Community Trade Mark - Fast Tracking Your Application

October 2014

The Community Trade Mark Office (‘OHIM’) have announced a new option for applicants wishing to “Fast Track” their Community Trade Mark applications.

The procedure, available from 24th November 2014, promises to result in applications being published more quickly and at no extra cost compared to ‘standard’ applications. For an application to enter and remain in the Fast Track, applicants must ensure that their application covers goods and services which use OHIM’s accepted classification terms. Additionally, the application fee must be paid at the time of application.  It is still possible to delay paying the fee for one month, although ultimately this will be removed with a new European Trade Mark Directive coming into force in the medium term.

OHIM are hailing this new procedure as an illustration of their attempts to increase efficiency in the Community Trade Mark system and it is another example of OHIM’s recent ‘process driven’ amendments.

OHIM have devised a “five-step” application form which has mandatory fields and default options that ensure an application can be processed as swiftly as possible.  The form shows when an application is a Fast Track one and when it is not.  If an application does not fulfil any of the Fast Track conditions, the form will flag this up.  

An application will enter the Fast Track system by default provided the requirements are met and examination of the application will start straight away.  Although some applications may comply with the conditions of Fast Track at the time of filing, they may lose their Fast Track status later on.  This can result from a deficiency found during examination, for example, like the fact that the trade mark applied for is not distinctive enough, or other deficiencies.

However, the Fast Track may not be as straightforward or attractive as promoted to all applicants. The system potentially will not be available to applications claiming priority from foreign applications which do not use standard OHIM classification terms or presumably designations under the International Trade Mark System which do not use such terms within their specification.  Further, many specifications which are more crafted to reflect the applicants actual use of the trade mark or to avoid potentially conflicting rights again may not fit OHIM’s standard accepted classification terms.

Applicants are still entitled to wait until one month has elapsed before they pay for their application, but OHIM has announced in tandem with the Fast Track system that examiners will deal with the applications and their related communications only when they have been paid for.  This amendment is designed to prevent a practice which has developed of ‘testing the water’ with regards borderline non-distinctive terms before OHIM and obtaining an examination report and then not paying the fee in response to an adverse report.

Of course, whether or not the Fast Track process will result in significant faster turn-around times remains to be seen.  With the most straight forward Community Trade Mark applications having a relatively quick time frame to grant, a month or two of time saved may not be overly advantageous.  Furthermore, there may be clients that simply do not wish to fast track their applications for strategic reasons, so wish to avoid complying with the Fast Track requirements on filing.

However, the new Fast Track system may be attractive to many applicants and potentially pushes particularly larger clients to the formulation of agreed ‘standard’ specifications containing OHIM acceptable terms enabling the Community Trade Mark application process to be speeded up at no additional cost.

If you would like to discuss Fast Tracking your Community Trade Mark applications further, please contact Lee Curtis, or your usual HGF representative or visit our Contact Page to get in touch with your nearest HGF office.