Changes to the Manual of Trade Mark Practice

The following has been amended (October 2010):
MANUAL UPDATE

The following has been amended:

1. Means of communication, time limits, 1.2.3. Extensions of time limits – Paragraph No 4, pages 6 and 7

Extensions of time
With regard to extensions, any first request for an extension during examinations, oppositions or cancellations, which is received in time, will always be granted. However, any subsequent request for an extension of the same period of time will be refused, unless the party requesting the second extension demonstrates that there are exceptional circumstances.

Part B: Examination

1. General Principles, 1.4 – pages 4 and 5;
4. Priority, 4.1. Convention priority – page 16.

Part C: Opposition – 1. Procedural Matters

Section B. III. Suspension – page 34;
Section E. II. Time limits – 2.1. page 72, 2.3. page 73, 2.4. page 75 ;
Section E. III. Suspension – page 76, 5. Procedural aspects – page 85.

Suspensions and extensions of time
Under the new policy, if a suspension is requested by the opposition parties, the Office will grant it for a period of one year (instead of variable periods at present). Subsequent requests will be granted for the same period. During all suspensions any party will be able to opt out and bring the suspension to an end.
With regard to extensions, any first request for an extension during examinations, oppositions or cancellations, which is received in time, will always be granted. However, any subsequent request for an extension of the same period of time will be refused, unless the party requesting the second extension demonstrates that there are exceptional circumstances.

Part C: Opposition – 6. Proof of Use

III. Procedure, 3.1. Time limit for providing prrof of use – page 37 and 3.2.1. Principles (Means of evidence) – pages 37 and 38

Evidence of proof of use
The Office has drawn up a template for a standard letter proposed for use in opposition proceedings. The letter includes an annex giving instructions on the way in which the evidence should be structured as well as suggestions on content and format. The instructions include what type of evidences should be filed, and how it should be organised, for example, with regard to numbering pages and describing the purpose of evidence. In particular, the Office strongly recommends that a maximum limit of 110 pages in correspondence should be observed. Failure to follow the instructions may lead to evidence not being taken into account. Further ifnormation was provided on OHIM's website on 02/08/2010 (http://oami.europa.eu/ows/rw/news/item1529.en.do). The manual has been aligned with this new practice.”

The following has been amended (July 2010):
MANUAL UPDATE

Part B Examination

CHANGE OF PRACTICE

Subject of change	Paragraph	Page
New practice of the Office on marks describing the subject matter of the goods or services.	7.3.1.	29 - 32
New practice of the Office on p rotection of flags and other symbols (Articles 7(1)(h) and (i) CTMR).	7.8.3.	59 - 74

OTHER CHANGES

Subject of change	Paragraph	Page
Categorisation of marks	2.7.1.	8 - 10
Added reference to the world expo in Shanghai , China .	4.2.	17
New list of National Offices performing searches	6.1.	19
New example of a descriptive mark following judgement of the General Court.	7.3.3.	35
New examples of non distinctive 3D mark following judgement of the General Court.	7.5.2. 7.6.2.	41 44 + 46
Addition of the expression “ultra” as an indication of superior quality or function.	7.5.4.	43
Fine-tuning of the existing practice on marks consisting of names of colours.	7.6.4.4.	48
Fine-tuning of the existing practice on how to draft the list of goods when the mark consists of or contains a protected geographical indication.	7.6.5.3. 7.6.5.5.	53 56
Fine-tuning of the existing practice on disclaimers.	7.10.4.	79 - 80

The following has been amended (May 2010):
MANUAL UPDATE

Part 1: Procedural Matters, Chapter A. Admissibility Check
Paragraph IV. Languages and Translations of the Notice of Opposition
This part on pages 13, 14 and 15 has been amended in order to reflect the practice of the Office on languages and translations of the notice of opposition.

The following has been amended (April 2010):

MANUAL UPDATE

The following has been amended (March 2010):

MANUAL UPDATE

Part C.1: Oppostion, procedural matters Chapter VIII: Change of parties
Paragraph 5: Interruption of proceedings due to decease, legal incapacity of the applicant or its representative.

Part M: International Marks Paragraph 1.2.2.: Indications concerning the applicant and representatives.
The OHIM is precising its interpretation of the notion of "real and effective industrial or commercial establishment". In the international application form under item 3 "Entitlement to File", if it appears that the applicant and the real and effective industrial or commercial establishment are in fact two different legal entities (one being the mother company for example and the other a subsidiary), the OHIM will refuse the applicant's entitlement to file. The applicant will then have to base its entitlement to file on a different criterion.

The following has been amended (January 2010):

MANUAL UPDATE

Part C: Opposition/Part 2, Chapter 2: C Similarity of Signs
Paragraph 3.3. Phonetic comparison: practical criteria
(amendment of the paragraph on pages 12 and 13)

Part C: Opposition/Part 2, Chapter 2: B Similarity of Goods and Services
Chapter 5. The comparison between goods and services
Paragraph 5.3.3. In particular restaurant services and good and drinks
(amendment of the paragraphs on pages 46 and 47)

The following has been amended (September 2009):

The Manual of Trade Mark Practice

The following has been amended:
Part M: International Marks

OHIM’s Manual of Trade Mark Practice has been amended further to the adoption of a number of amendments to the Common Regulations under the Madrid Agreement and the Madrid Protocol. The changes are applicable as from 1 September, 2009. They are aimed at improving the accessibility of information regarding the interim and final status of international registrations. For the complete background information, users are invited to consult the WIPO Website at http://www.wipo.int/madrid/en/

What OHIM used to call the "First Statement of Grant of Protection" will be now termed the "Interim Status of the Mark" and will be sent, including when preceded by a provisional refusal on absolute grounds, provided the refusal has been waived in the meanwhile and the opposition period is still running.

