New search system from March 10 2008

As a result of the revision of the Community Trademark Regulation (40/94), national search reports, which are currently an integral part of all Community trademark applications, will become optional as of March 10 2008. The search reports of earlier Community trademarks will remain unchanged.

Since the inception of Community trademarks in 1996, applicants have automatically received national search reports on prior national and regional rights from participating national and regional trademark authorities within the European Union. The reports were intended to highlight any earlier national and regional rights which might be a hindrance to the application. Not all national authorities participated, and important jurisdictions such as France, Germany and Italy were absent from the group of participating national offices.

According to the new Article 39 of the regulation, applicants that file Community trademark applications as of March 10 2008 must affirmatively elect to receive the national and regional searches, and pay an additional search fee. There will be no possibility to order only certain national or regional searches. It is expected that the national and regional trademark authorities of 17 of the 27 member states will provide the service (ie, Austria, Bulgaria, the Czech Republic, Denmark, Finland, Greece, Hungary, Ireland, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Spain, Sweden and the United Kingdom).

A request for national searches must be made within one month of the application. For EU designations of international (Madrid Protocol) registrations, the one-month term begins to run when the Office for Harmonization in the Internal Market receives notification of the designation.

The additional fees payable for the national and regional searches have not yet been set, but can be expected to be in the region of €150 to €300. It is expected that the application fees for applicants that elect not to order national and regional search reports will be reduced accordingly. Such applications should also be processed at least two months faster.

Arguably, the existing national search reports are of relatively little value, as they are not harmonized and give no indication of use of the marks. Moreover, a number of national and regional offices (eg, Benelux, France, Germany and Italy) are currently absent from the list of participating offices under the new scheme. The new scheme is a compromise between applicants wishing to be provided with relatively inexpensive search reports from most (but not all) national offices, and those seeking to benefit from a quicker and cheaper application procedure.

Peter Gustav Olson, MAQS Law Firm, Copenhagen