joi, 29 mai 2014

... and point 14 of the "October Instruction", in order to reach the end of these presentations sooner!

Point 14 of the instruction contains the following text:

In the case of an opposition for a trademark application, this will be analysed without being subject to the payment of examination fees for the trademark application, following that the decision taking regarding  the opposition to be done in due time.
All proceedings shall be conducted within legally established time limits, usually within 6 months from the publication of the regular filing, so that the decisions concerning the trademark application to be made expeditiously.

It is true that on this narrow issue, namely the moment for starting examination of the oppositions filed against a trademark application, there are no express legal provisions. But that does not mean that appropriate solutions do not exist. In any case not those presented in the first sentence of point 14 of the instruction, because this solution facilitates fraud in the registration of trademarks and in no way respects the spirit of the trademark law.

It will be easily understood by an example. Suppose there is a registered trademark "PREVENT" for several classes of goods and services. Locally, this trademark enjoys a certain reputation and draws interest not only to consumers, but also to other "entrepreneurs". One of the last files a trademark application for the figurative trademark "PREVENTE" for all the 45 classes in the Nice Classification. The cost of this operation, according to the Service Instruction no 5/2012, which, against the trademark law, eliminates the publication fee as a regular filing condition, is only 36 lei (Romanian currency, equivalent with less than 10 Euro). To be noticed, no publication fee (according with point 10 of the instruction), no examination fee required! This means that the application is already published and therefore entered in a temporary provisional protection, which gives to the applicant almost the same rights as for an owner. “The entrepreneur” has already started to notify the supermarkets where products bearing the trademark "PREVENT" are sold, threatening retailers with action in the court for counterfeiting, which is perfectly possible, according with article 37 of the trademarks law. The simplest way to avoid any problems with the police or judge is to put away the goods with the trademark involved in this trouble. And this moment is the beginning of losing money! For everybody, less “the entrepreneur”! According to the instruction, OSIM will not reject “ex officio” the application at hand because there is neither identity of signs, nor goods and services and the opposition remains the only path for the owner of the earlier trademark to defend himself. Accordingly, he has to pay 4,968 lei (around 1.400 Euro, see OG 41/1998, republished, Appendix 4, section 13), is about 140 times more than "the entrepreneur" paid for creating this situation. And now are intervening the provisions of point 14 of the instruction which required the examiner to consider the opposition without waiting for "the entrepreneur" to pay the examination fee. The result: the holder of the previously registered trademark is losing 4,968 lei (not mentioning the representative expenses) even if the trademark application will be rejected for failure to pay the examination fee. Add also in his account the losses on sale during this whole period. Against a "benevolent proposal" of 3,000 lei for withdrawal of his trademark application or even sale, thus eliminating opposition fee, plus representative expenses, plus losses in sale, what will make the owner of the earlier trademark? This scenario was not invented by me, it happened. A solution for this kind of “applications” and “applicants” would be the request of the examination fee in the moment of filing, solution which were proposed in 2011, but ignored by the management.

The logical solution, normal, in the spirit of the trademarks law is not the one given by the point 14 of the instruction. The law envisages, in opposition proceedings, two sides equal in rights, and these rights must be both VALID, earlier trademark which is opposed and the trademark application. Based on the principle of symmetry, if the opposition can be suspended until the earlier right invoked becomes valid (see article 20(3) of the trademark law), so the same should apply for the trademark application involved in opposition and analysis should not begin unless the examination fee is paid, in which case the trademark application becomes valid as part of the opposition proceedings. Returning to the previous example, if the trademark application was filed in good faith then "the entrepreneur" should pay the examination fee in the amount of 8.316 lei (see O no. 41/1998 , republished , Annex 4, section 3). Perhaps the statement from the registration application form, obligatory by point 17 of the instruction, will make him to do so!

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.