Brussels, 21/01/2003 (Agence Europe) - On Monday, The European Commission presented a proposal for a regulation modifying existing procedures for the granting of Community trade marks by the Office for Harmonisation in the Internal Market (OHIM) in Alicante. Community Trade Marks are valid EU-wide on the basis of a single application to the OHIM. The new proposal provides for abolishing the system of searches intended to help applicants to monitor effectively the possible existence of prior conflicting rights. It also recommends amending the regime for professional representation before the OHIM to bring it fully into line with the principles of freedom of establishment ad freedom to provide services. It also proposes expanding the system to include instruments allowing Boards of Appeal to further improve the way they function. Other procedural changes are provided for, in view of increasing simplicity and efficiency, without affecting the substance or the rights of the parties involved. To be ratified this Commission proposal must be adopted through unanimity in the Council of EU ministers following consultation with the European Parliament.
"Search system". The proposed regulation would abolish the system of searching to set up under the existing Community Trade Mark Regulation. The aim of the system is to help applicants for Community trade marks to effectively monitor the possible existence of prior conflicting rights, but has not proved satisfactory in practice. A Commission report, indeed, concluded that the system of searches unnecessarily prolongs the procedure for the registration of Community trade marks and imposes an administrative burden on national offices, the OHIM and applicants, without providing the latter with a valuable and cost-effective tool to help them to monitor effectively the possible existence of prior conflicting rights. Furthermore, the Commission considers that, if maintained after enlargement of the European Union, this system would become even more costly and complex. Its abolition would bring the Community trade mark regulation closer into line with the regulation on Community designs under which there will be no need for designs submitted to undergo, before registration is granted, a detailed examination in order to ensure they qualify for protection.
Professional representation. The existing Community Trade Mark Regulation allows for the professional representation - by lawyers and other third parties - of applicants to register trade marks to the OHIM and of those opposing such applications. The Commission proposes amending these provisions regarding professional representation to bring them fully into line with the principles of the freedom of establishment and freedom to provide services. This would mean that, once registered to appear before the OHIM, professional representatives, wherever they resided or conducted business in the EU, would retain their registration. Furthermore, the Commission as a general recommendation will ask the OHIM to provide Member States, and association countries, with the necessary advice and guidance to ensure that national representatives all over the European Union have equal access to information and know-how on the Community trade mark and, in due course, on the Community design. Finally, the Commission invites NGOs with which the OHIM co-operates to consider adopting a voluntary, non-binding code of conduct for professional representatives before the OHIM. The Commission and OHIM would if necessary assist them in drawing up such measures.
Boards of Appeal. Experience with Community trade mark Boards of Appeal, as well as their assessment and functioning, have revealed a need for improvement in certain areas. This mainly relates to giving the Boards additional means of improving their efficiency and output. The measures proposed would allow for the formal appointment of a Chair of the Boards of Appeal an of an enlarged Board which should improve consistency in decision-making, as well as allowing decisions to be taken by a single member.
Other points. The proposed regulation would also abolish the nationality an reciprocity conditions for allowing an application for a Community trade mark. This means that there would no longer be nationality and residency restrictions on access to the Community trade mark system. Furthermore, a number of procedural points is proposed, like, for example, decision-making rules for appointments to the boards of Appeal.