Community Trade Mark Registration in European Union (EU)
The community trade mark
system (CTM) and the Community Design can register a mark (for 10 years renewable ) in the whole of EU with a single application made with the Office for Harmonization in the Internal Market (OHIM, Alicante, Spain) or a national office. No revocation of the registration at a national or international level is needed.
The owner of the mark then obtains the same protection rights throughout the EU. The rules and law for the registration of a CTM are similar than those used in each Member States so as not to confuse the applicants.
However while applying for registration a refusal is possible if the mark violate the rights of another registered or filed mark in any of those countries.
The CTM is a good instrument to meet to requirement of an expending and demanding market of 350 million consumers: it ensures the identification of the origins and the nature of the goods/services, of a manufacturer’s mark or of a collective trademark (association of professionals wishing to be identified for the nature and/or the quality of their production/services) , guaranties the companies’ commitment to provide a certain quality, is a good way of communicating between countries and a good basis for advertising.
A wider international registration is possible from and in the countries members of the Madrid Agreement or the Madrid Protocol, by applying with the World Intellectual Property Organization (Geneva, Switzerland). The application can be made on the grounds that the trade mark has already been register or filed in it’s country of origin.
Good reason for using the Community trademark
The protection is more effective.
It gives the owner the same absolute rights to stop someone else to use their mark anywhere in EU.
The formalities and management are simplified to one single application made with the National Office or directly with the OHIM, one common language, one administrative centre and one only file to administer.
It is cheaper as the fees are paid only once.
Once a mark is registered as a CTM, the owner doesn’t need to renew their registration at a national level, they can claim for the seniority rights.
The filing date of the CTM will be considered to determine the priority for the registration on a national and international level.
The CTM only needs to be genuinely used in one EU country to fulfil and maintain the condition of registration.
For any violation of the rights of a CTM even in multiple counties, the owner only needs to proceed in a national court, these courts would have been designated by the member States to have jurisdiction in respect of the CTM. Only a CTM gets such a protection.
A variety of options to implement the rights of the trade mark and simplify the management of the companies like the possibility to reassign the CTM in relation with some or all of the goods/services related separately from any possible transfer of the owner. Or the CTM might be licensed for all EU or exclude some countries.
CTM has priority over later national rights.
When new states become members of EU, the CTM rights are extended to those countries. Therefore the CTM is an access to an ever expanding market, today 25 members: Austria, Belgium, Czech Republic, Cyprus, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Italy, Latvia, Lithuania, Luxembourg, Malta, Holland, Poland, Portugal, Slovak republic, Slovenia, Spain, Sweden, Republic of Ireland and United Kingdom.
Community Trade Marks and National Trade Mark
A sign which has been re-designed to adapt to the language and the culture of various European countries can be registered directly with the OHIM.
A CTM can also provide the protection for a sign previously filed with a national office of one of the countries members of the Paris Convention or the Agreement on Trade Related Aspects of the Intellectual Property Rights concluded under GATT (TRIPs Agreement); in which case the right for priority may be granted for 6 months.
The seniority of a national trademark can still be claimed when/if the national trademark was cancelled or surrendered.
If a CTM registration as refused, revoked or annulled, a national trademarks application can be placed in each country of the EU where the same grounds for refusal, revocation or annulment do not exits. In this case the right for priority or seniority, the investment and the advertisement can be maintained in those countries.