European Commission plans to scrap national searches

European Union

The European Commission has proposed to abolish the national search system developed under Article 39 of the Community Trademark Regulation.

Pursuant to this system, the Office for Harmonization in the Internal Market (OHIM) prepares a search report for each Community trademark application, listing earlier applications for, or registration of, a Community trademark for identical or similar goods and services. National search reports are also prepared by the EU member state trademark offices. All 15 member states produce search reports except France, Germany and Italy.

The commission has identified the following shortcomings of this system:

  • The national reports are inconsistent and incomplete;

  • Applicants incur additional expense if further searches are needed to compensate for the poor quality of the initial reports;

  • Applications are generally not withdrawn on the basis of an OHIM or national report. Instead, applicants prefer to wait and see if owners of prior rights file an opposition.

  • It takes on average six weeks to obtain all of these reports, causing a delay in registration; and

  • As more countries join the European Union, the number of Community trademark applications will increase dramatically and so will the cost of obtaining national reports.

Peter Munzinger, Bardehle Pagenberg Dost Altenburg Geissler Isenbruck, Munich

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