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BLOG@IP::JURPatent Attorney Axel H Horns' Blog on Intellectual Property Law.
Sunday, October 26, 2003Communication No 05/03 of the President of the OHIM.Mr. Wubbo de Boer, acting in his capacity as the President of the Office for Harmonisation in the Internal Market, recently has issued an interesting "Communication No 05/03 of the President of the Office of 16 October 2003 concerning the enlargement of the European Union in 2004". This Communication provides some comments with regard to the legal provisions already reported in my  earlier posting.
With regard to the "Grandfathering" of CTMs, Mr. de Boer writes: " [...] A CTM registered or applied for before the date of accession of the new Member States becomes an extended CTM. Thus, an extended CTM is a CTM which has a filing date prior to the date of accession, irrespective of whether priority was claimed. It was not only necessary to decide whether such CTMs should be extended or not, but a solution had to be found as to how such applications should be examined by the OHIM (in case that had not yet happened before accession) and on what basis they could eventually be cancelled or not. The rule is that for examination on absolute grounds and cancellation actions on such grounds, only the situation existing prior to enlargement will be taken into account (meaning that absolute grounds for refusal/invalidity which become applicable merely because of accession will not be taken into account.). This is so irrespective of when the examination or the cancellation action actually takes place. Therefore, CTMs filed before enlargement will only be examined for absolute grounds on the basis of the current situation, for example as regards their meaning by taking into account the current 11 official languages of the European Community. Grounds for refusal which become applicable solely as a result of the enlargement, such as the descriptive meaning of a word in a language of one of the new Member States, will not be applied in relation to extended CTMs. The "grandfathering" applies not only at the stage of examination, but also at the stage after registration: Extended CTMs can only be cancelled on the basis of a ground that was valid at the time before enlargement (meaning that they cannot be cancelled on the basis of grounds that become applicable merely because of accession.) Therefore, a word that is descriptive, non distinctive, generic, deceptive or contrary to public policy and morality in a new Member State will not be refused by the examiner or be subject to cancellation after registration if it was filed before accession of that Member State. Equally, a CTM filed before enlargement will not be subject to an opposition proceeding (except as explained hereafter) or subject to an invalidity proceeding if it is in conflict with an earlier national right registered, applied for or acquired in a new Member State prior to the date of accession. [...] The rule according to which extended CTMs are "grandfathered" vis-à-vis new absolute and relative grounds is subject to one exception: CTM applications filed between 1 November 2003 and 30 April 2004 can be subject to oppositions based on earlier rights in the new Member States, pursuant to Article 142a(3) CTMR. [...]" Mr. de Boer also provides Presidential comments on other topics, namely on respect of acquired rights in the new Member States, consequences of "grandfathering" vis-a-vis new absolute grounds, exceptional opposition right against CTM applications, and Rules applicable to the Community designs.
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