Trade mark applications made to the Office for Harmonisation in the Internal Market, known as OHIM, must now be dealt with in the same language as the application. Previously, they were dealt with in one of the five official languages of the EU: English, French, German, Italian or Spanish.
The ECJ published its decision last week in a long running discrimination case brought by Dutch lawyer Christina Kik, over OHIM's persistent use of the EU's official languages in trade mark applications, rather than her native tongue.
In May 1996 Kik lodged a trade mark application in the word "KIK". As with all Community trade mark applications, she had to give a choice of two languages in which the application could be dealt with – her own, and one of the five official languages.
Kik specified Dutch for both choices, in a deliberate test of what she saw as discrimination against the smaller EU nations. The application was dismissed because the second language requirement was not completed.
Kik appealed, arguing that the initial decision was based on unlawful legislation. In March 1999 the appeal went before OHIM's Board of Appeal and was dismissed, again on the basis of a formal irregularity.
Kik appealed to the Court of First Instance of the European Communities, which dismissed the action. Before the case could be appealed again, Kik died, and the appeal was put forward on behalf of her executors and beneficiaries. The ECJ has now ruled partly in Kik's favour.
The Court dismissed the allegations of discrimination in connection with the use of language, but ruled that:
"the language of proceedings before the Office is to be the language used for filing the application for a Community trade mark, although the second language chosen by the applicant may be used by the Office to send him written communications."
The meaning of "Written communications" would not, in the court's view, include documents used in processing a trade mark application. The Court therefore ruled that all these documents – i.e. procedural ones - "must therefore be drawn up by [OHIM] in the language used for filing the application."
Accordingly, OHIM must now deal with trade mark applications in the language of the application, so long as that is a European language. OHIM may only use one of the official EU languages, where that is different from the application language, for non-procedural documents.
This will pose a problem for OHIM. A senior official from the organisation told Legal Media Group:
"We now have to be much more careful to always use the first language mentioned by the applicant. This will make the process more expensive because now we have to send more applications and documents to the translation centre."
While this might not be a great problem now, added the official, the upcoming accession of new member states will increase the costs and the time involved.
The increase of the membership of the EU from 15 to 25 states will have another effect on trade marks held within the existing EU member states.
OHIM has confirmed that from accession on 1st May 2004, trade marks held by existing member states will be automatically extended to the new member states without any extra cost. The owners of earlier and competing trade marks held in those new member states will be able to challenge the extension.