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Wednesday, 7 October 2009

It's faster by CTM -- but should it be?

The IPKat's friend Alfred M. Strahlberg (Strahlberg & Partners, Switzerland) has written to him on an interesting feature of the international trade mark application mechanism:

"Unopposed Madrid Protocol designations of international trade mark applications are granted protection within 11-12 months of the date of notification to the Office of Harmonisation in the Internal Market, OHIM.

By contrast, many unopposed directly filed Community trade marks (CTMs) are now being registered within 5-6 months of the filing date (I have just searched CTM Online, which listed 318 registrations of CTMs filed between April 1 and April 30, 2009).

This means that CTM proprietors can enforce their rights much earlier than holders of international registrations.

The reason for the discrepancy lies in the fact that the opposition period for designations under the Madrid Protocol commences 6 months after receipt by OHIM, while directly-filed CTMs are published within 2-3 months. In view of the fact that Madrid Protocol designations are neither translated nor classified by OHIM, there is no reason to delay the commencement of the opposition period by 6 months.
I therefore propose an amendment of CTMR Article 156(2) to provide for the commencement of the opposition period within three months instead of six months".
What do the IPKat's trade mark practitioners -- and their clients -- think of this suggestion?

1 comment:

Anonymous said...

Wow... a country where it is slower to use the Madrid system than a national filing... really? Are you sure? What's that... it's the same in quite a lot of countries? Oh right. What's that about the Pope? I did not know that.... yeah I had heard that about bears.

Sorry, but not news. Nice way to get some extra exposure, but not news Alfred.

It is a ridiculous rule, and one that needs changing. Not least because a lot of practitioners get confused by the dates and cannot calculate when the opposition period begins and ends.

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