benefit from the OHIM's 9 years of experience in applying the CTM Regulation.


How to obtain more information

For the benefit of users, the Office has established a consolidated version of the Implementing Regulation and Fees Regulation valid as from 25 July 2005 . The Office is also reviewing all its Examination Guidelines to adapt them to the revised procedures. As a first step, you can find on our website Guidelines on "General Provisions on Proceedings before the Office" and on "Changes in an application or registration", including divisions of CTM applications and registrations.

Moreover, workshops and information sessions are being organised.

Further information will follow soon.

Parties to proceedings before the Office should familiarise themselves with the new rules.


Summary of the most important changes

What are the most significant changes brought about by the revised Implementing Regulation?


1. Representation of the trade mark

The new rules make it clear that for a mark consisting of a colour per se, an indication of an international recognised colour code is optional. In fact, the Office recommends indication of such a code but failure to do so will not constitute a ground for refusal. Furthermore, provision will be made for the furnishing of electronic sound files as an attachment to a CTM application for a sound mark filed by e-filing.


2. Division of an application or registration

The new rules implement Articles 44a and 48a CTMR (as introduced by Regulation No 422/2004). This allows for the division of a CTM application or registration. The division will be subject to a fee of €250. Certain periods or procedural situations are defined where a division is not admissible. In particular, it is not possible to divide goods and services that are subject to an opposition. When an opposition is pending, only those goods and services can be divided off which are not contested by the opposition.


3. Opposition procedure

Rules 15–22 governing the opposition procedure have been reframed completely.

One objective was to put the provisions into a logical and chronological order of proceedings, and to clarify a number of formalities regarding which contradictory decisions taken at higher instances had caused uncertainty.

Another aim was to simplify the procedure whilst still retaining the basic features and procedural steps of the opposition procedure.

A new feature of the procedure is the immediate notification of all oppositions even prior to completion of the admissibility check. Once the opposition has been found admissible, the cooling-off period is set in motion, and the parties are invited to file their evidence and arguments, in the same way as has been done up to now.

Another new feature is the limitation of the cooling-off period to a maximum of 24 months.

The time limits for filing translations of documents have been reinforced. An opposition which is not filed in the first or second language of the application must be translated within one month (as is the case now) but if that is not done, the Office will not open a further time limit for doing so. All documents to be filed in the course of the proceedings must be translated into the language of the proceedings within the time limit applicable for the filing of the originals. An exception continues to apply for documents in support of proof of use.

Translations must faithfully reproduce the structure and contents of the original and must not be confined to excerpts which the party considers “relevant”.

A new rule makes it clear that the Office will disregard all facts and evidence that are filed after expiry of the time limits set.

It is also clarified that it is not the task of the Office to point out which documents are missing or could be filed by the parties once the opposition is admissible. This is important for the proof of the existence and validity of earlier rights. Private databases are not accepted as means of proof of the earlier right.

If the applicant requests proof of use, he must do so within the first time limit set for him to reply to the opposition.


4. Transfers

As from 25 July 2005 , the transfer fee will be abolished. The OHIM considers it in the interest of the CTM system and of third parties that trade mark owners request the recordal of transfers.


5. Licences

No proof of the licence is needed if the request for recordal of the licence is filed or co-signed by the trade mark owner himself. However, if the request for recordal is filed or signed exclusively by the licensee, proof of the licence or the CTM owner's consent is necessary.


6. Conversion

The changes to the conversion procedure, in particular the rule that it is the OHIM that decides on the admissibility of a conversion request, have already been in force since March 2004. However, it will now be clarified that, when a refusal is based on a meaning of the trade mark in a particular language (without any other qualification as to the territory to which the objection applies) a conversion is refused under Article 108(2) only in respect of those Member States where that language is an official language.


7. Notifications by fax

The new provisions clarify that the OHIM has a choice between fax and post as means of notification. This principle has already been confirmed by the Court of First Instance in the case "Pan Spezialitäten" (Joined Cases T-380/02 and T-128/03). Furthermore, it is clarified that a fax transmitted by a party through a computer work station (a so-called electronically generated fax) is an electronic transmission that does not require any signature.


8. Use of registered mail

Decisions subject to an appeal will continue to be notified by registered letter with advice of delivery (if the OHIM decides not to send the document by fax). However, all other documents will be notified by ordinary mail, which is deemed to have been effected on the 10th day following that of its posting. The category of registered letter without advice of delivery disappears. This means that although, in the future, more communications will be sent by ordinary mail, the addressees of these communications will benefit from an additional period before a document is deemed to have been received.


9. Extensions of time limits

In future, postal strikes in the Member States of the EC other than Spain will be irrelevant for the expiry of time limits. If an applicant or representative becomes aware of a postal strike in his own country, he should send the document via other means (fax or private messenger services).


10. Authorisations

Professional representatives need not file an authorisation (this merely confirms current OHIM practice).


11. Continuation of proceedings

Continuation of proceedings (continuing proceedings after an unobserved time limit provided the omitted act has been completed at the time the request is made and that payment of a fee of 400 euro has been effected) becomes possible. The request must be made within two months following expiry of the unobserved time limit. Certain time limits are excluded from this possibility.


12. Renewal

The formalities for a renewal have been reduced to the strict minimum.


13. Transitional Rules

There are no special transitional rules regarding these amendments. This means that the amendments apply to all pending cases should the situation governed by the respective rule arise. In other words, the new rules apply to situations that arise in the future but cannot be applied retroactively.

For example, in future, a request to extend a cooling-off period from 24 to 28 months (or from 30 to 36 months) will have to be refused, regardless of whether the cooling-off period started before July 2005. Similarly, a CTM applicant must request proof of use together with his first observations if the time limit to submit them starts after 25 July 2005 . Divisions of applications or registrations and the possibility to apply for continuation of proceedings become available as of 25 July 2005 . Likewise, as of that date, no fee will be charged for requests for the recordal of transfers.

Letters already sent out by the Office in the course of the proceedings remain valid and will not be changed afterwards if the legal basis for them changed after the letter was sent.

In many respects, the new rules merely confirm Office practice and, for that reason, no transitional issues arise. For example, the Office has, as a matter of course, disregarded documents filed in an opposition procedure after expiry of the relevant time limit set. In future, this practice will be based on new Rule 19(4) of the Implementing Regulation.