Opting out of Community trade mark search system

The United Kingdom, Ireland, Portugal and Sweden opt out of the Community trade mark search system

From 1 January 2009, the Community trade mark search system has changed and the United Kingdom, Ireland, Portugal and Sweden have ceased to carry out searches of their own registers for trade marks which might conflict with applications for Community trade marks (CTMs).

Previously, an applicant could request a search of 16 national offices within the European Union via the Office for Harmonization in the Internal Market (OHIM) (the office that manages Community trade marks within the European Union) for a fee of €192. Now, if an applicant ticks "National searches requested" on the CTM application form, searches will only be carried out by the remaining 12 national offices (Austria, Bulgaria, Czech Republic, Denmark, Finland, Greece, Hungary, Lithuania, Poland, Romania, Slovak Republic and Spain).

In view of this opt out, the fee for national search requests has been reduced from €192 to €144.

OHIM will, however, continue to search for conflicting existing CTMs and will notify proprietors of existing CTMs to any potentially conflicting new CTM application.

This change means that owners of CTM applications who wish to be aware of potential conflicts with existing national trade marks anywhere in the European Union will need to arrange for their own clearance searches to cover those countries that have opted out, in addition to any search that is done through OHIM. This will increase the cost for applicants.

In reality, however, the impact of this new change is likely to be minimal as prior to 1 January 2009, few applicants requested national searches and following the recent changes, it is likely that fewer still will use the search system.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the
accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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