joi, 29 mai 2014

This evening, the point 12 of the "October Instruction"

Point 12 of the instruction contains the following content:

Given the provisions of:
Article 8 according to which "trademark right belongs to the applicant who first filed, according to the trademarks law, the trademark application;
Article 6 paragraph 1 letter a, according to which "a trademark shall not be registered if it is identical with an earlier trademark and the goods or services for which the mark is applied for are identical with those for which the earlier mark is protected";
Article 2 according to which “any sign may constitute trademark . . . provided that such signs are capable of distinguishing the goods or services of a person from those of another person" in connection with Article 22 paragraph 2 lit. (is missing in the original text) and Article 5 , paragraph 1 , respectively.
OSIM shall reject the applications for which in the search report, or in any other way, was mentioned/identified the existence of an earlier identical trademark for the same classes or products, and the applicant has not submitted prior consent from the earlier trademark holder.

This text is trying to find a way to refuse the identical trademark applications in a completely different manner than provided by law and it is difficult to understand the ambition of the instruction´s authors to accomplish this. Article 8 of the law is the one governing anteriority. There is no trademarks law without such Article that marks a temporal succession of trademark registration to be considered, and Article 8 in our law does exactly this thing. Article 6 is incompletely quoted. A trademark registration is rejected also if it is similar to an earlier registered trademark, not only identical, and the goods or services are identical or similar. The truncated quoting of the Article 6 statements introduces unacceptable discrimination amongst the holders of earlier registered trademarks.

In other words, OSIM protects, by self-empowering, because the law does not grant this privilege, only the holders of identical earlier registered trademarks as for the others they better pay for opposition, because WE, the signatories of the instruction, do not take them into account. Unacceptable and outrageous alike! Article 6 has effects only by using the Article 19 in the trademarks law, which establishes the procedure for opposition. Without Article 19, the Article 6 is just a list of situations and that's all. Article 2 of the law is the definition of the trademark, and here is just a truncated quote, the instruction´s authors having a completely wrong understanding of the notion of the trademark distinctiveness. It is incomprehensible how OHIM Examination Manual is quoted in several occasions in the text of the instruction, but has not been studied in terms of distinctiveness of a trademark in order to understand the error in which the instruction´s authors are. Equally, if not more practical, would have been   to take into account the opinion of OSIM examiners, the approach being identical.

We make a parenthesis to explain. The word "bread" cannot be registered as a trademark for bakery products because it is completely devoid of distinctiveness, actually naming the product. The construction of “black with seed” possibly accompanied by a graphic element, is weak distinctive, alluding to the product. The word "Pegasus" is distinctive for bakery products and can be registered as a trademark for these. That does not mean that a new application for the trademark "Pegasus" can be rejected on lack of distinctiveness because OSIM found an identical earlier trademark and claims, wrongly, that this application does not allow "distinguishing goods or services of one person from those another person ". These things are part of the ABC examination of trademark applications.

Turning to the point 12 of the instruction, it is completely illegal that, by ambiguous construction using quoting of truncated law Articles, the examiners in OSIM to be obliged to violate the law. Rejection of a trademark application on the basis of an earlier mark cited in a research report that the law does not require, without having as base a decision after an opposition, is completely outside of the provisions of the trademarks law. And not only that, but this shows again the inexperience and ignorance of the mechanisms that actually govern the trademarks’ examination. Refusal of registration - based on the instruction’s provisions, thus invoking an earlier mark out the opposition procedure - is completely illegal and violates both the rights of the holder of the trademark previously registered and those of the applicant. Perhaps it is more difficult to understand, but as long as the law does not provide ex officio examination of relative grounds for refusal, OSIM has no right to use the trade mark registered against a trademark application and anytime can be sued for using a registered trademark without right. On the other hand, refusal of registration on the basis of the instruction’s provisions violates the applicant's right – conferred by law - to request proofs of use for the earlier trademark; in their absence the trademark application can be admitted. All these aspects require experience in the examination of trademark applications, experience that exists abundantly in OSIM, but was spurned the development of this instruction.

Point 13 of the instruction contains an organizational matter, which was, anyway, modified by a later administrative decision.

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