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Legal and organizational specificities of the European Union's office for harmonization in the internal market

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Abstract

The creation of the Community trademark (CTM) in 1993 was a true revolution in legal and economic terms. Given the supranational legal nature of this newly created trademark, it had to be followed by the establishment of a new agency of the European Union: the Office for Harmonization in the Internal Market (OHIM). Notwithstanding the fact that the EU has a remarkable network of various bodies, offices and other entities, the legal status of the newly created Office is not easily comparable with the majority of other agencies at the European level. The international success of the CTM, as well as the legal originality and the economic importance of the OHIM justify the study of its normative and organizational specificities. To this end, this paper will first focus on the legal basis and the practical consequences of Office's institutional position (Chapter 1 - OHIM as an autonomous institutional structure), before entering, in a second stage, in some legal aspects of its internal organization (Chapter 2 - Competencies of the OHIM's bodies).
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U Ć* UDC347.772(4-672EU)
340.137:347(4-672EU)
original scientific paper
LEGAL AND ORGANIZATIONAL SPECIFICITIES OF THE
EUROPEAN UNION’S OFFICE FOR HARMONIZATION
IN THE INTERNAL MARKET
The creation of the Community trademark (CTM) in 1993 was a true revo-
lution in legal and economic terms. Given the supranational legal nature of this
newly created trademark, it had to be followed by the establishment of a new
agency of the European Union: the Office for Harmonization in the Internal
Market (OHIM). Notwithstanding the fact that the EU has a remarkable network
of various bodies, offices and other entities, the legal status of the newly created
Office is not easily comparable with the majority of other agencies at the Euro-
pean level. The international success of the CTM, as well as the legal originality
and the economic importance of the OHIM justify the study of its normative and
organizational specificities. To this end, this paper will first focus on the legal
basis and the practical consequences of Office’s institutional position (Chapter
1 – OHIM as an autonomous institutional structure), before entering, in a second
stage, in some legal aspects of its internal organization (Chapter 2 – Competen-
cies of the OHIM’s bodies).
Key words: Office for harmonization in the internal market, trademark law,
European Union agencies, European Union law, community trademark
* Uroš Ćemalović, PhD, Assistant Professor, Faculty of Law, Public Administration and
Security, Megatrend University, Belgrade, e-mail: ucemalovic@megatrend.edu.rs
Uroš Ćemalović
Megatrend revija ~ Megatrend Review
264
Introduction
The Community trademark (CTM)1 is created in 1993, in order to ensure
the possibility2 of supranational and unique protection of this aspect of the
intellectual property in the European Union (EU)3. Even though some other
international organizations, like the World Intellectual Property Organization
(WIPO), can assure the international protection4 of various intellectual prop-
erty rights, the CTM was the first truly supranational trademark, with unique
effects in all EU’s Member States, established with the purpose to create legal
conditions “which enable undertakings to adapt their activities to the scale of the
Community, whether in manufacturing and distributing goods or in providing
services”5. This new legal, economic and political reality has also required the
introduction of a new institutional and procedural framework, whose function
is to ensure that the obtaining of CTMs is centralized, with uniform protection
and supranational effects. The Office for Harmonization in the Internal Market
(OHIM)6 is created to ensure the accomplishment of this complex and origi-
1 The Council Regulation (EC) No 40/94 of 20 December 1993, as well as the Council
Regulation (EC) No 207/2009 of 26 February 2009 are referring to “Community trade
mark” and not “trademark”. However, due to its widespread presence in theory, in this
article will be used the second term. See also: Dinwoodie B. Graeme, Janis D. Mark:
Trademark Law and Theory – A Handbook of Contemporary Research, Edward Elgar
Publishing Limited, Cheltenham 2008; Brookman L. Adam: Trademark Law – Protection,
Enforcement and Licensing, Wolters Kluwer, New York 2014; Beebe Barton: “The Semiotic
Analysis of Trademark Law”, University of California Law Review 51/2003, 621-640;
Bartholomew Mark: “Advertising and the Transformation of Trademark Law”, New
Mexico Law Review 38/2008, 1-48; Hu H. Robert: “International Legal Protection of
Trademarks in China”, Marquette Intellectual Property Law Review 1/2009, 71-99.
2 Of course, the national trademarks and national institutions for their protection contin-
ued to co-exists with the CTM.
