Manuals on proceedings before the Office
From this year on, the Office will revise its Manuals on a regular yearly basis. The revision of the manuals regarding the procedural aspects of Opposition, Cancellation and AG formalities is the responsibility of the KC Proceedings.
The KC Proceedings has adopted a new manual for Cancellation proceedings that will enter into force on the first of July. It has changed the existing Opposition proceedings manual on a large number of points. These will also enter into force on the first of July.
This article outlines the most important issues regarding the Opposition Proceedings manual.
I. The Manual regarding Opposition proceedings
On the first of June 2012, the Office will publish some changes in the Manual for opposition proceedings (Part C: Opposition, Part 1: Procedural Matters) that have been adopted by the KC proceedings during its meetings as from October last year.
These will be the following:
- Early Oppositions (page 8)
The Office’s practice on early oppositions has been added to the Manual.
- Languages and translations of the Notice of Opposition (pages 15 and 16)
The text under point iv. and v. has been adopted in order to cover also situations where a wrong language of proceedings has been indicated by the opponent. Furthermore; some corrections have been made to the text:
- Languages and translations of the Notice of Opposition(page 16)
A clarification for the users has been introduced in relation with the time limit for furnishing the grounds of the opposition.
- Admissibility – goods and services (pages 25 and 26)
The practice on the indication of the goods and services on which the opposition is based is now described in the Manual and guidance as to how deal with the different situations is added.
- Change in practice for the substantiation of International registrations with EU designation (page 43)
The practice of the Office has been to accept printouts of the CTM-Online database for International Registrations with EU designation. The practice will not be followed since this approach contravenes the text of Rule 19(2)(a) CTMIR.
Consequently, only the following database extracts will be accepted for the substantiation of International registrations with EU designation:
This new practice will come into force on the first July, and will apply to oppositions filed as from the first July.
- Extracts from official databases (pages 43 and 44)
Clarifications have been added to the Manual on pages 43 and 44 in relation to the acceptance of official databases and their identification since there has been uncertainty as to official identifications and the correct reproduction of these official extracts.
- Withdrawal of opposition (page 67)
A clarification for the users has been added to the Manual that withdrawals of an opposition have to be explicit and unconditional.
- Time limits in suspensions (page 97 and 98)
The Manual has been updated with the correct calculation of time limits after a suspension. In principle the calculation of these time limits are in line with the calculation of time limits for the cooling-off period.
II. The Manual concerning cancellation proceedings
On the first of June 2012, the Office will also publish the new manual on cancellation proceedings. This Manual intends to describe the way in which cancellation proceedings are dealt with at present, and as such there are no major changes in practice. However, there are a few instances in which it has been judged necessary to fine-tune the practice in order to make it more coherent with the applicable provisions or to the practice of the Office in other areas, as summarized below:
- The main change in practice in the new Manual concerns the translation of the application for cancellation and of the documents in support of the application. In fact, more than a change of practice it is a clarification, since different practices were being followed. The manual sets out clear rules in this area, which are also in line with the decisions of the Boards of Appeal on this subject. In parallel, new standard letters are being drafted which will implement the new practice.
- Another change concerns the closure of proceedings as a result of a surrender. The surrender of the contested CTM by its proprietor normally leads to the closure of the cancellation proceedings. However, the Manual of the Office, Part E, Section 3 (Changes in an application or registration) states that, because of the different effects of a surrender and a cancellation decision (retroactivity), the cancellation proceedings will continue when the applicant requests it and demonstrates a sufficient legal interest in obtaining a declaratory decision. In practice, in these cases the Cancellation Division sent a letter closing the proceedings and then, if the applicant on his own initiative requested a declaratory decision and showed a sufficient legal interest, it reopened them. It has been thought more user-friendly not to close the proceedings automatically but to inform the applicant of the surrender and invite him to submit observation before closing. The same applies where there are revocation and invalidity proceedings against the same CTM and the revocation is decided first. Again, standard letters will be drafted to implement this change.
- Finally, it has been clarified that Article 8(3)(b) of the Fees Regulation (10% surcharge in case of belated payment and transfer order given to bank within the last 10 days of the prescribed period) is applicable to cancellation proceedings in cases where the Office has set a specific period in which to pay the fee in accordance with Rule 39(1) CTMIR.
Knowledge Circle “Proceedings”