Loose Lips Might Sink Ships – Third Party Observations in the Community Trade Mark System

(IPRinfo 2/2010)
Melissa Sayiner-Fraser of Lovat
Legal Trainee, OHIM, First Board of Appeal

Third party observations can have a great impact on the outcome of a Community Trade Mark (CTM) examination. In many cases they have led to the re-examination and refusal of a CTM application.

CTM is a trade mark valid across the European Union, registered with the Office for Harmonization in the Internal Market (Trade Marks and Designs) OHIM, located in Alicante, Spain.

With the new Communication of November 9th 2009, which replaced the former Communications 1/00 and 3/02, it is time to take a closer look at Art. 40 Community Trade Mark Regulation (CTMR) and what has changed in the OHIM’s practice.

Anybody may submit observations
Art. 40 CTMR provides that anybody may submit observations regarding the registrability of a trade mark on absolute grounds (Art. 7 CTMR).

The reason for this unusual ’right to interfere’ is very practical: observations by third parties can help the examiners to double-check trade mark applications for absolute grounds, which the OHIM is obliged to examine ex officio (Art. 37(1), 76(1) CTMR). It is impossible for any examiner to be up to date with the technical terms in specialized branches such as the pharmaceutical or computer industry.

Furthermore, with 23 official EU languages and many more dialects and regional languages spoken, it does not seem improbable that e.g. some descriptive trade mark will pass through the loop hole.

For example, the word ’ESPETEC’ which the applicant sought to register for ’raw pork and dried meat sausages’, means ’dried sausage’ in Catalan, a language spoken by about 9,2 million people. This fact was submitted by a third party.

Through Art. 40 CTMR the examination procedure can benefit from the combined knowledge and linguistic understandings of anybody anywhere in the world.

As the OHIM’s Boards of Appeal stated referring to the trade mark ’Oldenburger’, ”the publication of a trade mark is not a final decision that concludes the preceding examination procedure, but merely an interim order which does not create a finalised legal position.

A CTM applicant must always be prepared for the possibility that registration may be refused due to the existence of absolute grounds for refusal, even after publication.”

Observer never becomes a party to the proceedings
According to Art. 40 CTMR, a third party observation can be raised free of costs by any natural or legal persons or any group or body representing manufacturers, producers, suppliers of service, traders or consumers, until the registration of the trade mark.

Observations can only lead to a re-examination if they concern absolute grounds for refusal (Art. 7 CMTR). The possibility to interfere exists irrespective of any specific interest or need for legal relief.

Observations need to be in written form, state the contested trade mark and which absolute grounds stand against the registrability.

An observer will never become a party to the proceedings. Therefore, he may not file an appeal in case the examiner does not take up on the argument. Rather, he or she will have to wait for the registration of the CTM in order to file a request for cancellation on absolute grounds for invalidity and then eventually fight it through different instances (Art. 51 CTMR).

Observations before registration
According to the practice of the OHIM, third party observations can be filed at any time until the trade mark has been registered. When Art. 40 CTMR is taken literally, observations can only be made after the trade mark has been published.
Yet, due to the ex officio examination principle, the examiner is obliged to take into account any observations, even those filed before the mark’s publication date.

Observations can only be made until a trade mark has been registered. If opposition proceedings have been initiated, this means that observations can be filed up until the closing of the opposition proceedings, which can extend even up to the closing of an appeal case that has followed an opposition decision.

Otherwise, the new Communication allows the observer three months to communicate his observations. This coincides with the regular three months’ deadline of opposition proceedings (Art. 42 CTMR).

Previously it was the OHIM’s practice to grant a four months’ period, because there was a time gap between the end of the opposition period and the collection of the registration fee.

With the discontinuation of the registration fee, the mark is registered immediately once the opposition period has lapsed without oppositions being filed.

Opponents can also file observations
It is also possible for opponents to file third party observations. As opposition proceedings can only be based upon relative grounds (Art. 41(1), 132 CTMR), the opponent in this case has to submit separate statements for the absolute grounds.
These will be examined respectively by the Opposition Division on the one hand and an examiner on the other, who in practice may coincide in the same person(s).

If observations are made after the registration deadline, the observer will be informed accordingly. Whereas before, belated observations of third parties were rejected as inadmissible, they will now still be communicated to the trade mark owner.
Enclosing supporting evidence is essential

Observations should include any supporting evidence, such as copies from professional journals or documentation of internet searches.

The OHIM has always been strict on the point that observations either have to be made in the first language of the application or in any of the OHIM’s five official languages.

If, however, the observer refers to a meaning of a word in another language, the material evidently must be presented in that language.

What happens after filing?
The OHIM will notify the observer of the receipt of the observations. It normally decides within one month whether they are suited to ’raise any doubts’ about the registrability of the trade mark.

In any case, the observations will be communicated to the trade mark applicant at the end of the re-examination period. Previously, in cases of doubt about the registrability, the OHIM would inform the observer about the outcome of the proceedings.

Since the launching of the OHIM’s e-business service ’CTM watch’ for MYPAGE users, subscribers will be informed automatically about any change of status of a particular trade mark application. This has made further direct communication with the observer obsolete.

Only when doubts about the registrability exist, will the applicant be requested to reply within a time limit set by the OHIM. If no response is received within the time limit, the OHIM decides on the basis of the information contained in the file.

Interesting examples of cases involving observations by third parties

The 3D Mark was refused for various chocolate and confectionery products, as hexagonal shapes are commonly used for the packaging of these type of goods.
(BoA of 10.04.2003, R 711/2001-2 – TOBLERONE HEXAGONAL)

Although ’MP3’ and ’DVD’ are commonly used words today, the applications were filed at a time when these technical terms were still unknown to the general public and escaped the first attention of the examiner.
(Application No. 1 092 725 – MP3; Application No. 7 385 – DVD)

The word mark ’Oldenburger’ was rejected as the indication would automatically be understood in German trade circles as indicating that the products originated from the Oldenburg region in Lower Saxony.
(BoA of 19.09.2001, R 826/2000-3 – Oldenburger; GC of 15.10.2003, T-295/01 – Oldenburger, para. 31, 33)

In ’WM 2006’ third party observations against FIFA’s CTM application abbreviating ’Weltmeisterschaft 2006’ (World Cup 2006) were not upheld by the examiner. The filing of a cancellation request was rejected and only after an appeal the CTM was cancelled. An appeal to the GC by the CTM proprietor is currently pending.
(BoA of 30.06.2008, R 1468/2005, para. 2; GC T-446/08 pending).