The European Commission has now released its long awaited response to the “Study of the Overall Functioning of the European Trade Mark System” completed by the Max Planck Institute in February 2011. One of its proposals, relating to Community Trade Mark Office (OHIM) searches, should be carefully noted by all Community Trade Mark (CTM) proprietors.
One of the changes to the Community Trade Mark system proposed by the European Commission is the abolition of searches conducted by OHIM.
Currently when a CTM application is filed, OHIM carries out a basic search of the CTM Register in order to identify earlier potentially conflicting applications or registrations, and sends details of the new application to the owners (or representatives on the record if any are appointed) of any earlier CTMs revealed in the search. This is to provide Trade Mark owners with the opportunity to file opposition against a new application should they believe it to conflict with their earlier rights.
Abolishing OHIM searches will require proprietors of earlier Trade Marks to be vigilant and to actively police their rights.
Should the European Commission’s proposals come in to force, one cost effective consideration we recommend to all Trade Mark owners is having a watching service in place, which can be provided through our in-house Search department. Watching services can be tailored to cover trade mark applications in particular registries and regions, domain names and company names.
You can find more information regarding the watching services we offer on our website.
Proper policing of rights is important for many reasons, in particular to maintain and enhance the value and integrity of a brand. Given this proposal, watching services may well become critical in the future.
For further information, please contact your usual Boult Wade Tennant adviser.