Fast-track CTMs now available; OHIM gets stricter on payments

The fast-track processing of Community applications has been available as of November 24 2014, free of additional charge. Moreover, from that same date, applications are now examined only when they have been paid for.

‘Fast-track’ means that the trademark application will be published in half the time or less, compared to regular applications (which are normally published eight to 11 weeks after payment). For an application to qualify for and remain in the fast track, applicants must fulfil certain conditions, including the following:

• There must be no classification deficiencies – users must select their goods and services from a database of terms already accepted by OHIM and by almost all national EU IP offices.
• Applicants must pay upfront.

In addition, from November 24, OHIM now examines applications and processes any communications related to them only after they have been paid for. OHIM explains: “This means we can be more efficient as an office, as we will no longer examine applications that ultimately will never be paid for.”

Counsel comment:

I am broadly in favour of these developments. OHIM was devoting considerable resources to examining applications which were then withdrawn without payment. It is more equitable to prioritise applications for which the fees are paid. The fast-track system also seems to be a good idea. One requirement is the payment of the application fee on filing, in common with standard applications, which is fair. I am slightly less comfortable with the requirement for the specification of goods/services to consist of terms from OHIM’s harmonised database. Many practitioners file applications on instruction from overseas colleagues, particularly in the United States. The specifications tend to be very specific because of US trademark practice and require examination to be accepted. Perhaps, in time, OHIM’s system will be sufficiently sophisticated to accept such terms without the need for human intervention.

Chris McLeod, Squire Patton Boggs (UK) LLP