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

With the entry on January 1, 2007 of two new countries in the EU and their automatic accession to the Community trademark, we grasped this opportunity to welcome our Bulgarian and Romanian fellow colleagues in the community system.

In this issue, we focus our attention on the differences and changes in trademark protection provisions in Hungary and Poland since their accession to the CTM on May 1, 2004, as well as in Bulgaria since Jan. 1, 2007.

INLEX : As one of the major CTM applicant countries which newly acceded to the CTM system, how would you compare today the practice of the Polish Patent Office with OHIM’s?

Jaroslaw Kulikowski : The first and basic difference between the OHIM practice and the practice applied in Poland results from the fact that the Polish Office, as one of few, is obliged ex officio to conduct a full examination as to both absolute and relative grounds of refusal. As might be expected, there are a number of difficulties connected with this issue, especially due to the fact that when implementing the European procedure into the Polish system, an institution has been introduced, which might be filed when an application is pending. This institution does not however have an inter partes character and it serves exclusively as additional information for the Examiner. In consequence, making use of this institution creates a lot of doubts and paradoxically it puts an applicant in an unfavorable situation should the Office refuse to accept the observations and grant registration.

INLEX : How about Bulgaria ? Do you also practice such an inter partes proceeding?

Elena Miller: Yes but in a different way, i.e. within the opposition deadline. Opposition actions may be filed within two months of the official publication of an application. Opposition action may be based on absolute and relative grounds and be filed by any person. The procedure is used by the Examiner only as an additional source of information rather than a third party action.

INLEX : How about the examination proceeding in Bulgaria?

Elena: In addition to examining trade marks on absolute grounds, the Bulgarian Patent Office also examines on relative grounds.

Aron Laslaw: As far as the Hungarian Patent Office is concerned, it ceased to search for relative grounds as of Hungary’s accession to the EU. At the same time, the opposition system was introduced. Oppositions (for relative grounds) may be filed within two months following the publication of the mark, objections (for absolute grounds) may be filed at any time. Although it is something new, the opposition system seems to be working so far at the HPO, as well as in the mind of the right holders.

INLEX : Is the Polish opposition system working the same way as the Bulgarian one ?

Jaroslaw: Not exactly. The opposition procedure sensu stricte is possible in Poland only after a trademark has been registered.

INLEX : From a more general point of view, would you say that your national local examiners adopt a different attitude from the OHIM examiners?

Jaroslaw: One can observe a difference in the attitude of the examining and registration team (which is more liberal as regards unconventional trademarks) and understanding of the rules behind registration of such unconventional marks by the team examining the opposition after registration has been granted. In consequence, a number of such registrations becomes the subject of an opposition, which increases uncertainty of the legal status of the rights from registration and prolongs the proceedings.

Ãron: Earlier, the Hungarian Office was more lenient with foreign language descriptive marks, thus, the mark ICEMINT was registered by the HPO whereas it was turned down by OHIM. Now, the HPO tends to follow the jurisdiction of the ECJ, and an application for BIOFIBRE was refused by the HPO as well as the court.

INLEX : Thank you to all. We were very pleased to collect your valuable experiences.


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