Application Procedure

An Introduction

Dr. Kai Brandt; Kai.Brandt@t-online.de; March 08, 2001

1 The Applicant

The applicant can be a natural or legal person. Any company, firm, or other legal body is regarded as a legal person, which, under the terms of the law governing them, has the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued.

The applicant is not obliged to be a national of a member of the European Union. Neither needs the applicant to have a seat of business or a real and effective industrial or commercial establishment within the European Union. In contrast to e.g. the Madrid Agreement the Community trade mark registration system is open to all persons who are nationals of or based in the territory of a country which is member to the Paris Convention for the Protection of Intellectual Property, or which is party of the Convention establishing the WTO, or, in the absence of any of the aforementioned requirements, which accords to nationals of all EU countries the same protection for trade marks as it accords to its own nationals.

Furthermore the applicant can be a stateless person as defined by Article 1 of the Convention relating to the Status of Stateless Persons signed at New York on 28 September 1954, or a refugee as defined by Article 1 of the Convention relating to the Status of Refugees signed at Geneva on 28 July 1951 and modified by the Protocol relating to the Status of Refugees signed at New York on 31 January 1967, if he has his habitual residence in one of the aforementioned countries.

2 The Offices

An application for a Community trade mark can be filed, at the choice of the applicant, at the OHIM in Alicante or at the central industrial property office of a Member State of the European Union or at the Benelux Trade Mark Office. An application filed at the central industrial property office of a Member State of the European Union or at the Benelux Trade Mark Office have the same effect as if it had been filed on the same date at the Office. In case the application is filed at a national office, the latter should transmit the application to the OHIM within two weeks from its filing. Should the OHIM not receive said application within one month from the date of filing, the application will be deemed withdrawn. Accordingly, as the filing at a central industrial property office of a Member State of the European Union or at the Benelux Trade Mark Office may result in the withdrawal of the application, direct filing with the OHIM in Alicante seems to be advisable.

3 The Application Procedure

3.1 Content of the Application

The application should contain:

• a request for registration of the mark as a Community trade mark;
• the name, address and nationality of the applicant and the State in which he is domiciled or has his seat or an establishment. Names of natural persons are to be indicated by the person's family name and given name(s). Names of legal entities, as well as bodies, are to be indicated by their official designation, which may be abbreviated in a customary manner; furthermore, the law of the State governing them shall be indicated. The telegraphic and teletype address, telephone as well as fax numbers and details of other data communications links may be given. In principle, only one address is to be indicated for each applicant; where several addresses are indicated, only the address mentioned first shall be taken into account, except where the applicant designates one of the addresses as an address for service;
• a list of the goods and services for which the trade mark is to be registered;
• a representation of the mark;
• if the applicant has appointed a representative, his name and the address of his place of business; if the representative has more than one business address or if there are two or more representatives with different business addresses, the application shall indicate which address shall be used as an address for service; where such an indication is not made, only the first-mentioned address shall be taken into account as an address for service;
• where the priority of a previous application is intended to be claimed, a declaration to that effect, stating the date on which and the country in or for which the previous application was filed;
• where exhibition priority is intended to be claimed, a declaration to that effect, stating the name of the exhibition and the date of the first display of the goods or services;
• where the seniority of one or more earlier trade marks, registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State is intended to be claimed, a declaration to that effect, stating the Member State or Member States in or for which the earlier mark is registered, the date from which the relevant registration was effective, the number of the relevant registration, and the goods and services for which the mark is registered;
• specification of the language in which the application has been filed, and of the second language;
• the signature of the applicant or his representative.

While it seems to be advisable to fulfill all the above mentioned requirements with the application, some can be recovered later. However, it is indispensable that the application contains a request for the registration of a Community trade mark, information identifying the applicant, a list of the goods or services in respect of which the registration is requested, and a representation of the trade mark. The application may also contain:

• a statement by the applicant that he disclaims any exclusive right to an element of the trade mark which is not distinctive, to be specified by the applicant;
• if there is more than one applicant, the appointment of one applicant or representative as common representative.

3.2 List of Goods and Services

Where possible, goods and services should be indicated by using the definitions contained in the Alphabetical list of the Nice Classification, so that each item may be classified in only one class. The OHIM recently launched its EURONICE project, a data base for the storage and reuse of translations of the expressions which are most frequently used by Community trade mark applicants to describe the goods and services covered by their marks.

EURONICE will reduce translation costs and ensure consistency between translations. Today this data base contains 6,748 expressions in one language, which represents more than 300,000 approved words in the 11 official languages, including the headings of the Nice Agreement below, which correspond to the expressions most frequently used by Community trade mark applicants.

In the future, the EURONICE data base will also be used as a unique tool for facilitating the classification of goods and services in the 11 languages. The OHIM is hoping to make this available to users. The use by applicants of the EURONICE list, which follows the Alphabetical List of the Nice Agreement, will finally optimize the use of the database.

3.3 Representation of the Mark

If the applicant does not wish to claim any special graphic feature or color, the mark shall be reproduced in normal script, as for example, by typing the letters, numerals and signs in the application. The use of small letters and capital letters shall be permitted and shall be followed accordingly in publications of the mark and in the registration by the Office.

In cases the applicant wishes to claim any special graphic feature or color, the mark is to be reproduced on a sheet of paper separate from the sheet on which the text of the application appears. The sheet on which the mark is reproduced must not exceed DIN A4 size (29,7 cm high, 21 cm wide) and the space used for the reproduction (type-area) shall not be larger than 26,2 cm x 17 cm. A margin of at least 2,5 cm shall be left on the left-hand side.

Where it is not obvious, the correct position of the mark has to be indicated by adding the word top to each reproduction. The reproduction of the mark has to be of such quality as to enable it to be reduced or enlarged to a size not more than 8 cm wide by 16 cm high for publication in the Community Trade Mark Bulletin. The separate sheet should also indicate the name and address of the applicant. Four copies of the separate sheet carrying the reproduction are to be filed. The application may contain a description of the mark.

Where registration of a three-dimensional mark is applied for, the application has to contain an indication to that effect. The representation must consist of a photographic reproduction or a graphic representation of the mark. The representation may contain up to six different perspectives of the mark. Where registration in color is applied for, the application must contain an indication to that effect. The colors making up the mark are also to be indicated.

3.4 Fees for the application

The fees payable for the application are the basic fee and a class fee for each class exceeding three.

3.5 Application Forms

Applicants have to use the application forms provided by the OHIM, or copies of these forms, or forms with the same content and format as these forms, such as forms generated by means of electronic data processing. The forms must be completed in such a manner as to permit an automated input of the content into a computer, such as by character recognition or scanning.

3.6 Languages

The application for a Community trade mark has to be filed in one of the official languages of the European Community. These are Danish, Dutch, English, Finnish, French, German, Greek, Italian, Portuguese, Spanish, and Swedish.

The applicant must indicate a second language which shall be a language of the Office the use of which he accepts as a possible language of proceedings for opposition, revocation or invalidity proceedings. The languages of the OHIM are English, French, German, Italian and Spanish. The second language must be indicated even if the first language is already one of the official languages of the Office.

3.7 Filing

Applications for the registration of a Community trade mark have to be filed by submitting a signed original of the document in question at the OHIM (such as by post, personal delivery, or by any other means), by transmitting a signed original by fax, or by telex or telegram. Annexes to documents submitted need not be signed. Please note that the OHIM is not able to accept Community trade mark forms via email for the time being.