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Thursday, 1 October 2009

OHIM: "discrepancies" in opposition figures? ... and a new watch service too

No, this is not another post concerning a potential OHIM scandal (see here). The IPKat's good friend Alfred Strahlberg has contacted the Kat with an interesting observation concerning the numbers of oppositions filed against "normal" Community Trade Mark applications (average 17.45%) and the significantly lower number of oppositions filed against European Community designations of international marks under the Madrid system (8.3%). Alfred has helpfully and with Swiss precision calculated the above percentage numbers for the Kat, who in turn apologises that the picture below is a little blurry. So what is the reason for the discrepancy in the numbers of oppositions filed against CTMs and IRs designating the EU? Alfred speculates that


"...one reason may be because the republication of an IR occurs six months prior to the opposition period and the end date of the opposition period is not indicated, making it hard to monitor. Also CTM Online as regards IRs is sometimes not updated when the opposition period is open."
This Kat too has noticed that there appear to be some general problems with the updating of information on CTM Online - but could this really affect the numbers of oppositions significantly? Fellow MARQUES Class 46 blogger Mark Schweizer has another plausible explanation:
"Could it also be that IR marks, as they need a basis registration/application, are less likely to be opposed at OHIM, but rather at the central level? At least if I have a choice as opponent - i.e., I also have a mark in the "home country" of the IR - I'd probably prefer to oppose the base registration and kill it once and for all."
While writing this post, the IPKat noticed a message on the OHIM's website concerning a new "CTM watch service" which as of today's date could potentially help with monitoring the progress of any type of application:

"Users of MyPage, the password-protected platform making it easier to do business with OHIM, will have access to a new feature allowing them to track the progress of CTM applications as well as international applications from 1 October. [IPKat: should this read "European Community designations of international trade mark registrations"...? OHIM's explanatory leaflet refers to "International Registrations".]

Using the CTM Watch service, users will be able to select any CTM application or international application and receive an e-mail alert when the application status changes. For example, a user can ask to be informed when a CTM/IR is published or registered. For more information on CTM Watch see our leaflet."

Image from "cat-behavior-explained.com"
This particular Kat is very interested in the new watch service and rather optimistically hopes it will be fed with up date data. Mark's explanation above makes a lot of sense and he certainly describes a preferred strategy within the first 5 years of the IR's life. However, could there be more obscure reasons for the discrepancy in opposition figures? If so, what other reasons could there be? Have any of our readers experienced problems with inaccurate data on CTM Online and so perhaps miscalculated or even missed an opposition deadline? While we would all contact the Office to seek clarification, sometimes there just is not enough time...

This Kat is interested in our readers' views, experiences and theories.

6 comments:

Hastings Guise said...

Another reason (following on from Mark Schweizer's comment) is that IR's are likely to cover more established brands.

People often file CTMs when a brand is in its start-up phase (e.g. SMEs in EU countries) while IR's (due to the requirement for a base registration) are more likely to be filed when the business begins to make the step from a domestic market to an international one.

Against this background, a potential opposer will be less inclined to take action against an existing brand, with which it may have co-existed in other markets, than with a newly emerging brand where there is both a greater potential threat and a greater change of successfully diverting the new arrival onto a different branding direction.

Hastings

Peter Lawrence said...

This lower oppo rate for Madrid cases also occurs elsewhere - I remember from my time in the UK Office that there it was about one third the level of domestic filings. So it is unlikely to be due to technical issues with republication or visibility of deadlines. We need to look deeper.

My theory then was that it was because Madrid filings were more likely to have been subject to an international prior clearance programme, or to be filed with narrow specifications to minimise problems when filing across several jurisdictions. But we would love to hear other ideas, or from practitioners dealing with both types of cases.

Anonymous said...

I believe that, over and above central attack (which is certainly an aspect), a more important reason is that the 9-month period allows parties time to settle conflicts before having to file oppositions.

I do not believe that the lack of indication of the opposition deadline can be a reason as the same applies to "normal" CTMs: CTM online does not say anywhere when the opposition period ends so one simply has to know that it is 3 months and calculate. Nothing else applies here.

Anonymous said...

It is a fact that CTM Online often shows data that is out of date. So, yes, there is an issue and the weird 9m/3m deadline for the IRs certainly does not help.

Anonymous said...

What you do notice over a period , from an (national) examining perspective, is that IRs tend to be plainly registrable or not. I agree also with Peter that the specs can be quite narrow. Also of course they derive from languages other than English (yes, there are a couple so I'm told). All of this, together with the practical issues and the established brand issue already raised, combines to reduce the oppo rate as compared with domestic cases.

Anonymous said...

Sorry but there clearly IS an issue with updating CTM online. It wouldn't surprise me if people got deadlines wrong due to that.

Any comments from OHIM perhaps???

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