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New OHIM Fast Track Applications

OHIM (the registry responsible for Community trade marks) is now accepting trade mark applications under its new “Fast Track” system.

The system allows applicants to have their trade mark applications examined and published faster than under the standard process, provided that applicants comply with a number of conditions.

The most important conditions are:

  1. Applicants must pay the official application fees upfront;
  2. Applicants must select only goods and services which have been pre-approved by OHIM from a database supplied by OHIM;
  3. Applicants must be domiciled in the EU or have a valid representative which is domiciled in the EU;
  4. National search reports cannot be requested;
  5. The trade mark must be a word mark, figurative mark, sound mark or 3D mark.  It  cannot be a collective mark;
  6. A priority or seniority claim can only be made if the details are on the TMView database or supporting documentation is provided at the time of filing; and
  7. There can be no mark description or disclaimers.

Therefore, with straightforward applications, the examination process is being speeded up.  It remains to be seen how much time this will save, as applications in the standard process are normally accepted and published within a month or so of the application being made.  OHIM claim that an “application can be published in half of the time or less compared to regular applications”.

For some applicants, the new fast track will not be applicable.  This will include those applicants whose goods or services do not fit within the standard list of terms provided by OHIM or applicants who want specific carve outs in their specifications (perhaps to comply with the terms of a settlement or other commercial agreement).

Other changes

OHIM have also announced that they will no longer examine trade mark applications until payment of the application fee has been made.  Historically, OHIM has delayed taking payment for at least a month after an application has been filed, but has continued to examine most applications very quickly.  This practice has allowed some applicants to obtain an examination report before paying for their application and, if their mark has been refused by the registry, to quickly withdraw the application before payment is taken.   This effectively allowed certain applicants to test the waters with potentially objectionable marks at little or no cost.