New Common Trademark Practice: New Strategies Required for Filing Trademarks in Europe

color trademarksFurther to our recent article on the changes of the common practice of several European trademark offices (including the OHIM, GPTO, etc.) on the treatment of colored trademarks we will now explain how the decisions will in our opinion change the practice of trademark filings in Europe.

Until now, it was usual practice in Europe to file trademark applications in black and white or in grayscale in order to obtain the best possible scope of protection for the trademark. A trademark filed in black and white or in grayscale could protect the mark in all possible color variations.

However, the recent announcements of the OHIM suggest that in future trademarks that are filed in black and white or in grayscale will only provide protection for marks wherein the color changes are so small and insignificant that the differences will go noticed by the public. Our Example 1 illustrates two trademarks wherein the identity might possibly be still acknowledged under the new practice (in the absence of any available court decisions, we reserve the rights of being wrong in our assessments):

Example 1: Trademarks with only insignificant differences of the color, which will not be recognized by the public.

However, in the following cases (Examples 2-4) we consider the differences as being not minor and significant, so that the trademarks might be considered being different from each other. This means that the use of the colored trademarks will no longer protect the corresponding trademarks registered in black and white or in greyscale.

colored trademarks

Example 2: Trademarks which are only used in black and white or in greyscale will not protect trademarks filed in color.

Colored tradmarks

Example 3: Different colors used in the trademarks will be noticed by the relevant public. Within the European trademark system these trademarks will be considered being different from each other.

In view of the above new practice, we can no longer advise our clients to submit trademarks in black and white or in grayscale, if they want to use their trademarks only in color. An application for a trademark in black and white or in grayscale will apparently no longer provide protection for the signs in all color variations.

Taking into account all circumstances of the individual case, it appears important already at the time point of filing the trademark application to make a decision on how the trademark should be used in future, in order to make sure that the form in use is identical to the trademark to be registered.

The owners of trademarks which are already registered in black and white or in greyscale should consider filing additional trademark applications for their marks in color, if they previoulsy used their trademarks only in color or if they consider using the colored version in future.

Picture (top): © Jonas Tana, [CC BY-NC-ND 2.0]; picture (bottom): © Marco Braun, [CC BY 2.0]

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OHIM: Color Check for Black and White Trademarks

OHIM changes view on black-white trademarksThe Office for Harmonization in the Internal Market (OHIM) recently announced a new common practice for trademarks registered in black and white or in grayscale in Europe. Under the new practice, the OHIM will no longer treat trademarks filed in black and white or grayscale (in the following black and white trademarks) as if the mark covers all color variations. The changes may have undesirable legal consequences for some trademark owners:  some black and white trademarks that are currently only used in color, might be nullified before the trademark office in Europe. In the light of the changes, trademark owners should analyze their portfolios and should question whether or not the registered trademarks still provide sufficient protection against competitors.

The new common practice was made public in a recent online publication of the OHIM and will be applied at this office and some national trademark offices in Europe (with the exception of the trademark offices of Sweden, Denmark and Norway).

A trademark filed in black and white or grayscale is only considered to be identical to a colored mark if the differences are so insignificant that they would not be noticed by the relevant public. An insignificant difference will be assumed, if the average consumer would notice the difference only upon side by side examination of the trademarks.

The change in practice will have implications for priority claims, in opposition proceedings and with regard to the question of use preserving the right to use the trademark. According to the OHIM’s announcement, infringement issues remain unaffected. Also, the practice will not affect the use of marks in color for the purposes of acquired distinctiveness, the assessment of similarities of colors and the colors marks per se.

1. Priority Claims

A black and white trademark will only be considered identical to a colored mark or trade mark application, the priority of which is claimed, if the differences are so insignificant that they would not be noticed by the public. This will be an exceptional situation in practice, because the public will usually notice even small differences between trademarks filed in black and white or grayscale and their colored counterparts.

