After one decade of Community Trademark practice, we have decided to conduct a practical analysis of the main differences between the practice of national Trademark offices of the EU member states, on the one hand, and OHIM habits on the other hand. You will find our interviews with our European associates in each issue of IP TALK. As a first step in our investigations, we interviewed our associates in Benelux, Spain and UK, through our most reliable colleagues : Bast KIST (Netherlands), Lara BROSCHAT (Spain) and Mark HICKEY (United Kingdom).
-INLEX : what are according to you the main fields in which you still notice significant differences between OHIM practice and your national Trademark Office way of handling trademark files ?
–Bas Kist : I would undoubtedly say the fee policy and also the appreciation of distinctiveness of word marks. The Benelux Office is in my opinion stricter than the OHIM. If, in the Benelux we have to deal with an in-between case, we sometimes advise our client to file a CTM application instead of a Benelux application, because OHIM is more liberal and the chances of acceptation are higher. This difference goes also for shapes. –Lara Broschat : As far as the Spanish Trademark Office is concerned, we are also faced with harder distinctiveness criteria. We consider that the level of distinctiveness for a mark applied for before the OHIM is generally lower than that required in Spain.
-INLEX : would you say, Mark, that in UK you have the same approach ?
–Mark Hickey : Not exactly¦ the office in the UK has a desire to remain competitive as against the OHIM option and it has therefore rather become more flexible, especially in so far as geographical names, surnames, single letters and numerals are concerned.
–Lara Broschat : in terms of flexibility, Spain still lacks suppleness and speed.
-INLEX : you mean that Spanish practice remains too administrative ?
– Lara Broschat : in a way yes: for example, contrary to what happens before the OHIM, there is no possibility to identify the Examiners of the Spanish Trademark Office dealing with an application or to contact them. Also, the decisions issued by the Spanish Trademark Office are maximum three-four lines long and limited to cite the relevant provisions applicable to the case. Few-page long reasoned decisions issued by OHIM are thus unknown under the Spanish system.
-INLEX : are there also practical discrepancies in the Spanish procedure as compared to OHIM™s ?
–Lara Broschat : a main difference between both systems is that, in the opposition proceeding,the Spanish Trademark Office does not examine the use of a trademark in case the holder of prior rights is requested to prove such a use. In fact the Spanish Trademark Office competences are limited to examination of the phonetic, graphic and conceptual similarities between the marks at issue.
–Mark Hickey : as far as the office in the UK is concerned, one of the major differences is the Examiners™ unwillingness to consider registering unusual marks such as colours and shapes.
-INLEX : to summarize, what do you think your office should still do to harmonize its policy with the OHIM and with the European Union member states in general ?
–Lara Broschat : in my view Spanish Patent and Trademark Office should speed up its examination turnaround time, accept to examine non use and be closer to the trademark owners by allowing a dialogue between Examiners and applicants.
–Bas Kist : I think the Benelux Office should reconsider its official fees. The cost for filing an opposition in the Benelux is almost 3 times the cost of an OHIM opposition. I do not understand this contrast and I think it is a missed opportunity.
–Mark Hickey : I am confident that the UK office will quickly implement any guidance provided by the ECJ and there is significant convergence between the practices of OHIM and the UK Registry. We should then continue on the same path
-INLEX : Thank you for your instructive comments. In the next issue we will discuss with 3 other European Experts