10 years of OHIM practice And still differences (Act III)

In this new issue, we have interviewed our colleagues Alexandra Fottner (Germany), Konrad Lenneis (Austria) and Aine Matthews (Ireland), regarding major differences between the OHIM practice and each national Trademark office.

 

INLEX: What are the remarkable differences in Trademark examination procedures ?

Aine MATTHEWS : In addition to examining trade marks on absolute grounds, the Irish Patents Office also examines on relative grounds citing prior identical and confusingly similar marks in respect of identical and confusingly similar goods and services whereas OHIM only examines on absolute grounds. INLEX: Is that also the case in Germany?

Alexandra FOTTNER : Yes it is. Concerning the examination on absolute grounds for refusal, I would add that we are of the opinion that the GPTO’s examination practice is more strict regarding the eligibility of trademarks (word marks or word and device marks) with respect to absolute grounds forrefusal than the OHIM. In some cases, we obtained registration of the same mark at the OHIM but not at the GPTO.

INLEX: Have you the same eligibility practice in Austria or differences regarding the scope of protection?

Konrad LENNEIS : Courts here rather tend to grant trademarks a wider scope of protection than European bodies. But there is a recent decision that does not go along with this rule:

This year the Court of Appeal of Vienna decided about the scope of protection of « Mozart » as part of a trademark. The plaintiff was holder of the Austrian word mark « Salzburger Mozart Schinken » (« Salzburg Mozart Ham ») for sausages, the defendant offered ham called « Mozart Schinken », visibly adding its company sign « W ».

The Court stated that « Mozart » is distinctive for ham, but it is also a word of fashion and therefore a weak sign with a small scope of protection. Therefore, the use of the company sign « W » together with the earlier sign « Mozart » – « Salzburger » and « Schinken » as a geographical indication and descriptive element respectively being irrelevant – excludes likelihood of confusion.

This decision contradicts ECJ C- 120/04 « THOMSON LIFE » which states that where goods and services are identical there may be likelihood of confusion when juxtaposing the company name of another party with a registered trademark that has normal distinctiveness. By considering the aforementioned ECJ decision, the Court of Appeal could not have come to the conclusion that likelihood of confusion between identical and distinctive signs for identical goods is excluded by simply adding a third person’s company sign.

INLEX: This case is an additional evidence that the ECJ « THOMSON LIFE » decision should be considered with all proper reserves and specific adaptations. How about practical differences before the different offices?

Alexandra: In Germany it is possible (by paying an extra official fee of EUR 200) to request an accelerated or expedited examination to obtain a registration within about 2 to 3 months. It is possible to further speed up the registration proceedings by calling the Examiner to obtain the registration within one month. This feature is of advantage to the client if he needs a quick trademark registration e.g. in order to enforce its trademark rights against an infringer.

Aine: Another important practical difference is in respect of timing. Whilst OHIM will accept applications and oppositions up to midnight and the same date of filing will be granted, in Ireland, any application or opposition must be filed before 4.15pm.Otherwise, it will receive the next working day’s date at the date of filing. This is particularly important in terms of claiming priority when instructions are received from abroad at the last minute. In addition, whilst the opposition period is three months, the expiry of the opposition period actually expires the day before the three month period is up.

INLEX: We should then adapt our automatic reminders to our Irish colleagues accordingly – Let’s talk about oppositions now.

Aine: In terms of an opposition, the Irish Trade Marks Act 1996 provides that an opposition may also be filed on the basis of absolute grounds in addition to relative grounds. An opposition against a Community trade mark may not be filed on absolute grounds.

Konrad: The main difference in the administrative practice is that there are no opposition proceedings before the Austrian Patent Office. After the registration, the owner of an earlier right may file a cancellation action before the Austrian Patent Office. Besides, holders of earlier rights may also sue the holder of the later registration and file a motion for preliminary injunction before the competent Commercial Court.

Alexandra: In Germany, oppositions are filed after registration of the German mark. It is also interesting to note that Ge
rman trademarks are published for opposition after registration. In contrast thereto, OHIM publishes the Community trademark application before registration. This feature is of benefit to the trademark owner.

Even if an opposition is filed against the trademark, the owner has still the possibility to enforce its trademark registration against infringers before the Courts. It can be advisable to file in addition to Community trademarks a German trademark. 

INLEX: Thank you for your helpful comments and strategic advice.

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