2. Oppositions

Similarly, when assessing the similarity of black and white marks and a colored version of the same sign, the test in opposition proceedings before the OHIM will be, whether the differences are so insignificant that they would not be noticed by the public. Also in this situation the assessment will be based on the perception of the average consumer.

It should be noted that even in cases where the characters are not identical the trademarks could still be considered similar by the opposition divisions. Similarity between the signs may also give rise to a likelihood of confusion of the marks. Nonetheless, the change in practice will at least in the practice before the trademark offices result in a narrower scope of protection for black and white marks.

3. Use

Under the current law, the use of a trademark in a different form than the registered form is sufficient, provided that the distinctive character of the mark is not altered. Under the new common practice, a change in color in itself does not change the distinctive character of a trademark registered in black-white for the purpose of use, provided that:

  • The word / figurative elements are the same and are the main distinctive elements;
  • The contrast of shades is respected;
  • The color or combination of colors does not have distinctive character in itself; and
  • Color is not one of the main contributors of the overall distinctiveness of the sign.

According to our preliminary assessment, black and white trademarks that had been registered for more than 5 years are now exposed to an increased risk of being revoked due to non-use, if a use of the sign can only be substantiated by the proprietor for the colored version of the sign.

Foto: © fotomek –

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Ireland: London Agreement Enters into Force

Ireland: London Agreement enters into force on March 1, 2014With Ireland already having deposited on November 25, 2012 the instrument of accession to the London Agreement, the new legislation will formally enter into force in Ireland on March 1, 2014.

Ireland had already signed into effect national laws in order to faciliate the transition to the London Agreement. Since 2012, applicants are no longer required to file translations into English of the specification of European patents that have been granted in French or German language. With the formal accession to the club of member states of the London Agreement, Ireland has now set a new course for a modern and simplified language regime applicable for any European patents to be validated in this country.

Foto: © James Jordan, [CC BY-ND 2.0]

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EPO: Abandonment of Established and Efficient Safety Mechanisms for Users

European Patent Office has a certain affinity to gold

This week we received an official notification of the European Patent Office (EPO) along with the regular statement of our deposit account of 10 February 2014 with the headline “abolishment of the administration fee in case of insufficient cover of account” which at first seemed unusual to us.

Please find a copy of the official notification here.

The headline seems unusual because the EPO, which is sometimes jokingly referred to as the most expensive patent office in the world, is not normally known for a policy of reducing or abandoning any official fees. After a detailed examination of the official notification the above-mentioned “abolishment of the administration fee” turns out to be nothing else than an increase in official fees. This only comes into force when there are insufficient funds in the deposit account of a user.

Up to now, if there were insufficient funds in the deposit account on the day the debit order for a deposit of fees had been received by the EPO, the applicant could still deposit the missing amount within one month after the receipt of an official notification, in which the applicant was informed about the insufficient funds in his account. This had the consequence that the negative legal effects for the non-deposit have not occurred (see items 6.5, 6.6, and 6.7 of the Arrangements for deposit accounts (ADA)).

This was a safety net for users as they still had at least one opportunity to pay the missing amount and balance the overdraft although they did not have enough coverage of their deposit accounts.

The administration fee was moderate with 30% of the missing amount (according to EPO standards).

However, both this generosity and the safety net will be abolished on 1 April 2014. As the reader of the official communication will be informed in a short explanation in parentheses further down the text, there will be no possibility anymore to backdate the time of depositing the fees in the future.

important information

As a result, a loss of rights immediately occurs if there are insufficient funds in the account.

We cannot help feeling that by amending the user-friendly present regulation, the EPO intends to force the applicant into filing a request for a reestablishment of rights resulting in much higher administration fees of at least €580.00. The reply of the EPO to our general enquiry of 20 February 2014 concerning the purpose of these new provisions, however, seems to indicate this kind of motivation.

The EPO is obviously not being aware of or is at least accepting that a reestablishment of rights is a legal remedy which will typically not be available for the professional representatives before the EPO (meaning the law firms). Insufficient funds in the account at maturity of the administration fee are probably difficult to be argued in the context of the “all due care required by the circumstances” criteria, as the EPO believe that they have, at the same time, improved the possibility of an online account tracking (see notification of 10 February 2014 as well as reply of 20 February 2014).

