Members of the European Union have adopted
important new trademark legislation that makes it possible for trademark
owners to consolidate and possibly expand their trademark rights in Europe.
The European Community Trademark Act (CTM
Act), which took effect on April 1, sets forth a system to unify trademark
law and procedure throughout the European Union. The CTM Act allows trademark
owners to secure unitary trademark protection throughout the 15 EU countries,
by requiring only one application, registration fee and renewal fee per
mark, and by allowing a trademark owner to maintain trademark rights throughout
the EU by using its mark in only one EU country.
The 15 countries that currently are members
of the EU are Austria, Belgium, the Netherlands, Luxemburg, Denmark, Finland,
Germany, Greece, Ireland, Italy, Portugal, Spain, Sweden, and the United
Before the CTM Act was implemented, a trademark
owner wishing to ensure protection for a mark throughout the EU had to
file 13 separate applications (one application can be made with the Benelux
Trademark Office to cover Belgium, Luxemburg, and the Netherlands), understand
and work with 13 national trademark laws, and face the possibility of dealing
with 11 official languages. Because the CTM Act provides an alternative
to the complexities of national trademark laws and procedures, it should
substantially affect trademark protection opportunities and strategies.
Since the United States is a member of the
Paris Convention, U.S. citizens and companies may file applications to
register their trademarks under the CTM Act. The obtain CTM registration,
it is necessary to file an application with the European Community Trademark
office (CTMO) (formally; the Office for Harmonization in the Internal Market
of the European Union), which has been established in Alicante, Spain.
The application fee for up to three international classes, including search
fees, is approximately US$1,268 (ECU975) plus US$260 (ECU200) for each
The application may be filed in any of the
11 official EU languages. Additionally, the applicant must choose one of
five official CTMO languages (English, French, German, Italian, or Spanish)
to be used for opposition, revocation or invalidity proceedings.
Various provisions and strategies can be
implemented to ensure that English will be used to carry out the majority
of communication with the CTMO. Additionally, applicants from countries
outside of the EU must designate a professional representative from the
A CTM applicant may claim Paris Convention
priority based on a regular national application filed no more than six
months before, in a country that is a party to the Paris Convention or
to the World Trade Organization.
In addition, a CTM applicant may claim seniority
based on a previously existing national registration for the same mark
in one or more EU countries. This allows the owner to maintain the rights
of the previously existing national registration. Once the CTM application
is registered, the owner may then permit the national registrations to
lapse and thus avoid paying multiple national renewal fees or assignment
The examination procedure consists of two
phases: examination as to inherent registrability and examination based
on relative grounds of refusal. In the first phase, the CTMO will examine
formalities and the inherent registrability of absolute grounds for refusal
(lack of distinctiveness, descriptiveness, etc.).
The CTMO will consider the meaning of the
mark in all 11 official EU languages. Upon completing the first phase of
the examination, the CTMO may refuse the application, accept the application
as to inherent registrability, require a disclaimer, or partially refuse
the application's specified goods/services.
While inherent registrability is being examined,
the CTMO will search prior CTM applications and registrations. The individual
national offices may also perform searches. The results of the national
searches that are communicated to the CTMO will be passed to the CTM applicant
with the CTMO search results.
When the CTM application is published in
the Community Trademark Bulletin, the CTMO will also inform the owners
of similar previously filed CTM applications and registrations. Weather
the national offices will communicate their results to third-party owners
of similar marks is unclear.
In the second phase of the examination the
CTMO will consider third parties' prior rights (relative grounds for refusal)
based upon oppositions made by the owners of such rights during the three-month
opposition period. (The CTMO will not examine relative grounds of refusal
An opposition may be based on a prior CTM
registration; national registration; international registration under the
Madrid Agreement; or other right, such as a common law mark (e.g., in the
U.K.). The opposition filing fee is approximately US$455 (ECU350).
The major potential disadvantage of the
CTM system is that a successful opposition from a third party in only one
country will prevent a mark from being registered under the CTM Act. (Similarly,
an injunction against infringement granted in a CTM court and based on
a CTM registration will be enforceable throughout the EU.) Furthermore,
the loser in an opposition is required to pay at least partial opposition
While these are very real concerns, please
note that the CTM procedures encourage settlement during the two-month
(extendible) period following notice of opposition. Furthermore, an applicant
may choose to withdraw upon notice of opposition without being obligated
to pay the opposer's fees. Finally, a CTM applicant may convert its application
to a national application(s) upon withdrawal, rejection, or abandonment
while maintaining the original CTM filing date.
There is an official fee of US$260 (EUC200)
to convert a CTM into one or more national applications. Once the applicant
converts the application into national application(s) with the applicable
national trademark office(s), the application is subject to national trademark
laws and fee requirements.
If the CTM application passes examination
phases one and two, the CTMO will grant registration upon payment of the
official registration fee. The official registration fee is approximately
US$1,430 (ECU1,100) for up to three classes and US$260 (ECU200) for each
additional class. The registration will be published in the Community Trade
Mark Bulletin and will be valid for 10 years from the filing date.
As expiration approaches, the owner may
file to renew the registration. Owners will only be required to pay a single
renewal fee for each CTM to secure trademark protection for additional
10-year periods. Renewal fees are approximately US$3,250 (ECU2,500) for
up to three classes plus US$260 for each additional class. This renewal
fee is comparable to the cost of four or five national renewal fees, but
is significantly less than the cost of renewing the national registrations
in all 15 countries.
Furthermore, an applicant may simply renew
its CTM and allow its earlier national registrations for the same mark
to lapse, thereby avoiding multiple renewal fees for the same mark. This
is one of the primary reasons to take advantage of seniority claims.
With all of the potential advantages of
the new European Community Trademark Act, counsel should review their clients'
current trademark portfolio and determine whether registration under the
CTM Act may benefit them.
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