Point 8 of the instruction following
content:
"In the application of Article 5,
paragraph 1, letters i) and m) of the Law, are not published those trademarks
that contain elements or which in their entirety, are manifestly contrary
to public order or morality, or are containing signs with high symbolic or
religious value or racial discrimination. Publication will be stopped by a note
from the Legal Division and will be notified to the applicant, in writing and
motivated."
This provision is completely outside of the
law and implementing regulation, which do not contain any provision as a ground
for stopping of publication. This is further
aggravating by the fact that the publication procedure, according to the law,
has some consequences which makes the whole registration procedure of the
trademark application highly questionable.
A parenthesis has to be made. The point 8
of the instruction highlights a serious issue of the trademarks law, which has
its origin in the same lack of correlation of the provisions in the old law with
amendments made in 2010. Firstly, it is important to note that the old
trademark law did not contain any provisions regarding the publication of the
trademark applications, but only for the registered trademarks, for which the
publication was made after the decision of registration. The serious error in
the new trademarks law is that it obliges OSIM to publish the trademark
applications before the examination - meaning the examination of absolute
grounds for refusal stated in the law. And from here, obviously, start other
unfortunate consequences, namely publishing the application before giving it
the required validity, i.e. without the examination fee paid, payment that in
fact represents the proof of a real intention to obtain a trademark
registration.
It is important to note that the
publication of an application marks its entry into a period of provisional
protection. This provisional protection gives to the applicant similar rights
with the ones of a trademark holder. Given that currently OSIM publishes the
trademark applications only after a formal examination and without any
substantive examination, I think it is obvious what consequences this may have,
how many abuses can occur in this case.
In this respect, it has been submitted to
the management of OSIM, starting with February 2011, some proposals to amend
the trademarks law by Government Ordinance, which were completely ignored.
It is impossible to understand why it was
chosen an illegal way to modify a law, in a completely useless issue (the applications
which really should be not publish being about 0.002% per year or less, from
the total number of applications), and was refused the normal and necessary
modifications of the trademarks law in a legal manner, which would solve many
important problems of the trademarks law, including that one with “embarrassing” or “profanity”
trademarks applications. More than that, even the trademark low in force
contains solutions for this issue and this abuse was not necessary.
