COMMUNITY TRADE MARK

1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in the European Union. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
No Community Traade Mark (CTM)can be acquired by use. To obtain a CTM, registration is required.
3. What is registrable?
Any 搒ign?that can be reproduced graphically and is capable of distinguishing the goods or services of one person from another, e.g., words, names, devices, certain three-dimensional shapes, colors, sounds, and smells, is registrable.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
This will depend upon the law and practice in each individual European Union country. Currently, there is no overall European Union policy with regard to this topic. A local trademark attorney should be consulted on this issue.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior Community Trade Marks and national trademarks with the exception of Italy, Germany, and France, but this takes several months. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, the official search does not cover all countries and quite often is not clear. A prefiling search is therefore most helpful. If the mark is to be used in many countries, a prefiling search is recommended to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney located in one of the EU Member States or by directly contacting a Community Trade Mark attorney. A Community application can be filed either with the Community Trade Mark Office directly or through the national trademark office of any member country.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, a list of goods/services to be covered, and a power of attorney (if the application is to be filed by a Community Trade Mark attorney).
9. Is local registration the only option, or are there international alternatives?
This is an international right, not a local registration.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application in any number of classes and pay additional class fees, beyond three.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is either a member of the Paris Convention, or the World Trade Organization, or if it grants reciprocity to nationals of all member countries, the applicant may file a Community Trade Mark application within six months following the filing date of the home country application and claim the filing date in the home country. The applicant can also claim 搒eniority?rights from preexisting, identical registrations in any EU member country. This can help to counter oppositions and may eventually allow a single Community registration to substitute for several national registrations, thereby saving maintenance and management costs.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A Community Trade Mark should be used within five years in the territory of at least one member country in order to prevent the registration from becoming vulnerable to cancellation on grounds of nonuse. However, late use after the five-year term may restore registration, provided that in the interim no third party has filed for, registered or used in 'common law' member states an identical or similar mark, or has started an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the mark, use of the different form will not affect the applicant抯 registration.
14. Is there any advantage to using a trademark before filing an application?
In most EU member states trademark rights cannot be created by mere use, unless that use was extensive and the mark has become known to the relevant public. As such, in certain circumstances, prior use in a 'common law' member state may be recognized and entitle the prior user to oppose or cancel a subsequent Community Trade Mark, provided the prior use is entitled to be treated as an unregistered trademark under national law.
15. For an application to be valid, are there any particular requirements that must be met?
Yes. The applicant must qualify as a national of a Paris Convention or World Trade Organization country, or a country granting reciprocity to nationals of all member countries.
16. What information is first published about an application/ registration and when is it published?
The application is published for opposition after it has been determined that there are no 揳bsolute grounds?preventing registration. The publication states all particulars of the application, including the goods and services for which it seeks protection.
17. What kind of examination (if any) will a new application undergo?
There is no formal examination of prior marks, although a search of earlier Community marks is performed by the Community Trade Mark Office and by certain member countries for prior national marks. The results are communicated to the applicant without official consequences to the application. An examination as to distinctiveness and deceptiveness is conducted, which can lead to a rejection.
18. What response to official objections is required?
To overcome the objections, the applicant may file a brief with arguments supporting registrability. If the Office maintains the objections and rejects the application, an appeal within two months of the date the rejection has been served can be filed and the applicant has two additional months for substantiating the appeal.
19. How long is the registration process?
If the Office raises no objections and no oppositions are filed, registration can be obtained within 18-24 months after filing.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application.
21. What is the legal effect of a registration?
Registration confers on the proprietor exclusive rights in the mark. As the owner of a Community Trade Mark, the registrant can sue for infringement and cancellation of subsequent registrations in any country of the European Union. The registrant can also file oppositions, apply for injunctions, and seize counterfeits originating from nonmember countries at Customs in each member state.
22. Can an application be opposed or cancelled by third parties?
Yes. Owners of prior rights must file opposition to an application within three months of publication. If an application is rejected in an opposition because of prior rights in one or more member countries, it can, within three months, after notification that the decision has become final, be converted to a national application. Conversion is a procedure unique to the Community Trade Mark System. If an application is rejected due to earlier rights (relative grounds) in one or more member countries, a Community application can be converted to a national application having any priority or relevant seniority dates of the Community application in any of the remaining member countries.
23. Can an application or registration be assigned?
Yes. The Community Trade Mark application or registration may be assigned without limitation, but always as a unitary title covering all member countries.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Recordation is not compulsory. However, it entitles the assignee to invoke the rights arising from the registration.
26. Can an application or registration be licensed?
Yes. The Community Trade Mark application or registration may be licensed for one or more member countries, and for some or all of the goods or services.
27. Does a license have to be recorded?
Recordation is not compulsory. However, it entitles the licensee to invoke the rights arising from the registration. A non-registered licensee may bring infringement proceedings with the consent of the proprietor (Art. 22 (3) CTMR).
28. What is the territorial limit of a registration?
A Community Trade Mark registration covers all members of the European Union and cannot be limited or divided. It can be used as the basis for an application for an international registration under the Madrid Protocol and can designate countries that are not members of the European Union.
29. How long does a registration last?
The term of registration is ten years from the date of publication of the registration, and is renewable for like periods.
30. What is required to renew a registration?
Payment of a renewal fee is the only requirement.
31. Is it necessary to indicate a trademark registration on goods or services?
No. Marking is optional.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes, http://oami.eu.int/. Trademark applications can be filed online.