News

The registration procedure carried out by the Community Office in Alicante has, until now, involved the carrying out of searches for conflicting marks both in the Community Office itself and in national offices in most member states of the Community. This month, that procedure is changing.

On applications filed after 10 March 2008, only the search of earlier Community marks will be carried out automatically; applicants who wish searches to be carried out in national offices will need to make a formal request on filing an application and pay an additional fee.

National search reports will only be available for 16 of the 27 members of the European Union. The following national offices will be conducting searches:

A request for national searches must be made in respect of all of the countries listed above, or none. It will not be possible to elect to have searches carried out in only some of the participating states.

France, Germany and Italy, all of which are likely to be commercially important to applicants, are continuing to opt out of the search procedure but they are now joined by the Benelux countries, Belgium, the Netherlands and Luxembourg. Where a new mark is to be adopted in those countries, separate freedom-to-use searches may be advisable.

Given the low cost of the national searches, they may, despite their geographical limitations, still be worthwhile as an inexpensive means to gain useful information in the territories covered. If you would like us to request that national searches be carried out, please let us know when you instruct us to file an application.

As part of the new search procedure, the content of national search reports is being harmonised. The new reports will list application, priority and registration dates, proprietor names and addresses, representations of the marks and the classes covered.

Important point for users of the Madrid System

Where the European Community is designated under the Madrid system, national searches must be requested and the fees paid directly to the Community Office irrespective of the office with which the Madrid application is lodged. The request must be made, and fees paid, within one month of the World Intellectual Property Office (WIPO) informing the Community office that it has been designated. In practice this deadline is likely to fall within a few weeks of the filing of the Madrid application.

We would recommend that the necessary steps be taken as soon as the international registration number is known and would be happy to handle this on your behalf at a cost of £65 over and above the fee payable to the Office (Euro 192).

If you would like more advice on searching in Community member states or help in requesting national searches in connection with designations of the Community in Madrid system applications, please ask your usual contact at Reddie & Grose or email This e-mail address is being protected from spam bots, you need JavaScript enabled to view it