How Many Conversions are There?

The reinvigorated blog today has a guest post from distinguished Northern Trade Mark Attorney, Sally Cooper who has been pondering Conversions:

   We are not talking about currency conversions or faith-to-faith conversions or even kicks-that-score-three-points in the game of rugby union.

   No – the concern is Article 108 of the Community Trade Mark Regulation ("CTMR") which begins " The applicant for or proprietor of a Community trade mark may request the conversion of his Community trade mark application or Community trade mark into a national trade mark application …… ".

   Linked to this are :

(1) Article 109(2) CTMR which sets out " If the Community trade mark application has been published, receipt of any such request shall be recorded in the Register of Community trade marks and the request for conversion shall be published " and

(2) (in the UK) Regulation 10(2) of the Community Trade Mark Regulations 2006 [SI2006/1027] …… which sets out : " … where the request [for conversion] has been transmitted [by OHIM] it shall be treated as an application for registration of a trade mark under the [Trade Marks Act 1994] " which brings into play section 38(1) Trade Marks Act 1994 : " when application for registration has been accepted, the registrar shall cause the application to be published in the prescribed manner ".

   This writer has come across two instances of conversions being recorded on the OHIM Register and on the UK Register :

(1) EU Trade Mark Application 8321382 has a filing date of 26th May 2009 : the record notes " Application withdrawn " and " Conversion " with only the UK as country designated : the mark went on to become  UK Trade Mark Registration 2559508 which has a filing date of 26th May 2009 (corresponding to date on the OHIM Register) and a section noting " Converted trade mark details "

(2) EU Trade Mark Application 7414361 has a filing date of 24th November 2008 : the record notes " Application refused " and " Conversion " with designations of Cyprus, Denmark, France, UK, Greece and Ireland : the mark went on to become UK Trade Mark Registration 2574526 with a filing date of 24th November 2008 (corresponding to date on OHIM Register) and a section noting " Converted trade mark details ".

  This writer has not come across either :

(1) any co-ordinated information provided by OHIM which sets out (for example) :

(a) the number of conversion requests received in any year

(b) whether those requests were received before or after publication of the mark by OHIM

(c) whether the requests for conversion came from Private Applicants or from Representatives

(d) whether fees of OHIM were paid and conversion requests were then transmitted to designated countries

(d) whether registration was achieved in designated countries thereafter, or

(2) any co-ordinated information provided by the UK Registry which sets out (for example)

(a) the number of conversion requests transmitted by OHIM in any year

(b) whether the (now local) Applications achieved publication

(c) whether the (now local) Applications achieved registration

(d) whether any reports have been made to OHIM regarding (b) and (c).

  A recital in the 1988 Directive (to approximate the laws of Member States relating to trade marks) says " Whereas in order to reduce the total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise, it is essential to require that registered trade marks must actually be used " (emphasis supplied).

  The availability of " request(s) for conversion " played a major role in OHIM's promotion of the " new " Community Trade Mark system in the 1990s. The fact that such requests might actually increase the " total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise " was not greatly considered – probably because, until its doors opened for business in 1996, the Community Trade Mark system had no idea how many Applications it would receive.

  Now seventeen years have passed by, perhaps there should be an interest in whether the availability of " request(s) for conversion " has, in fact increased the " total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise " ? And perhaps it's time for OHIM and local Registries (including the UK Registry) to provide some numbers ?