European Trademark registration
European Community Trademark registration
EU Trademark registration
Introduction:
There are three ways of protecting your trademark
in the European Community:
• Separate national trademark registrations in the individual European
countries of interest to you
• Community trademark registration (CTM)
• International registration (Madrid Protocol) designating the European
Community or the individual countries within the EU in which protection
is required
The Community Trade Mark (CTM) and International
Registration (Madrid Protocol) systems are the most commonly used methods
due, predominantly, to their administrative ease and cost effectiveness.
However, both the above trademark registration systems have their own
unique advantages and disadvantages which need to be taken into consideration
when deciding which trade mark registration system would be best suited
to the business strategy of the entity concerned.
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, 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.
Madrid Protocol (International Registration):
The Madrid Protocol offers a cost-effective system for the international
registration and maintenance of trade marks.
Under the Protocol system, an international trade mark registration is
issued by the World Intellectual Property Organisation (WIPO) which has
effect in all the member countries designated by the applicant, subject
to the right of national offices to refuse protection in their countries.
An international registration is therefore in effect a collection of national
registrations all bearing the same number.
Any UK company, or any UK national, may apply if they have a UK or Community
trade mark application or registration. Please note that having a home
based trademark application or registration is a pre-requisite for filing.
A single application may be filed for goods and services in multiple
classes and designating multiple contracting states. If the country of
origin is party to both the Agreement and the Protocol then any contracting
state of either may be designated. If the country of origin is party only
to one or the other of the Agreement or the Protocol then only contracting
states to the Agreement or to the Protocol respectively may be designated.
Thus, presently, applications filed in the UK may only designate contracting
states to the Protocol.
The applicant files the IR at his national trade mark office and designates
additional Protocol countries where he wishes to obtain protection.
The national trade mark office then forwards the international application
to the International Bureau of WIPO. The international application will
be accorded the filing date of the original application, giving the IR
and the basic registration the same priority date. In the case of an IR
based on an already existing national application/registration the priority
date is the date in which the international application is filed (not
the priority date of the original national application/registration).
The Protocol also provides for extending the geographic scope of protection
of an existing IR to additional countries at a later date by filing a
subsequent designation.
After receiving the application or subsequent designation, WIPO examines
whether the application complies with the formalities requirements, but
does not examine the substance of the application (i.e. whether the mark
is descriptive or it conflicts with any earlier rights). If the International
Bureau is satisfied the mark is recorded in the International Register.
Then the Bureau notifies the national trade mark office of each of the
designated countries.
The national trade mark offices then have either 12 or 18 months (depending
on the country) to examine the application under its national law. The
scope of the examination varies from country to country. Once examined
the mark is published for opposition purposes. If a foreign office rejects
the application or if a third party opposes the mark, the application
will be prosecuted as any national mark.
However, if accepted, an IR is granted for an initial period of 10 years,
and may be renewed in all countries with a single renewal fee. Similarly,
one notification to the International Bureau will record any change of
details, assignments and licenses.
Advantages of the Madrid Protocol:
• Provides a convenient and cost-effective way of filing and maintaining
trade mark rights in foreign countries.
• Central administration of a collection of national registrations
• Only the countries of actual interest need be included.
• If problems arise in one designated country, this can be dropped
without affecting the others.
• Protection for some countries/regions may be obtained more quickly
than by using the national route. This is because strict time limits are
set under the Protocol.
• It is possible to extend an international registration to further
Protocol countries after registration. An application for territorial
extension (known as a subsequent designation) can be filed at any time
after registration. The effective filing date of such a subsequent designation
is the date the extension request reaches the national office.
• No need to appoint agents in designated countries unless problems
arise
• It is possible to assign some designations and not others.
• An International Registration can replace a corresponding national/regional
registration without loss of rights.
Disadvantages of the Madrid Protocol:
• An applicant (and a subsequent assignee) must have effective
business establishment in, domicile in or be a national of, a contracting
state. So international registrations under the Protocol could interfere
with a sale of assets to an entity based in a non Protocol country.
• All fees due on filing, rather than being split between filing
and grant.
• A home-based trademark application or registration is a pre-requisite
for filing.
• For its first five years the International Registration is dependent
on the prior application or registration upon which it is based. If the
prior application does not achieve registration, or is subsequently invalidated
or cancelled, partially or in its entirety, the IR is likewise entirely
or partially cancelled. This is called the "central attack".
Therefore, it is critical that the basic application/registration is strong.
(To remedy the fatal consequences of the central attack the Madrid Protocol
provides that the IR application/registration can be transformed into
separate, national applications which will retain the filing date of the
original application. However, this transformation is an expensive and
slow exercise).
• The dependency on the prior application or registration also means
that the specification of goods/services of the International Registration
has to be the same as, or narrower than, the prior application or registration.
• The trade mark owner must be able to show use in each of the designated
countries once the initial 5 year dependency period expires. If, the mark
is not used in that country the registration will be vulnerable to be
revoked in that jurisdiction.
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