10 years of OHIM practice…and still differences ( Act II)

In the continuation of our previous interview, we have now asked our colleagues Marie-Louise Soderberg (Denmark), Lidia Lanza (Italy) and Marques Ribeiro (Portugal) to give us a few hints about the differences between the OHIM practice and their national one.

INLEX : We saw in our last IP TALK interview that the Spanish Office has still some efforts to make in terms of examination turnaround time, when the Benelux Office has to concentrate its efforts on the still too high official fees and, finally, the UK office is still reluctant to consider unusual marks as registrable. Are these also the major discrepancies in your respective countries?

Lidia Lanza: In Italy, the main difference between Italian and OHIM administrative practice is that no opposition is possible against a national trademark application. Although Article 174 of the new IP Code provides for opposition proceedings in front of UIBM, Article 184 of the same IP Code subordinates the availability of the proceedings to the publication of the relevant Regulations. At the moment, there is no news to this regard. This means that the only way for a trademark owner to challenge a posterior conflicting trademark application is to start a legal suit.

INLEX: Which also means higher cost, doesn’t it ?

Lidia Lanza: Absolutely. A judicial action involves costs in the order of Euro 15.000-20.000, depending on the difficulty of the case. Moreover, a decision can be expected no earlier than three years. As you will appreciate, the difference between EU and Italian practise in this field is remarkable.

Marques Ribeiro : In Portugal, the respect for the IP rights, had not been, until now, the object of any harmonisation at a European level. The 2004 directive foresees the creation of equality conditions for the application of the IP rights in the Member States, aligning the execution measures throughout whole Union, as well as harmonises the legislations of the Member States to assure an equivalent level of protection of the IP within the internal market. So far, the activity of the European Community in the IP sphere falls mainly upon the harmonisation of the national material law and in the establishment of a unitary law at a community level.

Nevertheless, the means to make the IP rights respected were not, until now, object of any harmonisation.

INLEX: Do you mean that the Portuguese authorities have other more important priorities for the time being ?

Marques Ribeiro: In a way yes. Even though the main objective of the 2004 directive would be to assure an equivalent protection level of the IP in the Member States, other objectives would else be desired:

– Business promotion, innovation and competitiveness.

– The need to secure a job in Europe.

– The impediment of fiscal losses.

– Consumer defence.

– Public order maintenance.

INLEX: How about Denmark? Are the differences that deep?

Marie-Louise Soderberg: I would say that the differences are primarily found in the standards of examination. In relation to combination marks and distinctiveness, the requirements of Danish PTO are more lenient than those of OHIM, making it possible for a trademark owner to obtain registration of a combination mark consisting of a non-distinctive word and a relatively modest figurative element. In relation to pure word marks the practice of the Danish PTO in terms of distinctiveness used to be more lenient than that of OHIM. However, in later years the Danish PTO has adjusted parts of its practise to comply with decisions of OHIM’s Boards of Appeal and the ECJ. Some clients have even experienced having a trademark rejected by the Danish PTO and accepted by the OHIM !

INLEX: Are there also noticeable changes for harmonisation in the formal procedures ?

Marie-Louise Soderberg: Yes. As of 1 January 1999 the Danish PTO amended the trademark application procedure to resemble that of OHIM that is abolition of an examination on relative grounds in favour of issuance of an informative search report making it vital for owners of Danish trademarks to have their marks watched.

INLEX : How about Italy?

Lidia Lanza:  A difference having effects also on the side of costs is represented by the recordal of assignment
for trademarks. According to the Italian rules, it is necessary to file a petition with the UIBM and enclose a true copy of the assignment agreement duly signed in front of a Notary Public plus legalization if the agreement is signed abroad. The costs are of course much higher than those for recording an assignment with the OHIM.

INLEX : Thank you for your contribution.
Three other European experts will participate in the next issue.

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