3 Notwithstanding the fact that, according to the Lisbon Treaty (2009), the European
Community (EC) has ceased to exist and was replaced by the European Union, in this article
it will also be referred to the EC and European Economic Community (EEC). The reason
for this choice lies in the progressive establishment of the Common/Internal/Unique Market
and in the need to present the background for the creation of the CTM and the OHIM.
4 The protection of a Trade mark through WIPO is international only by its mean of obtain-
ing, but remains fully national by its legal nature: several national trademarks are obtained
by one international demand.
5 Recital 1 of the Council Regulation (EC) No 40/94 of 20 December 1993 on the Community
trademark, replaced by the recital 2 of the Council Regulation (EC) No 207/2009 of 26
February 2009. For the purposes of this article, all the quotations will be based on the
Regulation (EC) No 207/2009, while it will be referred to the Regulation (EC) No 40/94
only when it is necessary to explain certain historical aspects of the OHIM’s functioning.
6 It is interesting to note that the Council Regulation (EC) No 40/94 of 20 December 1993,
as well as the Council Regulation (EC) No 207/2009 of 26 February 2009 are referring
to “harmonisation” in OHIM’s name, while OHIM in all its official documents uses the
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nal mission. Even if the OHIM is not an international organization, in various
aspects in can be compared with certain regional or international organizations
having competencies in the field of the intellectual property, like the WIPO, or
the European Patent Organization. In order to put some more light on the speci-
ficity of the OHIM as an agency of the EU, it is first necessary to analyze the
legal basis and the practical consequences of its institutional position (Chapter 1
– OHIM as an autonomous institutional structure), before entering, in a second
stage, in some legal details of its internal organization (Chapter 2 – Competen-
cies of the OHIM’s bodies). Since the status of its staff is more closely linked to
the issue of the legal status of the Office as such, this issue will be treated in the
first chapter.
1. OHIM as an autonomous institutional structure
The administrative procedure for trademark registration by the national
authorities and its validity only in the context of an internal legal order imposed
geographical limits to the protection: the right conferred by a national trade-
mark is always a territorial monopoly. Therefore, the need to create and develop
the legal mechanisms in order to ensure an international trademark protec-
tion became even more evident in the context of the principle of territoriality
of industrial property rights. That is why the first international efforts, starting
with the Paris Convention singed in March 1883, aimed at creating intergovern-
mental arrangements to facilitate the protection of trademarks in several states.
The trademark has remained a territorial monopoly, but its international reg-
istration has become possible. In other words, for quite a long period, the eco-
nomic necessity of the development of cross-border trade have not questioned
the principle of territoriality. More than a century after the signature of the Paris
Convention was conceived the first genuinely supranational intellectual prop-
erty (IP) right: the Community trademark (CTM), created by the adoption of
the Council Regulation (EC) No 40/94. Even if the establishment of the CTM
was “the logical consequence of the European efforts in order to harmonize the
national legislations”7, the newly created trademark was a true revolution in legal
and economic terms.
The originality of the legal nature of IP rights is, in many aspects, similar
to the uniqueness of the project of economic and political integration that was
progressively established by the European Community/Union. Suffice is here
to highlight three crucial elements: the innovative capacity that was needed for
term “harmonization”; see, for example http://pmd.oami.europa.eu.edgesuite.net/Annual-
Report/FINAL/ohim/en/trademarks.html (15.10.2014.) In this article will be used the term
“harmonization”.
7 Gastinel Eric: La marque communautaire, LGDJ, Paris 1998, 7.
Uroš Ćemalović
Megatrend revija ~ Megatrend Review
266
their creation, the rapid evolution of both EEC/EC/EU8 and IP rights and, finally,
the difficulties they may cause in terms of classification. On the one hand, every
IP right shares all the basic characteristics of other property rights, but their
object is immaterial, intangible. On the other hand, the European Union has
become – throughout its numerous and profound changes that occurred during
more than a half of century that elapsed between the adoption of the Treaty of
Rome and the entry into force (2009) of the Lisbon Treaty – a political and legal
entity sui generis, halfway between an international organization and a quasi-
federal structure that shares sovereignty with its Member States. When the EU
started to make some important steps in IP regulation, all the solutions adopted
had to be original and unprecedented. Therefore, the creation of the CTM had
to be followed by the establishment of a new EU’s institution: the Office for Har-
monization in the Internal Market. This newly created body contributed to the
phenomenon some authors named “the proliferation of the number of actors in
what can be loosely termed the European administrative space”9.
