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24 November 2004

Setting standards for Europe - the OHIM 10 years on

Recent developments Case law through the years The public face of the OHIM Other changes to date Changes for the future

On September 9 2004, the Office for Harmonization in the Internal Market (OHIM) celebrated its tenth anniversary. The growth of the OHIM from a personnel of 20 people in 1994 to more than 600 today mirrors the increasing workload and the growth of the case law and development of practice under which it operates. The increase in size is also a result of the OHIM policy to try to employ personnel from all new member states.

Recent developments

Link with the Madrid Protocol
Many changes and developments have occurred in 10 years, but one of the most significant occurred only a few weeks ago, on October 1, when mark owners were for the first time able to designate the European Union in their international registrations filed under the Madrid Protocol and to base their international registrations on Community trademarks (see Community marks now stepping stones to international protection).

It remains to be seen whether many mark owners will use a Community trademark as a basis for an international registration, given the principle of central attack and the high incidence of oppositions to Community trademark applications. On the other hand, the entitlement of mark owners to designate the whole of the European Union in international registrations will no doubt be widely embraced.

EU enlargement
Another recent development was the accession on May 1 2004 of 10 new member states (Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia) to the European Union. This has significantly increased both the geographic scope of Community trademark protection and the size of the market covered by a Community trademark. However, the enlargement means that Community trademarks are now open to oppositions and indeed cancellation actions based on trademark rights subsisting in those 10 new member states.

The nine additional official languages of the European Union also lead to an increased risk of objection based on absolute grounds. In the GERRI/KERRY SPRING decision, one of the most significant cases in recent years, the European Court of Justice (ECJ) recognized that as the European Union expands, there is an increased likelihood that marks registered in one member state may be phonetically similar to indications of geographical origin of another member state. The ECJ noted that it is immaterial for the examination of likelihood of confusion whether the indication of geographical origin is used as a mark or as a descriptor, so long as the indication is used in accordance with honest practices in industrial or commercial matters. The ECJ concluded that such phonetic similarity is not sufficient to lead to a conclusion of incompatibility with honest practices (see ECJ clarifies Article 6(1) defence against GI infringement claim). With 25 member states and possibly more in the future (Bulgaria, Croatia, Romania, and Turkey are predicted to join in the coming years), the "great linguistic diversity" cited by the ECJ will become an increasingly difficult issue for the OHIM and mark owners to handle.

Case law through the years

When the OHIM came into existence, there was virtually no binding case law to consider and examiners were free to decide cases based on their interpretation of the Community Trademark Regulation. They now must try to reconcile often conflicting decisions of the OHIM, national courts, the Court of First Instance (CFI) and the ECJ. The CFI alone has issued some 110 decisions relative to Community trademarks while the ECJ has issued 17. The ECJ has also ruled on a number of questions referred to it by national courts on the interpretation of the Community Trademark Directive that have relevance to the Community trademark system.

To follow or not to follow?
In some cases, the OHIM practice does not accord with decisions issued by the CFI. Further, the ECJ decision in BABY DRY has been almost universally distinguished from other cases that have followed. Recent OHIM decisions following the ECJ decision in DOUBLEMINT indicate that although it has not been subject to the same level of criticism as BABY DRY, examiners and boards of appeal consider that there is still some room to interpret the case law.

A further example of the difficult position of the OHIM is the CFI decision in KLEENCARE, which contradicted all previous CFI case law on the question of whether and in what format evidence can be introduced for the first time before a board of appeal in inter partes proceedings (see Employee's evidence of trademark use needs further consideration). The OHIM has decided that it will (i) not follow this decision on this point unless or until it is confirmed by the ECJ,

Registration requirements
Due to the vacuum in which the OHIM was established, it has taken some time for certain registrability requirements to emerge. For example the recent NICHOLS decision has clarified the position as regards to the registrability of surnames (see Changes to examination practice likely following NICHOLS ruling). The Shield Mark decision set out the way in which sound marks should be represented graphically (see Für Elise decision creates a new sound in trademark law). The Libertel decision confirmed the registrability of pure colour marks and the required graphical representation (see The future of colour registration is orange). The subsequent Heidelberger Bauchemie decision confirmed Libertel and extended it to colour combinations (see ECJ confirms Libertel principles for colour combinations). A whole host of decisions on three-dimensional marks has been issued, largely refusing protection for such marks, particularly where they concern forms of detergent (see for example ECJ pours cold water on dishwasher tablet shape marks and Detergent tablet shape mark applications are a wash out).

Some relaxation in the OHIM registrability practice has resulted from decisions of its boards of appeal. For instance, examiners started accepting applications for retail services following the GIACOMELLI SPORT decision. Similarly, two-letter mark applications are no longer unregisterable per se following the IX decision.

Decisions on slogans including DAS PRINZIP DER BEQUEMLICHKEIT, MEHRFÜR IHR GELD and LOOKS LIKE GRASS... FEELS LIKE GRASS... PLAYS LIKE GRASS (see Artificial grass manufacturer loses trademark turf war) show a movement away from the former tendency of the OHIM to accept such marks. The current position is that slogans are generally unregistrable if they can be construed as promotional or advertising material rather than an indication of origin. Similarly, neologisms have also been the subject of negative decisions from the ECJ such as in BIOMILD (see Neologism comprising descriptive elements is not registrable) and POSTKANTOOR (see POSTKANTOOR pushes BABY-DRY test one step further). Even device marks have taken a beating in decisions such as BEST BUY (see 'Best Buy' not distinctive rules Court of First Instance).

