Briefings > Community trade mark registration procedure

CAM Trade Mark attorneys are fully qualified European Trade Mark Attorneys and have professional representation before OHIM (Office for Harmonisation in the Internal Market). English is an official language of OHIM and much of its own internal communications are even in English. Thus to file and prosecute an EU mark in the English language can be advantageous and lead to speedier results.

Why register a Community Trade Mark?

The greatest advantage of having a Community Trade Mark (CTM) is that one mark gives protection in every individual member nation of the European Union (currently 27). The following is a full list of the EU countries:

  • Austria
  • Belgium
  • Bulgaria
  • Cyprus
  • Czech Republic
  • Denmark
  • Estonia
  • Finland
  • France
  • Germany
  • Greece
  • Hungary
  • Ireland
  • Italy
  • Latvia
  • Lithuania
  • Luxembourg
  • Malta
  • Netherlands
  • Poland
  • Portugal
  • Romania
  • Slovakia
  • Slovenia
  • Spain
  • Sweden
  • United Kingdom

Having a Community Trade Mark gives equivalent protection in each of the above countries as if they were national marks. Indeed, one of the initial objectives and driving forces of the CTM was that eventually this would substitute for the need to have individual filings in European countries for businesses trading across European borders.

The advantages of the CTM system are manifold. These include the following.

  • One filing procedure at one office removes the need to file in each individual country.
  • Once registered, one renewal is all that is needed to keep protection in all 27 countries.
  • The cost of protection in all of these countries is quite minimal compared to if it was protected individually.
  • The mark can be licensed to other parties for just part of the EU, and
  • it can be assigned for just part of the goods and services.
  • Infringement proceedings can be brought at any Community court, with decisions having effect in every other EU country.
  • The obligation to use the mark can be fulfilled in just one of the EU countries in order to maintain the mark in all the other countries.

The main disadvantage is the mark's 'unitary' nature. If it is not available or is objectionable in just one of the countries, it cannot be registered in any. However, there is still the option of converting the mark to individual applications in those countries of interest where there has been no objection.

Before filing a Community Mark, or using an adopted mark in an EU country, a clearance search is highly recommended. This will analyse marks on the Community Register (but not national registers, unless on request).

Following the filing of the mark (official fees, for up to three classes, are currently 900 euros if filed electronically,1050 euros using  a paper form) and 150 euros for each additional class), an examination is made on the intrinsic ability of the mark to act as a unitary trade mark within the EU (this is what is known as an 'absolute grounds' examination). Third party interests do not play a role in this examination (unlike other systems). They come in later when, following a successful outcome of the examination, the mark is advertised for opposition purposes. Owners of earlier conflicting EU marks, whom the office ex-officio notifies, or any other proprietor of a conflicting national mark, are able to oppose the application during a period that is no longer than three months. If there is an opposition, this is where the trade mark attorney comes unto his own, where he can help settle differences or help the parties come to some acceptable compromise.

Once the opposition period is over, or opposition resolved, registration of the mark follows. Registration certificates are no longer sent out but they are made available electronically to be downloaded from the OHIM web site.

For a non-committal and free discussion on your EU trademark needs, please contact us at Cam Trade Marks.