Like the majority of international organizations with significant competen-
cies in the field of economy or international trade, the EC10 have had the power
to create different entities whose function was to contribute to the achievement
of its goals. Moreover, due to the fact that the European Court of Justice (after
the adoption of the Lisbon Treaty: Court of Justice of the European Union) has
progressively defined the fundamental principles of EC law, “the controversy
over the determination of the legal nature of the Community legal system (...)
largely faded11. The EU now disposes of an impressive network of various bod-
ies, offices and other entities, commonly referred to as “agencies”, often having
different legal status and responsibilities. However, their common point is that
they are “set up to perform specific tasks under EU law”12. The EU agencies are
grouped into four categories, which include decentralized agencies, executive
agencies, EURATOM agencies and bodies and European Institute for Innova-
tion and Technology. In October 2014, without taking into consideration the
executive agencies and the agencies created to support the aims of the European
Atomic Energy Community Treaty, their total number is 38. These entities are
8 See fotnote 2.
9 Curtin Deirdre: „Holding (Quasi-)Autonomous EU Administrative Actors to Public
Account”, European Law Journal Vol. 13, 4/2007, 523.
10 Ibid.
11 Blumann Claude, Dubouis Louis: Droit institutionnel de l’Union européenne, Litec, Paris,
2008, 416.
12 Agencies and other EU bodies, official website of the EU, http://europa.eu/about-eu/agen-
cies/index_en.htm (21.10.2014.)
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named as follows: agency13, body14, office15, authority16, centre17, foundation18,
institute19, college20, board21 or unit22. In this complex institutional forest, the
place of the OHIM seems to be guaranteed, despite the fact that it often lacks the
visibility. As it was underlined (by quoting the December 2008 issue of European
Voice) in the OHIM’s Annual Report for the same year, “The Office for Harmo-
nization in the Internal Market is not the best known of EU organizations, but it
is arguably one of the most successful”23. In addition, in the President’s introduc-
tion, opening the OHIM’s Annual Report for 2013, Antonio Campinos stressed
that “the Office made progress in a number of areas in 2013, staying on track to
meet the objectives set out in the Strategic Plan for 2011-201524. This progress
is, among other reasons, certainly due to the quality of the legal structure intro-
duced by the Regulation on the Community trademark; defining the OHIM as
an EU agency can only be a starting point in the study of its legal specificity.
13 Like, for example, the Agency for the Cooperation of Energy Regulators, the European
Agency for Safety and Health at Work or the European Aviation Safety Agency. In total,
there are 14 EU agencies that officially bear this name.
14 Only one name of an EU agency includes this term: the Body of European Regulators for
Electronic Communications.
15 Besides the OHIM, there are four other offices: the Community Plant Variety Office,
the European Asylum Support Office, the European Police Office and European Public
Prosecutor’s Office, still in preparation.
16 There are four “authorities” among EU agencies: the European Banking Authority, the
European Food Safety Authority, the European Insurance and Occupational Pensions
Authority and the European Securities and Markets Authority.
17 Among all EU agencies, there are four “centres”: the European Centre for Disease
Prevention and Control, the European Centre for the Development of Vocational Training,
the European Monitoring Centre for Drugs and Drug Addiction and the Translation
Centre for the Bodies of the European Union.
18 There are two EU agencies whose names include this term: the European Foundation
for the Improvement of Living and Working Conditions and the European Training
Foundation.
19 The European Institute for Gender Equality.
20 The European Police College.
21 The Single Resolution Board, still in preparation.
22 The European Union’s Judicial Cooperation Unit.
23 Official website of the OHIM, https://oami.europa.eu/ohimportal/en/annual-report
(21.10.2014.)
24 Official website of the OHIM, Annual Report for the year 2013, President’s Introduction,
http://pmd.oami.europa.eu.edgesuite.net/Annual-Report/FINAL/ohim/en/introduction.
html (21.10.2014.)
