New CTM Search System Launched

On 10 March 2008, the national searches conducted in respect of CTM applications became optional.

As of that date, applicants who want to receive the customary national search reports, which identify potentially conflicting marks in the 16 participating E.U. member states, must request them on filing and pay a fee. CTM search reports, for conflicting earlier CTMs, will continue to be issued for all applications.

The following national offices are conducting searches:

Austria, Bulgaria, Czech Republic, Denmark, Finland, Greece, Hungary, Ireland, Lithuania, Poland, Portugal, Romania, Slovak Republic, Spain, Sweden and the United Kingdom

The search fee is €192 and covers searches in all these countries.

The inability to search in some countries but not others is disappointing given the past disparities in the usefulness of different countries’ search reports. However, the new reports are expected to share a common format, which may resolve some of these concerns. The reports will provide application, priority and registration dates, holder name and contact details, representations of the marks and the classes claimed.

Making the national searches optional could hand a small costs advantage to applicants who do not need them, often because they have already searched in countries of actual commercial interest. However, the extent of the savings will not become apparent until the fee and the final number of participating countries are announced.

To date, some of the most commercially important countries, such as France, Germany and Italy, continue to refrain from searching. Moreover, the extent to which the new harmonised search reports will make up for the shortcomings of the old reports will not be clear until they begin to be issued.

For now, continued national searches are probably worthwhile as a low-cost means of obtaining basic information on third-party rights. Unless national searches have already been conducted, we therefore recommend including them in new CTMs until the system has been tried and its usefulness assessed.