OHIM releases new guidelines on examination and opposition

European Union

The Office for Harmonization in the Internal Market (OHIM) has reviewed and extended its guidelines on examination and opposition with a view to adapting them not only to the latest changes in the Community Trademark Regulation and the Community Trademark Implementation Regulation, but also so that they reflect the practice of OHIM in relation to examination and opposition procedures in greater detail.

The revision of the guidelines is ongoing through a procedure which is open to any interested parties (who are able to send their proposals and comments) and will end in 2007. However, the draft guidelines are already being applied by examiners.

Although the guidelines are not legislative texts, they are undoubtedly one of the most important tools available to all users of the Community trademark system. Both sets of guidelines cover a very broad range of cases and are well structured.

The Examination Guidelines are invaluable for understanding the practice of OHIM on absolute grounds for refusal of registration (mainly descriptiveness, generic nature of the sign and lack of distinctiveness), which could save users spending time and effort on trying to register a mark. It also contains references to transitional rules following the recent accession to the European Union of 10 new member states, which affected the absolute grounds for refusal of Community trademarks. In addition, it refers to the examination of applications from the standpoint of formalities, classification and searches, as well as the priority of the Paris Convention for the Protection of Industrial Property. However, it may perhaps have been useful to provide more information on seniority, not only because this characterizes Community trademarks but also because it is a complex system that is barely covered by the law.

As to the Opposition Guidelines, changes have been made to the following sections:

  • procedural matters;

  • identity;

  • global assessment;

  • similarity of goods and services;

  • similarity of signs; and

  • proof of use.

The first, procedural matters, is very extensive and detailed and contains valuable information. It explains, for example, the new system for the cooling-off period, suspensions of the opposition proceeding, the admissibility check for notices of opposition, translations, limitations of the Community trademark and withdrawal of the opposition.

Despite some gaps and a lack of updates with regard to decisions by the European Court of Justice and the European Court of First Instance, the amended guidelines will help to make OHIM's procedures more transparent. However, it must be remembered that the guidelines are not legislative texts and consequently the general instructions they contain are not only open to debate, but will also be subject to review (as OHIM has promised) each time a new decision is handed down or practice changes.

Ramón Cañizares, Elzaburu, Madrid

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