Community Trademark Basics
Which countries are covered under the Community Trade Mark (CTM) application?
Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Spain, Slovakia, Slovenia, Sweden, and the United Kingdom.
What may be registered as a CTM?
A Community Trade Mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings’. This is a broad definition and although not specifically stated, could include slogans, sounds, smells and gestures. Registration can be in respect of goods and/or services.
What is the extent of protection afforded by a CTM?
Article 9 - A CTM Registration confers an exclusive right to prevent others from using in the course of trade an identical or confusingly similar sign on identical or similar goods/services anywhere in the EU. Rights can also extend to prevent use in respect of dissimilar goods where the CTM Trade Mark has a reputation in the EU and where the unauthorised use without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the CTM.
What is the CTM application procedure?
- Preliminary Search for similar mark in the CTM Registry.
- Preparation of Application for CTM. The identification of goods is the key feature. Applicants outside of the European Union countries must appoint a Trademark lawyer or agent to file on their behalf.
- The CTM application must be filed in any of the 20 languages of the European Community: the "first language". In addition, a second language must be indicated which must be different from the first language and must be one of the five languages of the Office, namely, Spanish, German, English, French or Italian.
- The filing date of a CTM application is the date on which it was actually received at the OHIM (or, in the case of a filing through a national office including the Benelux Trade Mark Office, the date of actual receipt at that Office), provided that the application is complete.
- Application is then examined for absolute grounds of rejection not "relative" grounds. Absolute grounds for rejection are those which prevent registration despite the existence of rights of any third party. Only during the opposition period, can relative grounds be raised.
- Once examination for absolute grounds are completed, the mark is sent out to the various countries for a search. The search reports are provided to the applicant who can amend the application as appropriate. A search is conducted by OHIM, however, of marks which have been registered by OHIM or for which an application is pending.
- The CTM is then published in the Gazette of the Community Trademark Office.
- An opposition may be filed by a party who has priority rights or seniority rights. Priority rights exist based on a prior Community mark. Seniority rights exist based on rights based on a prior national registration. This must take place within three months of publication.
- If there are no objections from third parties or changes / amendments to the CTM, then it will be registered. The registration process involves additional filing fees and attorney fees.
- Barring any impediments to registration, the registration process would take place within approximately 12 to 14 months. Trademark owners can expedite the process by up to six weeks by attending to payment of the final registration fees as soon as the notification requesting them is received.
What is the registration date and how long does registration take?
It is the date on which the Office enters the CTM in the Register (which is kept as a database) before giving the go-ahead for publication of the registration in the CTM Bulletin. This is done after collecting the registration fee. On the Certificate of Registration, this date is the one that follows the word "Registered" in the bottom left-hand corner of the first page. This date is the starting point of the 5-years use requirement. Nevertheless, the rights conferred by a CTM will only prevail against third parties as from the date of publication of the registration in the CTM Bulletin.
A typical application that proceeds without complications takes between 12-18 months before registration is granted. Registration fees will only have to be paid on registration. Other applications times vary.
How do I start the application process?
The first step is to complete the online order form, send us an email, or telephone our office. Once we have received and confirmed your order form and your mark appears eligible for protection, then you will be asked to sign a retainer agreement and send us the applicable govt. filing fees along with the legal fees in order to start your case. We will prepare a specification of the goods and/or services that your application will cover and then send it to you for acceptance. Thereafter, we will then prepare and file the trade mark application at the relevant Trade Marks Registry. If we require any further information, we will let you know. You will not be charged extra for this service, unless we believe that your specification will cover more Classes than you had indicated in your application form.
What is an absolute grounds for refusal of a CTM registration? Can it be overcome?
Absolute grounds for refusal are covered by Article 7. There is an examination of the Application by the OHIM and registration will be refused in a number of instances:-
(a) Marks falling outside the definition of signs which are capable of being registered (Article 4). There is no provision allowing for use as a determining factor on this question; (b) Trade Marks which are devoid of any distinctive character; (c) Trade Marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services or other characteristics of the goods or services; have become customary in the current language or in the bona fide and established practices of the trade; (d) Signs being exclusively shapes either resulting from the nature of the goods, necessary to obtain a technical result or giving substantial value to the goods; (e) Trade Marks contrary to public policy or morality; (f) Deceptive Trade Marks; (g) Trade Marks pursuant to Article 6 of the Paris Convention; and (h) Public interest badges, emblems or escutcheons.
These grounds may apply notwithstanding that the basis for non-registrability pertains in only part of the EU. In relation to (b) and (c) above, use can be taken into account and if the Trade Mark can be shown to be distinctive through use, then registration will be allowed. It is not possible to file opposition to a CTM Application on any of the grounds in Article 7. However, it is possible to file observations following publication. If the CTM Application is rejected on absolute grounds, there is an option of conversion to national or an application in one or more EU countries. Thus, for example, a Trade Mark may be devoid of distinctive character in just one country of the EU because of its meaning in a particular language.
What is a relative grounds for refusal of a CTM registration? Can it be overcome?
