It is now two and a half months since the Max Planck Institute submitted its report on the trade mark system to the European Commission, but its findings have yet to be revealed.
The Institute was contracted to carry out a study into the trade mark system in Europe in October 2009, and submitted its report on December 12 last year.
The report is likely to lead to a consultation and eventually proposals for reforms to the Directive and Regulations governing trade mark protection in Europe.
The Commission was expected to examine the report for 45 days before publishing it to enable stakeholders to comment.
However, Managing IP understands that it was returned to the Institute, after the Commission requested some additions and revisions.
The Institute resubmitted a final report on February 14. It is believed to be subject to some internal procedures at the Commission before it can be published.
Until then, trade mark users can only speculate on what the report will contain. Luckily, there are a number of clues about the topics it is likely to address.
The study is on the overall functioning of the trade mark system in Europe, rather than merely the Community trade mark, and the work included responses from all 25 national offices in Europe as well as OHIM.
It also received comments from users associations and conducted a survey of trade mark practitioners.
One issue is the cost of Community trade marks and in particular how this compares with national rights, especially in the light of recent fee reductions at OHIM. The low cost has led some practitioners to argue that the CTM register is becoming overcrowded.
It is possible that the report will recommend addressing this by changing the three classes-for-the-price-of-one system that operates at OHIM at the moment.
Instead, applicants would ordinarily apply to register in only one class, paying extra for more classes.
If this proposal were made, though, it would lead to questions about pricing and also what happens to renewals of existing marks.
Another key concern is about genuine use of Community trade marks. At present, the conventional view is that use in just one of the EU's 27 countries is sufficient to sustain a trade mark across Europe.
However, that has been challenged in the Onel case, which is pending before the Court of Justice.
The report is unlikely to pre-judge the outcome of that dispute, but it is likely to affirm the principle that there is no requirement to use CTMs in more than one country, and the use requirement is not tied to political borders.
"If you look closely, the positions are not as far apart as they seem," Annette Kur of the Max Planck Institute told Managing IP last year. "No one favours autonomy. But there are differences in attitude and we need to address those."
There is some speculation that the report could therefore recommend an exception in very unusual cases. For example, it could say that it would not be possible to file an opposition based on a mark if the mark has not been used in a particular country for an extended period of time - say 15 years.
Tove Graulund, who has been following the report, said at the MARQUES Winter Meeting in Madrid last week: "If such a proposal were introduced, this could create problems in practice. It would mean you could have two valid marks coexisting in that market. And who would have the burden of proof to show whether or not there has been use in the 15 years? That could be very difficult to do."
She later told Managing IP: "It could mean that trade mark owners have to keep records of use in each and every country for up to 15 years. It would be an immense burden."
Based on the tender and other public information, it is also likely that the report will address the balance in the IP system and the limits of protection.
This could lead to clarification in the Directive that certain acts such as comment and parody do not infringe.
But practitioners spoken to by Managing IP said that specifying acts of unintentional infringement could lead to confusion. "Would it just open ways for people to find excuses?" said one.
Graulund, who is part of a MARQUES task force on the study, said: "We in the trade mark community have lots of work to do once the report is published to respond to and comment on it."
The Institute says it will publish the report on its website as soon as it has been accepted by the Commission.
