Guide to Registration of European Community Tradeamrks (1) - Filing a Community Mark

Filing a Community Mark

Filing a Community trademark has the advantage of being a sole procedure resulting in a trademark having effect in the 27 countries of the European Community and later also in the new Member States.

Because of its large scope, it is important to file a "strong" sign which will not be refused. There are absolute and relative grounds for refusal.

Absolute grounds for refusal

The Office for the Harmonization in the Internal Market (OHIM) will study the absolute grounds for refusal such as distinctiveness, and this in anyone of the today's 20 official languages of the E.C.

It is therefore advisable to check, prior filing, that the sign could not be understood in one of the 20 languages as being the designation of the product, as designating the quality or the purpose of the product, etc.

Relative grounds for refusal

As for the relative grounds for refusal, the OHIM and some National Offices conduct a search among the Community and national trademarks (France, Germany and Italy do not conduct such a search, nor some of the new member States).

A search report is sent to the Applicant. However, the OHIM will not examine this report. In view of it, the Applicant can modify its application by restricting the list of goods.

As the search report does not take into account all the countries, it is useful to conduct a preliminary search among the national, international and community trademarks having effect in the E.C., at least among the marks having effect in the countries which do not participate to the search report.

Opposition

Less than one month after the official notification of the search report, the application is published. An opposition may be filed within a 3-month period from the publication of the application by third ones. Any kind of prior rights (i.e. not only a prior mark but also a company name, a name, an unfiled used mark, etc.) may be opposed, even if this right has effect only in one country of the E.C.

The opposition procedure begins with an extendable 2-month period of "cooling-off". During this period, the opponent and the applicant may try to reach an agreement by their own. For example, a limitation to specific products without the OHIM intervention can stop the opposition procedure.

Division

It is possible to file a division of a CTM application. For example in case of an opposition regarding some of the designated goods, it is possible to divide the application in order to obtain the registration of the goods which are not the object of the opposition.

The division will keep the filing date of the original application.

The division is subject to an official fee. Registration and renewal fees will have to be paid for two different trademarks.

Registration

In the absence of opposition or in case of a won oppostion, a registration fee must be paid. Some time after, the Certificate is received.

Cancellation procedure

After its registration, a Community trademark can still be the object of a cancellation procedure by a third one at the OHIM, for absolute or relative grounds.

Seniority of an earlier national trademark

According to Article 34 of the Community Trademark Regulation, the owner of an earlier trademark having effect in a country of the E.C. may claim the seniority of this earlier trademark for identical products and with respect of the country.

The effect of this seniority is that the owner may allow to lapse the earlier mark. As a matter of fact, he shall be deemed to continue to have the same rights as he would have had if the earlier trademark had continued to be registered in that country.

Use

After the Community trademark has been registered, a period of 5 years begins. After this period, or any other uninterrupted 5-year period, a third person may act for forfeiture if the mark was not used in the E.C. (the "serious" use in only one country of the E.C. shall be sufficient).

Foreclosure by tolerance

The owner of a Community Trademark cannot take action for infringement against a later mark if he has tolerated its use for 5 years.

Conversion

The applicant or the owner of a Community trademark can convert it into national trademarks or trademark applications. The conversion can be limited, for example when absolute ground for refusal exists in a country because of the descriptive character of the sign in the language of this country.

Time scales involved in the registration process

A search report is sent about 6 months after the filing.
Publication of the registration if no Office Action and if no opposition : about 14 months after the filing.