La introducción

2.19 User organizations have expressed diverse positions regarding the proper interpretation of the territorial requirement for a CTM to be genuinely used in the Community. On the one hand, AIPPI Belgium, APRAM, COAPI, ECTA, FICPI, VFA, support the position that the threshold set by the Joint Statement by the Council and the Commission of 20 December 1993 (use in one country only) is too low for the present scale of the EU and should be increased (e.g. use in a substantial part of the EU). COAPI even suggests that the use in the 24 respective Member States plus in Benelux should be required from the owner of a Community trade mark. According to ECTA, cross-border use may appear necessary to establish genuine use within the Community. A possible alternative solution is that CTM rights could be maintained in the country where use has taken place, but cannot be enforced in other countries.

2.20 On the other hand, AIM, BUSINESSEUROPE, EFPIA, INTA, IP Federation, LESI and MARQUES support the position that use in more than one Member State should not be required. They consider that the question of whether or not use of a CTM is genuine use within the Community must be assessed on the facts of each case, not solely on the basis that the use has taken place only in one Member State. According to AIM, BUSINESSEUROPE and ICC the question of genuine use must be assessed on a case-by-case basis without introducing territorial elements but taking all the circumstances of a specific case into account;

otherwise, making such assessment conditional on a certain number of Member States would lead to fragmentation of the single market, create an environment of uncertainty for users and would put SMEs in a disadvantageous position.

2.21 According to MARQUES, genuine use needs to be assessed using the whole single market as a reference. It should be up to the European Union courts to establish a correct set of criteria as to which circumstances are relevant to establishing that the use is genuine. Similary, GRUR proposes to leave the interpretation of the territorial requirements for genuine use to the case law of the European Union courts.

2.22 Regarding the issue of graphical representation of trade marks, COAPI and ECTA state that the requirement should be maintained. In that context it is suggested to think about how non-traditional trade marks (e.g. olfactory marks, taste marks, etc) could be represented (e.g. GRUR, MARQUES). AIM, APRAM, GRUR, INTA propose that the system should be opened to other possibilities or the establishment of new conditions to represent new forms of trademarks (e.g. sound file as computer file). FICPI is also in favour of a broader definition. INTA indicates that currently there seem to be inconsistencies in the application of standards for registration and requirements for graphic representation that vary between national offices and OHIM.

2.23 According to user organizations seniority claims of a national trademark should continue to exist, but some (e.g. ECTA) see the necessity of revision and development of the system and its modalities in order to avoid legal uncertainties.

2.24 As to priority claims some user organizations support OHIM’s actual practice of an examination limited to the formalities (AIM, APRAM, IP Federation, LESI, MARQUES) whereas others see the need for a full verification of priority claims indicating especially that third parties should in future be able to rely on the register entry (CNIPA, COAPI, ECTA, FICPI, GRUR).

2.25 Regarding the question of whether bad faith should be implemented as an absolute ground of refusal, most Organizations do not see any necessity for that (rather as a ground for opposition, so MARQUES, ITMA, ECTA).

2.26 According to most user organizations the grace period (use requirement) of 5 years should not be reduced to 3 years. Some Organizations (e.g. ECTA, ITMA) point out that it is necessary to establish a single starting date for the grace period.

2.27 User organizations have expressed different views regarding the possibility of introducing a bona fide intention to use provision in the TMD as well as the CTMR (e. g. ECTA, ITMA support such idea as a means of mitigating the growing number of unused registered trade marks, whereas it is rejected by APRAM and EFPIA).

2.28 Most user organizations (AIPPI Belgium, COAPI, ECTA, EFPIA, FICPI, GRUR, INTA, ITMA, LESI, MARQUES) do not support the OHIM’s practice of encouraging lists of goods and services corresponding to the Nice class headings, indicating that it leads to unnecessarily broad specifications of goods and services for which the applicant has no intention to use the mark, or they claim at least that further conditions should apply so as to ensure a precise and uniform use of the classification system (AIPPI Belgium). On the other hand, AIM is of the opinion that the current practice should not be changed as it meets business needs. IP-Federation supports the translation of the terms of Nice Classification into all Community languages, pointing out that what is required is the consistency of office practice and interpretation across the Community on this issue.

2.29 User organizations also stress that it would be important to have a clarification of the territorial scope in respect of which acquired distinctiveness of a CTM must be shown. However, opinions on the appropriate territorial scope vary: some user organizations consider that distinctiveness should be required for each and every Member State (COAPI) whereas others indicate that acquisition of distinctiveness in fewer countries could suffice (AIPPI Belgium), e.g. in case of non-word marks (AIM, APRAM, FICPI, ITMA). FICPI refers to other facilitating tools to justify a different approach which does not require a showing acquired distinctiveness for all Member States, such as the intensity of marketing of the goods or services involved. ECTA and MARQUES indicate that this issue should be assessed on a case-by-case basis, ensuring also the compatibility with the issues of use and proof of reputation. AIPPI Belgium proposes to differentiate between trade marks with particularities of language or culture and other marks.

