EU-wide Trademark Protection
Any business operating in a pan-European or international
environment and in possession of a portfolio of diverse intellectual
property rights, definitely needs to ensure that the protection it
has spreads all over Europe (EU).
To address this matter and to provide a
most efficient and cost-friendly solution, the EU has devised a
system to better harmonize the various trademark laws within the
concept of free flow of goods and services.
Such harmonisation plan is two-pronged:
• The harmonization of the national
trademark laws of the member states, and
• The creation of the Community Trademark Registration Procedure.
Harmonisation of National TM Laws
The effect of this process was not
eliminate the national trademark laws of the EU member states but
the elimination of unequal treatment of trademark owners within the
EU and the harmonization of the law regarding the importation of
grey market goods, i.e., imported goods manufactured under license
in another member state or outside the EU.
The Community Trademark (EU Trademark or CTM)
This system provides a single registration covering all the
member states of the EU and exists alongside national trademark
registrations, whilst providing an alternative to national
registrations, which are costly and cumbersome to manage. The Office
of Harmonization in the Internal Market (EU trademark office) is the
official body in charge of this system and is based in Alicante.
Such registration covers the entire European Union, can be enforced
in any one of the twenty-five member states and presents various
'27-Member State' Coverage
This could be deemed to be the main advantage of a CTM in that it
facilitates both the initial registration process as well as the
management of the IP owner's portfolio of IP rights.
Classification of Goods and Services
The CTM makes use of the official International
Classification of Goods and Services and, unlike some national
systems, multi-class applications may be filed.
The system also adheres to the rules of the Paris Convention
for priority claims in that a six-month right of priority may be
claimed by an applicant based on their first application filed in a
member country of the Paris Convention or the World Trade
If a TM owner holds an earlier national registration, upon
application for a CTM, with identical goods or services covered by
the national registration, he may claim the seniority of the
national registrations in the EU member states in which the mark is
Conversion of a CTM into national registrations
If the registration is unsuccessful due to successful
oppositions by other parties, the CTM applicant may within 3 months
of such decision, file with the Office a request, together with the
appropriate fee, to convert the Community Trademark application or
registration to individual EU national applications, retaining the
priority date of the Community Trademark application.
A Community Trademark has a validity period of 10 years from
the date of filing and shall be renewable for additional 10-year
Assignability and Licensing
CTMs may be assigned or licensed. Licenses, which may be
granted in respect of some or all of the registered goods and in
respect of the whole or part of the EU, and agreements affecting the
title of a CTM, must be recorded at the Office to be effective
against third parties.
The CTM must be used within the EU within a period of
5-years from date of registration, otherwise, it may be vulnerable
to attack. Use of a Community Trademark in any one EU member country
will be sufficient to satisfy the use requirement for all EU member
countries and use of the TM only for export constitutes valid use.
Evidently, the most important advantage of this system is its
cost-effectiveness. Many times a CTM covering 27 Member States may
cost as much as 5 separate TM national applications. EU-wide
protection is obviously the next most important advantage. The
disadvantages of utilizing a Community Registration are few.
Through our registered
European Trademark Attorneys, our firm
provides all services related to Community Trademark Registration,
Maintenance and Renewals. We would be pleased to discuss with you
the matter and devise the best strategy to consolidate your TM
Contact us for more information about registration of a Community Trademark.