In order to avoid the loss of rights after the new provisions will have come to effect we recommend the following measures:

  1.  Ensure that your deposit account has enough coverage to be prepared for all eventualities that may come up – this should be possible in a time of historic low interest rates. However, this strategy may become very expensive if inflation increases (or a soaring inflation).
  2. Set up a detailed liquidity plan for your deposit account, regular (e.g. daily) inspection of the account status, including comparison with the actual transactions – unfortunately, this includes more working hours which you will have to charge your client.
  3. Generally avoid participating in the automatic debiting procedure (AAD). In addition to your liquidity plan the point in time for transactions can be controlled considerably better through an individual order.

From our point of view the change of the regulations is very unfortunate as the possible ways to pay the administration fees have been very user-friendly in the past. Instructions for payment of fees are often received close to the deadlines. In this case, the representative could be sure that the fee was considered as paid if a request for participating in the ADA procedure has been submitted.

It seems that a service which has proved its worth will be abolished with the intention to generate additional earnings for the EPO (fee for reestablishment of rights).

Foto: © Martin Deutsch, [CC BY-NC-ND 2.0]

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Happy New Year 2014!

We wish a Happy and prosperous New Year to all our readers!


Foto: © matze_ott, [CC BY 2.0]

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OHIM: New Website Goes Online!

OHIM new websiteThis week, a visitor to the website of the Office for Harmonization in the Internal Market (OHIM) will find that both, the functionalities and the design of the website have undergone drastic changes. The OHIM published in a press release some background information on the changes.

The most important information in the press release (which is only available in English language) may be summarized as follows:

“OHIM ́s new website brings a new online look and feel to the Office. The site has been developed in collaboration with users, who have tested its functionalities and provided valuable feedback through the development process.

Over the past months, testing and development on the website have reached a peak. The site now includes several new functionalities which will make the filing process more user-friendly.

The changes of practice are described in the Manual of Trade Mark Practice, which, among others, implements the Common Communication on the Common Practice on the General Indications of the Nice Class Headings, published on 20 November 2013; that entered into force on the date of the go-live of the new website. (…)

The new user area replaces My Page and is a completely secure platform that lets the user monitor the lifecycle of a trade mark or design. It is possible to edit personal details, subscribe to our news feeds, set alerts for renewal or watch other CTMs, and much more. (…)

In addition, the new e-filing wizard will allow non-specialised users to file in five steps, using any of 23 EU languages. The application can be saved at any time during the process. (…)

The new e-filing will also introduce other fresh navigation features, including taxonomy, an intuitive, market-oriented way of classifying Goods and Services, based on the Nice Classification.

It also presents a complete revamp of its navigation system, aimed at specialist and non-specialist users.”

On December 3, 2013, the average loading time of the website from Germany was more than half a minute. Moreover, we found several error loading pages while trying to load subpages. We recommend testing the new website once the teething problems are fixed at the OHIM.

Update 1 (Dec. 6, 2013): When we tried to download an OHIM official communication using the secure customer area (formerly: myPage, the service was apparently renamed), we received an official communication addressed to a different law firm and in an unrelated case. With the second download the correct communication was provided.

Apparently, there are some more problems to be solved with the new OHIM website.

Update 2 (Dec. 6, 2013): We have been informed by another law firm in Munich that e-filing was not possible for at least some hours during the last week. Since a priority date had to be met, the trademark application was finally filed using the classical facsimile transmission.

For this form of filing a higher initial filing fee of 1.050 EUR applies for trademark applications claiming not more than 3 classes (Nice classification). We are now wondering if the “involuntary additional fees” will be reimbursed by the OHIM. The OHIM can hardly burden the applicant with additional fees, if the applicant chose this form of filing only because of an interruption of operation of the OHIM’s electronic infrastructure.

