MAY 2008
Revisit your trade mark policing strategies
The UK's decision to stop examining trade marks on relative grounds will force applicants to reconsider their policing and filing strategies in Europe. Jonathan Radcliffe and Eesheta Shah explain more
| One-minute read |
The European Union is split by differences on ex officio examination for conflicting trade marks in its various trade mark systems. OHIM – home of the Community trade mark – has no ex officio examination. But at the national level 12 of the EU's 27 member states have an ex officio examination, and the remaining 15 member states do not.
This article considers the potential effects of the two systems on brand owners, and compares the position in the UK – which (along with Denmark and Hungary) recently abolished its practice of examining trade marks on relative grounds – with the position in France, Germany and the Benelux countries. |
Brand owners looking for protection for their marks in Europe or parts of Europe have a choice – they can either seek national protection in key territories of interest (through national filings or an international filing) or they can seek EU-wide protection via the Community trade mark (CTM) system. The extensive geographic reach and cost-effectiveness of CTMs have certainly contributed to their popularity. But the absence of an ex officio examination for conflicting trade marks at OHIM, and the strategy of filing a CTM application to bypass an examination on relative grounds at a national registry, have undoubtedly also had an impact on filing strategies around Europe.
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