OHIM User Associations Comment on Revision of CTM System at Hearing Before EU Commission

The "Study on the Overall Functioning of the European Trade Mark System" og the Munich Max Planck Institute for Intellectual Property and Competition Law, which has been release in February this year, has triggered a broad and ongoing discussion on the European CTM system among European trademark practicioners and the IP community in general. To discuss the study's impact on CTM regulation and the Trade Mark Directive 89/104/EEC, the European Commission's Directorate General MARKT invited the OAMI Users' Group (international NGO's from the IP sector, such as MARQUES, ECTA, AIPPI or INTA) to present their views on selected questions as raised by the Commission (see agenda). The hering took place on 26 May 2011 in Brussels. The Commission only listened and did not answer any questions. QUESTIONS OF THE COMMISSION The agenda of the meeting included a number of issues being highly relevant to both trademark applicants and representatives, some of the topics being controversially discussed among CTM system users for quite a while: 1. Requirement for a CTM to be put to genuine use in the Community: to what extent do users agree with the relevant findings and proposals of the MPI study (pages 135-139 of the study)? 2. Distribution of 50% of renewal fees by national offices: what do users think of the position of the study concerning the objectives (pages 243-244, point 5) and the recommended key of distribution (in particular, the suggestion to take the number of NATIONAL applications filed each year as a measure, page 241, item 1.23)? 3. Simplification of CTM procedures by shortening deadlines: to what extents do users agree with abandonment of the one month deadline for payment of the application fee and its substitution by a system according to which at least the order for payment must be made together with the application, shortening of the opposition period? deletion of the "extra" two months period for setting out the grounds of appeal? reduction of the term from which the three months opposition period is calculated for Madrid marks designating the EU? 4. Current regime on searches (including both mandatory CTM searches and optional national searches): what should be done with it? Would the provision of equivalent, automated priority search tools by the OHIM, free of charge, constitute an adequate substitute for the current system? 5. Filing of CTM applications through national offices: should this option be kept even though relevant applications have become near extinct (0,5 %)? Could it be replaced by the possibility of direct, assisted e-filing of CTMs at national offices? 6. Further harmonisation beyond the scope of the current TMD: what do users think of the proposals of the study for further substantive harmonization regarding a body of rules addressing trademarks as objects of property (covering transfers and assignment, licences, rights in rem, levy of execution and insolvency, see pages 226-227), which provisions …