Update 3 (Dec. 10, 2013): Today, the new OHIM website was apparently down. E-filing of trademarks or designs at the OHIM was not possible. The following error page was displayed:

OHIM website down

We hope that the technical problems will be resolved by the OHIM in a timely manner, so that electronic filing of trademarks and designs will again be possible in Europe.

Update 4 (Dec. 18, 2013): According to an official announcement of the OHIM of today, all CTM applications that were filed between October 2, 2013 to October 18, 2013 will enjoy the same fee reduction as granted to any electronically filed application, irrespective from the filing method which was actually used. A screenshot of the announcement published on the OHIM webpage is depicted below:

OHIM accouncement new website

Update 5 (Dec. 18, 2013): Today, our paralegal filed several CTM applications with German as the language of the proceedings. She was quite surprized to find out that capital letters of some goods (in German language, nouns typically start with a capital letter) were automatically replaced by small letters in the request form and the filing confirmation. She was sure that in the input mask the correct spelling of the words had been used.

We called the telephone hotline of the OHIM and were told that other users experienced similar problems. Until the technical problems were resolved, a request for correction of the list of goods and services should be filed as a standard procedure for any electronically transmitted CTM applications written in German language.

It appears to be advisable for the time being to double check the request form and confirmation letter of the OHIM for any errors and immediately complain, if errors are found.

Update 6 (Dec. 28, 2013): It appears that the OHIM corrects the artifacts / errors in the list of goods and services on its own motion and a request for correction is generally not necessary. However, we think that it is rather scary that the official filing confirmation contains artifacts which are somehow (manually?) corrected by the office without a request of the applicant.

Update 7 (July 1, 2014): The technical problems with the OHIM website are apparently not yet fixed. When we tried today to respond to an official communication in our user area, we received the following error message:

error message OHIM

Since technical support was not available at the time, we turned to the classical communication channels (i.e. facsimile transmission) in order to meet the time limit for filing the response.

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Priority Documents: Formalities and Time Limits in Germany and Europe

priority documents of patents, trademarks and designs in Europe and GermanyMany applicants of patents, trademarks or designs in Europe or Germany have questions concerning the formalities and time limits for having the priority claim of a previously filed application confirmed.

The formalities and time limits for submitting either a priority document (certified copy of the prior application) or a simple copy of the prior application differ greatly depending on which patent or trademark office is used for filing the application and for which kind of application the priority is claimed.

The following tables summarize several typical scenarios wherein a priority document or a simple copy of the prior application must be filed within certain time limits, including the legal consequences if the applicant missed the time limits for providing the required documents.

1. German Patent and Trademark Office (GPTO)

application for: required documents: time limits: legal consequence for not filing the document:
patent¹ copy of prior application 16 months from priority date loss of the priority claim, request for reestablishment of rights possible
utility model copy of prior application 16 months from priority date loss of the priority claim, request for reestablishment of rights possible
trademark¹ copy of prior application 2 months from receipt of official communication loss of the priority claim, request for reestablishment of rights possible
design² copy of prior application 16 months from priority date loss of the priority claim, request for reestablishment of rights possible

¹ A certified copy of the priority document is not necessary if a priority is claimed in a  patent or trademark application – cf. BlPMZ 69, 2 and BPatGE 21, 169.

² A certified copy of the priority document is not necessary if a priority is claimed in a  design application – cf. Mitt. PräsDPA Bl. 88, 26 and Bl. 69, 2.

 2. European Patent Office (EPO)

application for: required documents: time limits: legal consequence for not filing the document:
European patent certified copy¹² of the prior application (priority document) 16 months from priority date invitation according to Rule 59 EPC; certified copy may still be filed with a 2 months time limit

¹ The filing of a priority document is generally necessary in accordance with Rule 53 (1) EPC. However, if such a document is already on file, because it has been supplied in the context of Rule 40 (3) EPC or of a request pursuant to Rule 56 EPC, no priority document must be filed.