The "Second Statement of Grant of Protection" will become the only "Statement of Grant of Protection" and will be sent in all cases where an International Registration designating the EC has been finally accepted, whether totally or partially.

The changes have some legal implication on the Implementing Regulations (CTMIR) and they will have to be amended. In the meanwhile, the Legal Basis for these changes are to be found in the Common Regulations under the Madrid Agreement and Protocol.

The following has been amended (June 2009):

PRACTICE CHANGE

Part B: Examination/Section 2: Receipt of Application and Formalities
Paragraph 2.7.1. Categorisation of marks
(addition of paragraph on colour indication, pg 8)

OTHER CHANGES

Part C: Opposition/Part 1: Procedural Matters, Section V: Admissibility Check
2. Relative admissibility requirements
Paragraph 2.2. Representation of the earlier mark/sign
(amendment and addition of countries that publish in colour, pg 19)

OHIM’s Manual of Trade Mark Practice has been updated following the codified version of the Community Trade Mark Regulation no. 207/2009 of 26 February 2009 on the Community trade mark.
http://oami.europa.eu/ows/rw/pages/CTM/legalReferences/regulations.en.do

The following has been amended (May 2009):

DETAILS REGARDING CORRECTION OF ERRORS AND REVOCATION

Part A: General Provisions on Proceedings before the Office
Addition of section 7: CORRECTION OF ERRORS AND REVOCATION

The following has been amended (February 2009):

PRACTICE CHANGE

Part B: Examination/Section 6: Search
(addition of “Four National Offices have decided to opt out of the Community Search system as from the 01 January 2009; Ireland, Portugal, Sweden and United Kingdom” etc., pg 17)

Part E, Section 3/Changes in an application or registration, Section 3, paragraph 1.1. Declaration of withdrawal
(amendment following the decision of the Grand Board R 0331/2006-G Optima, pg 3)

OTHER CHANGES

Part C: Opposition/Part 1: Procedural Matters, Section 1, paragraph 2.1. Earlier trade mark registrations or applications
(addition of “The seniority claimed in a CTM can be taken into account within the meaning of Article 8 (2) (a) CTMR provided that the proprietor of the CTM has surrendered the earlier mark or allowed it to lapse within the meaning of Article 34 (2) CTMR and that this fact is proved by the opponent”, pg 15)

Part C: Opposition/Part 2: Chapter 2: B. Similarity of Goods and Services
IV. SPECIFIC GOODS AND SERVICES COMPARED
Paragraph 2. Similarity of retail services among themselves and of goods and retail services
(addition of ”Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services, at large, consist in bringing together, and offering for sale, a wide variety of different products thus allowing consumers to conveniently satisfy different shopping needs at one stop, whereas, by definition, there are no goods serving such purpose. So, they have different nature and serve different purpose. Finally, they are neither in competition with, nor complementary to, each other”, pg 48)

The following has been amended (December 2008):

Practice change

Part C: Opposition/Part 1: Procedural Matters, Section V: Admissibility check
1. ABSOLUTE ADMISSIBILITY REQUIREMENTS
(amendment to 1.2.4. Earlier well known mark, pg 16 and 1.3. Identification of grounds, pg 17).

Other changes

Part B: Examination/Section 5: Seniority
(addition of: (N.B. seniority of a Community Trade Mark cannot be claimed), pg 16)

Part C: Opposition/Part 2: Chapter 2: B. Similarity of Goods and Services
2. ASSESMENT OF THE DEGREE OF SIMILARITY OF THE GOODS AND SERVICES IN PRACTICE
Paragraph 2.2. Express and consistent answers required
(deletion of “in the example clothing (cl. 25) v perfumery (cl. 3), it should be identified, for example, that these goods may be sold together and may be manufactured under the responsibility of one single undertaking”, pg 8)

Part C: Opposition/Part 6: Proof of Use
III. PROCEDURE
Paragraph 1.2. Time of request
(addition of : If the request for proof of use is submitted during the cooling-off period or during the two months period given to the opponent for filing or amending facts, evidence and arguments, the request is forwarded to the opponent without delay”, pg 34)

Part C: Opposition/Part 6: Proof of Use
III. SUBSTANTIVE LAW, section 4: Time of use
Paragraph 4.1.3. International registrations designating a Member State
(addition of : (C-246/05 Armin Häupl v Lidl Stiftung & Co. KG) + “Member states that use the 12 months deadline or the 18 months deadline to issue a provisional refusal, pg 16)

The following has been amended (November 2008):

Practice change

Part C: Opposition/Part 1: Procedural Matters, Section VI: Conversion
(amendment to Opposition based on (to be) converted CTM(A), pg 86/87).

Other changes

Part B: Examination/Section I: General Principles
(deletion of "Further extensions should be granted only if proper reasons are given", pg 4)

Part C: Opposition/Part 2: Chapter 2: B. Similarity of Goods and Services
III. SIMILARITY OF GOODS: FACTORS CONSIDERED
Paragraph 5.3.3. In particular restaurant services and foodstuffs
(deletion of "as well as certain drinks, such as generally soft drinks", pg 45)

HABM

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Changes to the Manual of Trade Mark Practice