Uroš Ćemalović
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268
Despite the relative brevity of its introductory remarks25, the Council Regu-
lation (EC) No 207/2009 of 26 February 2009 on the Community trademark26
(hereinafter referred to as “Regulation”) dedicated to the OHIM three of its nine-
teen recitals. In addition, the entire Title XII (Articles 115 to 144) is exclusively
devoted to the administrative, financial and legal functioning of the agency of the
European Union responsible for registering trademarks and designs. The reason
for this approach is the fact that the new supranational industrial property right
required the establishment of a body responsible for its transnational registra-
tion, with precise competencies and structured internal organization. Therefore,
we will first analyze the general normative framework applicable to this unique
body, before examining in detail the various aspects related to the legal status
and the functioning of the OHIM. Starting from the observation that the new
trademark requires administrative measures “for implementing () the trade-
mark law created by this Regulation27, its 12th recital specifies that “it is there-
fore essential, while retaining the Communitys existing institutional structure
and balance of powers, to provide for an Office for Harmonization in the Inter-
nal Market (trademarks and designs) which is independent in relation to techni-
cal matters and has legal, administrative and financial autonomy”28. As a result,
a direct link between the new supranational IP right and the autonomous body
responsible for its obtaining is already established. Furthermore, mentioning the
new body in the context of the “Community’s existing institutional structure
and balance of powers” shows that the newly created Office will have the legal
status not easily comparable with the majority of other agencies at the European
level. In order to preserve its independence, the OHIM “should be a body of the
Community having legal personality and exercising the implementing powers
() and that it should operate within the framework of Community law without
detracting from the competencies exercised by the Community institutions”29.
This statement has a dual function: first, it announces the legal status of the
Office, which will be developed in detail by the provisions of Articles 115 to 123
of the Regulation; secondly, it puts the OHIM in a larger European institutional
25 The Council Regulation (EC) No 207/2009 of 26 February 2009 has 19 recitals and 167
articles, devoting about 5% of the text to the introductory remarks. On the other hand, the
Directive 2008/95/CE of the European Parliament and of the Council of 22 October 2008
to approximate the laws of the Member States relating to trade marks contains 14 recitals
and 19 articles, dedicating approximately 20% of its text to the non-normative part.
26 Recital 1 of the Council Regulation (EC) No 207/2009 of 26 February 2009 specifies that,
because “the Council Regulation (EC) No 40/94 of 20 December 1993 on the Community
trade mark has been substantially amended several times (…) in the interests of clarity
and rationality the said Regulation should be codified”. See also footnote 4.
27 Recital 12 of the Council Regulation (EC) No 207/2009.
28 Ibid.
29 Ibid.
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context, especially regarding the legal protection against its decisions, but also
concerning the auditing of its accounts.
The Article 115 of the Regulation defines the Office as “a body of the Com-
munity” having the legal personality. Moreover, “in each of the Member States
the Office shall enjoy the most extensive legal capacity accorded to legal per-
sons under their laws; it may, in particular, acquire or dispose of movable and
immovable property and may be a party to legal proceedings”. It is interesting
to note that, thus defined, the legal capacity of the OHIM is much greater than
the legal capacity enjoyed by the European Union before the entry into force
(December 1, 2009) of the Lisbon Treaty. As regards OHIM’s contractual lia-
bility, it is “governed by the law applicable to the contract in question30, while
“in the case of non-contractual liability, the Office shall, in accordance with the
general principles common to the laws of the Member States, make good any
damage caused by its departments or by its servants in the performance of their
duties”31. Given that, in the current state of the European Union’s legal system,
there is no unified EU contract law, the Regulation allows a wide application of
the national legal provisions, without losing the intention to seek for their lowest
common denominator.
Concerning the employees of the OHIM in a broad sense, their legal status
is defined both by the rules of the Staff Regulations of officials of the European
Union (for general issues, as specified by the Article 116 of the Regulation) and
by certain special rules required by their independence and special skills. For
example, the Article 136, paragraph 4 of the Regulation specifies that “the Presi-
dent of the Boards of Appeal and the chairmen and members of the Boards of
Appeal () in their decisions () shall not be bound by any instructions”, which
means they are not supposed to seek or receive instructions from any authority
or person, especially if it belongs to any Member State institution or body. In
this respect, their status was, mutatis mutandis, comparable to that of members
of the European Commission, for whom the ex-Article 213, paragraph 2 of the
Treaty establishing the European Community32 specified that “in the perfor-
mance of these duties, they shall neither seek nor take instructions from any
government or from any other body”. In addition, the members of the Boards
of Appeal “may not be removed from office unless there are serious grounds for
such removal and the Court of Justice, after the case has been referred to it by the
Administrative Board on the recommendation of the President of the Boards of
Appeal, after consulting the chairman of the Board to which the member con-
30 Article 118, paragraph 1 of the Council Regulation (EC) No 207/2009.
31 Article 118, paragraph 3 of the Council Regulation (EC) No 207/2009.
32 It is interesting to note that the Article 245 of the Treaty on the Functioning of the European
Union considerably reformulated the provision of ex-Article 213. The level of independence
is now formulated in more general terms, given that “Member States shall respect their
independence and shall not seek to influence them in the performance of their tasks”.
Uroš Ćemalović
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270
cerned belongs, takes a decision to this effect33. The role of the Court of Justice
in the removal of certain OHIM officials clearly shows that the level of their
independence is incommensurate with the position of the employees of other EU
agencies.
In financial and organizational matters, the OHIM’s independence is con-
siderable, but it has certain limitations. The various decisions of its bodies –
those concerning the CTM registration process, as well as decisions relating to
the establishment and implementation of the budget – are subject to judicial or
financial control34. Consequently, the necessity “to ensure that parties who are
affected by decisions made by the Office are protected by the law in a manner
which is suited to the special character of trademark law”35 imposed the exis-
tence of “an appeal to lie from decisions of the examiners and of the various
divisions of the Office”36. The first instance of appeal against those decisions
is within OHIM itself – the Board of Appeal of the Office. Subsequently, the
decisions of this Board are “amenable to actions before the Court of Justice ()
which has jurisdiction to annul or to alter the contested decision”37. Therefore,
the EU law related to the CTM largely consists of the interpretation of the pro-
visions of the Regulation by the Court of Justice, while the judicial role of the
OHIM remains significant. With regard to the control of the OHIM’s financial
functioning, the EU legislature predicted, without naming or prioritizing them,
three modalities of its verification. It is, however, clear that there is some degree
of difference between them, especially because, “as far as is compatible with the
particular nature of the Office, the financial provisions shall be based on the
financial regulations adopted for other bodies set up by the Community”38. On
the one hand, the internal element of the financial control is the creation of an
audit function, placed under the authority of the President of the Office, whose
mission is to undertake the technical and procedural execution of the OHIM’s
budget. On the other hand, the modalities for establishment and implementa-
tion of the budget are specified by the Budget Committee, Office’s internal body,
while the adoption of these rules is subject to the Commissions and the Court
of Auditors’ favorable opinion. The third level of the control – placed completely
outside the institution itself – is the audit performed by the Court of Auditors,
whose role is to examine the accounts of the Office’s total revenue and expendi-
ture. Even if the nature of this auditing makes OHIM comparable to any other
33 Article 136, paragraph 1 of the Council Regulation (EC) No 207/2009.
34 The judicial control is of particular importance for the existence of the Community trade-
mark, given the fact that the interpretation of the Court of Justice of the EU contributes to
the creation of unified EU trademark law.
35 Recital 13 of the Council Regulation (EC) No 207/2009.
36 Ibid.
37 Ibid.
38 Article 143 of the Council Regulation (EC) No 207/2009.
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EU agency, one major difference allows it to keep operational and functional
autonomy: “an autonomous budget whose revenue comes principally from fees
paid by the users of the system”39. The overall autonomy of the OHIM’s institu-
tional structure seems to be guaranteed by the normative context relative to the
Community trademark, which remains, with more than 114.000 applications in
201340, very popular in EU’s business community. In the future, the institutional
position of the Office will remain dependent of the success of EU’s single market
and its capacity to overcome the global economic crisis.
2. Competencies of the OHIM’s bodies
Like any other EU’s administrative entity having legal personality and oper-
ational autonomy, the OHIM has management structures globally comparable
to those existing in other EU agencies. However, the specificity of its mission
and the role it has in trademark registration make the Office comparable to the
national authorities, existing in each of the 28 EU Member States, competent for
the IP protection. However, “initially hesitant, the European Union has gradu-
ally become interested in intellectual property and adopted a variety of legisla-
tive acts, which were subsequently supplemented by numerous decisions of the
Court of Justice of the European Union”41, to the extent that EU law “has become
the main source of influence on the national laws”42. Consequently, the nature
of the OHIM’s bodies and their competencies will be analyzed without reference
to the existing national authorities, given the fact that the CTM has suprana-
tional effects and that its registration is centralized. It is, therefore, first neces-
sary to examine in detail the entities of the Office competent “for taking deci-
sions in connection with the procedures laid down”43 in the Council Regulation
207/2009; secondly, the attention should be paid to the OHIM’s administrative
bodies in a strict sense.
Article 130 of the Regulation sets out an exhaustive list of various existing
entities or organs within the Office whose function is exclusively linked to the
implementation of the procedures for registration of CTMs: examiners, Opposi-
tion Divisions, Administration of Trademarks and Legal Division, Cancellation
Divisions and Boards of Appeal. However, the term “instance” could be used
39
Recital 18 of the Council Regulation (EC) No 207/2009.
40 Official website of the OHIM, Annual Report for the year 2013, Volumes – Trademarks,
http://pmd.oami.europa.eu.edgesuite.net/Annual-Report/FINAL/ohim/en/trademarks.
html (24.10.2014.)
41 Geiger Cristophe: Constructing European Intellectual Property – Achievements and New
Perspectives, Edward Elgar Publishing Limited, Cheltenham, 2013, 5.
42 Ibid.
43 Article 130 of the Council Regulation (EC) No 207/2009.
Uroš Ćemalović
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272
for the first entity mentioned by Article 130, for at least two reasons: “examin-
ers” cannot be considered as a typical body or organ, given that this denomina-
tion is chosen for being the most appropriate in order to legally designate all
the employees of the Office that have the same role and competencies in the
implementation of registration procedures; secondly, examiners are also the first
instance, in the strictly procedural sense, in the process that starts with CTM
application and ends once all conditions for its registration are met. Moreover,
the analysis of the Regulation’s drafting technique related to the definition of
examiners’ prerogatives clearly shows that they have a general competence,
given that they are “responsible for taking decisions on behalf of the Office (…)
except in so far as an Opposition Division is responsible”44. In other words, in
the absence of an opposition, all the decisions taken in the context of the pro-
cess starting with CTM application are made by the examiners, who are, in this
case, the only entity within the Office to have participated in the process of the
registration of this supranational trademark. As one important procedural pro-
vision specifies, “where an application meets the requirements of this Regulation
and where no notice of opposition has been given within the period referred to
in Article 41(1) or where opposition has been rejected by a definitive decision,
the trade mark shall be registered as a Community trade mark45. Therefore,
the power in the hands of the examiners is considerable, which requires an effi-
cient legal and organizational framework in order to ensure the effective appeal
against their decisions.
Since the decisions in the context of examination of 1) the conditions for
application and 2) the absolute grounds for refusal determine whether the CTM
will be registered or not, the opportunity to appeal against them represents a
guarantee of OHIM’s fair and efficient functioning. Additionally, from the point
of view of an economic operator wanting to register a CTM, it is also the most
visible part of the OHIM’s work, especially given the fact that after the filing of
the CTM application, the examiner’s decision represents the first contact of the
user with the services of the Office. As it was emphasized in one of its Annual
Reports, “maintaining quality in CTM and opposition decisions continued to
be a major Office priority”46 and, to this end “in recent years increased efforts
have been made to ensure that the measurement and improvement of the qual-
ity of decisions is more systematic and transparent both within the Office and
to the outside world”47. However, the effectiveness of these efforts also depends
on the rules intended to ensure the impartiality and the independence of the
examiners. On the one hand, the position of an examiner is incompatible with
44 Article 131 of the Council Regulation (EC) No 207/2009.
45 Article 45 of the Council Regulation (EC) No 207/2009.
46 OHIM Annual Report 2008, p. 7, https://oami.europa.eu/ohimportal/en/annual-report
(27.10.2014.)
47 Ibid.
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the exercise of other functions within the OHIM’s decision-making bodies hav-
ing a role in the CTM registration procedure; therefore, “the President of the
Boards of Appeal and the chairmen and members of the Boards of Appeal may
not be examiners”48. This rule ensures the independence of the Board members,
but also reinforces, in an indirect way, the examiners’ position, ensuring a dif-
ferent composition of the two bodies. On the other hand, the impartiality of the
examiners is ensured by the provision specifying that they “may not take part
in any proceedings if they have any personal interest therein, or if they have
previously been involved as representatives of one of the parties”49. Moreover,
the exclusion of an examiner may be requested only if suspected of partiality,
but the objection “shall not be admissible if, while being aware of a reason for
objection, the party has taken a procedural step”50. However, the nationality of
the examiner may not be invoked as a ground for exclusion, even if she/he is a
national of the same Member State as one of the parties. The status of OHIM
staff generally requires the independence from all national governmental bod-
ies, including those involving the State of which they are nationals. As Martin
Groenleer rightly remarked, “cultivating a distinct loyalty to the organization
() may serve as a means of shifting staff’s loyalty to the supranational organi-
zation (instead of to their professional group or their national jurisdiction) and
thus enhance the agency’s autonomy”51. At the end of 2013, the OHIM had a
total of 925 employees52 with numerous different nationalities. An organization
with such a linguistic and cultural richness of its staff cannot allow this diversity
to be the victim of divergent national influences.
As for the other organs of the OHIM that can be involved in the process of
CTM registration, Opposition and Cancellation Divisions and Boards of Appeal
are among the most important for functioning of the Office as EU agency. In
this context, every decision about the opposition to CTM application is made by
the Opposition Division consisting of three members, of which at least one has
to be a lawyer. Moreover, proceedings before the Division is not public, but its
decisions are published. One of the greatest difficulties in the operation of the
Office is the constant increase of the received oppositions and the accumulation
of unsolved cases. As highlights OHIM’s Annual Report for 2013, “the rate of
oppositions against published CTMs has remained broadly stable over the past
48 Article 136, paragraph 5 of the Council Regulation (EC) No 207/2009.
49 Article 137, paragraph 1 of the Council Regulation (EC) No 207/2009.
50 Article 137, paragraph 3 of the Council Regulation (EC) No 207/2009.
51 Groenleer Martijn: The Autonomy of European Union Agencies – A Comparative Study of
Institutional Development, Uitgeverij Eburon, Delft 2009, 50.
52 Official website of the OHIM, Annual Report for the year 2013, HR Reform and Finance,
http://pmd.oami.europa.eu.edgesuite.net/Annual-Report/FINAL/ohim/en/introduction.
html (27.10.2014.)
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274
three years at around 16-17%, with just over 17 000 filed during 201353, while
“opposition e-filing has continued to grow steadily, reaching 46% of the total54.
Accordingly, the Office has set up a research group specialized in opposition
and one can only hope a significant reduction in the duration of the proceedings
before this instance.
The Cancellation Divisions are responsible “for taking decisions in relation
to an application for the revocation or declaration of invalidity”55 of a CTM.
Their composition and decision-making procedure and are subject to the rules
similar to those applicable to the Opposition Divisions: they have three members
(at least one should be a lawyer), while only “in certain specific cases provided
for in the Implementing Regulation, the decisions shall be taken by a single
member” (identical provisions of Articles 132 and 134 of the Regulation). It is
important to note that during 2013 “cancellation requests rose to just under 1
400, which is 10% more than the previous year”56, but “when measured against
the total number of CTMs, cancellations have remained constant over recent
years at less than 0.2% of the Register”57. This percentage shows that the num-
ber of cancelation request depends almost exclusively on the quantity of CTM
applications. Moreover, the operators demanding the cancellation are often well
prepared, allowing to the Office to have greater efficiency in decision-making.
As regards the Administration of Trademarks and Legal Division, it primar-
ily has a residual jurisdiction, given that it is “responsible for those decisions
required by this Regulation which do not fall within the competence of an exam-
iner, an Opposition Division or a Cancellation Division”58. Secondly, this Divi-
sion is exclusively competent for decisions in respect of entries in the Register of
CTMs and for keeping the list of professional representatives before the OHIM.
Given the fact that the workload of this body is relatively small compared to that
of the Opposition and Cancellation Divisions, there is only one Administration
of Trademarks and Legal Division. In addition, the nature of its responsibilities
allows that the decisions are taken by a single member.
Finally, the Board of Appeal is a joint instance of appeal against the decisions
of four other OHIM’s bodies involved in the CTM registration procedures. This
Board can make decisions in one of three possible formations: the “classical”
53 Official website of the OHIM, Annual Report for the year 2013, Trademarks, http://
pmd.oami.europa.eu.edgesuite.net/Annual-Report/FINAL/ohim/en/trademarks.html
(29.10.2014.)
54 Ibid.
55 Article 134, paragraph 1 of the Council Regulation (EC) No 207/2009.
56 Official website of the OHIM, Annual Report for the year 2013, Trademarks, http://
pmd.oami.europa.eu.edgesuite.net/Annual-Report/FINAL/ohim/en/trademarks.html
(29.10.2014.)
57 Ibid.
58 Article 133, paragraph 1 of the Council Regulation (EC) No 207/2009.
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chamber of three members, enlarged or, exceptionally, single-member chamber,
if the Board handling the case decides to confer it because of the “lack of dif-
ficulty of the legal or factual matters raised, the limited importance of the indi-
vidual case or the absence of other specific circumstances”59. Any party wishing
to attack, before the EU’s judicial authorities, the decision of an examiner or a
Division, must first address to the Board of Appeal. Unlike most national courts,
when the Court of Justice of the EU is competent for an appeal against a decision
of OHIM’s Board of Appeal, it may annul, but also alter the contested decision.
Despite the fact that – both in their mode of operation as well as concerning
the rules governing their composition – all the bodies of the Office involved in
the CTM registration process are supranational, the same conclusion, unfortu-
nately, cannot be brought when it is about OHIM’s administrative organs in a
strict sense. Although its operational management is the responsibility of the
President, the fact remains that it is appointed by the Council, which consists
of one representative from each EU’s Member State. However, the Council’s
somewhat inter-governmental modus operandi does not influence the inherently
supranational mission of the Office, and that for at least two reasons: firstly,
the OHIM’s Administrative Board takes its decisions by a simple majority; sec-
ondly, its real influence on the functioning of other departments of OHIM is
relatively low, while the effective management is in the hands of the director. An
EU agency with growing efficiency and a Community trademark enjoying inter-
national popularity would hardly be imaginable without the strong component
of supranational governance within the Office.
59 Article 135, paragraph 5 of the Council Regulation (EC) No 207/2009.
Uroš Ćemalović
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Paper received: October 31st, 2014 Rad primljen: 31. oktobar 2014.
Approved for publication: November 17th, 2014 Odobren za štampu: 17. novembar 2014.
Vol. 11, No 4, 2014: 263-278
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Doc. dr Uroš Ćemalović,
Fakultet za pravo, javnu upravu i bezbednost
Megatrend Univerzitet, Beograd
PRAVNE I ORGANIZACIONE SPECIFIČNOSTI
KANCELARIJE EVROPSKE UNIJE ZA HARMONIZACIJU
NA UNUTRAŠNJEM TRŽIŠTU
S a ž e t a k
Stvaranje komunitarnog žiga je predstavljalo istinsku revoluciju u pravnom i ekonomskom
smislu. Imajući u vidu nadnacionalnu pravnu prirodu novostvorenog žiga, bilo je neophodno
da njegov nastanak bude praćen uspostavljanjem nove agencije Evropske unije: Kancelarije za
harmonizaciju na unutrašnjem tržištu (KHUT). Međutim, i pored činjenice da EU raspolaže
značajnom mrežom različitih tela, centara i drugih organizacija, novostvorena Kancelarija ima
pravni status koji nije lako uporediv sa većinom drugih agencija na nivou Unije. Međunarodni
uspeh komunitarnog žiga, kao i pravna jedinstvenost i ekonomski značaj KHUT opravda-
vaju izučavanje njenih normativnih i organizacionih specifičnosti. Kako bi se odgovorilo tako
postavljenom cilju, ovaj rad će se prvo posvetiti pravnoj osnovi i praktičnim posledicama insti-
tucionalnog položaja Kancelarije (poglavlje 1 – KHUT kao autonomna institucionalna struk-
tura), da bi se potom usredsredio na pravne aspekte njene unutrašnje organizacije (poglavlje
2 – Nadležnosti tela u sastavu Kancelarije).
Ključne reči: kancelarija za harmonizaciju na unutrašnjem tržištu, žigovno pravo, agen-
cije Evropske unije, pravo Evropske unije, komunitarni žig
ResearchGate has not been able to resolve any citations for this publication.
Article
Full-text available
Despite the presence of a vigorous debate over the proper scope of trademark protection, scholars have largely ignored study of trademark law's origins. It would be a mistake, however, to ignore the history behind trademark law. Scrutiny of the formative era in American trademark law yields two important conclusions. First, courts granted robust legal protection to trademark holders in the early twentieth century because they accepted the benign view of advertising presented to them by advertisers. As advertising became linked to cultural progress and social cohesion, courts adopted doctrinal revisions to protect advertising's value that remain embedded in modern trademark law. Second, judges adopted a specific construction of the consumer mind in the early 1900s to reconcile the tension between legal protection for trademark goodwill and belief in free competition. They concluded that although advertising successfully generates positive thoughts in consumers' heads, consumers will switch their trademark allegiances when presented with a better quality product from a competitor. In other words, the mark left by advertising is not permanent. Recent research in cognitive psychology suggests, however, that advertising does leave a permanent mark on its audience. Based on new insights into the involuntary functioning of the consumer mind, the Article suggests that trademark doctrine should be altered to avoid privileging marks that are already popular with consumers and are unlikely to ever lose their luster in our subconscious.