² In accordance with Rule 53 (2) EPC and the Decision of the EPO president of August 9, 2012 (OJ 2012, 492), the EPO will include a priority document in the file without charging a fee, if the previous application is a European patent application, an international patent application filed with the EPO, a Chinese patent or utility model application filed on or after September 3, 2012, a Japanese patent or utility model application, a United States provisional or non-provisional patent application or a Korean patent or utility model application.

3. European Union Intellectual Property Office (EUIPO)

application for: required documents: time limits: legal consequence for not filing the document:
European Union trademark (EUTM) copy of prior application 3 months from filing the application loss of the priority claim, request for reestablishment of rights possible
registered European community design (RCD) certified copy¹ of the prior application (priority document) 3 months from filing the application examiner will send a letter to the applicant requesting the priority document within a time limit of two months

¹ The priority document may be filed in original or in the form of an accurate photocopy. To the extent that the original document contains a representation of the design in Color, the photocopy must also be in color (decision of the president, No. EX-03-05).

4. World Intellectual Property Office (WIPO)

application for: required documents: time limits: legal consequence for not filing the document:
patent certified copy of the prior application (priority document) 16 months from claiming priority no legal consequences in the international phase
international trademark registration (IR)  – (only data of basic registration) upon filing the request for registration  –
international industrial design registration – (only data of basic registration) 2 months from filing the request for registration  –

Update (March 28, 2016): This article now reflects the changes introduced by the Regulation (EU) No. 2015/2424 of the European Parliament and the Council.

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Revised German Patent Act: More Flexibility for Applicants

Revised German Patent Act entering into force on April 1, 2014A revised German Patent Act will enter into force on April 1, 2014. This has been announced by the German Patent and Trademark Office (GPTO) in a press release on October 24, 2013.

With the revised German Patent Act important features will be introduced which will have a significant impact on both, the prosecution of German patent applications as well as litigation proceedings in patent matters before the GPTO.

Key features of the revised German Patent Act

  • The time limit for filing German translations of the application documents for applications filed in English or French language will be extended from three months to twelve months starting from the priority date. A patent applications for which a German translation is not filed in time, will no longer be deemed to be not filed but rather deemed to be withdrawn. This has the legal consequence that the priority date of these applications may still be validly claimed in later applications.
  • The search report will be extended by a written opinion of the examiner on the patentability of the subject matter claimed.
  • The request for search may only be filed by the applicant. However, the filing of third party observations will still be possible in future.
  • Oral proceedings in the granting procedure will become mandatory, if a request for oral proceedings is filed by the applicant.
  • The opposition period for filing opposition against granted German patents will be extended to nine months starting from the decision to grant.
  • The opposition proceedings will be held in public.
  • The “extension patent” (Zusatzpatent) will be abolished in Germany.
  • Before a German patent can be granted, the designation of inventors must be filed by the applicant.
  • The search fee will increase by 50 EUR.

Most applicants will welcome the amendments introduced by the revised German Patent Act. In particular, the rules for filing the German translations for applications filed in either English or French language will provide more flexibility for the applicants. With the extension of the opposition period the patent practice in Germany will be brought into line with the practice before the European Patent Office. The “extension patent” was hardly ever used by any applicants and will not be missed in future.

The amendments in the revised German Patent Act have been suggested by the GTPO. After approval in the Bundestag (lower house of the German parliament) on June 27, 2013, the Act had passed the Bundesrat (upper house of the German parliament) at second reading on July 5, 2013.

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Amended Rules for European Divisional Applications: Consequences and Strategic Considerations for Practitioners

Amended Rules for Filing European Divisional ApplicationsAccording to an announcement of the EPO, new rules for filing European divisional applications will enter into force on April 1, 2014.

The new rules will have the consequence that for all European patent applications pending on April 1, 2014, European divisional applications may (again) be filed even if the time limits of 24 months according to present Rule 36 (1) a) or b) EPC have lapsed.

Typically, the official communication pursuant to Rule 71 (3) EPC sets a 4-months limit for the applicant to fulfill the formal requirements for grant of a European patent, i.e. to approve the documents intended for grant, to file translations of the claims into the other two official languages, and to pay the official grant and publication fees.

