Revised Practice on Filing Observations

Kador & Partner, Munich, Germany, by Jennifer Clayton-Chen

Revised Practice on Filing Observations Article 41 CTMR is the legal basis for third parties to submit observations explaining why in their opinion a trade mark should not be registered with respect to Article 5 CTMR (persons who can be proprietors of Community trade marks) or Article 7 CTMR (absolute grounds for refusal). The Community Trade Mark Office has recently revised its practice concerning the handling of observations.

Accordingly, the Office will consider observations concerning the registrability of a Community trade mark if they have been filed within four months after the publication date. In case opposition has been filed, observations will be considered if they are received before the termination of the opposition proceedings. The Office will issue a receipt to the person making the observation ("observer"), but the observer will not receive any further communications from the Office. Specifically, he will not be informed about the outcome of any possible re-examination of the application. However, the observer may at any time and of his own accord check the status of the trade mark online (http://www.oami.eu.int).

The decision on whether the observations raise serious doubts concerning the registrability of the CTM application will generally be made within one month. Only where serious doubts are raised will the applicant be under any "duty" to reply. If no reply is filed, the Office will take a decision on the basis of the information contained in the file.

The Community Trade Mark Office will accept observations filed in any of the five official languages of the Community Trade Mark Office (English, French, German, Italian and Spanish) and also in another language, provided that it is the language of the registration proceedings of the CTM application.

It has to be stressed that arguments relating to absolute bars to protection (Article 7 CTMR) of trade marks made in opposition proceedings are not admitted. If an opponent wishes to raise grounds relating to the registrability of the trade mark, he has to do this in a separate submission pursuant to Article 41 CTMR.