A response may be filed to overcome the grounds of refusal. It is in the discretion of the examining officer to determine whether the mark will be registrable.
Article 8 - The OHIM will carry out searches of the CTM Register. Also, most EU countries will exercise the option of carrying out searches in their own national Register. However, prior conflicting Trade Marks, although being brought to the attention of a CTM Applicant, will not be cited by the OHIM as a bar to an Application. The onus is on the proprietor of an earlier Trade Mark to formally oppose. An "earlier Trade Mark" is defined as:-
- a CTM;
- national Trade Mark in an EU country; and
- an International (Madrid Arrangement or Madrid Protocol) Trade Mark effective in an EU country.
However, Article 8.2(c) also provides for opposition to be based on a Trade Mark which is well known in an EU country under Article 6 is of the Paris Convention. Article 8.4 - Opposition is possible by the proprietor of an unregistered Trade Mark used in the course of trade and of more than mere local significance. The unregistered Mark must have been acquired before the CTM Application or its priority date. The law in a particular EU country must be such as to confer a right on the proprietor to prohibit the use of a subsequent Trade Mark.
When can I use the TM designation?
You can use the "TM" designation at any time. You cannot use the "®" designation until your trade mark is registered. Use of the "®" designation where you do not have a registration is a criminal offence and may result in a fine.
What is an opposition of a CTM registration?
The following may file an opposition:-
(a) proprietors or licensees of earlier Trade Marks;
(b) the proprietor of an earlier Trade Mark sought to be registered, without consent, by an agent or representative; and
(c) the proprietor of an earlier Trade Mark or sign or a person authorised under the relevant national law to exercise such a right.
Normally, opposition is based on a Trade Mark which is identical or similar for identical or similar goods to that of the opposed Trade Mark. However, Article 8.5 does provide for opposition by the proprietor/licensee of an earlier Trade Mark which is registered for goods/services not similar to those for which the CTM is to be registered where, in the case of an earlier CTM, the Mark has a reputation in the EU and, in the case of an earlier national Trade Mark, the Mark has a reputation in the state concerned. It is also necessary for the Opponent to show that the use without due cause of the Trade Mark applied for, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Trade Mark.
The Notice of Opposition must be filed within three months of the publication of the CTM Application. The opposition can be filed in any of the community languages. However, if the opposition is not filed in the language of the CTM Application (if that language is one of the official OHIM languages, i.e. English, French, German, Italian or Spanish), or the second language which must be an official OHIM language, then the Opponent must file a translation of the Notice of Opposition in one of these languages within one month of the expiry of the opposition period.
I do not currently market my product in Europe. Do I still need to apply for a CTM?
If you market a branded product, or service, it is now possible to secure exclusive use of that identity throughout Europe. Even though your immediate plans may not include trading in this huge market, it is possible to secure protection for your identity/trade marks/goodwill, with just one trademark.
I already have trademark protection in Europe. Do I still need a CTM registration?
For a company doing business in Europe, CTM registration is a cost-effective way to obtain trademark protection. Even if a company already has national trademark registrations in the EU, a CTM will enhance those rights and possibly result in protection in countries where a national registration was not obtainable.
What happens if a similar mark has already been registered as a Community Trade Mark?
The Trademark office will not automatically reject an application when someone else already owns a registration for an identical mark. The office will conduct a search of prior CTM registrations and applications covering similar marks and notify their owners that a current CTM application has been filed. They are then given an opportunity to oppose the CTM application. The loser in an opposition proceeding pays a portion of the winner's costs.
If my CTM application has been denied, can I register a mark in another EU Member State and then re-apply for a CTM?
The CTM system and the national trademark systems of the EU Member States are designed to co-exist and neither is capable of replicating the benefits conferred by the other. National laws may prevent a trade name or mark which is lawfully used in one member state from being used in others, protection under national law will remain necessary notwithstanding the increasing extent to which CTMs are sought and granted.
A national registration can grant seniority to a subsequent CTM application. In this way, it may increase the chance of a CTM application filed later.
Why should I use a lawyer to apply for a Community Trademark?
First, if you are based outside of one of the countries of the European Union, you must use a lawyer or registered agent to apply for a trademark. This entity must have an office in one of the countries of the European Union.
Second, obtaining a trade mark registration is a complex process requiring skill and a knowledge of registered trade mark law and the way that the UK and Community Registries operate.
How long will it take for my CTM to be registered?
A typical application which proceeds without complications can take around 12 months before registration is granted. Registration fees will only have to be paid on registration.
How do the CTM and Madrid International systems overlap?
The CTM became a contracting party to the Madrid Protocol on October 1, 2004. Since that date, it has been possible to designate a CTM as part of an international trade mark application in the same way as every other contracting party.
If a CTM included in a Madrid Protocol application is refused, it is still possible to "convert" that CTM into national applications in the individual EU Member States. These designations can be either separate trade mark applications (outside of the Madrid Protocol application) or, more likely, national designations within the Madrid Protocol application.
