Journal Article

Ensuring greater legal certainty in OHIM decision-taking by abandoning legal formalism

Rhys Morgan

in Journal of Intellectual Property Law & Practice

Volume 7, issue 6, pages 408-429
Published in print June 2012 | ISSN: 1747-1532
Published online March 2012 | e-ISSN: 1747-1540 | DOI:
Ensuring greater legal certainty in OHIM decision-taking by abandoning legal formalism

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Rhys Morgan is a British barrister working for the Office for Harmonization in the Internal Market (OHIM). After 10 years as a legal assistant to the Boards of Appeal, he now works in the Trade Mark Department (Operations).

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.

Journal Article.  17746 words. 

Subjects: Arbitration ; Intellectual Property Law

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