Registration procedure and time-scale
Before being registered, a trade mark application goes through various stages. First, the application is examined by OHIM, to ensure that it satisfies a number of administrative and legal requirements, before proceeding to publication. Examination is the stage that OHIM is aiming at accelerating. It currently takes 8 to 11 weeks on average to examine an application, but OHIM aims at examining Fast Track applications in half this time. Publication is an important stage as it opens the beginning of the 3 months opposition period, during which third parties, such as other trade mark owners, can oppose your application if they have earlier conflicting rights.
If the entire process goes smoothly, a Fast Track trade mark application could now be registered within 4-5 months, which is very quick. However, if an opposition is filed against the application, registration will be delayed, whether or not the application was examined through the FastTrack route.
Is the Fast Track examination more expensive?
No, there are no additional official fees, but the fees must be paid at the time of filing to qualify for the Fast Track (whereas you have a month to pay the fees for a regular application, although examination will now not start until the fees have been paid).
Trade marks are protected for specific goods and / or services, which must be listed in the application, and define the scope of protection of the trade mark. The goods and / or services covered by the application must be selected from a pre-approved list in order to qualify for Fast Track examination. This will remove the risk of objections for unclear term but may cause difficulties when you wish to use industry specific terms which are not in the pre-approved list.
There are a number of additional conditions. For the full list of the conditions please visit OHIM.
Can an application drop off the ‘Fast Track’ route?
Yes, for instance if a document is missing, the fees not paid in time, or if the examiner raises an objection, because the mark is considered to be descriptive of the goods and /or services covered by the application.
What are the consequences if my application does not fulfill the Fast Track requirements?
If your application does not fulfill one of the above requirements, it simply means that it will be examined more slowly, but it will go through the same process.
OHIM implemented this new Fast Track examination procedure in order to increase its efficiency and save costs. From a user point of view, this new system will benefit applicants who may wish to see their application published more quickly for strategic reasons, and avoid objections from OHIM relating to the goods and services. However, in some cases, we would recommend applying through the regular route, depending on the circumstances. In any case, whether your application goes through the Fast Track or normal examination will not affect the level or scope of your protection.
For more information, do not hesitate to contact our trade mark team.