OHIM's new examination practice may lead to more uncertainty

In response to complaints about delays in trademark registration, the Office for Harmonization in the Internal Market (OHIM) is now providing applicants with non-binding opinions on the registrability of trademarks following formal examination.

The OHIM's practice had been to issue a communication after the examination of a Community trademark application either (i) stating that no absolute grounds of refusal were found, or (ii) advising the applicant that the examiner objected to the application on the basis of absolute grounds of refusal. Only thereafter did the following procedures take place:

• a search at the OHIM;
  
  
• national searches; and
  
  
• the publication of the trademark for opposition.

Applicants complained about the length of time the OHIM was taking to perform examinations for absolute grounds of refusal. In response to this criticism, the OHIM now sends applicants opinions on the registrability of their marks following the formal examination. The communications also include a standard message informing applicants that the application will be published for opposition as soon as all translations and search reports are available.

While this new practice is meant to speed up the examination procedure, the OHIM now also communicates to applicants that it reserves the right to re-open the examination process regarding absolute grounds of refusal at any time. This means that the applicant does not know whether the examiner has found or will find any absolute grounds of refusal at the end of the formal examination process. It seems that the OHIM reserves this right of re-examination "if new aspects arise" at any time before the mark is registered. It is therefore possible that the applicant will be confronted with absolute grounds of refusal after the opposition phase has been completed.

The new Article 40(1) of the Community Trademark Regulation prevents the publication of an application only to the extent it has been refused under Article 38 because of alleged absolute grounds of refusal. However, Article 40(2) specifically envisages the possibility that an application is refused on the basis of absolute grounds of refusal after it has been published.

While the attempt to improve communication with applicants is laudable, the uncertainty faced by applicants as to absolute grounds of refusal until the end of the application procedure is a cause for concern.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna