Community Trademark

Community Trademark

Community Trade Mark (CTM)

The Community Trade Mark Regulation provides for a single Community Trade Mark (CTM) registration which will be enforceable in all 25 countries of the European Union. The registration will extend to all new member countries as they join the European Community. The unitary nature of the CTM also means that it can only be registered, transferred, surrended, revoked or declared invalid in respect of the whole of the EU.

The CTM system is administered by the Office for Harmonisation in the Internal Market (Trade Marks & Designs) - OHIM, based in Alicante in Spain.

CTM applications can be filed either at the CTM Office in Alicante or via a national trade mark office, such as the UK Trade Mark Office. Applications are multi-class. This means that is a single application can cover whatever goods or services interest the applicant. Virtually any individual or company has the right to apply for and own a CTM registration.

After a CTM application is filed it undergoes examination. OHIM only examines whether the applicant is entitled to be a proprietor of a CTM and whether there exists absolute grounds for refusal (i.e. the mark is descriptive or non distinctive). It is important to note that OHIM does not examine on relative grounds (i.e. for earlier conflicting marks).

Official searches for earlier conflicting trade mark applications and registrations are, nevertheless, performed by both the CTM Office and the national trade mark offices (except France, Germany and Italy). However, the results of these searches are sent to the applicant for information only. The CTM Office has no power to reject a CTM application on the basis of identical or similar marks found in these searches (but see CTM opposition discussed below).

If there are no objections the application is then published in the CTM journal for opposition purposes. Third parties in any EU Member States may oppose the CTM on the basis of earlier national rights. For CTM opposition purposes, a prior trade mark right is one of the following:

• an earlier filed Community, EU national or international trade mark application or registration (the international trade mark application or registration must designate an EU country);
• a well-known trade mark;
• an unregistered trade mark that has acquired sufficient reputation through use in the EU; or
• an EU company name
A notice of opposition can only be filed at OHIM.

The initial period of protection is 10 years, renewable for successive 10 year periods in a single transaction prior payment of a single renewal fee. There is no requirement to certify or prove use of the mark to renew the registration.

However, in order to maintain the validity of a CTM registration, the registered mark must be brought into genuine use in the EU within five years of the registration date. If this is not done, the CTM registration becomes vulnerable to cancellation on the ground of non-use. It is important to note that use in one country is sufficient to satisfy this requirement.

It will be an infringement of the rights given by a CTM registration to use an identical or similar mark on goods or services that are identical with or similar to those covered by the registration. If the marks or the goods/services are not identical, it will be necessary to establish a likelihood of confusion. Furthermore, if the registered mark has sufficient reputation in the EU, it will also be an infringement to use the identical or similar mark on goods or services not covered by the registration. In this case, to prove infringement, the CTM owner must show that use of the competitor's mark 'takes unfair advantage of or is detrimental to the distinctive character or repute of the CTM' (more commonly called dilution).

Advantages of Community Trademark registration:

• A CTM provides cost-effective protection throughout the EU.
• Any individual or company can file a CTM application. This differs from the Madrid Protocol route which is limited to nationals of Madrid States or those with a place of business in a Madrid State (separate bulletin available).
• The CTM will enable consolidation of registration in each of the Member States, and enable simplified maintenance (i.e. only one renewal fee) while retaining national seniorities.
• Use in only one Member State will be sufficient to defeat a non-use attack.
• OHIM will notify Community Trade Mark proprietors of any later conflicting CTM applications. This will facilitate watching for potential conflict situations.
• The future expansion of the EU will automatically be reflected in the coverage of existing CTMs. This is particularly important with the imminent growth of the European community.
• Not necessary to base a CTM application on a national registration or application (which is a requirement of the International System).
• Ability to convert a CTM into national applications in the event of a rejection.
• Payment of fees split between application and registration.

Disadvantages of Community Trademark registration:

• If a CTM application is rejected in any of the EU member states the entire application fails. The trademark must therefore be available in every member state in order to be registered.
• The unitary nature of the system means that the trade mark cannot be assigned or transferred for only part of the EU. It must be assigned for the whole EU.
• Since the only way of dealing with prior conflicting rights before registration is via opposition, a large proportion of CTM applications have been opposed. However, most oppositions do appear to have been settled by agreement.
• Because a Community Trade Mark application will not be refused in view of prior CTM registrations it is the responsibility of proprietors to police their own trademarks and oppose later CTM applications in the event that a conflict exists. This can be expensive.
• The registration process can be lengthy (18-24 months) and even longer in the event of a dispute arising.