Since the EPO needs at least several weeks to issue a European patent, once the formal requirements are fulfilled, an applicant for a European patent receiving the Rule 71 (3) EPC communication in December 2013 or later can now be quite sure that his patent application will still be pending at the time when the new rules enter into force. This provides him with the opportunity to file new European divisional applications even if the time limits of present Rule 36 (1) a) or b) EPC have already lapsed.

Applicants of European patent applications, for which the time limits of present Rule 36 (1) a) or b) EPC have lapsed, who received a Rule 71 (3) EPC communication before December 1, 2013 and are interested in filing European divisional applications may consider taking suitable measures for keeping the basic applications pending at least until April 1, 2014. Such measure may include for example (a) the filing of a request for amending the claims, the description or the figures or (b) not responding to the Rule 71 (3) EPC communication in time and later filing a request for further processing under Art. 121 EPC.

Moreover, any patent practitioners who have recently carried out freedom-to-operate (FTO) analyses in the European market are advised to review their analyses in view of any pending European patent applications. Pending European patent applications with an early filing date and for which the time limits of present Rule 36 (1) a) or b) EPC have lapsed could now become relevant again in view of the new options for the applicants to file European divisional applications.

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Rule 36 EPC: New Time Limits for Filing Divisional Applications at the European Patent Office

New rule 36 EPC, time limits for filing division applicationsThe European Patent Office (EPO) has finally bowed to the pressure of many applicants for a European patent and will introduce new rules governing the filing of divisional applications. As has been announced by the EPO on October 18, 2013, the controversial Rule 36 EPC will be amended with the effect of April 1, 2014.

According to the EPO’s announcement, which is only available in English language, the Administrative Council decided on its meeting in October 2013 to amend the Rules 36, 38 and 135 of the EPC implementing regulations. Starting from April 1, 2014, it will again be possible to file divisional patent applications as long as the earlier (i.e. parent) patent application is pending. The 24-months time limit for the filing of divisional applications will de facto be repealed.

In addition to the normal filing fees, a further fee will be charged as part of the basic fees for filing any divisional applications of the second and any subsequent generation. In other words, the filing of a divisional application in respect to any pending divisional application will result in an additional fee. This amount of the divisional fee will grow progressively with the number of generations of divisional applications up to the maximum fee amount, which will be announced later in 2014.

Many applicants will welcome the new rules, which make possible again the filing of divisional applications for European patent applications within a much longer time frame, i.e. as long as the earlier application is still pending, thereby providing more flexibility for the applicants.  Since in several EPC contracting states the rules for filing divisional applications are similar to the new rules of the EPC, e.g. in Germany and other countries, the change of Rule 36 EPC will contribute to a harmonization and simplification of European patent law. For law firm as well as for patent departments, it will be much easier to note time limits.

The monitoring of the time limits of Rule 36 EPC has been considered especially difficult and error-prone, because for any divisional application the receipt of the first official communication of the Examining Division of the respective (first) earlier patent application has to be noted. Moreover, there have been discussions about the question, which communications qualify as the first communication of the Examining Division. These difficulties and the confusion should be overcome with the entry into force of the changes in 2014.

The introduction of an additional fee for the filing of divisional applications will be in line with the current practice of the EPO to take influence on the decisions of European patent applicants by demanding high fees for certain requests (see claims fees, page fees, annuity fees etc.). An objective reason for introducing yet another fee specifically for the filing of division applications – which comes on top of the “normal fees” for filing a European patent application – is at least not evident.

Update 1: A summary of the amendments, which have been discussed on the meeting of the Administrative Council of October 16, 2013, has been forwarded by the European Patent Institute (epi) to its members and can be downloaded as a pdf-file.

Update 2: The decision of the Administrative Council of October 16, 2013 has been made available to the public by a press release of October 24, 2013.

The legal consequences for the practitioners and strategic considerations are discussed in another article.

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