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Journal of Intellectual Property Law & Practice Advance Access originally published online on September 29, 2006
Journal of Intellectual Property Law & Practice 2006 1(12):789-800; doi:10.1093/jiplp/jpl156
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© The Authors (2006). Published by Oxford University Press. All rights reserved

Conversion in the trade mark context

Sven Stürmann * and Gordon Humphreys **

Legal context. The paper examines the formal requirements for making a conversion application and provides an overview of all the significant time limits which have to be observed.

Key points. All relevant decisions taken by the Court of First Instance and the OHIM's Boards of Appeal are analysed by the authors, particularly regarding the geographical scope and registrability of English language words. Consideration is also given to transformation and conversion under the Madrid Protocol and explanations are provided regarding the five different types of conversion and transformation in that context. As a special feature, the article deals with conversion in the new Member States as well as in the context of multiple oppositions.

Practical significance. The article looks at conversion of Community trade mark applications and registrations into national trade marks from a practical and regulatory perspective. It explains the different considerations for requesting conversion from a commercial, legal and factual point of view and, in particular, the different grounds for requesting conversion.

*Rechtsanwalt and Mediator, German lawyer–linguist, OHIM.

**Member of the Second Board of Appeal of OHIM and former Head of the Register and Related Databases Service.


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