 |
|
CONTENT SYNDICATION 
|
|
CONTENT SYNDICATION
|
|
BLOGROLL OPML:
|
|
|
|
Search in IPJUR.COM
|
BLOG@IP::JURPatent Attorney Axel H Horns' Blog on Intellectual Property Law.
Tuesday, June 13, 2006OHIM: Silence of Applicant May Equal to Withdrawal of CTM Application.I just saw IPKat reporting a strange piece of case-law, namely the Decision of the Second Board of Appeal of 26 April 2006 in Case R 406/2004-2:"[...] In the present case, the applicant has not taken part in any stage of the opposition proceedings or the appeal proceedings. This total procedural inactivity on the part of the applicant, which has been uninterrupted from the moment it was notified of the opposition on 29 October 2002, unequivocally demonstrates that the applicant has lost all interest in registering its Community trade mark application, which implies its withdrawal and therefore, the consequent termination of the proceedings, as follows from Article 81(3) CTMR (see the decisions of the Second Board of Appeal of 18 June 2004 in Case R 661/2002-2 ocom / ACOME (FIG. MARK) and in Case R 534/2002-2 AQUAFIT / AQUAFINA). [...]"How does this go with Article 74 CTMR:"Article 74: Examination of the facts by the Office of its own motionIn my view, this means that the Applicant does not need to put forward any facts and submissions but can rely on the statutory provisions requesting the OHIM to find the facts at least to some limited extent. Maybe that the Applicant should have lost the case because the BoA, without having input from the Applicant, did not get any idea as to why they should reject the Opponent's motion not to allow the application to mature into a registration. But creating a fictive withdrawal? Very strange, indeed. In particular, I think the Board's assertion is questionable: "[...] Nevertheless, it is conceivable that a withdrawal may be implied, as the law does not exclude it, provided that it may be inferred from the facts and circumstances, which in the Office's view unequivocally demonstrate that the applicant has withdrawn its application. [...]"Do they really believe that they can do everything not expressly excluded by CTMR if it might be "inferred from the facts and circumstances" somehow? To the contrary, I would be inclined to assume, OHIM can do only that for what a legal basis can be found in the CTMR. Technorati Tags: Community Trade Mark
I'm surprised at your surprise Axel. Unused marks on the Register are abandoned vessels in the shipping lanes of trade. The fewer there are, the better. And what conclusion other than abandonment (constructive withdrawal) is one supposed to draw from an Applicant who does absolutely nothing when his appln is opposed. The price of doing nothing must be loss of the registration, in the public interest. How can you convince the "man in the street" that your legalistic approach must be followed? Where's the harm, in doing what the Appeal Board just did?
@MaxDrei: Well, there are explicit provisions in the law book saying that unused TM registrations are open to cancellation ... As I wrote, I would not have been surprised seeing the application rejected on the grounds of not debilitating Opponent's line of arguing. To this end, the BoA would have needed to go through the points of the decision challenged by Opponents, explaining why they think that they should follow the Opponent's motion. If OHIM starts taking decisions without demonstrating a proper and sufficient basis in statutory law for each and every single case, where would such undertaking end? OHIM ios actually opening pandora's box. And, in this case, they might well have rejected the application even without recurring to that strange construction of a "fictive withdrawal". I wouldn't call this "legalistic approach". I don't like to be addressed by the Offices as a "customer". When dealing with OHIM (or EPO, DPMA etc.) I feel as linke interacting with an Authority ("Behörde" in German), and the Authority is above the citizen. However, such construction can be borne if and only if Authorities are strictly bound by law. In this particular case I have a problem in recognising the proper statutory basis for the decision of the BoA.
aWell, on the action for cancellation of an unused mark, which party should have the burden of proof? It is hard to prove a negative, so the conduct of the owner of the mark, in defending the action to get the mark off the register, should be a factor, in order to get the public policy balance right, between the rights holder and those adversely affected by the continued presence on the Register of the unused mark. In the present case, the Board found the behaviour of the mark holder to be "unequivocal" evidence of his withdrawal of interest in the application. The mark holder had only to write in to say "I'm still interested" and all would have been well. You see a thin end of a dangerous wedge. I accept the need to be vigilant on such things, and protest strongly when danger develops, but I remain unpersuaded that the Board committed any mischief against the law.  Post a Comment
|