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Thursday, 8 March 2007

More on expedited trade mark applications in Europe; GOLF USA unregistrable, rules CFI

Following his request for information (see earlier posts here and here) the IPKat has now received further information about expedited trade mark applications, this time from Denmark.
Right: Trade Mark Registry staff practise the expeditious delivery of a trade mark examination from the post-room to the examiner's desk

The Kat's valued friend Lasse Arffmann Søndergaard Christensen (Gorrissen Federspiel Kierrkegaard) writes:

"In Denmark there are no provisions for expedited trade mark applications in the trade mark law. However, the Danish Patent- and Trade Mark Office is very often very flexible in this regard.

When the sunrise period for the .eu domain was launched, the Danish Patent- and Trade Mark Office informally offered for free an expedited procedure where the trade mark application was filed with the purpose of allowing the applicant to file for a corresponding .eu domain name within the .eu sunrise period. No documentation was needed, just a simple message along with the application asking for an expedited procedure referring to the fact that the trade mark application was filed with the purpose of allowing the application to file for a corresponding .eu domain name within the .eu sunrise period. As you may imagine this resulted in a number of expedited trade mark applications for marks such as SEX, POKER, POKERROOM etc filed for "bicycle tyres, sewing machines" or similar....

Furthermore, the application procedure involves a search report from the Office. When the search report is sent, the PTO sets a two month deadline for the applicant to react on the search report. If the applicant does not respond before the deadline the mark will automatically be registered irrespective of the content of the search report. However, if the applicant responds to the PTO immediately after receiving the search report by informing the PTO that he wishes the mark to be registered irrespective of the content of the search report the mark will usually be accepted for registration within weeks instead of awaiting the deadline.

If the applicant responds immediately to the search report a national Danish trade mark application is currently processed within 3-4 months".

A pretty hopeless appeal against refusal to grant a Community trade mark was refused on Tuesday 6 March in Case T-230/05 Golf USA, Inc. v Office for Harmonisation in the Internal Market. The applicant, an American corporation, sought to register GOLF USA as a word mark for sports (and principally golf) goods and retail services.

Left: a mug's game - appealing no-hope causes to the CFI

No, said the examiner, "the combination ‘golf USA’ brought to mind an obvious link between golf and the United States" and there was no evidence of distinctiveness acquired through use. The Board of Appeal dismissed the appeal, as did the Court of First Instance. Golf USA pleaded, among other things, violation of Article 14 of the European Convention on Human Rights in that OHIM, by failing to allow this application while granting other applications to register allegedly descriptive or non-distinctive signs but refusing this one, was acting in an arbitrary and discriminatory manner. The CFI predictably found no merit in this argument.

The IPKat says, OHIM does pretty well in the CFI these days. Unlike CTM applicants, the Office seems to be in court on a virtually daily basis and it gets the chance to rehearse and refine submissions that are frequently made - particularly on procedural and evidential matters. Merpel notes that it has taken only four years, virtually to the week, to get from initial filing to third refusal. This shows that the grant-to-appeal procedure is working a lot more swiftly than it did a couple of years ago.

1 comment:

Rob Harrison said...

Germany also provides for expedited trade mark applications. It costs an extra fee - but you can easily get acceptance of the mark within a month or two and publication takes about another month. The opposition period (3 months - as with OHIM) will then effectively expire about five months after filing.

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