LEG. DEV.: Implementation of Community Trade Mark Regime

2 Colum. J. Eur. L. 383 (1996)

Christopher Wyeth Kirkham.
Rajesh Swaminathan.

Council Regulation 40/94 created a unitary Community trade mark effective throughout the European Community as of December 13, 1995. To implement this legislation, the Commission recently adopted Commission Regulation 2868/ 95 implementing Council Regulation No 40/94 on the Community trade mark (1995 O.J. (L 303)). The Regulation, adopted under Article 235 of the EC Treaty pursuant to Article 140 of Council Regulation 40/94, provides for the registration and administration of Community trade marks. In this way, the Commission aims to provide businesses with an important cost-saving opportunity by permitting a single successful registration which will protect trade marks throughout Europe, and thereby promote the free movement of goods and services.

The significance of the Regulation is two-fold. First, it permits the creation of a single market in Europe for trade mark agents and attorneys, and promotes the free movement of goods and services. Second, it specifies procedures by means of which businesses can minimize transaction costs. A firm filing applications to register one trade mark under each of the fifteen distinct national trade mark regimes can incur costs of approximately $22,500. The unitary trade mark regime administered by the Office for Harmonization in the Internal Market (trade marks and designs) (OHIM) imposes costs of only $4,500 per mark.

Because it is concerned with the implementation of the regime established under Council Regulation 40/94, the Regulation is highly procedural. It specifies the contents of an application to register a trade mark with the OHIM (Article 1(I)(1)),2 as well as permissible forms of mark representation (Article 1(I)(3)), the types of fees payable (Article 1(I)(4)),3 and the correct protocol for filing an application to register and renew a trade mark (Articles 1(I)(5), 1 (II) (23-30)). The Regulation sets out separate provisions for applications to register trade marks that have either been transferred or granted as licenses to new owners (Article 1(V)(31-35)).

An application for registration may be filed with either the Benelux Trade Mark Office or the central industrial property offices of Member States, in addition to the OHIM; the application will in any case be forwarded to the OHIM for processing. Trade marks that are initially registered as Community marks may subsequently be converted into national trade marks (Article 1(IX)(44-47)).

The implications of this policy for practitioners of trade mark law are important: since trade mark filings tend to be much cheaper in certain national jurisdictions than others, it promotes a version of forum shopping. Hence, not only will this aspect of the regulation increase registration revenues in small, inexpensive Member States such as Greece, but it will also provide lawyers and trade mark agents who are accustomed to forum shopping practices with a significant advantage.

The Regulation permits an applicant to claim priority for her application for registration (Article 1(1)(6)), based on either prior registration or exhibition of the trade mark in question as proof of its association with particular goods and services (Article 1(I)(7)). In both cases, however, the burden of proof falls on the applicant, who must then file official certifications from competent authorities that either received the earlier application, or were responsible for the protection of industrial property at the time when the trade mark was first displayed in public (Article 1(I)(6-7)).

Applicants may also claim seniority for their trade marks during the application process, if these were registered earlier with the appropriate national authorities of Member States (Article l(I)(8)). In this case, the applicant will bear the onus of establishing prior registration, and the OHIM will take steps to inform either the Benelux Trade Mark Office or the central industrial property office of the Member State concerned of the applicant’s claim. While the number of claims of seniority accompanying an application will have no bearing on its success, many lawyers and trade mark agents believe that an application accompanied by numerous claims of seniority may well dissuade other parties from filing oppositions, because the trade mark it represents will seem well- established in the national jurisdictions of Member States.

The Regulation also delineates procedures by which the OHIM can refuse an application (Article 1(I)(11)), or, following a successful examination, publish approved registrations (Article 1(1)(12)). It also provides for the amendment of applications (Article l(1)(13)), the correction of mistakes (Article l(I)(14)), and the maintenance of full and accurate records of proceedings (Article 1 (XI)(84- 93)). Any decisions taken by the OHIM must be communicated to the concerned parties (Article 1(XI)(52, 61-69)), and may be appealed (Article 1(X)(48-51)). The specific rules of procedure relied upon by the Boards of Appeal of the OHIM are specified in Commission Regulation 216/96, which was adopted on February 5, 1996 (1994 O.J. (L 28)).

Arguably the most important aspect of the Regulation concerns procedures for opposition (Article l(I)(15)). A party may oppose an application for registration of a trade mark if the party can establish that the mark is widely-known, or registered either in a Member State or with a recognized international body such as the Geneva-based World Intellectual Property Organization (WIPO). To initiate such an action, the opposing party need not necessarily establish either its right to or ownership of an existing registered trade mark. Indeed, submission to OHIM of mere statements or indications to such effect will suffice to sustain notice of an action in opposition. To support its claim, the opposing party must, however, present evidence either of earlier registration (if the mark is not a Community trade mark, or if notice of opposition is based on any other earlier right) or established and widespread use (if the mark is claimed to be well- known). The cost of the opposition proceedings is borne by the losing party (Article 1(IX)(94)).

Notice of opposition must be filed in one of two languages: either the language used in the application for registration, or the second language chosen by the applicant at the time of filing from among five official Community languages: English, German, French, Spanish or Italian (Article 1(I1)(17)). Consequently, a firm can minimize the potential for opposition by capitalizing on the legal community’s relative lack of familiarity with the other non-official Community languages. It can register its trade mark in one of these languages and thereby ensure that it will probably only be confronted with oppositions in one official Community language. The use of such strategies may increase business opportunities for lawyers and trade mark agents in the smaller Member States whose national languages are not represented in the official category.

Where parties file multiple oppositions, the OHIM may deal with all of them in one set of proceedings (Article 1(Il)(21)). A preliminary examination follows. If the trade mark application is ineligible for registration with respect to some or all of the goods or services associated with the trade mark in question, the OHIM may suspend all other opposition proceedings at its discretion (Article 1(ll)(21)). The Regulation also gives the OHIM discretion to revoke or declare invalid applications if the evidence presented in the course of an action in opposition to registration supports such a finding (Article 1(VII)(37-41)).

The Regulation entered into force December 20, 1995 (Article 3).