Article 39 of the Community Trade Mark (CTM) Regulation lays down the system of searching in national/Benelux registers and in the CTM register for earlier similar marks. The European Commission is required to submit a report on the operation of the search system after five years from the opening of the OAMI/OHIM. Therefore in February 2001 the Commission issued a Questionnaire which is available at: http://oami.eu.int/en/marque/pdf/searchdg15.pdf

FICPI EUCOF and CET Group 1 gave the following response:

FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the profession in private practice, including national Patent Attorneys, European Patent Attorneys, Representatives before OHIM, Patent Agents and Trademark Agents in all Community countries, through the European Union Members Commission of FICPI (EUCOF), thanks for being invited to give its view with regard to the actual CTM search system to help in its evaluation.

The European members of FICPI, all being in private practice, are on the OHIM list of representatives and represent to a very great percentage trademark applications of SMEs.

Although it is advantageous for a trademark applicant to conduct an availability search before filing, SMEs in their great majority do not have the means, time or personnel and knowledge to perform such searches and usually do not want to spend the money to order one from a search institute.

On the other hand, searches among all trademarks exisiting in the EU are vital to judge the applicant's position and to be able to settle conflicts before they arise, i.e. especially before inter-partes proceedings are started by owners of prior rights, be it at the level of the Office or before Courts. Therefore, SMEs and their representatives who advise them depend on the official search reports.

Even so the actual procedure of OHIM around the search reports is such that no reaction time is given to the applicant when he receives the search reports, because at that time the application is already on its way to be published so that oppositions cannot be avoided. It is a matter of fact that many owners of really pertinent prior rights do not file oppositions but apparently await marketing of products and then sue before the Courts. Therefore, in order to be able to evaluate their position also outside actual opposition procedures before OHIM, SMEs need the search reports provided under the system, but they would need them in a better way.

In answering the first question of the annex to the respective inquiry letter, the searches are still useful for SMEs and provide value for money (since the price is very small), but the system should be ameliorated and lacks efficiency and facility of use.

The searches would be even more useful if offered for a small fee before filing. This fee should then be deductable from the filing fee if the trademark is then filed within four months from receipt and then the search not repeated (similarily as done by the EPO).

As to facility of use, it has to be criticised that those search reports provided do not all contain the minimum requirements upon which a quick first check and decision to look more closely can be made. These minimum requirements are:

• the country issuing the report has to be always stated;
  
  
• an actual number (application no. or, when already registered, a registration no., by which the trademark can be found in the registers or publications) and the status in case also already cancelled marks are contained in the search report (it would be easier to eliminate these) and the indication whether it is a national or an international mark;
  
  
• the name of the actual proprietor (to judge whether it is friend or foe or unknown);
  
  
• the classes (to judge whether the mark is dangerously close);
  
  
• the word parts of the mark and an eventual indication whether it is a figurative mark.

Since according to the published overview of the content of the search report most of these criterias are met by most countries, it would be only a small effort to achieve compliance by all of them.

Unfortunately, not all countries do provide search reports so that the usefulness is curtailed and expensive private search reports have to be asked for those missing Member States, especially if an SME is interested in such market. The question arises if not some changes and efforts could be made to close this gap even if this means that a tender has to be made by OHIM to private search companies whether they would be willing to close this gap.

On the other hand the information, sent by OHIM according to Article 39(6) to the trademark owners, of marks cited in the Community search report is of little value. It is cheap and usually done by representatives of SMEs themselves to order a Community-wide watching service for newly published marks, and most representatives screen at least the OHIM Bulletin for those for the benefit of their clients. Anyway, since those searches are done by computers, most cited marks are totally irrelevant so that the recipients of such communications are rather irritated by them. This practice should be abolished. The purpose could only be achieved if there would be introduced a screening of the reports so that only the owners of seriously conflicting CTMs are notified.

As to the handling by the Office, it is unfortunate that OHIM takes the one-month period of Article 39(6) so literal that even if an applicant wants to withdraw his application on the same day he receives the search report, he can no longer stop publication. An applicant must be given a prolongable term of one month from receipt if he wants to react on the search reports and still be able to stop publication in order to avoid oppositions. Of course, to the benefit of those having already made their searches prior to filing, one should be able to waive this term in order to have one's application proceeded directly to publication without awaiting the mailing of these search reports.

FICPI hopes to have answered the questionnaire sufficiently clearly but remains fully at disposal to explain in more detail these points and to further discuss solutions.

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See also paper EXCO/GB01/CET/1109 in connection with this subject.