New Rules for CTM Oppositions

OHIM has introduced new CTM opposition procedures, effective from 17 September 2007.

Swifter decisions may follow, but stiffer penalties also loom for parties who fall foul of rules requiring non-faxed evidence to be filed in duplicate. The new framework further emphasises the need to notify OHIM of agreed costs arrangements at the time an opposition or opposed application is withdrawn.

The main changes are:

• Oppositions will no longer be delayed as a result of partial deficiencies, such as a failure adequately to identify all pleaded prior rights. If at least one earlier right is made out, OHIM will start the time limits running and allow opponents to remedy the deficiencies by the deadline for their observations.

• For admissibility, an opponent now need only indicate the classes covered by an earlier right. The actual goods and services must be identified, however, within the normal term for filing the opponent’s observations.

• Where oppositions are settled, costs decisions will issue immediately on OHIM’s confirmation of the withdrawal of an opposition or application. Agreed costs arrangements should be notified to OHIM at the time of withdrawal to avoid costs decisions.

• Where oppositions are suspended, any joint request to extend the suspension will now be granted automatically for 12 months. As with cooling-off terms, either party may bring the suspension to an end at any time, however. It is expected that further 12-month suspension terms will be granted if sought.

• Documents and evidence filed in hard copy will be rejected unless filed in duplicate before expiry of the term for filing the documents or evidence. This does not apply to documents or evidence submitted by fax.

Parties should benefit from the streamlined structure, but time will tell whether the severe penalties on parties who fail to file non-faxed evidence in duplicate will be upheld if reviewed on appeal.

The new costs procedure already applies in practice to cancellation proceedings, but the remaining changes are not yet planned for extension. However, requests for longer suspensions are likely to be considered favourably in cancellations since such proceedings do not have a built-in cooling-off period.

The changes are set out in OHIM’s Presidential Communication No. 5/07.