2.30 Other substantive law issues raised by user organizations include inter alia the inconsistency of OHIM practice regarding the necessary level of distinctiveness.

Other comments in this context relate to a too liberal approach, in some cases, to examination of the absolute grounds (e. g. concerning device marks (ECTA)) or relative grounds (e. g. similarity of pharmaceutical trade marks (EFPIA, VFA)); the necessity for clarification of the legal effects of seniority claims; the conversion

process; the necessity for clarification (e.g. in the CTMR Recitals) of the scope of protection of trade marks having a reputation and the protected functions of a trade mark, taking into account the ECJ judgments Davidoff and L'Oréal v.

Bellure, as well for clarification of differences between well-known trade marks and trade marks having a reputation (MARQUES).

2.31 Concerns were raised about the fact that seizure of infringing goods is not always granted where such goods are in transit (AIM, AIPPI Belgium, APRAM, ECTA, ITMA, MARQUES, VFA). Customs seizure sanctions should be aligned with those for trade mark infringement (COAPI, EFPIA, FICPI); a general analysis of customs seizure should be undertaken.

2.32 To ensure better predictability in OHIM’s practice, MARQUES suggests that OHIM could develop a system of precedents, where OHIM examiners are bound by decisions of the Boards of Appeal and earlier decisions by other examiners are, whilst not binding, at least persuasive; thus, predictability and consistency of the practice should be improved.

2.33 MARQUES further supports the establishment of a specialised chamber of the General Court dealing with intellectual property matters.

II. Procedural issues

2.34 Most user organizations are in favour of the current OHIM practice whereby no ex-officio examination of relative grounds is being performed (AIM, AIPPI Belgium, ECTA, EFPIA, GRUR, LESI, MARQUES, VFA,), although different opinions also exist. The majority of user organizations are also in favour of the current pre-registration opposition system, as opposed to post-pre-registration opposition (AIM, APRAM, COAPI, ECTA, FICPI, LESI, ITMA,). INTA has expressed a general position that systems which only examine for absolute grounds should maintain pre-registration opposition systems to ensure that relative grounds can be considered prior to the registration of trade marks.

2.35 Regarding procedural time limits userorganizations unanimously state that the duration of proceedings at OHIM should be reduced without any reduction of the time limits set for the users. Concerning the reduction of opposition and appeal periods there are different opinions (a compromise could be to reduce periods under the condition that a possibility of extension upon request would be provided); as to oppositions most user organizations (including ECTA) tend to maintain the 3 month period.

2.36 Other suggestions relating to procedural issues include, e. g., updating and aligning Article 14 and Title X of the CTMR with the Brussels I Regulation; bringing Article 102 (1) CTMR in line with Article 98 CTMR, harmonisation regarding the so-called dormant marks; reviewing the regime on costs (ECTA); introducing a limited compulsory document disclosure (MARQUES).

III. Fees and fees structure

2.37 User organizations criticize the lack of transparency with regard to fees.

2.38 Some user organizations state that lower fees will always be favoured (ECTA, GRUR), whereas others take into account that too low application fees would lead to an increasing number of registrations and consequently to more opposition or revocation procedures (AIPPI Belgium).

2.39 Some user organizations are of the opinion that OHIM application fees should not jeopardize the existence and the “raison d’être” of national offices, as they are an important factor when deciding between a national and an EU filing (APRAM, COAPI, ECTA, IP Federation).

2.40 User organizations also note the necessity to review other OHIM fees (in particular, for renewal, opposition, revocation) in accordance with the reduction of application fees (AIM, COAPI, FICPI, IP Federation). However, this should not lead to an automatic reduction of such other fees: all the related factors should be taken into account (e.g. ECTA notes that in the absence of a counter-check mechanism to ensure that only used marks were renewed, a low renewal fee may lead to renewals of unused marks; COAPI, UNION suggest that a registration fee should be re-introduced; IP Federation points out that there should be no indirect taxation on trademark owners - either for the benefit of the Community or of the national administration – consequently, no more should be distributed to the national offices than what is justified by their factual contribution within the CTM system).

2.41 The majority of user organizations consider that unnecessary claims to three classes should be discouraged by adjusting the CTM fee so that each additional class above one costs the applicant more; however, there are a few different opinions (AIM, APRAM). In addition to introducing an extra fee for each class, ECTA suggests other possibilities which could help balancing the level of trade mark registrations through the fees: creating an easy and inexpensive way to remove unused trade marks from the register (simple request, low fee); creating incentives to surrender unused trade marks (reimbursement of fees at any time during the lifetime of a trade mark, percentage of application or renewal fee).