Faster, safer and more attractive? OHIM introduces “Fast Track” Application System Dr Birgit Clark, Trade Mark Attorney, London On 24 November 2014, the Office for Harmonisation in the Internal Market, the European Union’s trade mark office, (OHIM) introduced a new fast track trade mark application procedure for Community Trade Marks (CTMs). This optional new route is generally expected to considerably shorten the time from filing to registration and thereby increase the attractiveness of the CTM route. So how does it work, what conditions will have to be met to qualify for the fast track and what are the expected practical consequences? to further accelerate its already quite speedy examination process. While the new fast track procedure will not shorten the three months opposition period for CTM applications, the new procedure is meant to be “faster” as well as “safer”: faster since only applications that comply with certain conditions are eligible for the fast track (more on this below). If they do comply, applications can be published in half of the time or less compared with regular applications. Safer, since applicants may only select pre-translated and prevalidated terms of goods and services from OHIM’s harmonised database. The terms in this database have been approved by OHIM as well as virtually all the international property offices in the EU. Using terms from this database, - even outside the fast track system - therefore reduces the likelihood of deficiencies and allows a smooth processing of the application. OHIM has also developed a dedicated 5-step online application form, which includes mandatory options that are meant to ensure that the application is processed on the fast track. Helpfully, the application form flags whether or not an application complies with the fast track conditions and also proposes corrections which render an application suitable for the fast track. It should be noted however that CTM applications may fall outside the fast track system after filing, e.g. if the mark falls foul of any of the absolute grounds of refusal, such as lacking inherent distinctiveness. • • • No request for national searches can be included; If priority is claimed, the priority certificate(s) must be included upon filing; The Community trade mark system: a brief overview By way of reminder and background, a quick overview of the CTM system. In a nutshell, a CTM offers its owner trade mark protection throughout the whole of the European Union. CTMs are registered at OHIM and give their owners protection in all 28 EU member states in one single trade mark and thus a single, unitary registration, enforceable throughout the EU. As OHIM states on its website, a CTM is an “all or nothing deal”: either you get it for all member states or you do not get a CTM at all. CTMs are usually considered a very cost effective route for applicants that seek pan-European trade mark protection but may not always be the right choice for an applicant. National trade mark systems in the EU member states operate alongside the CTM system and OHIM joined the Madrid Protocol on 1 October 2004, meaning that a CTM can also be designated in an International Registration. The registration process at OHIM has traditionally been rather fast with OHIM most notably not citing earlier marks as obstacles to registration: on average the examination period for a CTM is about 8-11 weeks. Once the examination procedure has been successfully concluded, the mark moves forward to publication giving third parties an opportunity to oppose registration within three months from the date of publication. As of 24 November 2014 OHIM has now introduced an optional fast track application procedure, which is intended Concurrently with the introduction of the fast track system, OHIM has also announced that CTM applications will now only enter the examination process once the official filing fee has been received at the Office. Whilst it is still possible to delay payment for one month following filing, OHIM decided to introduce this change to prevent speculative applications for borderline non-distinctive/descriptive signs, which in the past may have been examined and potentially refused before the official filing fee had been paid. According to OHIM, in 4% of all cases, applicants had used this convenient option and received an examination report without having paid the official fees. For fast track applications, users therefore have to select the “debit now” button on OHIM’s 5 step application form. Filing fees have to be paid upon filing the application. Practical significance How to qualify for the fast track? To qualify for the fast track, a CTM has to, inter alia, meet the following (additional) cumulative conditions. Notably, the filing fees will not increase for a fast track application. • • • The applicant has to be domiciled in the EU or appoint an EU representative; OHIM’s new Fast Track System The application has to be for a word, figurative 3D or sound trade mark (i.e. not a collective mark); Goods/services have to be selected from OHIM’s harmonised database of pre-validated and pre-translated terms; 6 OHIM’s new fast track process is designed to make the CTM route even more attractive, especially for those applicants that are happy to draft their specification so that it only includes the pre-approved terms from OHIM’s database. For some applicants this may lead to the drafting of standard specifications consisting entirely of pre-approved terms. However, this may not always be suitable, especially in the pharmaceutical industry, where specifications often are “bespoke” and/or claim priority from other jurisdictions, where the priority mark may not include pre-approved terms under OHIM’s practice. OHIM’s fast track system should, nonetheless, allow for an increased number of CTMs achieving registration within the six months priority period under the Paris Convention, which could in turn make CTMs more attractive as a basis for International trade marks.