OHIM changes practice in opposition proceedings

European Union

The Office of Harmonization for the Internal Market (OHIM) has issued Communication 5/07, which aims to simplify the opposition process, clarify costs issues and bring extended suspension terms into line with extended cooling-off terms.

OHIM has been working for some time on accelerating opposition proceedings, as this is one aspect of its operation with which practitioners continue to be dissatisfied. Communication 5/07, which was issued on September 5 2007 and came into force on September 17 2007, applies to all existing and future oppositions.

OHIM will no longer check that all earlier rights in an opposition comply with the formalities for all absolute or relative grounds; it is sufficient that at least one of the earlier rights complies. It will now also accept class numbers, rather than requiring a list of the goods or services on which an opposition is based. These measures are intended to accelerate the notification of an opposition to an applicant and eliminate the delay caused by requesting an opponent to specify the goods or services in question.

When an opposition or application is withdrawn, OHIM will issue a costs decision when confirming the withdrawal to the parties. Previously, the parties had two months to inform OHIM of whether they had reached an agreement on costs. It is now up to the parties to notify OHIM on or before withdrawal of whether they have reached an agreement, as OHIM will not reverse a costs decision once it has been made. This implies that withdrawal signals the end of an opposition.

Suspension is used when an opposition has entered the adversarial stage - that is, when the cooling-off period has expired. OHIM will now grant second requests for extensions of suspensions for one year, with both parties having the option to opt out. Any evidence not filed by fax will now be disregarded, unless it is filed in duplicate. OHIM will not give the party filing the evidence an opportunity to rectify such omission.

Arguably, OHIM's intent is admirable. However, these amendments introduce further procedural pitfalls whereby opponents or applicants might be defeated by failure to comply with formalities which they no longer have the right to remedy.

Chris McLeod, Hammonds, London

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