Amendments to Community trademark searches approved

The Council of the European Union has agreed to amendments to Article 39 of the Community Trademark Regulation, which sets out the requirements for searches for prior trademark rights.

At present, Article 39 provides that, following the filing of a Community trademark application, the Office for Harmonization in the Internal Market (OHIM) must transmit a copy of the application to the national trademark offices that have agreed to carry out a search for prior trademark rights. The OHIM is also obliged to carry out a search for any prior and conflicting Community trademarks. The results are transmitted to the applicant. The owner of any Community trademark that has been cited in the report is notified of that fact by the OHIM after publication of the applicant's mark.

Article 39 was originally introduced as a compromise measure between those member states pressing for a full examination both on absolute and on relative grounds, and member states that only wanted the OHIM to examine on absolute grounds. One benefit of the so-called strict examination system, in force at a national level in countries such as the United Kingdom and Ireland, is that enterprises of limited means can register a trademark in the knowledge that the relevant trademark office will not permit later-filed conflicting marks to be registered.

Pursuant to Article 39(7) of the Community Trademark Regulation, the European Commission was obliged to submit a report on the operation of the search system to the EU Council following a period of five years of the running of the OHIM.

Taking into consideration (i) the quality of the information provided in the national reports, which varies enormously, and (ii) the decision by Germany, France and Italy not to participate in providing national reports, the EU Commission at first proposed the total abolition of the searches under Article 39. However, given that this feature was introduced as a compromise, it was never likely that a complete abolition would have been approved by the EU Council.

The proposal that has now been agreed is that the OHIM shall continue to conduct a search for any prior conflicting Community trademarks. However, the national reports will become optional, at the request of a Community trademark applicant. The ability to opt in for national search reports will become available after a transitional period of four years. The notification provided by the OHIM to the holder of any earlier Community mark that has been cited in the applicant's search report will continue.

In response to the criticisms made of the contents of some of the national reports, the amendments to Article 39 provide that the reports "shall be prepared on a standard form drawn up by the [OHIM]" and the essential contents shall be set out in the implementing regulation (new Article 39(3)(a)). The period of time within which the national offices must communicate the results of the national reports to the OHIM is reduced to two months.

The agreed proposal will be welcomed by most users of the Community trademark system and the decision to standardize the contents of the national reports should remove some of the main criticisms of the Article 39 searches. In particular, and given the enlargement of the European Union in May 2004, the decision to maintain the national reports for those applicants who request them will be welcome news for small and medium-sized enterprises who often do not have the financial resources to carry out comprehensive searches in each of the EU member states prior to filing a Community trademark application.

Kieran Heneghan, FR Kelly & Co, Dublin