An Introduction to Community Trade Marks

 

A. Nette, Attorney-at-Law, Hoffmann · Eitle, ANette@hepnet.de, July 14, 2000

 

The intention of the European Union when creating the Community trade mark system was to harmonize the trademark laws of the Member States of the EU* and to simplify application procedures for trademarks.  This new and uniform trademark registration system has been in force since 1 April 1996.  The Community trade mark (CTM) pro­vides potential applicants with one further option for protection of trademarks in the EU,  in addition to the options of protection by national registrations in one or more Member States or under the Madrid Agreement (a multi-national trademark protection system). The CTM system does not replace the individual national trademark systems or the Madrid Agreement.  These three systems now exist side by side.

In contrast to the national trademark systems where applications must be filed for trademark protection in each respective EU country, the CTM system requires only one application to be filed at the Office of Harmonisation in the Internal Market (OHIM).  This authority was established by the EU.  Although the Madrid Agreement also only requires one application, the CTM registration system constitutes an even simpler system since an application is not subjected, as under the Madrid Agreement, to separate national examination procedures in each of the EU countries.  Also, unlike applications filed under the Madrid Agreement, it is not a requirement for CTM registration that an application be based on an existing national registration or application since the CTM system is an independent system.

Community trade marks are available to all nationals of Member States, nationals of those countries which are party to the Paris Convention or the World Trade Organisation Agreement, companies with an established domicile in the EU, and nationals of countries which accord reciprocal protection to all EU members.

When a mark is registered as a CTM its effect will extend throughout the entire EU.  A CTM has no geographical limitations.  This means, however, that a CTM can only be registered for the entire EU.  The conditions for registration (as listed in the CTM Regulations) must therefore be fulfilled in each of the EU countries.  If there are absolute or relative grounds for refusal of registration in one EU country, the CTM application will be rejected for all.  Oppositions to an application for a CTM are governed by one set of rules and determined uniformly under the provisions of the Regulation.  Therefore, an  applicant is not confronted by the possibility of several separate opposition proceedings under different laws and in various languages.

Although one consequence of the uniform nature of the CTM is that an opposition based on prior rights in one Member State can prevent registration of a CTM, there does remain the option that an unsuccessful CTM application can be subsequently converted into one or more national trademark applications in those countries where no conflict exists.  Such national applications will enjoy the same date of filing and priority as the CTM application.

Once a CTM is registered, its proprietor benefits from the fact that his exclusive rights to the trademark are governed by a one set of laws valid throughout the EU.  Thus if a CTM should be infringed in one of the Member States, this infringement can be prosecuted in a single legal procedure.  In contrast thereto, trademarks registered under the Madrid Agreement can only be enforced at the national level.  The reason for this is that registration under this Agreement constitutes a package of national rights and only the respective national courts are entitled to enforce such rights.

The rights to a CTM can be lost if the CTM is not used (non-use) during the five-year period following registration.  Use must be “genuine” and this eliminates token use.  In compliance with the uniform nature of CTMs, it seems to be sufficient that genuine use of the CTM is made in only a few Member States.  This is an advantage of the CTM system over both the national trademark systems and the Madrid Agreement system, since under these systems if a trademark is registered in several Member States but is used in only one or two of these states,  it may be revoked in the others due to non-use.

Applicants for registration of a CTM may in addition own national registrations in a Member State for the same trademark for the same goods or services.  However, in order to avoid a duplication of registrations, but not to loose the earlier national registration date, the applicant can claim what is called “seniority” of his earlier national trademark registration for his later CTM registration.  The effect of seniority is that if and when an earlier trademark is surrendered or allowed to lapse, the rights provided by this prior trademark are maintained in the Member State of its national registration, provided the CTM is in force.  A claim to seniority based on one or more national registrations may be made either in the application for the CTM or within two months of filing the application.  It is, however, also permissible to claim seniority even after registration of a CTM.

CTMs are registered for periods of 10 years from the date of filing of the application and can be renewed indefinitely for further periods of 10 years each.

Experience with the CTM system over the last four years has shown that it is an effective system providing trademark protection within the EU Member States at a reasonable cost.  It is therefore in many cases advisable to choose the CTM system when an applicant is seeking trademark protection within the EU.