Community trade mark practice is to change at OHIM, which will impact on both applicants and opponents of Community trade marks. The changes, which will take effect on 15th September 2010, relate to the time periods for trade mark proceedings, and to the proof of use of a trade mark which will be accepted.
Trade Mark Proceedings - Suspensions and Extensions of Time
In a Community trade mark opposition a suspension requested by both parties will, from now on, be granted for one year, as will any subsequent requests. Either party will be able to opt out of a suspension. We consider that long suspensions like this, as with the single extension to the cooling off period, are likely to result in a costs saving for clients, and reduce administration for practitioners.
The granting of extensions of time, in examination, opposition and cancellation proceedings for trade marks, is to be more structured. Again, this must be seen as good news for parties to proceedings before OHIM, who will no longer be caught out by the unexpected refusal of an extension request. However, multiple extension requests have been reigned in.
The new practice allows for one two month extension of time which will be granted automatically, as long as it is received within the prescribed period. Any further extension request will be refused, unless there are "exceptional circumstances". So, what will qualify as exceptional circumstances? OHIM have provided guidelines.
Exceptional circumstances are to be considered as "events beyond the reasonable control of the parties". Requests must be supported by reasons why the party concerned was prevented from completing a response by the first two deadlines. OHIM's own scenarios are the restructuring of a company whilst in the process of gathering evidence, and the completion of field work such as polls, with no time left to analyse the evidence.
Much emphasis has been made of the provision of documents to back up the request, which we suspect may lead to additional costs. Using OHIM's example, is it likely that a company will want a document evidencing its restructuring in the public domain? We think not, in which case, will OHIM require a witness statement? It could be argued that if there is time to prepare a witness statement, there was time to complete the response.
OHIM have agreed that death and serious illness are also exceptional, "provided that no reasonable substitution was available". Finally, they consider that natural disasters, wars and terrorism are thought to be "exceptional", although we suspect that in the event of such catastrophes, it is unlikely that many people would have their opposition at OHIM at the top of their "to do" list.
Proof of Use
At last, OHIM are curtailing the activities of those opponents, who on receipt of a request for proof of use, file a mass of unstructured documentation without checking for quality or content. The new proof of use guidelines therefore, have to be good news for clients and practitioners alike, lending clarity and brevity to a system which can be misused - this firm once received 5000 poor quality copies of invoices, not one of which referred to the mark in question. Tightening up is therefore long overdue.
An applicant in an opposition is entitled to request that the opponent provide proof of use of any of the marks it relies on which were over five years old at the time that the application was published for opposition. The rules state that the evidence must show the place, time, extent and nature of use for the goods and services in respect of which it is registered and on which the opposition is based.
In future a numbered list of all items of evidence must be provided, and each item of evidence must have the corresponding number attached. Each item must also be described, and its evidential purpose explained. These items of evidence should be confined to packaging, labels, price lists and catalogues, invoices, photographs, advertisements and appropriate witness statements. Unless it is all sent by fax, it must be provided in duplicate. Rules on translations remain unchanged - only that text which is necessary for evaluating the proof of use criteria needs to be translated.
OHIM are recommending that this evidence be limited to 110 pages. There must surely be a good reason for OHIM deciding on this number of pages, but we are pleased that we will no longer have to wade through 5000 irrelevant invoices.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.