The explosion of recent decisions has led to an increase in certainty in terms of which marks have a reasonable chance of successful registration. Mark owners are somewhat equivocal about this, as they frown upon any developments that restrict their ability to obtain registrations but object to others obtaining what they regard as unfair monopolies.

The public face of the OHIM

On a customer service level, the OHIM has always been in favour of electronic communication and making information publicly available where possible. On November 5 2004, it published the first issue of Alicante News, an electronic In the last year the OHIM has also launched a new version of CTM-Online, the database service that has significantly increased search capacity. The search facility for OHIM decisions, which, as practitioners will be aware, is an increasingly useful source of precedent, has been revamped. All of these developments have been undertaken while the OHIM was preparing and implementing the legislation and systems for registered Community designs.

The following further developments are also expected:

• EuroAce - a tool to harmonize the examination of specifications, in which certain formulations of goods and services that are acceptable to the OHIM will be listed.
• 'My Page' system, which will allow electronic communication between practitioners and applicants/registrants and the examiner dealing with the file.
• Access to files online, in which third-party files will be accessible after publication - with the exception of internal documents and confidential information in certain circumstances. Files of practitioners will be available to them and will be password-protected.
• Further development of the e-filing system to enable business-to-business transactions from back-office systems. The electronic filing of Community trademarks has been possible since November 2002.
• Electronic filing of oppositions.
• Online access to search reports.
• Introduction of e-renewal procedures.

Other changes to date

Amendments made to the Community Trademark Regulation in the past year are to be welcomed. In particular, the broadening of the categories of persons who can be proprietors of Community trademarks (set out in Council Regulation 422/2004) removes a limitation on the global accessibility of the Community trademark system.

One particularly contentious issue has been the search reports prepared by certain member states. With effect from March 10 2008, this system will change so that applicants have the right, but not the obligation, to request the searches and pay the appropriate fee. The consequences for failure to meet a deadline have also been relaxed. This should result in less duplication of cases: presently, if a deadline cannot be met in opposition proceedings, it may be necessary to instigate invalidity proceedings following rejection of the opposition.

The change in format of the boards of appeal is another development that is taking some time to become a reality. It is to be hoped that the new procedures will result in greater consistency in decisions. The introduction of a 'checks and balances' mechanism signified by the establishment of an enlarged Board of Appeal is also a progressive development.

A particular strength of the OHIM is its ability to adapt and change in accordance with new developments as well as to rationalize its practices. Therefore, where national systems may have been restricted by legislation or established practices, the OHIM has been able to streamline the requirements for claiming priority or seniority so as to remove unnecessary burdens on applicants (and in turn on itself) while maintaining the reliability of the system.

On a practical note, the OHIM is providing a great service to practitioners through its intensive exercise to update its guidelines for opposition proceedings. The increasing volume of OHIM decisions is an invaluable source of precedent but can be daunting. It is of great assistance to have a document that summarizes the general attitude of the OHIM to a particular issue or on a particular point. Likewise, the exercise undertaken by the OHIM to provide an index of the types of unregistered rights on which an opposition can be based under Article 8(4) of the Community Trademark Regulation is very helpful. The OHIM is also finalizing a draft to deal with:

• the examination of international registrations;
• conversion procedures following the amendments to the regulation and accession to the Madrid Protocol; and
• recordal of licences.

It is to be hoped that guidelines on other aspects of OHIM practice will be published in due course, including revocation and invalidity proceedings.

Changes for the future

There is no doubt that the OHIM will not stand still but instead continue to develop its practice, both of its own accord and in response to further CFI and ECJ decisions. One area that will hopefully be addressed is the high thresholds and strict requirements that the OHIM imposes before it will accept that a mark has a reputation or enhanced distinctiveness. Most mark owners are unfortunately not in a position to produce independent opinion polls or market surveys indicating the reputation of their mark, to require these as a matter of course is very onerous. Just as reputation or goodwill may be proven in court cases on an overall assessment of the evidence available, some argue that the Another area, which it is hoped may be addressed, is the vexing issue of requiring distinctiveness to be shown throughout the European Union, particularly for marks made up of English words. The decision of the ECJ in the Arthur Case (see ECJ interpretation of 'identical' narrows trademark owners' rights) has clarified what will be regarded as identical marks but it will be interesting to see how this is interpreted in practice in future years. Similarly, the Davidoff II decision extends the protection of registrations for marks with a reputation to identical or similar goods/services as opposed to just dissimilar goods/services. This will be of great assistance to mark owners as a desirable extension of the principle and one which had been hotly debated. It will however require significant interpretation to sketch the boundaries of protection of this new ground of opposition, infringement and invalidity.

Changes to the OHIM practice will of course continue to be influenced at ECJ level. Alexander von Mühlendahl, the OHIM Vice-President for Legal Affairs, welcomed the creation of judicial panels at CFI level at the 2004 MARQUES conference in Rome. Hopefully this will lead to increased consistency and the expedition of decisions.

In its first decade of operation, the OHIM has become a useful source of case law and generally consistent precedent. It has adopted increasingly sensible practices, as well as fulfilling its primary role in protecting trademark rights.

Niamh Hall, FRKelly

First published in World Trademark Law Report November 24, 2004

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