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 advantages, including:

'25-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.

Claiming Priority

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 Organization Agreement.

Claiming Seniority

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 registered.

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.

Registration Term

A Community Trademark has a validity period of 10 years from the date of filing and shall be renewable for additional 10-year periods.

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.

5-Year Use

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.

Conclusion

Evidently, the most important advantage of this system is its cost-effectiveness. Many times a CTM covering 25 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 portfolio.

Contact us for more information about registration of a Community Trademark.