Home > Insights > New changes to search system for Community Trade Mark application

Author: Felicity Hide
1 January, 2009

What is happening?
Last year, the Community Office changed its search system.  It became optional for applicants to receive the searches carried out by the national offices for earlier conflicting rights, and if the applicant did wish to receive these search reports there was a fee payable.  Not all countries provided search reports.  There were certain countries which had opted not to take part in the search system.  If the applicant did not opt to receive the national search reports, then the Community Office carried out a search of the Community Register only and notified the applicant of possibly conflicting earlier Community applications and registrations.

As of 1 January 2009, further countries have dropped out of the search system.

Which countries provide search reports?
12 national Offices remain part of the search system.  These are Bulgaria, Czech Republic, Denmark, Greece, Spain, Lithuania, Hungary, Austria, Poland, Romania, Slovak Republic and Finland.  If the applicant opts to receive the searches and pays the relevant fee, searches of all these national registers will be carried out.

The Offices which do not provide reports are United Kingdom, Ireland, Sweden, Portugal, Germany, France, Benelux, Italy, Latvia, Slovenia, Cyprus, Malta and Estonia.

What is the cost?
As of 1 January 2009, the new cost for opting to receive the search reports is €144.

I am only interested in some of the countries covered by the search reports.  Can I opt to receive reports from some of the countries but not others?
No.  The search reports operate on an “all or nothing” basis.  You either opt to receive reports from all of the countries listed above, or from none of them.

When do I have to take this decision?
You must decide prior to the application being filed whether or not you will wish to receive the search reports.  This is because we must indicate at the time of application whether or not the search reports are requested.  After the application is filed, it is no longer possible to request the search reports.

What will you do if I do not give you specific instructions on these searches?

Our firm’s standard practice is not to request the national offices’ searches, unless you tell us to.  If you would like us to request these searches, please instruct us before the application is filed.

Once we receive the search reports we shall report them as we have previously.  If you do not opt to receive the national offices’ search reports, we shall still report on any marks revealed by the searches of the Community register.

Author

Felicity Hide

Felicity Hide
Partner

Phone this number (0)+44 20 7430 7500

Email this address fhide@boult.com

Verulam Gardens
70 Gray's Inn Road
London
WC1X 8BT