Community Trademarks

The Community trade mark (CTM) system was introduced in 1996 (April 1st, 1996 is the official filing date of the first applications). Under the system it is possible to obtain a registration having effect in all twenty-seven current Member States of the European Union with a single procedure.

The Office for Harmonisation in the Internal Market (OHIM) is the EU Agency based in Alicante (Spain) having the exclusive competence to deal with the CTM.

The system is regulated by the following legal texts:

- Council Regulation No. 40/94 of 20 December 1993 (regulation concerning the substantive law)
- Commission Regulation No. 2868/95 (implementing regulation)
- Commission Regulation No. 2869/95 (fees regulation)

All the above-mentioned Regulations were modified in 2004.

The CTM confers its owner exclusive rights in all the EU Member States and it is characterised by its unitary nature. It follows that possible differences in the legal provisions concerning IP rights of each EU Member are eliminated.

The main principles of the CTM system are the following:

1. Unitary character

The CTM is valid in the whole of the EU, it is granted for the whole of the EU and produces its effects in each Member States of the EU.

2. Coexistence

The CTM system and the national systems are not in conflict with each other, but coexist, offering a double protection or representing two valid alternatives to be evaluated in the light of the specific business strategies of the trade mark owner.

The application for registration can be filed in one of the 23 official languages of the EU (i.e. Bulgarian, Czech, Danish, German, Easton, Greek, English, Irish, Spanish, French, Italian, Lithuanian, Latvian, Hungarian, Maltese, Dutch, Polish, Portuguese, Romanian, Slovak, Slovenia, Finnish, Swedish), but a “second language” (to be chosen among the five OHIM-official languages, i.e. English French, German, Italian and Spanish) is to be indicated. The “second language” can have a significant importance in the event of opposition and/or cancellation proceedings.

The costs for filing a CTM application are the following:

• EURO 900 for an application covering up to three classes of the Nice Classification of the goods and services (EURO 750 if e-filing application) and EURO 150 for each additional class
• EURO 850 as registration fees covering up to three classes (EURO 200 for each additional class).

It is to be borne in mind that the total costs of a registration procedure cannot be exactly quantified in advance since they can vary as a consequence of possible oppositions filed by owners of earlier rights having effect in one/more the EU Countries.

The registration is granted for 10 years starting from the date of the application’s filing and can be renewed for further 10-year periods upon payment of EURO 1500 up to 3 classes plus EURO 500 for each additional class (or EURO 1350 if e-filing application for renewal).

The registration procedure is characterised by the following steps:

- an examination concerning the absolute grounds for refusal (distinctive character, contrariety to public morality);
- a search on Community and national trade mark applications/registrations to identify possible conflicting trade marks (it should be noted that only 13 national Trade Mark Offices actually carry out such searches, i.e. Czech Republic, Denmark, Greece, Spain, Ireland, Hungary, Austria, Poland, Portugal, Slovenia, Sweden, United Kingdom, Benelux countries). OHIM merely notifies the search report to the owner of the CTM application without commenting on it: it is up to the owner to decide to withdraw in the presence of conflicting trade marks.

Taking into account that not all EU countries are covered by the search report, before filing a CTM it would be advisable to carry out a clearance search in the trade marks registers of, at least, the most significant European countries (like France, Germany and Italy) in order to better evaluate the current status of the mark of interest.

To sum up, the main advantages and disadvantages of the CTM system are the following:

Advantages:

- The overall costs are rather reasonable and, however, lower than the costs to obtain and manage 27 national trade mark registrations;
- The use of the CTM to avoid lapse for non-use can be limited to a few Member States;
- The protection conferred is based on common established principles and case-law coming directly from EU institutions with the benefit of avoiding the conflict of judgements rendered by different National Courts;
- The protection conferred is automatically extended to any new Member State in the case of future EU enlargements.

Disadvantages:

1) relative difficulties of obtaining the registration due to possible oppositions based on earlier rights;

2) relative difficulties connected to the 23 EU languages (for example, a word mark could be regarded as descriptive in one language and therefore not eligible for registration as a CTM)

3) the protection of CTM applications/registrations is not automatically extended to the OVERSEAS TERRITORIES (for example the French territoires d'Outre-Mer) and can have a different relevance compared to the value that national trade mark laws can have in other countries (for example Italian trade mark registrations are protected also in the Republic of San Marino thanks to a reciprocity agreement signed by the two countries).

Finally, in order to give you a clear picture of the whole CTM procedure, we have prepared the following chart: