The Community Trade Mark

Dimitrios ANDRIANOPOULOS (OHIM)

Serbia, 6th November 2007

Office for Harmonization in the Internal Market

Agency of the European Union with legal, administrative, technical and financial autonomy, whose task is to grant trade mark & design titles of protection valid and enforceable throughout the whole EU territory

What is a Trade Mark?

Trade mark is a word or sign which can be represented graphically and which is capable of distinguishing the trade origin of certain goods and services.

3 alternative ways

allowing companies to obtain titles for protection of trade marks within the EU:

(1) The National mark

(2) The International mark

(3) The Community mark

File individual applications at each of the National Offices

Translation Costs

Lawyers fees

Each protection title subject to the different national laws

(1) National mark

An individual fee is payable to some National Offices

Translation Costs

Lawyers fees

A single fee is paid to WIPO

No single unitary right is granted -‘bundle’ of rights’

Subject to national law of each country

(2) International mark

Application based on an existing national trade mark

(3) Community mark

Single application procedure

Single language, any of the 22 EU languages

Single payment (reduced cost compared to accumulated national rights)

Single administrative centre (OHIM Alicante)

Valid throughout EU under a single registered right Community trade mark

court system (simplified legal procedures)

What is a Community Trade Mark?

Community Trade Mark (CTM)

is a single registered right which grants protection for signs in the whole EU as a

single territory.

What can be a Community Trade Mark?

WORDS (word marks)

Adidas Starbucks Whirlpool Nestlé Volkswagen

Sony Harley Davidson Philips Just Do It Orange

Siemens Lays Red Bull Java Vodafone JVC

Gatorade Coca Cola Shell Ford Apple Levis

Rolex Microsoft PepsiCo RayBan Zippo Bic

MGM Petronor Herbalife EMI Sellotape Pfeizer

What can be a Community Trade Mark?

LOGOS (figurative marks)

What can be a Community Trade Mark?

OBJECTS (3-D marks)

What can be a Community Trade Mark?

COLOURS OR COMBINATIONS OF COLOURS(colour marks)

What can be a Community Trade Mark?

SOUNDS (sound marks)

E-filing makes it easier to file a sample of the sound

What can be a Community Trade Mark?

Movement marks

Holograms Olfatory marks(smell of ripe strawberries)

Though acceptable in principle, graphic representation is problematic with such marks.

• Application to OHIM (direct route)

or

• Designation via Madrid Protocol (WIPO)

The ways are different in many aspects but the final goal is the same:

one registration/designation valid in 27 countries

How to obtain a Community Trade Mark

CTM – direct route

Fill in the application form in any of the 22 EU languages and send it directly to OHIM by fax, post/courier, e-filing or hand delivery

Application through EU National Offices

How to obtain a Community Trade Mark

How do you Obtain a Community Trade Mark

Application via W.I.P.O. (Madrid Protocol)

Fax, Post/Courier

EU can be designated as part of an International Registration, based on an existing national trade mark application

Fees payable to WIPO

Legal representation only necessary if objections raised

Madrid Protocol

CTM via Madrid Protocol

CTM Examination Flowchart

Filing

Examination of Formalities

Search and TranslationSearch and Translation

Publication

Absolute Grounds Examination

Opposition (inter partes proceedings)

Registration

3rd Party Observations

Classification of Goods & Services

Examination of formalities• request for registration of a CTM

• applicant's identification

• list of goods and services

• representation of the mark

• legal representative for non-EU applicants

• priority/seniority documents

• application fee

Classification of goods/services

NICE classification system (45 classes)

Absolute grounds for refusal

The following shall not be registered:

“Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services” (Article 7(1)(c) CTMR)

Absolute grounds for refusal

The following shall not be registered:

“Trade marks which are devoid of any distinctive character” (Article 7(1)(b) CTMR)

“Trade marks which are contrary to the public policy and morality” (Article 7(1)(f) CTMR)

…the mark processes to publication

• CTM bulletin

• published weekly

• only electronically

If no objections on Absolute Grounds

Oppositions can be filed within 3 months from publication by the proprietors of any earlier national,

international or Community trade mark

registration or application when:the CTM application is identical or similar

to the earlier trade mark and,

the goods/services applied for are identical or similar to the goods/services for which the earlier trade mark is protected

Third Party Observations (on absolute grounds)

Oppositions /3rd Party Observations

Registration

• Where opposition fails or there is no opposition at all, the trade mark is registered.

• Registration fee

• The registration is valid for 10 years from the date of filing and can be renewed for ever, in blocks of 10 years

• The use of a trade mark is obligatory

Within a period of 5 years following registration the

owner has to put the trade mark to genuine use in at least one of the Member States

Possibility of cancellation after registration

No time limits

Reasons:• No use of the trade mark• Absolute grounds• Relative grounds (earlier rights)

Cancellation

• A community trade mark can be licensed for some or all the goods or services for which it is registered and for the whole or part of the Community. A licence can be exclusive or non-exclusive

• Fee (200€)

• The proprietor must specify the goods & services, the duration and the territory

• A licence can be modified or cancelled any time

Licensing

Conversion into National Marks

A refused or withdrawn CTM application can be converted into national marks, in those Member States where objection does not apply

The filing date of the CTM application is maintained

Fees for a Community Trade Mark

Basic Fee for CTM application €900 / €750 (e-filing)

Basic Fee for CTM registration €850

Total €1.750 / €1.600 (e-filing)

Extra Class Fee (application) €150 per class over 3

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Fee for an Opposition €350

Fee for an Appeal €800

Basic Fee for the Renewal €1.500 / €1.350 (e-renewal)

Extra Class Fee (renewal) €400

Statistics

CTM applications received

43,152

27,28631,634

41,299

57,386

48,91345,237

57,709 58,99164,809

77,478

64,943

0

10,000

20,000

30,000

40,000

50,000

60,000

70,000

80,000

90,000

1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007

7,63%IT

7,77%ES

12,22%GB

16,50%DE

22,43 %US UE; 64% No UE;

36%

0 %

10 %

2 0 %

3 0 %

4 0 %

5 0 %

6 0 %

7 0 %

Country of origin: TOP 5

CTM filings per country

Information: (+ 34) 965 139 100

(+ 34) 965 131 344

information@oami.europa.eu

Office for Harmonization in the Internal Market (Trade Marks and Designs)Avenida de Europa, 4E-03008 AlicanteSPAIN