News

 

Withdrawal of an opposition after a negative decision but before
the period for filing a notice of appeal expired
December 2006

New German Design Act
February 2006

 

Decisions:

Limoncello - European Court of Justice sets aside decision of European Court
of First Instance in the case LIMONCHELO/ LIMONCELLO
January 2008

Limoncello - No similarity of signs due to dominant graphic element
February 2006

Praktiker - Registration of trade marks for services in retail trade
February 2006

 

Designs:

Community Designs
February 2006

 

Amendments to the Implementing Regulation and the Fees Regulation

Dr. Utz Kador, Kador & Partner, Munich, Germany
Verfier: Dr. Elisabeth Vorbuchner, LL.M., Zanker und Vorbuchner, Augsburg, Germany
February 2006

Keywords: Commission Regulation (EC) No 1041/2005, Commission Regulation (EC) No 1042/2005, amendments to the Regulation implementing the Community Trade Mark Regulation, amendments to the Regulation on fees payable to the Office for Harmonization

On June 29, 2005, the European Commission adopted amendments to the Regulation implementing the Community Trade Mark Regulation and amendments to the Regulation on fees payable to the Office for Harmonization (OHIM). These amendments have entered into force on July 25, 2005. Since there are no transitional rules, the amendments will apply to all pending and future cases should the respective situation arise. However, the new rules cannot be applied retroactively. The most important changes are:

Opposition proceedings:

  • All marks or prior rights an opposition is based on must belong to the same proprietor.
  • If the opposition shall be filed in the name of a licensee of the trade mark, a statement to that effect must be filed together with indications concerning the authorization or the entitlement to file the opposition.
  • Oppositions will be notified to the parties before the completion of the admissibility check. Once the admissibility check has been completed, the cooling-off period is set in motion.
  • The cooling-off period is now limited to a maximum of 24 months. However, negotiations between the parties are of course possible at all stages of the proceedings, independently from the cooling-off period.
  • The OHIM will not extend the one month time limit for translating an opposition that is not filed in the first or second language of the proceedings.
  • Except documents for the proof of use, all documents have to be translated into the language of the proceedings within the time limit for the filing of the originals. Translations of documents must be complete and may not be limited to parts that the respective party considers to be relevant.
  • If the applicant wants to request proof of use, he must do so within the first time limit set for him by the OHIM to file observations.
  • The OHIM will disregard all facts and evidence filed after the expiration of time limits set by the OHIM.
  • The OHIM will not notify the parties which documents are missing or could be filed.
  • Opposition filing fees will be refunded where the application is withdrawn before the end of the cooling-off period and/or where the application is limited before the end of the cooling-off period and the limitation has led to the conclusion of the opposition proceedings.

Continuation of proceedings:
The continuation of proceedings after an unobserved time limit can be requested within two months following the unobserved time limit for a fee of €400. The continuation is not applicable to certain time limits, for example for the filing of an opposition, the delivery of proof of use and the filing and the substantiation of an appeal.

Representation of a trade mark:
An indication of an international recognized colour code is optional, however recommended by the OHIM for trade marks consisting of a colour per se. It will be possible to attach electronic sound files to a CTM application for a sound mark filed by e-filing.

Transfer fees:
The transfer fees are abolished as from July 25, 2005.

Division of an application or registration:
A CTM application or registration can be divided for a fee of €250. A division is not possible in certain situations. For example, in pending opposition proceedings, it will not be possible to divide off the goods and services which are contested by the opposition.

Notification by mail:
Decisions subject to an appeal will be notified by registered letter with advice of delivery. All other documents will be notified by ordinary mail and will be deemed to have been effected on the 10th day following that of its posting.

Notification by fax:
The OHIM may choose between fax and post as means of notification. An electronically generated fax by one party does not require a signature.

National searches:
Effective from 10 March 2008 national searches conducted after the application of a CTM will be optional and subject to an additional fee.