The Basics
A Japanese language version of this infomation is available here
A Chinese language version of this information is available here
Introduction
In order to obtain trade mark protection in the various European Union (EU) countries, you used to have to obtain separate trade mark registrations in those countries, with a Benelux registration covering Belgium, the Netherlands and Luxembourg. However, under the Community Trade Mark system, the proprietor of a Community Trade Mark (CTM) now has a single registration, enforceable throughout the EU.
National trade mark systems still operate alongside the CTM system and the national system may remain the most suitable option for some applicants, or else the International Registration system. However, the CTM system is much cheaper than obtaining and renewing up to 25 separate national registrations to cover the EU member states.
The CTM system is administered by the Office for Harmonisation in the Internal Market (Trade Marks & Designs) - OHIM, based in Alicante in Spain.
Who can apply?
Any natural or legal person can apply for a CTM registration.
How do I apply?
Applications can be filed either direct at OHIM, or through the Trade Mark Registry of an EU member state. Any applicant, proprietor or opponent who is not an EU resident must be represented professionally by either a European trade mark attorney, or by a legal practitioner qualified and working in one of the member states.
An application can be filed in any EU language. All applicants must also choose a second language from the five working languages of OHIM (English, French, German, Italian and Spanish) and this second language can be used:
- by OHIM if the application was not filed in one of the official languages
- by an opponent.
What can be applied for?
Any sign capable of distinguishing goods or services is registrable. This includes the shape of goods, their packaging, their colour and probably audible signs as well. Not registrable are:
- descriptive marks (unless they have become distinctive through use in the EU),
- shapes which result from the nature of the goods,
- marks which are words or devices used in the trade to indicate particular goods,
- marks liable to mislead the public on their nature, quality or geographical origin
- marks contrary to public policy,
- marks protected by Article 6ter of the Paris Convention (national flags and emblems, etc),
- marks which would be considered offensive or blasphemous in any country of the EU.
Remember that there are 22 different official languages of the EU: Bulgarian, Czech, Danish, Dutch, English, Estonian, Finnish, French, German, Greek, Hungarian, Italian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Romanian, Slovak, Slovenian, Spanish, Swedish and so descriptiveness etc. in even one language can give rise to an official objection.
One application can cover any number of classes of goods or services. There is an additional official fee for each class claimed over a total of three. The International (Nice) Classification system is used.
Examination and search
OHIM only examines on absolute grounds, as listed above.
Examiners can insist that an applicant disclaims exclusive rights to non-distinctive elements within a mark, where it is felt that inclusion of that element could give rise to real doubts as to the scope of protection.
If a prior CTM registration or application is found, then both the owner of the mark being examined and the owner of the mark found are notified. It is up to the owner of the prior registration or application to oppose the new application.
As regards possibly conflicting prior national marks, currently only 16 National Offices search their own registers for conflicting marks. (Cyprus (South), Estonia, France, Germany, Italy, Latvia, Lithuania, Malta and Slovenia do not.) If a conflicting mark is found, only the owner of the mark being examined is notified. Proprietors are expected to keep a look out for marks that may conflict with their registrations.
For there to be conflict, there must be a serious likelihood of confusion on the part of the public due to the similarity of the marks and/or goods/services.
Opposition
If an application passes OHIM examination on absolute grounds, it is advertised for opposition purposes. The opposition period lasts for three months. For designations of the CTM it is possible that the opposition procedures could commence before objections on absolute grounds are resolved.
Oppositions can be filed by:
- proprietors of earlier applications/registrations (both CTM and national marks),
- owners of unregistered marks of more than local significance, if the law of their state gives them the right to prevent use of the CTM applied for,
- proprietors of marks that fall under Article 6 bis of the Paris Convention, i.e. well-known marks.
The losing party in any opposition may have to pay the other side's costs.
A feature of the CTM system is that if any application is successfully opposed by someone on the basis of a right in any EU country, you cannot get a CTM registration at all. Instead, you will have to apply for separate national registrations (possibly via the Madrid Protocol in the case of a failed designation of the CTM) in any other EU countries that are available, by conversion of the CTM application so as to retain the original filing (or priority date if applicable) of the CTM application. See separate page for much more detail on CTM opposition proceedings.
Observations
After publication of an application, third parties can file "observations". If it is felt that an observation raises serious doubts about the acceptability of an application, it may be re-examined. Applicants will be given copies of observations filed and the opportunity to respond.
Registration periods and renewal
A CTM registration lasts for ten years and is renewable indefinitely for terms of ten years.
Seniority
If you already own a national registration in one or more EU country and then obtain a CTM registration for the same mark covering all EU countries, the date of registration of your original mark may provide an early date of proof of ownership of the mark in corresponding countries. It is preferable to indicate this position within two months of the filing date of the CTM application, although seniority can also be claimed after registration.
Use
A CTM registration must be put to "genuine use" in any country of the EU within five years of registration. If it is not used for a continuous period of five years, the registration may be cancelled for non-use. However, genuine use of the CTM registration in only one EU country is enough to constitute use and ensures protection of the mark throughout the EU.
Exhaustion of rights
The right of a CTM proprietor to sue for infringement is "exhausted" in respect of goods which have been put on the market anywhere in the EU by the owner of the CTM or with his consent.
Invalidation
A CTM may be invalidated if it is shown that it should not have been registered on absolute or relative grounds. However, the validity of a CTM cannot be attacked if the owner of a prior right has acquiesced in the use of the CTM for five years.
Assignment
As it is a unitary registration, a CTM cannot be assigned for part of the EU. However a CTM can be assigned separately for some or all of the goods or services for which it is registered. An assignment needs to be registered at OHIM if it is to be effective in relation to third parties.
Licensing
A CTM can be licensed for the whole or part of the EU and may be licensed for some or all of the goods or services for which it is registered. A licence needs to be registered at OHIM if it is to be effective in relation to third parties.
European Union/European Community
European Community (EC) relates to the single market aspect of the European Union (EU), the latter additionally including common foreign and security policies in its scope. Therefore European Community is the official expression used in relation to the unitary trade mark rights that cover the EU countries.
Current Members of the EU:
Austria, Belgium, Bulgaria#, Cyprus (South), Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania#, Slovakia, Slovenia, Spain, Sweden, United Kingdom.
# New members from 1st January 2007
For further information on the impact of EU enlargement on the Community Trade Mark and general intellectual property rights in Europe, see our page Enlargement of the EU - Effect on Community Trade Marks, Community Designs and European Patents.
Gibraltar and Jersey
A CTM Registration automatically provides trade mark protection in Gibraltar and in Jersey without the requirement that it be registered in those countries.
This information is simplified and must not be taken as a definitive statement of the law or practice.