IPKat reader Alfred Strahlberg of Strahlberg & Partners, Switzerland, points to an interesting statistic: roughly 17% of all CTMs filed directly with the OHIM are opposed (see table above, click on it to enlarge - I know it's impossible to read). However, CTMs filed using the Madrid System - i.e. international marks seeking extension to the EU - are only opposed in about 8% of all cases (see table below).
The difference is quite large and definitely not due to chance. The IPKat thinks that one reason why "IR CTMs" are opposed less often is that the opponent may oppose the base registration instead and kill the IR mark once and for all ("central attack"). Only when that was not possible or seems unadvisable (home turf advantage for the registrant?) would he or she chose to oppose before the OHIM. This would mean that the combined rate of opposition - base registration and before OHIM - should be about the same for international marks as for directly filed CTMs; the IPKat lacks the empirical data to back this up, though (in Switzerland, roughly 5% of all national registrations were opposed in 2008; adding this figure to the 8% opposition rate for "IR CTMs" one arrives at a combined opposition rate of about 13% - still not quite 18%, but getting closer).
Do the IPKat readers have other explanations for the difference in opposition rates?
Reviewed by Mark Schweizer
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Tuesday, November 03, 2009
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One reason for the discrepancy may be found in the way IRs are published for opposition. An IR is published with no indication of the goods or services involved when it is received by OHIM and is open for opposition six months later. For some unknown reason OHIM does not publish the end date of the opposition period. This may make it harder to monitor than directly filed CTMs.
ReplyDeleteSome possibilities...
ReplyDeleteApplicants are more inclined to file IRs when they do not expect problems and more inclined to file CTMs when problems are considered more likely.
Because of the higher cost, applicants may be more likely to think carefully and have searching carried out when filing IRs than when filing CTMs.
I suspect a significant factor is that IRs are frequently filed for marks which have been used for many years and previously only protected at national level. (e.g. Acme Corp. trade for 20 years having only a UK registration without encountering problems and have not bothered registering internationally because of the cost. They might then be more likely to file an IR than a CTM). One would expect that long used marks are less likely to encounter problems - if there were going to be problems, they would probably have occurred already.
A comparison between opposition rates for IRs and CTMs claiming priority from a prior earlier national application would be interesting - this would to some extent focus the statistics on marks which have just been adopted.
I can't point to a statistic for it but I recall hearing that successful central attack was surprisingly rare (<1% of applications?)
Deja vue?
ReplyDeleteIs this not (almost) the same post your other Kat Birgit posted in October referring to the same Swiss reader and even citing the new Kat Mark?
http://ipkitten.blogspot.com/2009/10/ohim-discrepancies-in-opposition.html
@Deja vue: Don't be so mean!
ReplyDeleteI smell copyright infringement
ReplyDeleteyep, double post... well done, Mark...
ReplyDelete