The Community/European trademark registration provides protection in all 28 EU Member States through the filing of a single Community/European trademark application.
Fundamental Characteristic of the European Trademark
The European trademark has equal effect throughout all EU Member States. The intellectual property rights originating from the Community trademark cannot be designated or restricted to the territory of one or more EU Member States. Once granted the Community trademark registration provides protection of the mark in the entire EU.
Advantages of the European Trademark
In terms of administrative costs, filing a European trademark application and maintaining the subsequent European trademark registration is highly efficient for the following reasons:
- the Euroepan trademark applicant shall file only one application
- the European trademark registration procedure is conducted in only one language
- the correspondence is conducted with only one administrative body in the face of the European Union Intellectual Property Office (EUIPO)
- one can use the services of a single representative for European trademark registration that can come from whichever EU country one picks up
- one shall track only a single application and shall pay for only one European trademark registration.
Consequently a simple cost-benefit analysis shows that the applicant, respectively the CTM proprietor, would cut significantly its costs in contrast with filing and maintaining multiple national registrations in a number of EU Member States.
Stages of the European trademark registration
Filing the European trademark application
The application shall contain, inter alia, the applicant’s name, representation of the trademark and a list of the goods or services in respect of which the registration is requested. At this point, the applicant can make its claims of seniority and priority. One shall also pay the required fees within a month from the filing of the application.
Filing date of the European trademark application
The filing date of the European trademark application shall be the date on which the correctly prepared documents have been filed either directly with OHIM or through the Bulgaria Patent Office or through another relevant Office of an EU Member State. From the filing date is estimated the subsequent term of CTM protection.
This step includes examination of whether the application has been filed with the correct prerequisites. For example, incorrect listing of the classes, under the Nice Classification of Goods and Service, may constitute non-compliance of the application. In this case the applicant is given two months to correct its application.
The right of priority of the European trademark application is granted in the following cases:
- the CTM applicant can claim convention priority if the latter has filed an earlier application (in a State party to the Paris Convention or to the Agreement establishing the World Trade Organisation) for an identical mark for the same goods and services within six months from the date of the CTM application;
- if the CTM applicant has displayed goods or services under the mark applied for, at an official international exhibition, he may, if he files the application within a period of six months from the date of the first display of the goods or services under the mark applied for, claim a right of exhibition priority from that date.
The applicant can claim its right of priority upon filing the application or up to one month afterwards. One can also prove its right of priority up to three months following the filing of the European application.
The priority date,established on the above grounds, is considered the European trademark filing date.
Examination as to absolute grounds for refusal
The next step from the procedure involves examination as to the absolute grounds for refusal which, inter alia, envisage that the European trademark shall not be registered if it lacks distinctiveness and/or is likely to be confusing for the public. The complete list of absolute grounds is laid out by Council Regulation (EC) No 207/2009. If EUIPO finds absolute grounds for refusal the applicant is given two months to respond.
Publication of the European trademark application
If no absolute grounds has been found the application is publish in the trademark Bulletin in all official EU languages.
Refusal of the registration – opposition and objection
Within three months from the publication of the application, any of the proprietors of earlier trademark rights can file an opposition to the registration.
Within the same period, any individual may also file an objection to the registration based on the absolute grounds for refusal.
Earlier trademark rights means rights stemming from: prior European trademark application or registration; prior national application or national registration; preceding international trademark registration under the Protocol to the Madrid Agreement designating the entire EU or designating the territory of a specific EU Member State; a mark determined as well-known or having reputation on the territory of an EU Member State.
The application shall also be refused when it has been filed by an agent of the actual mark holder without having its consent.
If within the three-month period from the publication of the application no opposition has been filed then OHIM takes decision to allow the registration of the CTM.
Even if there is an identical CTM for the same goods and services that has already been registered, OHIM does not have the right to refuse the registration if the interested party, holder of the earlier rights, has not taken any action to oppose the subsequent CTM application.
Consequently, the European trademark registration is protected for a ten-year period from the filing date of the application.