Good news for OHIM and brand owners alike: boom times are returning to Alicante, with CTM applications in the first half of 2010 up 15% from the same period in 2009.
Moreover, OHIM is introducing changes of practice, effective from 15 September 2010, which should make it easier to obtain sensible suspension terms in contested proceedings and a first extension of time in all OHIM proceedings, including examination.
The practice changes will result in all requests for suspension in contested proceedings being granted automatically for a period of 1 year, instead of for variable periods requested by the parties, as was previously the case. This change should save parties time and money in having to apply for a further suspension at the end of a short original suspension term of a few months, since successful CTM negotiations are rarely concluded within such a short term. As currently, any party will still be able to bring a suspension to an end unilaterally at any time.
First extension requests, too, will automatically be granted (presumably for the usual term of two months), provided they are received before the original term expires. However, there is a catch, in that OHIM will now automatically refuse all second extension requests by the same party in the proceedings, absent "exceptional circumstances."
OHIM has given examples of some "exceptional circumstances," which to many observers familiar with the UK-IPO's more stringent rules frankly do not appear all that exceptional. These include changes in corporate structure delaying access to witnesses, and delays in completing survey fieldwork. The general wording of OHIM's examples suggests that, unlike the UK-IPO, OHIM will not require an applicant to show in any detail what it has done within the period already allocated that would justify the grant of the additional time. Indeed, before the UK-IPO, the scenarios outlined by OHIM might well meet with a raised eyebrow and questions as to why the circumstances outlined should have prevented the missing steps from being taken in time.
Nonetheless, the fact that initial extensions will automatically be available is likely to help many brand owners who are working under the pressure of reduced budgets and staff-counts and need additional time to prepare a case. Additional delay to proceedings is likely to be minimal provided further extensions are not too readily granted in circumstances that are not truly exceptional, and where the requester has not made out a clear case for having acted diligently to date.
Changes like these, and those potentially arising from the Max Planck Institute study on the functioning of the CTM system (due to be concluded this autumn), may help breathe new vitality into the EU trademark protection system. Streamlining and growth may go hand in hand.