Decision-taking and legal formalism at OHIM

The Journal of Intellectual Property Law and Practice (JIPLP) strives to bring before its readers a selection of articles that address a broad range of IP topics over the course of time in a manner that is topical, practical and, where possible, of more than transient interest. All of the journal's articles are peer-reviewed. Having set for ourselves an ambitious targets in terms of quality, relevance and reader-accessibility, we have worked hard first to achieve and then to maintain the standard to which we aspire.

While we have confidence in all our articles, ever so often we receive a submission that appears to us to be exception.  One such piece is "Ensuring greater legal certainty in OHIM decision-taking by abandoning legal formalism", by Rhys Morgan. This article, which has been available to online subscribers since last Friday, is a good deal longer than the typical JIPLP piece, but we felt that the depth of legal analysis and the power of the author's writing fully justified its publication in full.

Here is the abstract:

"The President of OHIM has made legal certainty a priority, but he has inherited a legal practice based on legal formalism, which is characterized by rigidity, lack of sophistication, and unpredictability, and this article argues that legal formalism is an inappropriate way of resolving trade mark issues since it is founded on the erroneous premise that all legal issues can be reduced to objectively identifiable, measurable factors which obey certain rules.

Decisions which ought to be based on trade mark law and an understanding of the broader issues of free and fair competition are instead based on letter-counting, ‘measurements’ of distinctiveness, and doubtful platitudes posing as empirical statements. Legal formalism, or ‘mechanical reasoning’, was adopted by OHIM a decade ago to meet the needs of a short-term business plan, since it offered the promise of ‘automated’ quick decisions. But legal certainty and intellectual rigour have suffered ever since. By way of illustration, the article focuses on OHIM opposition decisions and highlights a number of problems, including the lack of predictability of decisions, a lack of clarity regarding what the trade mark owner has protection for and how far that protection extends, and the damage being caused to a modern competitive market in which a brand is the trader's most valuable commodity.

The article calls for the abandonment of legal formalism and for OHIM to encourage examiners to apply the law in a realistic way, taking account of the subjective nature of trade marks, as well as competition principles and market realities".

In the Editor's opinion, it is the most detailed and fundamental critique of the mode of applying Community trade mark law that he has yet read.  It is also one of the very most important.  He strongly urges anyone concerned with trade law in Europe -- and anyone imvolved in legal policy -- to read it.