Relative grounds examination

The Office for the Harmonization in the Internal Market (the OHIM) will not refuse an application to register a trade mark even if the same trade mark is already registered, unless the owner of the earlier registration successfully opposes the application.

Largely as a result of the Community Regulation establishing the European Community system, a substantial proportion of other European nations have amended their laws in line with the Regulation.  This means, for example, that an application filed in the United Kingdom will not be refused on relative grounds in the absence of a successful opposition.  The Danish Patents Office also amended this law.  There was no need for any change in the law in the Benelux territories, in Germany or in France because in those countries trade mark applications are not refused ex-officio on relative grounds.  Thus, in most of the developed countries in Western Europe, trade mark applications are not refused on relative grounds.

Unfortunately, in Ireland, the Irish Patents Office will refuse an application if the same or a similar trade mark has been registered either in Ireland or in the Community.  There are now more than 1 million Community trade mark registrations and new applications are being filed at a rate of more than 100,000 each year.  It is becoming increasingly difficult to obtain a national Irish registration because of current Irish practice.  In an attempt to bring this deteriorating situation to the attention of the Intellectual Property Unit of the Irish Government a letter was sent to that Unit on October 2 2014.  That letter is set out below:

 

Mr. James Kelly

Intellectual Property Unit

Patents Office

Government Buildings

Hebron Road

KILKENNY

 

October 2 2014

 

Examination of Irish Trade Mark Applications on Relative Grounds

Dear Mr. Kelly,

As you may know, on April 12 2010 we argued forcefully that the Irish Patents Office should cease examining applications on relative grounds and should instead adopt an opposition based system in line with the Community Trade Mark Regulation and with the systems in most of the developed countries in western Europe

Unfortunately, a decision was made on June 25 2010 to retain the status quo.  In the document entitled “Relative Grounds For Refusal – Outcome of Consultation”, the IP Unit’s “Conclusions” contained the following statement:

“The international community is still divided on the matter, with different regimes currently operating in the various National Intellectual Property Offices. Developments in this areas will be closely monitored and the need for any appropriate changes will be kept under review”.

Official objections on relative grounds have caused entirely unnecessary difficulties for many applicants, including a substantial number of local companies.  In fact, those difficulties are reflected in the following extract from the European Commission’s explanatory memorandum on proposals for a new Directive to approximate the laws of the Member States.

“In line with the Regulation, this Article provides that the ex officio examination of whether a trade mark application is eligible for registration shall be confined to the absence of grounds concerning the mark itself.  The ex-officio examination of relative grounds creates several unnecessary barriers to the registration of trade marks. Companies are obliged to undergo superfluous expenses and delays and they often fall victim to extortion.  The earlier right on which the objection is based may not be used by its owner, which means that the office concerned raise an objection on the basis of a right that could not have been validly relied on by its proprietor to prevent the registration or use of a later mark.  Hence, the ex officio system leads to artificial disputes, and distorts competition by erecting unjustified barriers to market entry.

 Finally, the ex officio approach creates legal uncertainty, since office applying the ex-officio system raise objections, as far as earlier rights are concerned, only on the basis of earlier registered rights that have been filed for identical or similar goods and services.  Accordingly, they cannot offer a guarantee that an application which successfully passes the ex-officio control will not subsequently be opposed on the basis of a mark which has acquired reputation in the marketplace and/or on the basis of an earlier well-known mark that has not been registered.  However, this leads to an unacceptable duplication of procedures which are both time consuming and inefficient.”

As you know, trade marks are registered by the OHIM – Office for Harmonization in the Internal Market (Trade Marks and Designs) – without the possibility of ex-officio refusal on relative grounds.

OHIM will therefore register as a Community Trade Mark (CTM), a trade mark which is identical to a trade mark already registered as a CTM or as a National registration in an EU Member State, unless the owner of the existing registration is aware of and successfully opposes the CTM.

Furthermore, the OHIM grants CTMs without the need for any indication that the CTMs are intended to be used in connection with all of the goods/services specified in the application.

Companies which seek to protect their trade marks in Ireland are encountering Official objections based on CTMs (1) which have not been examined on relative grounds and which may therefore be invalid, (2) which cover a wide range of goods and/or services including goods and/or services on which the owner may not intend to use the trade mark and (3) which the owner has no intention of ever using here in Ireland.

 When the Irish Act was drafted, it was obviously never envisaged that an application to register a trade mark here would attract a fatal objection based on an earlier registration which had not been examined on relative grounds, since, when the Act was framed, all Irish applications were examined on both absolute and relative grounds and were required to identify the goods on which the trade mark was already in use or was intended to be used.

There already exists more than 1 million CTMs and more than 100,000 CTMs are applied for annually.

 Consequently, every Irish application runs the risk of attracting a fatal objection under Section 10 based on a Community Trade Mark registration which has not been examined on relative grounds.  In fact, an Irish applicant is frequently faced with the situation that its application can attract an objection under Section 10 based on a number of mutually conflicting Community Trade Mark registrations.

I should add that none of the factors cited as reasons for retaining the status quo stands up to critical examination and some are quite clearly completely contradictory.

For example, how can it reasonably be stated that Ireland is not out of step with Europe when it is out of step with the dominant European legislation, namely the Community Trade Mark Regulation?  Furthermore, the fact that countries such as Sweden, Portugal, Poland and the Czech Republic retain a relative grounds examination is not compelling since major EU economies such as France, Germany, Italy, the Benelux countries and Denmark do not.

The suggestion that there is a strong interest in the Irish trade mark registration system because it incorporates relative grounds examination is not plausible.  Of course there is a strong interest in the Irish system, but it is certainly not because Irish applications are examined on relative grounds.  It is because companies operating in Ireland need to protect their trade marks by registration here. The existence of relative grounds examination in Ireland serves, in many cases, to hinder that objective and frequently forces Irish companies to use the Community system to secure protection for their trade marks in Ireland, thus undermining the National registration system in this country.

To suggest that the integrity of the Irish Register would be compromised by abolishing relative grounds examination ignores the current reality which is that the integrity of the Irish Register is already compromised due to the state of the Community Register and the fact that trade marks placed on the Community Register without any examination on relative grounds are effective in Ireland.

It is no longer acceptable that applications to register trade marks in Ireland are refused in the light of unexamined CTMs which may never be used here and which may well be invalid!

I look forward to your reply.

Yours sincerely,

 

NORMAN MACLACHLAN

 

 

 

 

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